This matter concerned Adidas’ opposition to Whiteline Clothing’s application to register the trade mark SUPERSTAR in connection with clothing and footwear.

Adidas, through its evidence, demonstrated significant use of the trade mark SUPERSTAR worldwide since 1969 and in Australia since 1981 in relation to footwear, but only modest sales/reputation in connection with apparel.

Whilst there was some doubt about Adidas’ reputation in relation to apparel, it did demonstrate use of the SUPERSTAR trade mark on apparel prior to the adoption of the same trade mark by Whiteline Clothing.

In any event, as noted by the Hearing Officer, the other side’s trade mark ‘also claims a variety of clothing items many of which would be sold through the same channels and directed to the same target market as the footwear bearing the Opponent’s Trade Mark’. On that basis alone it appears that the Hearing Officer would have concluded that deception or confusion was likely.

Of course, as the Whiteline Clothing application also covered ‘footwear’ there was an argument that the goods were different enough to allow for the identical trade marks to coexist without confusion.

The Whiteline Clothing application is to be refused.

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.