Time West Pty Ltd v Chanel Limited

This matter concerns an opposition by Chanel Limited to the registration of the trade mark CHATELLE, applied for by Time West Pty Ltd in respect of goods in Class 14. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the proposed trade mark CHATELLE was deceptively similar to Chanel Limited's registered trade mark CHANEL, for the purposes of section 33(1) of the relevant Act. This question was framed as the sole issue for determination, as the parties accepted that the goods were the same and the marks were not substantially identical. The delegate also considered whether the concurrent use of the marks would deceive or cause confusion under section 28 of the Act, noting that the test for deceptive similarity under section 33(1) incorporates the language of section 28(a).

The delegate applied established principles for assessing deceptive similarity, which require consideration of the overall impression and recollection the marks induce in the mind of the customer, rather than a strict side-by-side comparison. The delegate noted that purchasers of goods in Class 14, even cheaper items like costume jewellery, typically exercise some care and pay attention to detail, often involving close inspection and consultation with sales staff. Considering the differences in the marks, the delegate concluded that it was unlikely that the marks CHANEL and CHATELLE would be confused or that the public would be deceived, and that any potential confusion would not reach the likelihood envisaged by the Act.

Accordingly, the delegate dismissed the opposition and directed that the application proceed to registration, awarding the applicant its costs.