The Trinh Tran v Richard Allan Meldrum & Jo-Anne Meldrum

This case concerns an opposition to the registration of the trade mark "hot piranha" for clothing, filed by The Trinh Tran. The opposition was brought by Richard Allan Meldrum and Jo-Anne Meldrum, who are the registered owners of the trade marks "hot tuna" and a fish device (referred to as the "piranha device" by Mr Meldrum). The Meldrums argued that the registration of "hot piranha" should be refused on several grounds under the *Trade Marks Act 1995*, including that its use would be contrary to law (section 42), likely to deceive or cause confusion due to its connotations (section 43), substantially identical or deceptively similar to their own trade marks (section 44), that Mr Tran was not the true owner (section 58), that he did not have an intention to use the mark (section 59), and that its use would be likely to deceive or cause confusion due to the reputation of their trade marks (section 60).

The delegate of the Registrar of Trade Marks considered each ground of opposition. The opposition under section 42 was dismissed as the allegation that Mr Tran's use of "hot piranha" was calculated to mislead and deceive was unsubstantiated. Similarly, the section 43 ground failed as there was no inherent connotation in "hot piranha" likely to deceive or cause confusion regarding clothing. The delegate found that "hot piranha" was neither substantially identical nor deceptively similar to the Meldrums' "hot tuna" or fish device trade marks for the purposes of section 44, noting the descriptive nature of "hot" and the distinctiveness of "piranha" and "tuna," and the lack of evidence that the fish device was recognisable as a piranha. The ownership ground under section 58 was also dismissed as the application mark was not found to be substantially identical or deceptively similar to the opponents' marks. The section 59 ground regarding intention to use was rejected due to a lack of evidence.

However, the delegate found in favour of the opponents on the ground of section 60. The evidence established that the Meldrums had extensively used their "hot tuna" and fish device trade marks for leisure and surfing clothing since 1978, building a significant reputation. Crucially, the delegate found that this reputation extended to the word "piranha" due to the Meldrums' consistent association of the term with their fish device, and the incongruous combination of "hot tuna" with the fierce fish device. The delegate concluded that the trade mark "hot piranha" was deceptively similar to the Meldrums' fish device, and that its use would be likely to deceive or cause confusion due to the established reputation associated with the word "piranha" and the overall marketing strategy employed by the Meldrums.

Consequently, the delegate refused to register the trade mark "hot piranha" on the basis of the section 60 ground of opposition. The Meldrums were awarded costs, to be taxed and certified by a trade marks officer.