Boi Trading Company Limited applied to register the trade mark PRIDE & GLORY for a range of cosmetics (Class 3), leather goods (Class 18) and clothing (Class 25). The application was opposed by Soap & Glory Limited, the owner of the trade marks SOAP & GLORY and SOAP & GLORY - 2 MINUTE RINSE.
In pressing its opposition pursuant to section 44, the opponent submitted that the term ‘SOAP’ in the applicant’s mark was purely descriptive and should, therefore, be discounted to a certain extent. Similarly, the opponent also argued that the ‘PRIDE’ element of its prior registration should also be discounted to an extent as it was an emotive term that is often used by other traders as a marketing tool in relation to cosmetic goods.
The above arguments, supported by searches of the Internet using the Google search engine, which showed that it was largely only the opponent that used ‘& GLORY’ in relation to cosmetic goods, was sufficient for the Hearing Officer to find that there was a ‘real likelihood that a significant number of ordinary consumers will wonder, or be left in doubt about, whether the parties’ similar Class 3 goods come from the same source’.
Accordingly, there marks were found to be deceptively similar and the applied for PRIDE & GLORY mark would not be able to proceed to registration in relation to Class 3.
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