This case concerned a notice of opposition filed in respect of an IRDA for the mark BUGATCHI UOMO for class 25 various clothing goods. The mark in the Application was also recently considered by the Federal Court where the opponent in this matter had brought infringement proceedings against a distributor of the Applicant’s products, bearing BUGATCHI UOMO mark. The Opponent was the registered owner of the mark BUGATTI, the subject of several registrations including in respect of class 25 clothing.
The grounds of Opposition included that the applicant is not the owner of the mark contrary to s 58. In this respect the Delegate repeated comments in precedent case law that the first owner of the mark is he or she who is the first to use the mark (and not necessarily the author of the mark). Noting that the onus under s 58 was on the Opponent to show earlier use of the trade mark by another party had occurred prior to the first use of the Applicant, the Delegate was of the opinion that the evidence did not amount to an earlier use to displace ownership of the Applicant.
The Delegate then considered section 44 of the Act to determine whether the use of the mark on the designated goods would be likely to deceive and cause confusion in the Australian marketplace, and in considering this aspect referred to the recent Federal Court decision.
In that matter Justice Tracy stated that the additional element of UOMO in the opposed mark did not dissolve any possible confusion in light of the visual similarities between the root words of each mark. The Delegate made reference to the tendency of English speakers to slur the termination of words, to have the effect of accentuating the first part of spoken words and phrases.
Speaking against deceptive similarity was that the typical fashion conscious customer would likely attach a great weight to subtle differences in the trade marks. However the Delegate considered that on the whole there was a risk of deception in the marketplace.
The delegate then turned to the question of whether there was honest concurrent use of the trade mark.
The evidence was only able to indicate that use in Australia had at least commenced in 2010 however with the application date being June 2010, the relevant evidence was limited. As such a Delegate did not find honest concurrent use to the extent necessary to warrant a defence against deceptive similarity.
The applicant also sought to make use of the “other circumstance” provision within section 44. However the delegate found that none of the second matters raised were sufficient to satisfy the use of that discretion and held that the application to register the mark should be refused.