Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited

This case concerned an opposition by Torpedoes Sportswear Pty Limited (the opponent) to the registration of a trade mark application by Thorpedo Enterprises Pty Limited (the applicant). The applicant sought to register the trade mark THORPEDO across thirteen classes of goods and services, including clothing, sporting articles, and entertainment services. The opponent, which owned prior registered trade marks including "TORPEDOES" and a device mark featuring a "T" and the word "TORPEDOES", opposed the registration on several grounds. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applicant's trade mark THORPEDO was likely to deceive or cause confusion under section 43 of the *Trade Marks Act 1995* (Cth), and whether it was substantially identical or deceptively similar to the opponent's registered trade marks under section 44 of the Act. The opponent argued that THORPEDO, being the well-known nickname of Olympic swimmer Ian Thorpe, would lead the public to believe the goods and services were endorsed by him, and that the marks were too similar to existing registrations. The applicant contended that Ian Thorpe had a connection with the use of the trade mark THORPEDO, and that the marks were not substantially identical or deceptively similar.

The delegate found that while the trade mark THORPEDO did connote Ian Thorpe, the applicant had provided sufficient evidence to establish a connection between Ian Thorpe and the use of the trade mark, thereby negating the likelihood of deception or confusion under section 43. Regarding section 44, the delegate determined that the trade marks were neither substantially identical nor deceptively similar. The delegate reasoned that the distinctiveness of the words "PARADISE LEGENDS" in one of the opponent's marks, and the prominence of the "T" device in another, created a total impression of dissimilarity when compared to THORPEDO. The delegate also noted that the difference between THORPEDO and TORPEDOES was significant.

Consequently, the delegate dismissed the opposition and allowed the registration of the applicant's trade mark. Costs were awarded against the opponent.