Teraglow Pty Ltd

This matter concerned an application by Teraglow Pty Ltd for a trade mark, which faced a ground for rejection under section 44 of the Act due to its deceptive similarity to a prior registered trade mark, registration number 909842, known as SAMURAI, owned by Globeride Inc. The cited trade mark, registered on 17 April 2002, covered goods in Class 28, specifically fishing reels and fishing lines. The ground for rejection had been maintained through four examination reports, leading the Applicant to request a hearing, which was to be conducted solely on the basis of written submissions.

The central legal issue before the delegate of the Registrar of Trade Marks was whether the Applicant's trade mark was deceptively similar to the cited SAMURAI trade mark. The Applicant argued that for deceptive similarity to exist, the marks must first exhibit a visual resemblance. Only after establishing such visual resemblance, the Applicant contended, could the "idea of the mark" be considered in the assessment of deceptive similarity. The Applicant further submitted that the principle established in *Jafferjee v Scarlett* should be interpreted within the specific context of that case, which involved a comparison of devices broadly conveying the same subject matter.

The delegate considered the principle that the "idea of the mark" is crucial, referring to the passage from Lord Herschell's committee quoted in *Kerly on Trade Marks*. This principle highlights that even if two marks differ in specific details when placed side-by-side, they may convey the same main idea. Consequently, a person familiar with the earlier mark might be deceived into believing they are dealing with goods bearing the same mark if a second, visually different but conceptually similar mark, is used. The delegate noted that the *Jafferjee* case involved composite marks containing words, which was a relevant contextual factor.