Dynapac International Adtiebolag v Kobelco Construction Machinery Co, Ltd

This matter came before the Hearing Officer of the Trade Marks Hearings, Alison Windsor, concerning an opposition to the registration of the trade mark DYNASPEC. The opponent, Dynapac International Adtiebolag, sought to prevent the registration of the mark by the holder, Kobelco Construction Machinery Co, Ltd, arguing it was deceptively similar to its own registered trade mark, DYNAPAC. The opponent's opposition was based on grounds including the likelihood of confusion arising from the similarity of the marks.

The primary legal issue before the Hearing Officer was whether the trade mark DYNASPEC was deceptively similar to the opponent's registered trade mark DYNAPAC, such that its use would be likely to deceive or cause confusion among the relevant public. This assessment was to be undertaken in light of the opponent's established reputation in Australia for its compaction and paving equipment sold under the DYNAPAC mark since 1971. The opponent contended that the structural and phonetic similarities between the marks, coupled with the nature of the industry and potential for confusion in noisy environments, created a significant risk of deception.

The Hearing Officer found that while the opponent had established a reputation in Australia for its specialist products, this reputation did not lead to a likelihood of confusion once the holder entered the market. The core of the decision rested on the finding that the trade marks under consideration were not deceptively similar, which was deemed the threshold test. Even when considering the opponent's reputation, the likelihood of confusion was assessed as slight. Consequently, the ground of opposition under section 60 of the relevant Act was not established.

As neither of the grounds of opposition pursued at the hearing were established, the opposition was unsuccessful. Accordingly, protection was to be extended in Australia in respect of all goods listed in the International Registration Designating Australia (IRDA) for the trade mark DYNASPEC, one month from the date of the decision, unless an appeal was lodged.