C I Kasei Co Ltd v PGM Group Pty Ltd

C I Kasei Co Ltd (Kasei) opposed the registration of the trade mark HYDRA-TITE, filed by PGM Group Pty Ltd (PGM) for use on thermoplastic waterproof membranes in class 19. The opposition was heard by a delegate of the Registrar of Trade Marks. Kasei advanced seven grounds of opposition, but ultimately relied on sections 42(b), 44, 55, and 60 of the *Trade Marks Act 1995* (Cth), having abandoned the first ground and finding the s.58 ground to be made out. PGM did not appear at the hearing.

The delegate was required to determine whether the use of the HYDRA-TITE mark would be contrary to law under s.42(b), whether it was substantially identical or deceptively similar to Kasei's registered mark HYDROTITE (registration number 385180, priority date 15 December 1982) for similar goods under s.44, whether the applicant was the owner of the mark under s.58, and whether Kasei had acquired a reputation in Australia such that the applicant's mark would be likely to deceive or cause confusion under s.60.

The delegate dismissed the opposition under s.42(b), finding that the evidence did not establish on the balance of probabilities that use of the mark would be contrary to s.52 of the *Trade Practices Act 1974* (Cth), noting the specialised nature of the products and the lack of evidence of actual confusion. However, the delegate upheld the opposition under s.44, finding the marks HYDRA-TITE and HYDROTITE to be substantially identical and the goods to be similar. The delegate also upheld the opposition under s.58, concluding that Kasei, as the first user of the substantially identical mark HYDROTITE in Australia for similar goods, was the true owner. The delegate did not find the s.60 ground to be made out, as the evidence did not satisfy the delegate that Kasei had achieved a reputation to the extent of a real risk of deception or confusion. Consequently, the delegate refused the registration of the trade mark application and ordered PGM to pay Kasei's costs.