FEDERAL COURT OF AUSTRALIA
Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180
Citation: Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180 Appeal from: Nexans S.A. v Nex 1 Technologies Co. Ltd [2011] ATMO 24 Parties: NEXANS S.A. v NEX 1 TECHNOLOGIES CO. LTD AND THE REGISTRAR OF TRADE MARKS File number: VID 301 of 2011 Judge: MURPHY J Date of judgment: 2 March 2012 Corrigendum: 6 March 2012 Catchwords: TRADE MARKS – Appeal from decision of Registrar of Trade Marks Legislation: Trade Marks Act 1995 (Cth) Cases cited: Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13
In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379
Johnson & Johnson v Kalnin [1993] FCA 210
London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264
McCormick and Company Inc v McCormick [2000] FCA 1335
Registrar of Trade Marks v Woolworths (1999) 93 FCR 365
Ruddock v Vardalis (No 2) (2001) 115 FCR 229
Rysta Ltd’s Application (1943) 60 RPC 87
Southern Cross Refrigerating co v Toowoomba Foundry Ltd (1954) 91 CLR 592
Suyen Corporation v Americana International Limited (2010) 187 FCR 169
William Bailey (Birmingham) Ltd’s Application (1935) 52 RPC 136Date of hearing: 30 November 2011 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 36 Counsel for the Applicant: I Horak Solicitor for the Applicant: Davies Collison Cave Law Counsel for the First Respondent: The First Respondent did not appear Counsel for the Second Respondent: B Fitzpatrick Solicitor for the Second Respondent: Australian Government Solicitor FEDERAL COURT OF AUSTRALIA
Nexans S.A. v Nex 1 Technologies Co. Ltd [2012] FCA 180
CORRIGENDUM
1.In the Appearances section on the cover page, the words “Counsel for the Respondent” should read “Counsel for the First Respondent, The First Respondent did not appear”.
2.In the Appearances section on the cover page, the words “Counsel for the Second Respondent, B Fitzpatrick” should be inserted.
3.In the Appearances section on the cover page, the words “Solicitor for the Respondent” should read “Solicitor for the Second Respondent”.
4.In the Orders, the word “First” should be inserted before “Respondent”.
5.In the Orders, the words “THE REGISTRAR OF TRADE MARKS Second Respondent” should be inserted after “First Respondent”.
6.In order 3, the words “The respondent pay the applicant’s costs” should read “The first respondent pay the applicant’s costs.”
7.In the Reasons for Judgment, the word “First” should be inserted before “Respondent”.
8.In the Reasons for Judgment, the words “THE REGISTRAR OF TRADE MARKS Second Respondent” should be inserted after “First Respondent”.
9.In paragraph 4 of the Reasons for Judgment, the last sentence should read “I have ordered that Nex 1 pay Nexans’ costs.”
10.In paragraph 21 of the Reasons for Judgment, the word “Maquarie” should be replaced with “Macquarie”.
11.In paragraph 36 of the Reasons for Judgment, the last sentence should read “I order the first respondent to pay the applicant’s costs.”
I certify that the preceding eleven (11) numbered paragraphs are a true copy of the…
Keep reading for free
Create a free CaseChat account to read Nexans S.A. v. Nex 1 Technologies Co. Ltd and more:
- Read every judgment in full
- Ask AI and get answers linked to paragraphs
- See how each paragraph was cited in later cases
- Download judgments as PDF or Word
One click creates your free account or signs you in.
By continuing you agree to the Terms and Privacy Policy.
- Case
- [2012] FCA 180
- Decision Date
CaseChat Overview and Summary
The court first considered the requirements of section 60 of the Trade Marks Act, which was amended in 2006 to allow opposition to trade mark registration even when the marks were not deceptively similar. The court noted that Nexans had to demonstrate that its trade marks had an earlier priority date, covered goods that overlapped with those of the "NEX1" trade mark, had acquired a reputation in Australia, and that the registration of the "NEX1" trade mark would likely deceive or cause confusion. The court found that Nexans had established an earlier priority date for its trade marks and that there was a sufficient overlap in the goods covered by the trade marks. Regarding the reputation of the Nexans trade marks, the court accepted that they had acquired a significant reputation in Australia, particularly among those in the industry dealing with communications and network cables. The court concluded that the use of the "NEX1" trade mark would likely deceive or cause confusion due to the established reputation of the Nexans trade marks.
In conclusion, the court allowed the appeal, set aside the Registrar's decision to register the "NEX1" trade mark, and ordered that the application be refused. Nex 1 Technologies Co. Ltd. was directed to pay the costs of the application.
Orders
Orders of the court
1. The appeal be allowed.
2. The decision of the delegate of the Registrar of Trade Marks of 30 March 2011 be set aside and Australian Trade Mark Application No 1165913 be refused.
3. The first respondent pay the applicant’s costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Section 42(b) provides:An application for the registration of a trade mark must be rejected if:…(b) its use would be contrary to law.CONSIDERATION UNDER S 60 OF THE ACT Section 60 of the Act was amended in 2006 to dispense with the requirement for a party opposing registration to show that the applicant’s trade mark is deceptively similar to the prior trade mark. Parliament thereby evinced the intention to allow opposition to registration even when the differences in the trade marks were not such that they were deceptively similar. The amendment had the effect of substantially widening the scope and application of s 60, making it possible to oppose registration of a trademark on the sole basis of the possible deception or confusion arising from the reputation of the existing trademark: Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) at [4.10]. It follows that meeting the requirements of s 60 is the lowest hurdle that Nexans must pass if it is to succeed in the appeal. For that reason I will deal first with the requirements of this section. In order for Nexans to succeed under the section it is necessary for it to show:(a)the NEXANS registration has an earlier priority date than the opposed application;(b)the NEXANS trade marks are in respect of goods which are also goods in respect of which the NEX1 Logo is sought to be registered; (c)the NEXANS trade marks have acquired a reputation in Australia amongst a significant section of the public; and(d)because of that reputation of the NEXANS trade marks the use of the NEX1 Logo would be likely to deceive or cause confusion.Does Nexans have an earlier priority date. In this case the pre-existing registration relied upon by Nexans are;(a)the Nexans word registration on 13 December 2000 (Australian Trade Mark No. 860431) in respect of the NEXANS Goods; and (b)the NEXANS Logo registration on 14 February 2001 (Australian Trade Mark No. 866141) also in respect of the NEXANS Goods.These registrations both pre-date by a number of years the application by Nex 1 to register the NEX1 Logo on 14 March 2007. Therefore, the first element of the grounds necessary for Nexans to successfully oppose registration is satisfied. Do the goods sold by Nexans overlap with the goods covered by the Nex 1 application. The overlap between the goods the subject of the NEXANS registration, and the goods in respect of which the NEX1 Logo is sought to be registered requires more attention. Nexans contends that the goods covered by the competing registrations overlap to a sufficient degree, but I note that there are some differences in the goods listed by the parties. For example some NEXANS Goods are not on the NEX 1 Goods list, and some NEX1 Goods are not on the NEXANS Goods list. However, I am satisfied that there is a sufficient degree of overlap between the NEX1 Goods and the NEXANS Goods for s 60 to be engaged, particularly in that both lists cover communications cables for electric, electronic and telecommunications use, network cables, and network connectors: see Southern Cross Refrigerating co v Toowoomba Foundry Ltd (1954) 91 CLR 592 at 606 (“Southern Cross”). Have the Nexans trade marks acquired a reputation in Australia.