NEC Corporation v Audioxtra International Pty Limited

NEC Corporation (the opponent) opposed the registration of the trade mark NEC ULTRACARE (the applicant) for computer maintenance and repair services (class 37). The dispute concerned whether the use of the applied-for trade mark would be likely to mislead or deceive consumers, thereby contravening provisions of the Trade Marks Act 1995 and the Trade Practices Act.

The primary legal issue before the Hearing Officer was to determine, on the balance of probabilities, whether the use of the trade mark NEC ULTRACARE in relation to automobile audio-visual entertainment equipment would cause, or be likely to cause, consumers to be misled or deceived. This required an assessment of whether there was a sufficient likelihood of confusion regarding the origin or commercial connection of the goods and services offered under the respective trade marks.

The Hearing Officer applied the test established in *Advantage Rent-A-Car*, which requires that use would, rather than could, be contrary to law. The evidence presented by the opponent indicated substantial use of the NEC trade mark on a range of goods, including mobile phones and related accessories for in-vehicle use, and that installation of these items required authorised NEC dealers. Conversely, the applicant's evidence suggested that the market segments for automobile audio-visual entertainment equipment and computers/mobile phones were clearly separated in consumer perception and through distinct sales and marketing channels, with different skill sets required for sales and installation. The Hearing Officer found that consumers would not be deceived or confused, and therefore, the grounds of opposition under sections 44 and 60 of the Trade Marks Act and section 52(1) of the Trade Practices Act were not established.

The Hearing Officer ordered that the opposition had not been established and that the trade mark application could proceed to registration one month from the date of the decision, subject to any appeal. The Hearing Officer also ordered that the opponent pay the applicant's costs.