Scales and Systems Pty Ltd v Sartek Pty Ltd

This decision concerns an opposition by Sartek Pty Ltd to the trade mark application for SASTEK by Scales and Systems Pty Ltd, filed on 31 January 1989, for goods in class 9, including automated and computerised systems for processing and packaging foods, and process control systems. The opposition was based on grounds including defective proprietorship due to alleged lack of intention to use the mark on all specified goods or prior use of other marks, conflict with prior registrations, and deception or confusion with existing trade marks.

The delegate was required to determine whether the applicant had a bona fide intention to use the SASTEK mark on all the goods specified in its application, whether the applicant's claim to proprietorship was defeated by prior use of other marks, and whether the SASTEK mark was deceptively similar to any registered trade marks, particularly ASTEC, or likely to cause deception or confusion in the marketplace. The delegate also considered whether to entertain the ground of opposition under section 33 of the Trade Marks Act 1955, despite it not being explicitly raised in the notice of opposition.

The delegate reasoned that the applicant's assertion of intention to use the mark was prima facie evidence, and the opponent had not provided sufficient evidence to displace this. Regarding prior use, the delegate found no evidence of use of the opponent's SARTEK mark prior to the application date and noted that the ASTEC mark, while registered, had no evidence of use in Australia. In assessing deceptive similarity under section 33, the delegate considered both visual and aural aspects, concluding that while the marks shared common elements, the differences, particularly in visual presentation and the context of sophisticated goods being ordered, meant that deception or confusion was not reasonably probable. The delegate also found that the opponent had failed to establish a conflicting reputation for its SARTEK mark under section 28, as required to prove deception or confusion.

Consequently, the opposition was dismissed, and the application for the SASTEK trade mark was directed to proceed to registration. Costs were awarded to the applicant.