Seiko Kabushiki Kaisha v Asahi Seiko Co., Ltd

This matter concerned an opposition by Seiko Kabushiki Kaisha (Seiko Corporation) to the registration of the trade mark application "AsahiSeiko" filed by Asahi Seiko Co., Ltd. The application sought registration for a range of money handling apparatus and related parts in Class 9. Seiko Corporation, a well-established Japanese company with extensive use and registration of the "Seiko" trade mark in Australia for goods including watches and clocks since the 1960s, opposed the application on several grounds. The opposition was heard by the Registrar of Trade Marks.

The primary legal issues before the Registrar were whether the proposed "AsahiSeiko" mark was substantially identical with or deceptively similar to existing "Seiko" trade marks owned by Seiko Corporation, and whether the applicant was entitled to registration. Specifically, Seiko Corporation relied on grounds relating to trade mark similarity under section 44 of the *Trade Marks Act 1995*, the absence of honest concurrent use or other justifying circumstances under subsections 44(3) and 44(4), and the applicant's entitlement to apply for the mark under section 58. The Registrar also considered the ground of deceptive similarity to a trade mark with a reputation in Australia under section 60.

The Registrar found that the trade mark "AsahiSeiko" was deceptively similar to several registered "Seiko" trade marks owned by Seiko Corporation, considering the appearance, sound, and idea conveyed by the marks. The Registrar noted that while "Asahi" is a distinct word, the prominent inclusion of "Seiko" in the applicant's mark, particularly given the widespread recognition of the "Seiko" brand, created a likelihood of confusion. However, the Registrar then considered whether the application could proceed under the provisions for honest concurrent use. Applying the established tests, the Registrar found that Asahi Seiko's use of the mark was honest, and that the duration, area, and volume of its use were sufficient. While acknowledging a potential for confusion, the Registrar found that the specialist nature of the goods and the target market mitigated this risk, and that instances of actual confusion were not significant.

Ultimately, the Registrar determined that while the "AsahiSeiko" mark was deceptively similar to existing "Seiko" marks, the circumstances justified allowing registration under the provisions for honest concurrent use. The Registrar concluded that the application, subject to any conditions or limitations deemed fit, could proceed.