Hamdard Laboratories (WAQF) Pakistan v Hamdard National Foundation (India)

This matter concerned an opposition by Hamdard National Foundation (India) against the registration of a trade mark by Hamdard Laboratories (WAQF) Pakistan. The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth). The Hearing Officer, Bianca Irgang, was required to determine whether the grounds of opposition were established.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark was substantially identical with, or deceptively similar to, a trade mark registered by the opponent in respect of similar goods or closely related services, and whether the priority date of the opponent's trade mark was earlier, as stipulated by section 44 of the Act. The opponent relied on its registered trade mark ROOH AFZA. The Hearing Officer also considered whether the goods in question were of the "same description" or "same kind of thing" for the purposes of section 44.

The Hearing Officer found that the opponent had established the ground of opposition under section 44 in relation to the majority of the goods in Class 5. Specifically, the Hearing Officer was satisfied that the opponent's SAFI and JOHSINDA products were of the same description as certain goods in Class 5, and that the opponent's ROOH AFZA product was of the same description as certain goods in Class 32. However, the Hearing Officer was not satisfied that these products were the "same kind of thing" as the water products the applicant sought to register.

Following the finding that the section 44 ground was established for the majority of goods in Class 5, the applicant was given an opportunity to amend its trade mark specification by deleting the conflicting goods. The applicant elected to do so. Consequently, the Hearing Officer decided to accept the trade mark application for possible registration in respect of the amended specification. The opponent, having been successful in establishing the section 44 ground, was awarded costs against the applicant.