The Economist Newspaper Limited v Brendan Fernandez

The Economist Newspaper Limited opposed the registration of the trade mark application number 2041047, "The Beer Economist," in class 35, by Brendan Fernandez. The opposition was heard by Katrina Brown.

The court was required to determine two grounds of opposition: firstly, whether the trade mark application was made in bad faith under section 62A of the Act, and secondly, whether the proposed trade mark was substantially identical with or deceptively similar to existing registered trade marks of The Economist Newspaper Limited.

Regarding the bad faith ground, the court found that The Economist Newspaper Limited had not provided cogent evidence to support its assertions, and therefore, the ground of opposition under section 62A was not established. On the issue of substantial identity, the court applied the test from *Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd*, comparing the marks side by side and assessing the total impression of resemblance. The court concluded that the inclusion of the word "Beer" between "The" and "Economist" in the applicant's mark meant it was not substantially identical to the opponent's registrations, which consisted of the phrase "The Economist." For deceptive similarity, the court considered the impression left on a person of ordinary intelligence and memory, allowing for imperfect recollection, and applied the principle that the similarity must create a real and tangible danger of deception or confusion, considering the overall impression of the marks. The court found that while there were similarities, the presence of "Beer" was significant enough to prevent deceptive similarity.

As no grounds of opposition were established, the court directed that trade mark number 2041047 could proceed to registration, subject to any appeal. Costs were awarded against the Opponent in accordance with section 221 of the Act.