BOSE CORPORATION V HEINO BUSE MX IMPORT GMBH [2014] ATMO 110

An International Registration designating Australia for the BÜSE trade mark (shown below) was opposed by Bose Corporation under sections 44 and 60.

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Bose relied on its prior BOSE and BOSE RIDE trade mark registrations, which predate the opposed mark. These registrations covered what the Hearing Officer described as ‘literally similar’ goods to those of the opposed mark. However, the Hearing Officer also noted that ‘it is obvious that the Opponent’s specification is in the context of audio equipment, which would be sold through different trade channels and have different uses’.

In terms of the trade marks themselves, the Hearing Officer found that the BOSE and BÜSE trade marks were sufficiently different in sound and appearance, such that there was no danger of confusion or deception.

On this point, the Hearing Officer noted that the ‘Ü’ element of the opposed trade mark was something unfamiliar to Australian consumers, which assists in making the trade mark visually different, but then assumes that despite the ‘unfamiliar’ nature of the Ü, Australian consumers would recognise the subtle phonetic change in the pronunciation of this element making the two marks phonetically distinct.

On its section 60 case, the Hearing Officer noted that the opponent clearly holds a significant reputation in relation to audio goods and car audio goods. However, this was not, in the Hearing Officer’s view, sufficient to create a situation of real tangible danger of deception or confusion arising.

The designation will be protected in Australia for all the goods applied for.

To view the Office decision, click here.