Rocket fails to fire in trade mark dispute

NATIONAL: Gold Coast-headquartered surfwear brand Billabong has failed in its attempt to block a trade mark being registered by a competitor brand. The listed group had attempted to oppose the registration of a trade mark filed by Coolibar on the grounds the latter was "deceptively similar" to the trademark for Rocket, one of Billabong's many sub-brands.

The case, heard by hearing officer Claudia Murray in Canberra, centred around a trade mark application filed by Coolibar in November 2005 across classes that included shorts, skirts, swimwear, T-shirts, pants and gloves as well as footwear and sunglasses.

The hearing was told that in May 2006 Rocket, represented by Cullen & Co, filed a notice of opposition to registration of the trade mark, citing 15 grounds - later reduced to three - which included "contextural confusion" where consumers believed the trade marks indicated goods from the same trade source.

In response Coolibar, represented by Melbourne law firm Freehills, argued that the dominant features of the respective trade marks were completely different. However the registrar found there was no evidence to show Coolibar's use of its trade mark has or would be likely to mislead or deceive members of the public.

She noted that while Coolibar's mark consisted of "three stacked arrows in two concentric circles, one broken", Rocket's trade mark had been described as a "stylised tree". She said the Rocket trade marks all contained significant additional material, which resulted in them being much more complex and distinct visually than that Coolibar's version.

"It is not easy to see on what basis an impression created by Coolibar's trade mark might be mistaken for the impression created by any of Rocket's trade marks, even if - as has not been established - all their use on the same or similar goods."

Commenting on the case James Cameron, a senior associate with McCullough Robertson, said what made this case unusual was that it was decided on a version of the Trade Marks Act - owing to the date when the trade mark was originally filed - that has since been amended.

"If the decision was based on the new section 60 - which applies to trade marks filed after 23 October 2006 - the outcome may have been different given the reputation of Rocket," Cameron said. Rocket, which was ordered to pay costs, now has 21 days in which to appeal the decision. No appeal had been filed at the time of press.

By Tracey Porter