Swoss Pty Ltd v the Shoe Corporation Pty Ltd

Swoss Pty Ltd ("Swoss") opposed the registration of the trade mark application 777373, "PUCCI", filed by The Shoe Corporation Pty Ltd ("the applicant") for "ladies imported footwear". The applicant's application had been accepted under subsections 44(3)(a) and 44(4) of the *Trade Marks Act 1995* (Cth), which permit acceptance despite a conflicting registered trade mark if there has been honest concurrent use or if the applied-for mark was used before the priority date of the conflicting mark. Swoss, the registered owner of the trade mark GINO PUCCI, opposed the application solely on the ground of section 60 of the Act.

The legal issue before the delegate of the Registrar of Trade Marks was whether the registration of the applicant's mark should be opposed on the ground that it is deceptively similar to a trade mark that had acquired a reputation in Australia, and whether the use of the applicant's mark would be likely to deceive or cause confusion due to that reputation. Swoss bore the onus of establishing that deception or confusion was reasonably likely because of a reputation extant at the priority date of the application, 5 November 1998.

The delegate noted that while the applicant's failure to serve its evidence on Swoss was problematic, the applicant had not sought to rely on that evidence in the opposition. The delegate declined to comment on the deceptive similarity between the marks to avoid prejudicing another co-pending opposition. The delegate applied the principle that establishing a reputation requires more than mere assertion, encompassing both the quantum of sales and the esteem or image projected by the trade mark. However, the evidence provided by Swoss, including declarations from its managing director, was found to be insufficient to establish the critical factual elements of reputation at the priority date. The delegate found that the evidence did not adequately detail the extent of use or publicity for the GINO PUCCI mark, nor did it provide a clear measure of market presence or standing at the relevant time.

Consequently, Swoss failed to establish the ground of opposition relied upon under section 60 of the *Trade Marks Act 1995*. The delegate indicated that the decision on whether to register the applicant's trade mark would depend on the registrar's decision regarding the remaining opposition. No order as to costs was made.