Castrol Limited

This decision concerns trade mark applications by Castrol Limited for the plain text words "LIQUID ENGINEERING". The Hearing Officer, Bianca Irgang, was required to determine whether these applications should be accepted for registration, notwithstanding objections under section 44 of the relevant Act, which typically prevents registration of marks identical or deceptively similar to existing registered marks.

The primary legal issues before the Hearing Officer were whether Castrol Limited could overcome the section 44 objection by relying on the provisions of honest concurrent use under section 44(3)(a) or by demonstrating that other circumstances made acceptance proper under section 44(3)(b). The Hearing Officer also had to consider whether Castrol's ownership of other trade marks incorporating "LIQUID ENGINEERING" granted it rights in the plain text words themselves.

The Hearing Officer found that Castrol Limited had not provided sufficient evidence of its use of the plain text words "LIQUID ENGINEERING" as trade marks, thus precluding reliance on honest concurrent use. Furthermore, the Hearing Officer determined that Castrol's existing registrations, which included "LIQUID ENGINEERING" as part of composite marks with additional words, slogans, and device elements, did not confer ownership or rights in the plain text words alone. Consequently, the Hearing Officer was not satisfied that the circumstances made it proper to accept the plain text trade marks for registration under section 44(3)(b).

As a result, the Hearing Officer refused to extend protection to IRDA 1029988 for the trade mark "LIQUID ENGINEERING" in respect of all goods listed in classes 1 and 4, finding a ground for rejection under section 44. However, protection was extended to IRDA 1116301 for services listed in classes 37 and 42 only.