Powell, Larry John v Glow Zone Products Pty Ltd [1996] FCA 1021

CATCHWORDS TRADE MARKS - applicant registered proprietor of trade mark "CAPS THE GAME" - mark registered in relation to goods in Class 28 - mark intended to be used and later used in connection with discs used by children in connection with a game known variously as "caps", "milkcaps" and "POGS" - respondent marketing similar products using the mark "GLO-CAPS" - respondent's product all "glow in the dark" products, i.e. they exhibit a luminescence when in darkness - whether two marks substantially identical - whether two marks deceptively similar - discussion of principles applicable in relation to the determination of these questions - whether registration of applicant's mark valid - whether applicant's mark capable of being distinctive of its goods - whether the word "caps" was a word which was used generically in the relevant context or was likely to become used by the trade and persons purchasing the goods as generally descriptive of them - discussion of evidence and of relevant principles - whether "CAPS", after the registration of the applicant's mark, was used as the name or description of the goods in question - significance for this case of conclusion that it was - discussion of implications of s.56 of Trade Marks Act 1955 and of relevant principles.

Trade Marks Act 1955, ss.6, 22, 24, 26, 28, 32, 56, 62, 64. Trade Marks Act 1995, ss.2, 24, 87, 250, 252, 255. Evidence Act 1995, ss.76, 135, 136.

LARRY JOHN POWELL vGLOW ZONE PRODUCTS PTY LIMITED No. NG 907 of 1994

CORAM: SHEPPARD J PLACE: SYDNEY DATE: 25 NOVEMBER 1996

IN THE FEDERAL COURT OF AUSTRALIA) ) NEW SOUTH WALES DISTRICT REGISTRY) No. NG 907 of 1994 ) GENERAL DIVISION ) BETWEEN: LARRY JOHN POWELL Applicant AND: GLOW ZONE PRODUCTS PTY LIMITED Respondent CORAM: SHEPPARD J PLACE: SYDNEY DATE: 25 NOVEMBER 1996

REASONS FOR JUDGMENT