American Power Conversion Corporation v Tecom Resources Pty Ltd

This matter concerned an opposition to a trade mark application brought by American Power Conversion Corporation (the opponent) against Tecom Resources Pty Ltd (the applicant). The dispute arose from the applicant's attempt to register a trade mark, which the opponent alleged was substantially identical to its own registered trade mark and likely to cause deception or confusion. The hearing was conducted by Jock McDonagh, a delegate of the Registrar of Trade Marks.

The primary legal issues before the court were whether the applicant was the owner of the trade mark, as required by section 58 of the relevant Act, and whether the registration of the applicant's mark should be opposed on grounds relating to sections 42, 44, and 60, which were not elaborated upon in the provided text but were pressed by the opponent. The opponent also contended that the applied-for trade mark was substantially identical to its own registered mark and that its use would be likely to deceive or cause confusion.

The delegate found that the opponent had established a reputation for its "APC" trade mark in Australia prior to the applicant's priority date. Applying principles from cases such as *Re Hicks’ Trade Mark* and *ABB Asea Brown Boveri Ltd v ABB Grain Ltd*, the delegate determined that the opponent's registered mark and the applicant's applied-for mark were substantially identical. Crucially, the delegate was satisfied that the use of the applied-for trade mark would be likely to deceive or cause confusion, thereby establishing the grounds of opposition.

Consequently, the delegate refused to register the applicant's trade mark, Application number 870245. The opponent was awarded costs against the applicant.