Standards Australia Ltd v NHP Electrical Engineering Produsts Pty Ltd

Standards Australia Ltd (the opponent) opposed three trade mark applications by NHP Electrical Engineering Products Pty Ltd (the applicant). The dispute concerned the opponent's claim that the applicant's proposed use of the mark "ISO" in relation to electrical and electronic engineering products would be likely to deceive or cause confusion, contrary to section 42(b) of the *Trade Marks Act 1995* (Cth). The opponent asserted that "ISO" is a well-known mark internationally and within Australia, representing the International Organization for Standardization, of which the opponent is the Australian representative.

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the opponent had established that the applicant's trade mark applications would be likely to deceive or cause confusion. This required the delegate to consider the extent to which the "ISO" mark was known and used by the opponent, and whether the applicant's proposed use would create a misleading association with the International Organization for Standardization or the opponent.

The delegate considered evidence that the International Organization for Standardization (ISO) is a global body that promotes standardization, with its work published as International Standards. The opponent, as the Australian representative, plays a role in developing Australian standards and is responsible for protecting the "ISO" brand in Australia. The opponent argued that the "ISO" brand is widely recognised due to its extensive use in promoting and implementing ISO Standards. However, the delegate noted that the scope of ISO's work, as described in the evidence, excludes electrical and electronic engineering standards.

Ultimately, the delegate found that the opponent had not established the section 42(b) ground of opposition. Consequently, the delegate decided that the three trade mark applications could proceed to registration, subject to a direction that registration be stayed if a notice of appeal was filed.