Re: Opposition by Bayerische Motoren Werke Aktiengesellschaft to registration of trade mark application number 1924083 (class 9) in the name of Electracom Pty Ltd

Bayerische Motoren Werke Aktiengesellschaft (the Opponent) opposed the registration of trade mark application number 1924083 in class 9 by Electracom Pty Ltd (the Applicant). The matter was heard by M. Cooper as a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the Applicant's trade mark should be rejected under section 44(1) of the *Trade Marks Act 1995* (Cth) due to its substantial identity with or deceptive similarity to a registered trade mark, and whether the goods covered by the application were similar to those covered by the Opponent's prior registered mark. The Opponent also raised a ground under section 60, but this was not pressed. The relevant date for assessing these grounds was the filing date of the opposed application, 3 May 2018.

The Opponent relied on its registered trade mark 1685240, referred to as the "Opponent's Roundel mark," which covers goods including "apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity" in class 9. The Opponent contended that the broad specification of goods in the Applicant's application, including "Electrical control equipment," directly overlapped with its prior registered mark. The Applicant argued that the goods were different, specifically distinguishing between 12v DC equipment for motor vehicles and 240v AC equipment. The delegate found that the Opponent's Roundel mark was registered prior to the Applicant's application and had broad coverage. Considering the broad specification of the Applicant's goods, the delegate was satisfied that, at least in part, the goods were encompassed by and relevantly similar to those covered by the Opponent's Roundel mark.