Susie Ashley v the Boots Company PLC

Susie Ashley (the Opponent) opposed the registration of the trade mark application HAND FOOD (the Trade Mark) by The Boots Company PLC (the Applicant) in Class 3 for hand care creams. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth). The Opponent relied on several grounds, including sections 43, 44, 58, 58A, and 60 of the Act, although the ground under section 42(b) was abandoned. The relevant date for determining the rights of the parties was 3 January 2018, the filing date of the Applicant's trade mark application.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the Applicant's Trade Mark, HAND FOOD, was substantially identical with or deceptively similar to the Opponent's registered trade mark, which was part of a series of marks including a HAND FOOD LOGO. The Opponent's Registration covered cosmetics for hands, and the Applicant's goods were considered to fall within this scope. The delegate was required to assess the marks side-by-side, considering their essential features and the overall impression they conveyed, to determine if they met the criteria for substantial identity or deceptive similarity under section 44 of the Act.

The delegate found that the Trade Mark was not substantially identical to the Opponent's Hand Food Logo, noting significant differences in the visual presentation and the prominence of the word "HAND". However, the delegate concluded that the Trade Mark was deceptively similar to the Opponent's Hand Food Logo. This conclusion was based on the phonetic identity and similar meaning conveyed by the combination "HAND FOOD", despite the distinctive device element in the Opponent's mark. The delegate reasoned that consumers might wonder if the two marks were related, even though the word "HAND" is descriptive and "FOOD" has some reference to the nature of the goods.

Despite finding deceptive similarity under section 44(1), the delegate considered whether the exception under section 44(3) applied. The Applicant had provided evidence of honest concurrent use of the Trade Mark, having adopted it in good faith without knowledge of the Opponent's mark. The delegate was satisfied that there had been honest concurrent use of the two trade marks. Therefore, the delegate decided to accept the Applicant's application for registration, subject to conditions or limitations as the Registrar thought fit.