Application for WAXHEAD covering sporting articles opposed by Head Technology (the owner of the Head tennis company).
The opponent first pressed section 41, that ‘WAXHEAD’ referred to surfers and the trade mark was therefore descriptive of the surf related goods covered under the application. The Hearing Officer agreed that there was a colloquial interpretation of ‘WAXHEAD’ that referred to a surfer, however, this alone was not sufficient to amount to a description of the goods.
Under section 44, the opponent submitted that its earlier HEAD registrations as being deceptively similar to WAXHEAD. The Hearing Officer did not agree, noting that there was a clear definition of WAXHEAD that is likely to be known to a large number of Australians and that there is a common lexicon of ‘-head’ prefixed terms in Australian slang, for example, ‘“revhead” and other, sometime more profane, terms’.
As there was a definite, known meaning, there was no danger, in the Hearing Officer’s view, that deception or confusion was likely. Section 44 failed.
Despite having what the Hearing Officer agreed was a definite reputation in Australia in relation to sporting goods, the opponent also failed on section 60, as the Hearing Officer was not convinced that there was any real tangible danger of deception or confusion.
The sections 59 and 43 grounds were also dismissed by the Hearing Officer without detailed comment. The opposition was not successful and the application is to proceed to registration.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team