Teleflora (Australia) Inc v Roll International Corporation

This matter concerns an opposition by Roll International Corporation to three trade mark applications filed by Teleflora (Australia) Inc. (now Global Flower Services) for registration of marks relating to live plants, flowers, horticultural products, business and advertising services, and floral supply and distribution. The opposition was heard and decided by a delegate of the Registrar of Trade Marks, applying the provisions of the *Trade Marks Act 1955* (Cth) due to transitional arrangements.

The primary legal issues before the delegate were whether the applicant's proposed trade marks were substantially identical or deceptively similar to the opponent's registered trade marks, and whether the goods and services covered by the applications were the same, of the same description, or closely related to those covered by the opponent's registrations, pursuant to section 33 of the *Trade Marks Act 1955*. A further issue arose regarding the opponent's reliance on a registration that was subsequently removed from the register for non-use. The opponent also raised a ground concerning the applicant's intention to use the trade marks.

The delegate determined that one of the opponent's relied-upon registrations had been removed from the register for non-use, and therefore, under section 33, it was not an impediment to the applicant's registration. The delegate found that the applicant's marks were not substantially identical to the opponent's remaining registration. While acknowledging some similarities, the delegate concluded that the marks were deceptively similar when assessed under the principle of imperfect recollection, considering the ordinary course of business and the habits of consumers. However, the delegate found no conflict in the goods and services, applying the tests of nature, uses, and trade channels, and therefore found no basis for opposition under section 33 in relation to the opponent's sole surviving registration. The delegate also dismissed the ground relating to the applicant's intention to use the trade marks, finding that the opponent had failed to provide sufficient evidence to seriously undermine the applicant's stated intention.

Consequently, the delegate dismissed the oppositions in their entirety and directed that the trade mark applications proceed to registration. Costs were awarded to the applicant.