Universal Protein Supplements Corporation v Universal Gym Australia Pty Ltd

This matter concerned an opposition by Universal Gym Australia Pty Ltd (the opponent) to the registration of a trade mark application by Universal Protein Supplements Corporation (the applicant). The dispute centred on whether the applicant's proposed trade mark was deceptively similar to an existing trade mark owned by a third party, which the opponent relied upon in its opposition. The decision was made by Bianca Irgang, a Hearing Officer at Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark application should be rejected under section 44(1) of the relevant Act. This required determining if the applicant's trade mark was substantially identical with, or deceptively similar to, a trade mark registered by another person in respect of similar goods or closely related services, and if the priority date of the registered trade mark was earlier than that of the applicant's application.

The Hearing Officer found that the opponent had successfully established the ground of opposition under section 44. While the Hearing Officer agreed that the applicant's trade mark was not substantially identical to the registered trade mark relied upon, the key issue was whether it was deceptively similar. The registered trade mark, filed in 1996, covered a broad range of clothing items in Class 25, including T-shirts, jackets, shirts, sweatshirts, sweatpants, shorts, caps, hats, pants, and shoes. The Hearing Officer noted that these goods were the same or of the same description as those claimed by the applicant in its trade mark application, and that the registered trade mark had an earlier priority date.

Accordingly, the Hearing Officer refused to register the applicant's trade mark application, application number 1578981. The Hearing Officer also awarded costs against the applicant in accordance with the usual practice.