ABB Asea Brown Boveri Ltd v ABB Grain Limited

ABB Asea Brown Boveri Ltd ("ABB") opposed the registration of trade mark application 719056, for the mark "ABB", filed by ABB Grain Limited ("ABB Grain") in Classes 31 and 42. ABB Grain sought to register the mark for various grains and related quality control and distribution services. ABB lodged its opposition on multiple grounds, including those based on sections 44, 58, and 60 of the relevant legislation, and the Registrar's general discretion. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applied-for trade mark was substantially identical or deceptively similar to ABB's registered trade marks, whether ABB's registered goods or services were similar to ABB Grain's applied-for goods or services, and whether there had been honest concurrent use or prior continuous use of the applied-for mark by ABB Grain. The delegate was required to determine if the grounds of opposition under sections 44, 58, and 60 were made out, and if so, whether to exercise the Registrar's discretion to allow registration subject to conditions or limitations.

In assessing substantial identity, the delegate compared the marks side-by-side, considering their similarities and differences and the overall impression. The delegate found that the applied-for mark and ABB's registered marks, which comprised the letters "ABB" in a block font, were substantially identical. This finding of substantial identity also meant the mark was deceptively similar. The delegate then considered whether ABB's registered services in Class 42, specifically those relating to the resale of agricultural products, were closely related to ABB Grain's applied-for goods in Class 31, which included various grains. The delegate concluded that there was sufficient overlap between ABB's registration for the resale of agricultural products and ABB Grain's application for grains to satisfy this element of section 44.

The delegate found that the applied-for trade mark was substantially identical to ABB's registered trade marks and that ABB's registered services were closely related to ABB Grain's applied-for goods. Consequently, the delegate upheld the opposition under section 44. As the opposition was successful on this ground, the delegate did not proceed to consider the remaining grounds of opposition or the exercise of discretion. The application for registration of the trade mark was rejected.