PINK SUGAR v SUGAR PINK – word reversal does not avoid deceptive similarity

The reversal of word order in competing marks will not avoid a finding of deceptive similarity.

In the recent ATMO case of Woolworths Limited v Flyers Group PLC [2013] ATMO 86 (25 October 2013), Woolworths opposed an application filed by Flyers Group Plc, a UK-based company providing designer brands for kids. The opposed application was for a logo mark, comprising the words SUGAR PINK together with heart devices:

Sugar Pink

Woolworths tendered evidence of its PINK SUGAR trade mark, which it launched and registered in 2007. The PINK SUGAR brand was developed in relation to a line of girls’ clothing, footwear and accessories to be sold in-store in ‘Big W’ stores. Since that time, Woolworths had promoted and sold clothing and accessories by reference to the trade mark PINK SUGAR across Australia.

The Hearings Officer largely overlooked the evidence of use filed by Woolworths, instead basing her decision on the prior registration of Woolworths alone.

The Hearings Officer stated that the combination of ‘pink’ and ‘sugar’ connoted the idea of sweetness and femininity. This was irrespective of whether the word ‘pink’ preceded ‘sugar’, or vice versa. The same idea of sweetness and femininity prevailed. The script adopted by the opposed mark, and the additional heart devices incorporated within it, simply reinforced the idea of sweetness and femininity.

The doctrine of imperfect recollection supported the argument that ‘SUGAR PINK’ might be imperfectly recalled as, and confused with, ‘PINK SUGAR’.

In addition to the similarities between the respective marks, the goods nominated under the opposed application were a subset of the prior registration of Woolworths.

Given the earlier priority date of Woolworths’ registration for PINK SUGAR, therefore, Woolworths’ opposition was successful on the basis of its prior registered mark alone.

The decision confirms that marks are not to be compared side by side, and that deceptive similarity will not necessarily be avoided simply where word order is reversed in competing marks.

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