PACIFIC BRANDS WORKWEAR GROUP PTY LTD V J.T.C. IMPORT/EXPORT PTY LTD. [2014] ATMO 43

This case concerned an opposition to the registration of YAKKA TOOLS in respect of class 8 hand tools and related goods.

The opponent was owner of the trade marks YAKKA and HARD YAKKA which were used in relation to the sale and promotion of workwear.

The opponent opposed on several grounds, including s 60, that the mark applied for was similar to a mark that had already acquired a reputation in Australia.

In relation to opponent’s reputation, the Delegate found that since the 1930s, the opponent had expended considerably time and money on developing its brand presence in respect of workwear under the brands YAKKA and HARD YAKKA.

As to whether the applied mark was likely to deceive or cause confusion, the Delegate found it was, as the products bearing the mark (although were different products) were likely to be sold in the same stores to the same consumer.

The applicant attempted to argue that there is no likelihood of deception or confusion as between the parties in that the term YAKKA was one that was used colloquially to mean “work” in the Australian market (presumably reducing its distinctiveness).The Delegate did not accept this submission.

Noting that the marks did not need to be deceptively similar, and that a likelihood of deception or confusion was informed by other factors, the Delegate found that the Australia consumer of the products would at least entertain a reasonable doubt as to whether there is some sort of connection between the products.

The registration of the trade mark was refused.

To view the Office decision, click here.