Horizons (Asia) Pty Ltd v Enagic Co., Ltd

This matter concerned an opposition by Enagic Co., Ltd (the Opponent) to the registration of a trade mark by Horizons (Asia) Pty Ltd (the Holder). The dispute centred on whether the Holder's trade mark application should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to its substantial identity or deceptive similarity to the Opponent's registered trade mark, KANGEN, and an application to register the same mark. The proceedings were heard by a Hearing Officer.

The primary legal issue before the Hearing Officer was to determine whether the Holder's trade mark application should be rejected on the grounds that it was substantially identical with, or deceptively similar to, the Opponent's registered trade mark, and whether the priority date of the Holder's application was not earlier than that of the Opponent's trade mark. The Hearing Officer also considered the relevance of other disputes between the parties and the classification of goods in relation to the trade mark comparison.

The Hearing Officer reasoned that section 44 of the Act requires the opponent to demonstrate an earlier priority date for their trade mark. In this instance, the Holder's trade mark had an earlier priority date than the Opponent's application, rendering the latter irrelevant for the purposes of section 44. The comparison was therefore confined to the Holder's trade mark and the Opponent's registered trade mark. Crucially, the Hearing Officer found that the goods in respect of which the Holder sought registration were not the same or of the same description as the goods covered by the Opponent's registration, and therefore the trade marks could not be compared under section 44. The Hearing Officer also noted that the Opponent had not established any of its grounds of opposition.

Consequently, the Hearing Officer directed that protection of the Holder's trade mark be extended to Australia in respect of all the goods, subject to any appeal. The Opponent was ordered to pay the Holder's costs.