Nissan Chemical Corporation v PCT Holdings Ltd

This matter concerned an opposition by Nissan Chemical Corporation to the registration of the trade mark "SUREFIRE TEMPRA" (application number 2084189 in class 5) by PCT Holdings Ltd. The opposition was heard by Nicholas Butson.

The primary legal issues before the court were whether the applicant's trade mark, "SUREFIRE TEMPRA," was substantially identical with or deceptively similar to any registered trade mark of the opponent, and whether the goods for which registration was sought were identical or similar to those covered by the opponent's trade mark, pursuant to section 44 of the *Trade Marks Act 1995* (Cth). The court also considered whether the use of the "SUREFIRE" brand by the applicant, as evidenced by declarations and exhibits, constituted use of the applied-for trade mark.

The court found that while the applicant had provided evidence of using the "SUREFIRE" brand, the examples of marketplace use, particularly concerning packaging, showed significant differences in font, size, and separation between "SUREFIRE" and "TEMPRA." These differences were considered to substantially affect the identity of the trade mark as applied for, creating an impression of the two words being separate. Consequently, the court determined that this did not constitute use of the applied-for trade mark. However, the court also noted that the question of use was not central to the decision. Crucially, the opponent had not established a ground of opposition under section 44.

Accordingly, the court decided that the opposition was not established and the applicant's trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. The court also awarded costs against the opponent.