Krone AG v Brook (t/as Cannon Watch Co)

This decision concerns an opposition by Krone Aktiengesellschaft ("the opponent") to the registration of trade mark application number 547038, filed by R. and R.J. Brook trading as The Cannon Watch Company ("the applicant"). The applicant sought to register the word mark KRONE for "watches and clocks," a scope later restricted to "watches" only. The opponent, which sells information display systems that may incorporate timekeeping functions, argued that it had prior use of the identical mark KRONE in Australia since approximately 1986. The applicant commenced use of the mark later, but exclusively for watches. The matter came before a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the opponent had established proprietorship of the mark KRONE under section 40 of the *Trade Marks Act 1955* (Cth) by virtue of prior use on goods of the same description as watches, and whether the applicant's proposed registration conflicted with the opponent's existing registrations under section 33 of the Act. The opponent contended that its use of KRONE on information systems constituted use on "goods of the same description" as watches, thereby preventing the applicant's registration.

The delegate found that the opponent's argument regarding proprietorship, based on prior use on goods of the same description, must fail. Drawing on established principles from cases like *Aston v Harlee* and *Shell Co. of Australia Ltd v Rohm and Haas Co*, the delegate noted that proprietorship can be founded on authorship, intention to use, and application for registration, even for unused marks. However, the delegate distinguished the present case by focusing on the infringement test under the *Trade Marks Act 1955*, which requires the mark to be applied to goods specified in the registration for infringement to occur. The delegate concluded that the opponent's prior use on information systems did not establish a right that would be interfered with by the applicant's registration for watches, as these were not the same goods. Furthermore, regarding section 33, the delegate considered the opponent's registration for "information systems" and concluded that, despite the potential for confusion due to identical marks, watches and information systems were not "goods of the same description" when assessed from a business and commercial perspective, considering their different markets and essential purposes.

Consequently, the opposition was dismissed. The delegate directed that the application be registered, and made no award as to costs, finding that both parties had achieved a degree of success in the proceedings.