Wayne Maurice Gibson & Jillian Louese Gibson v Photodisc, Inc

This decision concerns an opposition filed by PhotoDisc, Inc. (the opponent) against the trade mark application number 706289, filed by Wayne Maurice Gibson and Jillian Louese Gibson (the applicants). The applicants sought to register the trade mark for "Computer software for accessing digital images on read-only-memory compact discs." The opposition was heard by a delegate of the Registrar of Trade Marks in Sydney.

The opponent raised several grounds for opposition, including that the trade mark was not capable of distinguishing the applicants' goods, that its use would be contrary to law, likely to deceive or cause confusion, that the applicants were not the owners of the trade mark, and that it was substantially identical or deceptively similar to a trade mark that had acquired a reputation in Australia. The applicants argued that the term "photodisc" was descriptive and therefore not capable of distinguishing goods, and that their software was provided free of charge.

The delegate first considered the ground of ownership under section 58 of the *Trade Marks Act 1995*. While the opponent demonstrated prior use of the trade mark "photodisc" in Australia, the delegate found that the applicants' composite trade mark, featuring "photo-disk" in an arcuate, shadowed font with additional descriptive text and a decorative element, was not substantially identical to the opponent's simple word mark. Consequently, the section 58 ground of opposition failed.

However, the delegate found that the opposition succeeded on the ground of deceptive similarity under section 60 of the Act. Despite the descriptive nature of the term "photo-disk," the delegate was satisfied that the opponent's trade mark "photodisc" had acquired a reputation in Australia by the priority date of the application, evidenced by its Australian sales, participation in trade fairs, advertising, and international success. The delegate concluded that the close similarity between the marks, combined with the opponent's established reputation, was likely to deceive or cause confusion among consumers. Accordingly, the delegate refused to register trade mark application 706289 and awarded costs to the opponent, with a minor exclusion for certain evidence items.