National Distillers and Chemicals v Emery Chemicals Pty Ltd

This matter concerned a trade mark application by National Distillers and Chemical Corporation for the mark EMERY, accepted for chemicals used in industry. Emery Chemicals Pty Limited opposed this application, alleging grounds under sections 24, 28, 33, and 40 of the *Trade Marks Act 1955*. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the opposition grounds, particularly those relating to section 33 of the *Trade Marks Act 1955*, were substantiated. Section 33 requires that a trade mark not be registered if it is substantially identical with or deceptively similar to an earlier trade mark for which the opponent is the proprietor, and the goods are the same or of the same description. Emery Chemicals relied on a list of eleven trade marks, but most had lapsed or were lodged after the subject application. The delegate focused on one live, earlier registration, number 292672, for the mark emer-clad, registered for coatings.

The delegate reasoned that the trade marks EMERY and emer-clad were neither substantially identical nor deceptively similar. Applying the standard tests, the delegate found that the words differed in appearance, sound, and meaning. Regarding deceptive similarity, the delegate considered the common meanings of "emery" and the limited dictionary and electoral roll evidence for "emer," concluding that in the Australian context, particularly for purchasers of coating materials, "emer" in "emer-clad" was unlikely to be perceived as an abbreviation for emergency or a surname, and was more likely to be seen as an invented element. Consequently, the delegate found no deceptive similarity, even under the test of imperfect recollection. As this ground failed, and other grounds were unsubstantiated, the opposition was dismissed.