Electra Consumer Products v Agnews Pty Limited

Electra Consumer Products Limited (the opponent) opposed the registration of the trade mark application "THE ELECTRA FYRE BY AGNEWS" filed by Agnews Pty Limited (the applicant) for electric coal fire heaters. The opposition was heard by a delegate of the Registrar of Trade Marks.

The delegate was required to determine the opposition on the grounds that the applied-for mark was not capable of distinguishing the applicant's goods (section 41 of the *Trade Marks Act 1995*), was likely to deceive or cause confusion (section 43), was identical or deceptively similar to a registered trade mark for similar goods (section 44), and was deceptively similar to a trade mark that had acquired a reputation in Australia (section 60).

Regarding section 41, the delegate found that the opponent had not provided sufficient evidence to substantiate its claim that the mark was not capable of distinguishing the applicant's goods, noting that the capability of a mark to distinguish is assessed in relation to the goods themselves, not by comparison with another trader's use. The section 43 ground was dismissed as there was nothing inherent in the mark likely to deceive or cause confusion. However, under section 44, the delegate found that the applicant's goods (electric coal fire heaters) and the opponent's registered goods (air conditioners) were of the same description, sharing common purposes, being electrical goods, and likely to be sold in similar retail environments. Crucially, the delegate determined that the trade marks were deceptively similar, primarily due to the prominent and unusual use of the word "ELECTRA" in both marks, leading to a likelihood that consumers would believe they originated from the same trade source. The delegate also found that the opponent's mark had acquired a reputation in Australia by the priority date of the application, satisfying the requirements of section 60.

Consequently, the opposition was upheld on the grounds of sections 44 and 60 of the *Trade Marks Act 1995*, and the application for registration of the trade mark was rejected.