Jae Hwan Kim v Wilson Sporting Goods Company

This matter concerns an opposition by Wilson Sporting Goods Company (the opponent) to the registration of a composite word and device trade mark application by Jae Hwan Kim (the applicant) for "Watches, clocks, and other time pieces, and their parts" in Class 14. The applicant filed the application on 13 May 1996, which was accepted and advertised. The opponent filed a notice of opposition on 19 August 1997, citing numerous grounds under the *Trade Marks Act 1995*. The decision was made by a delegate of the Registrar of Trade Marks based on written submissions and evidence, as neither party requested a hearing.

The primary legal issues before the delegate were whether the applicant's trade mark should be rejected on the grounds that the applicant was not the owner of the trade mark (s.58), that its use would be contrary to law (s.42(b)), that it was substantially identical or deceptively similar to a registered trade mark for similar goods (s.44), or that it was substantially identical or deceptively similar to a trade mark that had acquired a reputation in Australia, such that its use would be likely to deceive or cause confusion (s.60). The opponent also raised several other grounds, but these were not pursued or supported by evidence.

The delegate found that the opposition failed on all grounds. Regarding ownership (s.58), the delegate determined that the applicant's mark, comprising the words "WIMBLEDON WATCH - CLOCK COMPANY" and a tennis racquet device with a letter "W" on it, was not substantially identical to the opponent's mark, which was a stylised letter "W". The delegate concluded that the overall impression of the marks was one of dissimilarity. For the ground under s.42(b), the delegate noted that an allegation of copyright infringement was beyond the Registrar's competence. On the ground of deceptive similarity under s.44, the delegate found that the applicant's and opponent's marks were neither substantially identical nor deceptively similar, applying tests that considered imperfect recollection and the overall impression of the marks. Furthermore, the delegate found that the applicant's goods (timepieces) were not similar to the opponent's goods (sporting equipment and apparel) in classes 25 and 28. Finally, for the ground under s.60 concerning reputation, the delegate found that as the marks were not substantially identical or deceptively similar, this ground also failed.

Consequently, the delegate dismissed the opposition in its entirety.