SLEEPCRAFT DISTRIBUTORS PTY LTD V FISI FIBRE SINTETICHE [2014] ATMO 71

The Australian designation of an International Registration for THERMOSOFT in respect of mattresses, raw textile fibres, and clothing was opposed by Sleepcraft based on its prior THERMALOFT and THERMAX trade marks, its reputation in THERM- prefixed marks, use of the THERMOSOFT mark would be contrary to law, and that the Fisi Fibre did not intend on using its trade mark in Australia.

Sleepcraft’s prior trade marks covered the same goods as the Fisi Fibre application, so the only consideration for the Hearing Officer to make was the question of deceptive similarity of the respective trade marks - THERMALOFT and THERMAX v THERMOSOFT.

On this, the Hearing Officer considered that there were definite aural similarities between the trade marks, however, she ‘consider[ed] that the impression left by the difference in meaning outweighs the aural similarity of the trade marks’. The marks were found not to be deceptively similar.

Turning to Sleepcraft’s reputation in THERMAX, the Hearing Officer was not presented with sufficient evidence to conclude that Sleepcraft enjoyed a reputation in its THERMAX trade mark. On the THERMALOFT trade mark, the Hearing Officer noted greater use, including ‘not insignificant’ sales prior to the filing of Fisi Fibre application. However, she was not satisfied that sufficient reputation existed for deception or confusion to be likely.

As sufficient reputation had not been established, the claim that the use of the Fisi Fibre trade mark would be contrary to law (based on misleading or deceptive conduct) was also not established.

The final consideration, that Fisi Fibre did not intend to use its trade mark, was also dismissed as Sleepcraft was unable to demonstrate that there was no intention on Fisi Fibre’s part to use its trade mark, despite no actual use having been located by Sleepcraft.

The opposition failed on all grounds and the Fisi Fibre application is to proceed to registration.

To view the Office decision, click here.