Marshalls Mono’s Australian designation of its FAIRSTONE trade mark covering paving and building materials in Class 19 was opposed by Bridgestone pursuant to sections 42(b), 44, and 60 of the Trade Marks Act.
In pressing section 44, the opponent nominated its prior FIRESTONE trade marks (which cover building materials in Class 19) as being deceptively similar to the FAIRSTONE application. The Hearing Officer’s view was that despite there being obvious similarities between the respective trade marks (FIRESTONE and FAIRSTONE), the ‘STONE’ element should, to some extent, be discounted due to the nature of the goods, and the remaining elements are each well-known English words with distinct pronunciations and meanings. Overall, the trade marks were found to not be deceptively similar.
On section 60, the Hearing Officer noted that the opponent had not met the relevant threshold for evidencing its alleged reputation in its FIRESTONE trade mark in respect of the relevant goods. There was, therefore, no need to consider this ground further.
Having already found that there was not likely to be confusion between the FIRESTONE and FAIRSTONE trade marks, the Hearing Officer was not required to consider the section 42(b) ground.
The opposition failed on all grounds and the Australian designation is to proceed to protection.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions.