Hunt Holdings, Inc v Xact-Design & Engineering Pty Ltd

This matter concerned an opposition by Hunt Holdings, Inc. (the opponent) to the registration of the trade mark "XACT-TOOL" by Xact-Design & Engineering Pty Ltd (the applicant). The opposition was heard by Heath Wilson, acting as a delegate of the Registrar of Trade Marks. The opponent primarily relied on grounds of opposition under sections 44, 59, and 60 of the relevant Act, although other grounds were initially cited.

The court was required to determine whether the opponent had established any of the grounds of opposition on the balance of probabilities. Specifically, the court had to assess whether the applicant's trade mark was substantially identical or deceptively similar to the opponent's registered trade mark, as required by sections 44 and 60 of the Act. The court also considered the application of section 59, though the specific details of this ground were not elaborated upon in the provided text.

In relation to section 44, the court applied the test for deceptive similarity as established in *Australian Woollen Mills Ltd v F. S. Walton and Company Ltd*, which requires an assessment of the impression produced on potential customers rather than a side-by-side comparison. The court found that the marks "XACT-TOOL" and the opponent's mark were not substantially identical and, applying the established test, concluded they were not deceptively similar. This finding also meant that the threshold requirement for section 60, which also necessitates substantial identity or deceptive similarity, was not met. Consequently, the grounds of opposition under sections 44 and 60 were not established.

As the opponent failed to establish any grounds of opposition, the Registrar decided to allow the trade mark application to proceed to registration. The applicant was awarded costs against the opponent, to be assessed according to the Official Scale.