XADO-Holding applied for extension of protection pursuant to an International Registration Designating Australia for the mark DOMO in class 3 cleaning products. This was opposed by Unilever in defence of their marks OMO and DOMESTOS, also class 3 cleaning products.
Unilever pressed grounds pursuant to sections 44 and 60.
Deceptive similarity is a question of the impression given by the trade mark in its entirety, rather than reducing the marks to the elements of OMO and DOM for comparison. To this end, the addition of the D for DOMO “adds a strong sound … so that the impressions that consumers are likely to form for each trade mark will be different”, and the additional syllables of DOMESTOS make a much longer word for consumers to pronounce and so form impressions when conveying the trade mark in common use.
The section 60 ground was dealt with first by enquiring as to the reputation Unilever had acquired in its OMO and DOMESTOS trade marks. The Delegate was of the view that there was considerable reputation, but that there remained no possibility of deception or confusion, due to the overall differences between the respective trade marks.
Having been able to establish reputation, but unable to establish likelihood of deception, or provide any evidence of actual confusion, Unilever failed in its challenge to the registration of DOMO.
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