Citizen Tokei Kabushiki Kaisha v Micro Forte Pty Limited

This matter came before Claudia Murray, a delegate of the Registrar, in Canberra, concerning an opposition by Citizen Tokei Kabushiki Kaisha (the opponent) to a trade mark application by Micro Forte Pty Limited (the applicant). The opponent sought to reject the applicant's trade mark application based on grounds including sections 42, 43, 44, and 60 of the *Trade Marks Act 1995* (Cth). The opponent's opposition was supported by a statutory declaration detailing the history and extensive use of its CITIZEN trade mark in Australia and internationally across various goods.

The legal issues before the delegate included whether the applicant's proposed use of its trade mark would be contrary to law under section 42, specifically by contravening section 52 of the *Trade Practices Act 1974* (Cth) (misleading or deceptive conduct) or section 120 of the *Trade Marks Act 1995* (infringement of registered trade marks), or by constituting passing off at common law. Additionally, the delegate was required to consider grounds relating to deceptive similarity under sections 44 and 60 of the *Trade Marks Act 1995*.

The delegate found that the opponent had not succeeded on any of the grounds pursued. Specifically, the delegate determined that the opponent's registrations, relied upon for the section 44 and section 60 grounds, were not deceptively similar to the applicant's trade mark, thus preventing success on those grounds. As the opponent failed to establish any of the grounds of opposition, the delegate ordered that the trade mark application could proceed to registration, subject to any appeal. The opponent was also ordered to pay the applicant's costs.