Veedol International Limited v Caltex Petroleum Corporation

This decision concerns an opposition by Caltex Petroleum Corporation to the registration of the trade mark DIESELSTAR by Veedol International Limited for goods in International Class 4, specifically "Oils, lubricants and greases for use in or with diesel engines." The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Veedol's proposed trade mark DIESELSTAR was substantially identical with or deceptively similar to any registered trade marks of Caltex, pursuant to section 33 of the Trade Marks Act 1955 (Cth). Caltex argued that its numerous registered trade marks featuring a star device or the word "STAR" in relation to lubricants and fuels, including diesel oil, would lead to deception or confusion if Veedol's mark were registered. Veedol contended that DIESELSTAR should be considered as a single word and that the word "STAR" was commonly used in trade marks within the relevant class, meaning the public would not associate it exclusively with Caltex.

The delegate reasoned that while the goods were the same or of the same description, Veedol's mark DIESELSTAR was not substantially identical with or deceptively similar to Caltex's registered marks. The delegate noted that the word "STAR" and star devices are common elements in trade marks, and a comparison of the marks revealed obvious differences. The delegate distinguished the case from *In the matter of the trade mark of La Société Anonyme des Verreries de L' Etoile* by observing that DIESELSTAR is a single word and not merely the word "STAR" combined with a descriptive term. Applying the test of whether there was a reasonable likelihood of deception or confusion amongst a substantial number of persons, the delegate concluded that such a likelihood did not exist.

Consequently, the delegate dismissed the opposition and directed that Veedol's application proceed to registration. Costs were awarded to Veedol.