Steven Muller v Thinkvid Pty Ltd

This matter concerned an opposition by Steven Muller (the Applicant) to the registration of a trade mark by Thinkvid Pty Ltd (the Opponent). The Opponent relied on an earlier trade mark registration, number 1510339, which had a priority date of 24 August 2012 and was owned by Bondi Advertising Pty Ltd. Both trade marks covered services in Class 35 relating to advertising, marketing, and promotional services.

The court was required to determine whether the Applicant's trade mark was substantially identical or deceptively similar to the Opponent's earlier trade mark registration. The Applicant conceded that the services covered by both trade marks were the same or of the same description, and the court was satisfied of this. The central issue therefore revolved around the comparison of the trade marks themselves.

In assessing substantial identity, the court applied the principles from *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd* and subsequent Full Federal Court decisions, which require a side-by-side comparison of the essential features or dominant cognitive cues of each trade mark. The court found that the earlier trade mark registration comprised three essential features: the words "BONDI ADVERTISING," a pair of crossed flags, and the phrase "THINK OUTSIDE THE FLAGS." In contrast, the Applicant's trade mark consisted solely of the phrase "THINKBONDIBEACH." The court concluded that these clear differences created an impression of dissimilarity, meaning the trade marks were not substantially identical. The court then turned to consider whether the trade marks were deceptively similar, noting the statutory definition which requires a likelihood of deception or confusion.