Sushi King Pty Ltd v Sushi Kin Sdn BHD

Sushi King Pty Ltd (the applicant) sought to register the trade mark "SUSHI KIN" in class 43 for restaurant services. Sushi Kin Sdn Bhd (the opponent) opposed this registration, arguing that the proposed mark was deceptively similar to its own registered trade mark "SUSHI KIN" (also in class 43), and that registration would be contrary to section 60 of the *Trade Marks Act 1995* (Cth) due to the opponent's prior use of its mark. The matter came before Ian Thompson, sitting as delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant's proposed trade mark "SUSHI KIN" was deceptively similar to the opponent's registered trade mark "SUSHI KIN" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). A secondary issue, arising if deceptive similarity was found, was whether the opponent had established prior use of its mark such that registration of the applicant's mark would be contrary to section 60 of the Act.

In determining deceptive similarity, the delegate applied the established principles, including the "imperfect recollection" test and the consideration of visual, aural, and conceptual similarities. The delegate found that the marks were visually and aurally identical, and conceptually they conveyed the same meaning. Consequently, the delegate concluded that the marks were deceptively similar. Given this finding, the delegate then considered section 60. The opponent provided evidence of its use of the "SUSHI KIN" trade mark in Australia prior to the applicant's filing date. The delegate found this evidence sufficient to establish prior use.

Accordingly, the delegate upheld the opposition and refused the registration of the applicant's trade mark.