Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3)

Enagic Co Ltd, the owner of a registered trade mark for the word "KANGEN" in relation to certain goods, appealed against the decision of the Registrar of Trade Marks to accept for registration the same word mark in relation to services. The central issue was whether the goods and services were "closely related" under section 44 of the Trade Marks Act 1995 (Cth), and if not, whether the registration should be subject to a condition or qualification. Further, the court had to determine if Enagic was the owner of the mark in question, and whether the registration should be refused on the grounds of bad faith or contrary to law.

The court found that the goods and services were not closely related, and therefore, the registration should be refused unless subject to a condition or qualification. However, the court determined that Enagic was the owner of the mark in question, and the services were not the same kind of thing as the identified services. The court also found that the reputation of the mark in Australia had not been established, and the registration of the mark would not be contrary to law. However, the court found that the application for registration was made in bad faith due to the respondent's illegitimate conduct before and after the priority date. This finding was based on the respondent's failure to call witnesses to give evidence going to critical questions within their knowledge.

The appeal was allowed, and the decision of the delegate was set aside. The application for registration of the opposed mark was refused in its entirety, affected by the court's conclusions under section 62A of the Trade Marks Act 1995 (Cth). The parties were to be heard as to costs. The reasons for refusing Horizons' application for an adjournment would be published separately.