The Timberland Company v. Woolworths Limited

The Timberland Company (the opponent) opposed Woolworths Limited's (the applicant) application to register the trade mark TIMBERLINE. The opposition was heard by the Federal Court of Australia.

The court was required to determine whether the applicant's proposed trade mark TIMBERLINE was deceptively similar to the opponent's registered trade mark TIMBERLAND, and whether the opponent's trade mark had acquired a reputation in Australia such that the use of the applicant's mark would be likely to deceive or cause confusion. These issues were framed by reference to sections 44 and 60 of the relevant legislation.

The court found that the opponent had established a significant reputation in Australia for its TIMBERLAND branded outdoor clothing, particularly footwear, since 1981. The evidence indicated that these goods were positioned at the upper end of the market and were sold through the opponent's own stores and authorised dealers. The court assessed that the opponent's trade mark had the requisite reputation to support the grounds of opposition under section 60. The applicant had used its TIMBERLINE mark since 1996, initially for picnic tables and tents, and later for a broader range of camping equipment, with revenues comparable to the opponent's in the two years preceding the application.