TERAGLOW PTY LTD [2016] ATMO 32 (31 MAY 2016)

Teraglow applied to register the below trade mark, being the image of a Samurai warrior for fishing goods in Class 28. The application was blocked by a prior registration for the plain word SAMURAI covering the same goods.

Click here to view image.

The Hearing Officer’s decision in this matter draws upon a long line of case law from Australia, the United Kingdom and New Zealand relating to the likelihood of conceptual similarity and/or commonality of idea leading to consumer confusion. In summarising the case law in this area, the Hearing Officer noted:

I therefore do not consider it an impermissible extension of the principle in Jafferjee to find that a word and its pictorial equivalent are deceptively similar, and it is open to me to make such a finding here.

Having satisfied herself that such a finding could be made, the Hearing Officer set about making that finding and, in doing so, noted that the applicant’s trade mark ‘bears the hallmarks of a samurai, and that is how the [t]rade [m]ark will be perceived and recalled’.

Being conceptually identical, the Hearing Officer quickly found that the trade marks were deceptively similar and the Samurai warrior image refused registration.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.