Nissan Jidosha Kabushiki Kaisha v Woolworths Limited

This decision concerns an opposition by Nissan Jidosha Kabushiki Kaisha ("Nissan Jidosha") to an application by Woolworths Limited ("Woolworths") to register the trade mark "infiniti" for clocks and watches. Nissan Jidosha, a Japanese automobile manufacturer, argued that it had prior use of the identical trade mark "infiniti" for luxury motor vehicles, which included clocks as a component. Woolworths filed its application in October 1995, and commenced use of the mark on watches in February 1996.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether Nissan Jidosha could establish proprietorship of the trade mark under section 58 of the *Trade Marks Act 1995* based on prior use, and whether the registration should be opposed under section 60 of the Act due to a likelihood of deception or confusion arising from Nissan Jidosha's prior reputation. For the section 58 ground, the delegate considered whether Nissan Jidosha's use of "infiniti" on luxury motor vehicles constituted use on goods that were the "same kind of thing" as clocks and watches. For the section 60 ground, the delegate assessed whether Nissan Jidosha had acquired a sufficient reputation in Australia by the priority date of Woolworths' application to cause deception or confusion.

Regarding the section 58 ground, the delegate found that while Nissan Jidosha had used the identical trade mark "infiniti" prior to Woolworths' application date, its use was in relation to luxury motor vehicles. The delegate determined that clocks, as a component of these vehicles, were not the "same kind of thing" as standalone clocks and watches in the context of trade mark law, and that Nissan Jidosha had not established itself as being in the business of selling clocks or watches. Consequently, the section 58 ground failed. On the section 60 ground, the delegate concluded that despite Nissan Jidosha's promotional activities and sales of luxury vehicles, the evidence did not demonstrate a sufficient reputation in Australia by October 1995 to create a real risk of deception or confusion regarding the source of clocks and watches bearing the "infiniti" mark.

As Nissan Jidosha failed to establish either the section 58 or section 60 grounds for opposition, and no other grounds were pursued, the opposition was dismissed. The delegate directed that Woolworths' trade mark application could proceed to registration and awarded costs to Woolworths.