Re Kabushiki Kaisha Nikken Sohonsha (Trading as Nikken Sohonsha Corporation)

This matter concerned an application by Kabushiki Kaisha Nikken Sohonsha, trading as Nikken Sohonsha Corporation, for the registration of a trade mark. The applicant sought to register the mark "NIKKEN" in relation to a range of goods and services, including but not limited to, "building materials, namely, insulation materials, soundproofing materials, fireproofing materials, waterproofing materials, and materials for building construction". The application was opposed by Nikken Australia Pty Ltd. The hearing officer's decision was appealed to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the hearing officer had erred in law in finding that the applicant's proposed trade mark "NIKKEN" was not deceptively similar to the opponent's registered trade mark "NIKKEN" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This involved an assessment of whether a consumer would be likely to be deceived or confused into believing that the goods or services offered by the applicant were the same as, or were connected with, the goods or services offered by the opponent.

The Court considered the principles of deceptive similarity as established in case law, focusing on the aural, visual, and conceptual aspects of the marks. It was noted that the marks were identical in spelling and pronunciation. The Court then examined the respective specifications of goods and services. The opponent's registration covered a broad range of building and construction related goods and services, including insulation, soundproofing, and fireproofing materials. The applicant's proposed specification also included these very categories of goods. The Court found that the hearing officer had placed undue emphasis on the potential for the applicant's mark to be used in a descriptive sense, rather than assessing the likelihood of deception or confusion in the marketplace given the identical nature of the marks and the overlapping specifications of goods.

The Federal Court allowed the appeal, finding that the hearing officer had erred in law. The Court set aside the hearing officer's decision and remitted the matter to the Registrar of Trade Marks for further consideration in accordance with the Court's reasons.