Trade mark application number 2372023 (classes 32 and 33) –

Powder Monkey IP Limited ('the Applicant') sought to register trade mark number 2372023, comprising the words "POWDER MONKEY" and a monkey device, for goods in classes 32 and 33. The application was opposed by Bleasdale Vineyards Pty Ltd, citing its registered trade mark "POWDER MONKEY" (registration number 1298363) for wine in class 33. The delegate of the Registrar of Trade Marks was required to determine whether the Applicant's trade mark should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to its similarity to the cited mark.

The legal issues before the delegate were whether the Applicant's goods were similar or closely related to the goods covered by the cited mark, and whether the Applicant's trade mark was substantially identical with or deceptively similar to the cited mark. The delegate was required to consider these issues afresh, independent of the examiner's findings, and determine if a ground for rejection under section 44 existed on the balance of probabilities.

The delegate reasoned that for section 44 to apply, the cited mark must be registered by another person, have an earlier priority date, and cover goods or services similar or closely related to the applicant's goods, and the marks must be substantially identical or deceptively similar. The delegate found that the cited mark met the first two requirements. Applying principles from cases such as *E & J Gallo Winery v Lion Nathan Australia Pty Ltd* and considering the modern trade practices where alcoholic and non-alcoholic beverages are often produced, distributed, and sold by the same entities to the same consumers, the delegate determined that a significant portion of the Applicant's goods in both classes 32 and 33 were similar or closely related to wine. However, the delegate found that the Applicant's trade mark, when considered as a whole, was not substantially identical to the cited mark. On the question of deceptive similarity, the delegate applied the test of whether the Applicant's mark, viewed through the lens of imperfect recollection of an ordinary consumer, was likely to deceive or cause confusion with the cited mark, considering visual, aural, and conceptual aspects.

Ultimately, the delegate found that the Applicant's trade mark was likely to deceive or cause confusion in respect of all goods covered by the application, save for 'energy drinks' in class 32. As the Applicant had not been afforded an opportunity to amend its specification and the delegate was not satisfied that the application could be accepted in its current form, the trade mark application was rejected.