Prokit's Industries Co Ltd v Pro-Kit Pty Ltd

Prokit's Industries Co Ltd (the applicant) sought to register the trade mark "PRO-KIT" in relation to a range of goods including cleaning preparations, detergents, and polishing preparations. Pro-Kit Pty Ltd (the opponent) opposed this registration, arguing that the proposed mark was deceptively similar to its own registered trade mark "PROKIT" (word mark) and "PROKIT" (device mark), both registered for similar goods. The hearing officer was tasked with determining whether the applicant's proposed trade mark should be registered, considering the opposition.

The central legal issue before the hearing officer was whether the applicant's proposed trade mark "PRO-KIT" was deceptively similar to the opponent's registered trade marks "PROKIT" and "PROKIT" (device mark) for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved assessing the degree of visual, phonetic, and conceptual resemblance between the marks, as well as considering the nature of the goods in relation to which the marks were used.

The hearing officer found that the marks were deceptively similar. The visual and phonetic similarities were significant, with the only difference being the hyphen in the applicant's mark, which was considered a minor distinction. Conceptually, both marks conveyed a similar idea of a "professional kit" or "kit for professionals." Given the high degree of similarity between the marks and the overlap in the goods for which they were to be used, the hearing officer concluded that there was a real likelihood of deception or confusion among consumers.

Consequently, the hearing officer upheld the opposition and refused the applicant's application for registration of the trade mark "PRO-KIT".