Surf Shirt Designs Pty Limited v Lidgerwood Investments Pty Ltd

This decision concerns an opposition by Lidgerwood Investments Pty Limited (the opponent) to the registration of the trade mark HIGH ENERGY by Surf Shirt Designs Pty Limited (the applicant) for shirts, jumpers, and shorts. The opposition was brought before a delegate of the Registrar of Trade Marks.

The opponent raised several grounds for opposition, including that the applicant was not entitled to registration as proprietor, that the mark was not qualified for registration, that it was not distinctive, that registration would be contrary to sections 28 and 33 of the Trade Marks Act, that its use would be likely to deceive or cause confusion with the opponent's mark ENERGIE, and that the mark was substantially identical or deceptively similar to existing Australian trade marks. The opponent asserted proprietorship of the trade mark ENERGIE and claimed that the applicant's mark was not being used or proposed to be used in contravention of the opponent's rights.

The delegate considered the grounds of opposition, particularly focusing on section 40 of the Act concerning proprietorship. The delegate accepted the opponent's evidence that it had coined and used the trade mark ENERGY for clothing from 1980, later updating it to ENERGIE from 1985. The delegate found that the opponent had established proprietorship in the words ENERGY and ENERGIE for clothing prior to the applicant's application date. The delegate concluded that the addition of the word "HIGH" to the applicant's mark did not prevent potential deception or confusion with the opponent's established marks. The applicant failed to provide evidence to rebut the opponent's claims, leading the delegate to find that the opposition based on section 40 succeeded.

The delegate also considered section 28 of the Act regarding deception or confusion, but found that the evidence did not establish a contravention of paragraph (d) of that section, and therefore the opposition on this ground did not succeed. However, as the opposition under section 40 was allowed, the delegate ordered that the opposition be allowed and awarded costs to the opponent.