Trade mark application number 2339184 (class 1)

This matter concerned an application by GC SplintPRINT for registration of the trade mark "GC SPLINTPRINT" in Class 1 of the Nice Classification. The application was opposed by GC Corporation. The hearing officer's decision to refuse registration was appealed to the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "GC SPLINTPRINT" was deceptively similar to the opponent's registered trade mark "GC" for goods in Class 1, specifically dental materials. The Court was required to consider the application of section 44 of the *Trade Marks Act 1995* (Cth), which prohibits the registration of a trade mark that is deceptively similar to an earlier trade mark.

In its reasoning, the Court applied the established principles for assessing deceptive similarity, which involve considering the visual, aural, and conceptual resemblance between the marks, as well as the overall commercial impression they create. The Court noted that the presence of the common element "GC" in both marks was significant. However, it also considered the distinctiveness of the additional element "SPLINTPRINT" in the applicant's mark and the nature of the goods in question. The Court ultimately found that, despite the common "GC" element, the marks were not deceptively similar when considered as a whole, particularly in the context of the specific goods.

The Court allowed the appeal, set aside the hearing officer's decision, and remitted the matter to the Registrar of Trade Marks with a direction to accept the application for registration.