Nylex Corporation Pty Ltd v Nylacast Limited

Nylex Corporation Pty Ltd (the applicant) sought to register the trade mark NYLACAST, while Nylacast Limited (the opponent) opposed this application. The dispute concerned whether the applicant's proposed trade mark was deceptively similar to the opponent's existing registered trade marks, and whether the use of NYLACAST would cause deception or confusion in the marketplace. The decision was made by a delegate of the Registrar of Trade Marks based on the written evidence submitted by both parties.

The primary legal issues before the delegate were whether the applicant's trade mark NYLACAST was deceptively similar to any of the opponent's registered trade marks under section 44 of the *Trade Marks Act 1995* (Cth), and whether the opponent's trade marks had acquired a reputation in Australia sufficient to establish an association with the applicant's goods under section 60 of the Act. The opponent also contended that the use of NYLACAST would lead to deception and confusion due to its established family of "NYLA" trade marks.

The delegate found that while the opponent had used some of its "NYLA" trade marks, it had not provided sufficient evidence to establish a reputation in Australia for these marks at the priority date of the application, thus failing the test under section 60. However, the delegate determined that the applicant's trade mark NYLACAST was deceptively similar to some of the opponent's registered trade marks under section 44. Despite this finding, the delegate also acknowledged that the applicant had used its trade mark honestly and concurrently with the opponent's registered marks for certain goods.

Consequently, the delegate directed that the applicant's trade mark application could proceed to registration, provided that the specified goods were amended to "Cast nylon, self-lubricating cast nylon and lubricated cast nylon," and an endorsement stating that the provisions of subsection 44(3) applied was added to the application. Registration was to occur one month after the decision, unless a notice of appeal was filed, in which case registration would be stayed pending the outcome of the appeal.