SEARS BRANDS LLC V TRIO GROUP AUSTRALIA PTY LTD [2014] ATMO 46

This case concerned an opposition to an application to register TRIO CRAFTSMAN, in respect of goods in class 6 including hinges, nails, brackets, fittings, wire bolts and other small hardware items.

The opponent pressed that the mark’s registration would contravene s44,as the mark is substantially identical or deceptively similar to an existing registration.

The opponent referred the delegate to the opponent’s own registrations in respect of the word CRAFTSMAN in relation to goods in classes 7, 8, 9 and 12. The Delegate noted that some of the registrations referred to were in respect of goods that were not similar to those the subject of Trio’s application.

As such, considering only those that were deemed relevant, the Delegate was of the opinion that as the closest goods under the cited marks were hand tools in class 8, the question was whether the goods under the subject application were similar to the kind of tools used in their application.

It was stated by the Delegate that although the

“… nature of these goods is different, their purposes do coincide and both products would be sold via the same trade channels to the same class of customer. If the trade marks are deceptively similar, that is where the deception or confusion between the trade marks is likely to occur

Despite this, the Delegate found that there was not a sufficient likelihood of deception to occur, as the goods were not close enough in similarity.

Further, the Delegate found that the additional element of the TRIO mark was sufficient to preclude a total impression of resemblance, and such the marks were not substantially identical.

However, as to whether there was a deceptive similarity, considering the dominance of the CRAFTSMAN element, the Delegate was of the opinion that there was a real and tangible danger of confusion, and that therefore, the marks are (based on an overall all impression) deceptively similar.

The Delegate refused the application to register the trade mark.

To view the Office decision, click here.