Yunique Tea Pty Ltd v Boba Tea Sdn Bhd

This matter concerned an opposition by Yunique Tea Pty Ltd to the registration of a trade mark application by Boba Tea Sdn Bhd, specifically application number 2062202, for services in classes 35 and 43, comprising the words "DABOBA LET’S CHILL WITH DABOBA & Device". The opposition was heard by Tracey Berger, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the court was whether the Opponent had established any grounds for opposing the registration of the Applicant's trade mark. Specifically, the court considered the ground of opposition under section 44 of the *Trade Marks Act 1995* (Cth), which requires the Opponent to demonstrate that a registered or applied-for trade mark with an earlier priority date is substantially identical with or deceptively similar to the Applicant's mark, and that these marks relate to similar or closely related goods or services.

In its reasoning, the court applied the established legal principles for assessing substantial identity and deceptive similarity between trade marks. The court noted that for substantial identity, a side-by-side comparison of the marks, considering their essential features and the total impression of resemblance or dissimilarity, is required. The court found that the word elements, the device of a bear, and the presence of a slogan in the Applicant's mark were sufficiently different from the Opponent's mark to conclude they were not substantially identical. Furthermore, the court considered the broader test for deceptive similarity, which involves assessing whether one mark is likely to deceive or cause confusion. The court found that the differences between the marks were such that they were not deceptively similar.

As the Opponent had not established a ground of opposition, the court decided that the trade mark application could proceed to registration one month from the date of the decision, subject to any appeal. The court also awarded costs against the Opponent in favour of the Applicant.