Ruud Lighting, Inc v Shanghai Edge Industry Co., Ltd

This matter concerned an opposition by Ruud Lighting, Inc. (the Opponent) to the extension of protection of an international registration to Australia, held by Shanghai Edge Industry Co., Ltd (the Holder). The Opponent sought to prevent the registration of the trade mark THE EDGE in relation to certain goods, arguing that it conflicted with its own registered trade mark of the same name. The hearing officer was Michael Kirov.

The legal issues before the court were whether the Opponent had established its grounds of opposition under sections 44 and 60 of the *Trade Marks Act 1995* (Cth). Specifically, the court had to determine if the Holder's proposed goods were substantially identical or deceptively similar to the Opponent's registered goods, and if the use of the Holder's mark would be likely to deceive or cause confusion in Australia. The Opponent also needed to establish its grounds on the balance of probabilities.

The hearing officer found that the Opponent had not established its section 60 ground of opposition. However, the Opponent had partially established its section 44 ground. The reasoning was based on an assessment of the similarity between the Opponent's goods (commercial and industrial luminaires for outdoor and indoor use) and the Holder's goods. The hearing officer considered evidence from the Opponent's President regarding the close relationship between the Opponent's goods and certain of the Holder's goods, such as light boxes, electronic notice boards, lighting ballasts, and solar batteries, noting that companies selling luminaires often also sold these related products.

Consequently, the hearing officer refused to extend protection of the international registration to Australia for the goods light boxes, electronic notice boards, light-emitting electronic pointers, advertising machines (automatic), lighting ballasts, and solar batteries. Protection was permitted to be extended for optical discs, electronic tags for goods, converters (electric), and inverters (electricity), subject to any appeal. No costs were awarded due to the Opponent's partial success.