Sydney Convention and Visitors Bureau Limited v Sydney Opera House Trust

This decision concerns an opposition by the Sydney Opera House Trust (the opponent) to two trade mark applications lodged by the Sydney Convention and Visitors Bureau Limited (the applicant). The applications sought registration for printed matter and promotional materials (application 537290) and for the promotion of Sydney as a tourist and convention destination (application 537292). The opposition was heard by a delegate of the Registrar of Trade Marks, applying the provisions of the *Trade Marks Act 1955* (Cth).

The primary legal issues before the delegate were whether the applicant's proposed trade marks were substantially identical with or deceptively similar to the opponent's registered trade marks, pursuant to section 33 of the *Trade Marks Act 1955*. If such similarity was found, the delegate also had to consider whether the applicant was entitled to registration under the provisions of section 34(1) of the Act, which allows for registration in cases of honest concurrent use or other special circumstances. The delegate also considered the nature, purpose, and trade channels of the respective goods and services to determine if they were of the same description or closely related.

The delegate reasoned that while the applicant's mark featured the Sydney Opera House sails, the inclusion of the word "Sydney" and the overall dynamic appearance of the applicant's mark were intended to distinguish it from the opponent's more "placid" and "sombre" mark. However, applying the test of deceptive similarity, which allows for imperfect recollection, the delegate found that the overall similarity in the characterisation of the sails in both marks was too great, leading to a likelihood that one mark would be taken for the other. Consequently, application 537290 was found to be caught by section 33. Regarding the services in application 537292, the delegate concluded they were not of the same description or closely related to the opponent's registered services, as their nature, purpose, and trade channels diverged significantly.

Ultimately, the delegate found that the applicant had not established sufficient grounds for registration under section 34(1). While the applicant's initial adoption of a similar logo involved some degree of honest concurrent use, the delegate found the period of use prior to lodgement insufficient. Furthermore, the delegate was not convinced by arguments relating to implied licence or "unclean hands" as special circumstances warranting registration. Therefore, the delegate refused the applications for registration.