Warnaco Inc

Warnaco Inc. applied to register the trade mark NOT SO INNOCENT NUDES for intimate apparel. An examiner concluded that the application should be rejected under section 44(1) of the *Trade Marks Act 1995* (Cth) due to its similarity to a registered trade mark, NUDES, owned by Pacific Dunlop Limited, which covers footwear and clothing, including intimate apparel. The delegate of the Registrar of Trade Marks considered the arguments of both parties.

The primary legal issue before the delegate was whether the applicant's trade mark, NOT SO INNOCENT NUDES, was substantially identical with or deceptively similar to the registered trade mark NUDES, such that it was likely to deceive or cause confusion, within the meaning of section 44(1)(a) and section 10 of the *Trade Marks Act 1995* (Cth). The delegate also had to consider whether the goods were similar or closely related, and whether the applicant's mark would be perceived as indicating a connection with the owner of the cited mark, even if the marks themselves were visually distinct.

The applicant argued that the word "nude" is a common word with multiple meanings, including its use in the clothing trade to describe skin-toned items. They contended that the applicant's mark would be understood as a descriptive contrast to artistic representations of the nude, rather than indicating a trade connection. However, the delegate found that despite the common usage of "nude" and the visual differences between the marks, there remained a significant risk of consumers assuming a connection between the goods bearing NOT SO INNOCENT NUDES and the owner of the registered mark NUDES. The delegate applied the principle that confusion as to trade provenance can arise even where marks are not visually or phonetically identical, relying on established case law regarding "contextual confusion."

The delegate concluded that the trade marks were deceptively similar, establishing a ground for rejection under section 44(1). Consequently, the delegate rejected the application for registration of the trade mark NOT SO INNOCENT NUDES.