Exotic Limo Pty Ltd applied to register
ExoticLimo (stylised) for car hire and
Theo Dimokranitis runs his own car hire business, Exoticar. He
objected to registration on two bases:
first, because of conflict with the reputation in his business
which operated under the trade mark exoticar - an
objection under section 60 of the Trade Marks Act; and
secondly, because of conflict with his prior registered trade
mark registration for exoticar / euro / luxury
hire - an objection under section 44 of the Trade Marks
Both parties filed evidence demonstrating limited trading
activities and reputation. There was some evidence of consumer
A delegate of the Registrar of Trade Marks dismissed both these
objections to registration.
Section 44 objection: "substantially identical with, or
deceptively similar to"
The two trade mark were not deceptively similar. They were more
than the simple words EXOTICAR and EXOTIC LIMO. Though they shared
the word EXOTIC, which was combined with the further respective
elements CAR and LIMO, the EXOTIC component alone would not be the
means that the average Australian would recognise and recall the
EXOTICAR mark. Overall the differences between the marks were such
that there was no real tangible danger of confusion between
It is unclear whether the Delegate regarded this as a borderline
case where recourse to the "idea" of the mark can be of
assistance (such as Sports Caf, Ltd v Registrar of Trade
Marks  FCA 1614 and Cooper Engineering v Sigmund
Pumps (1952) 86 CLR 536). Nonetheless, she did not consider
the "idea" of the marks so similar as to warrant a
finding of deceptive similarity.
Section 60 objection: "likely to deceive or cause
Section 60 required the deception or confusion between the marks
to be causally linked to the reputation of Mr Dimokranitis, but the
marks themselves did not need to be objectively deceptively
similar. This ground of opposition also failed.
At the date that the EXOTIC LIMO application was lodged, there
was only a limited use of the EXOTICAR mark. This did not establish
a sufficient reputation in the mind of the public, merely that
there was a growing reputation. The one instance of confusion to
which the Delegate gave weight resulted not from the prior
reputation of EXOTICAR but because of the similarity between the
Both sides conceded that LIMO and CAR were not distinctive
elements. Additionally, the Delegate found that EXOTIC was not
"unusual and distinctive" in relation to car and
limousine hire services. She then quoted the famous passage from
Hornsby Building Information Centre Pty Limited v Sydney
Building Information Centre Limited (1978) 140 CLR 216, in
which Justice Stephens states that there is a price to be paid for
adopting descriptive or non-distinctive words as trade marks. That
price is that other traders can legitimately adopt similar marks.
In such cases, "the risk of confusion must be
The distinctive trade mark
This decision is a timely reminder of the importance of a
distinctive trade mark.
Although the opponent Mr Dimokranitis had an invented word for
his trade mark, it still incorporated a word that other traders in
the fancy car hire business would legitimately want to use -
"exotic". As a result, he could not limit Exotic
Limo's use of the word.
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