Velcro Industries B.V. v SSS Pty Ltd

Velcro Industries B.V. (the opponent) opposed the registration of a trade mark by SSS Pty Ltd (the applicant). The opposition was based on several grounds, including those under sections 42, 44, 58, 59, and 60 of the relevant Act. The central issue for determination was the similarity between the opponent's registered trade marks, primarily for "VELCRO" and related terms used for hook and loop fasteners, and the applicant's proposed mark. The opponent argued that its VELCRO trade mark was well-known and that the applicant's mark was substantially identical or deceptively similar.

The court was required to determine whether the grounds of opposition, particularly those concerning the similarity of the trade marks and the potential for misleading or deceiving the public, had been established. The opponent relied on numerous registrations for VELCRO and variations thereof, covering a wide range of goods including fasteners, fabrics, and medical supplies. The applicant had been using its mark since 2005 on heavy-duty hook and loop products sold through retail outlets.

The court found that the opponent had not established the ground of opposition under section 59. While acknowledging the extensive use and recognition of the VELCRO trade mark, the court's reasoning, as indicated by the decision on section 59, suggests that the specific criteria for substantial identity or deceptive similarity were not met in relation to the applicant's mark. The court noted that other grounds of opposition not specifically addressed in evidence and argument had not been established.

Ultimately, the application for registration was permitted to proceed, with the court directing that the trade mark could be registered one month from the date of the decision, subject to any appeal. The applicant was awarded costs against the opponent.