Tecmo Kabushiki Kaisha v Tokyo Denki Kabushiki Kaisha

This decision concerns an opposition by Tokyo Denki Kabushiki Kaisha ("the opponent") to the registration of the trade mark TECMO by Tecmo Kabushiki Kaisha ("the applicant") for computer hardware, printers, visual display units, microcomputers, software, and related amusement apparatus and accessories, all within Class 9. The opponent relied on its registered trade marks comprising the word TEC for goods including computers, computer terminals, and electronic equipment. The opposition was brought under section 33 of the Act, alleging that the applicant's mark was substantially identical or deceptively similar to the opponent's registered marks, likely to deceive or cause confusion.

The delegate was required to determine whether the applicant's trade mark TECMO was substantially identical to or deceptively similar to the opponent's trade mark TEC, in accordance with section 33 of the Act. The opponent argued that TECMO incorporated TEC entirely, retaining its distinct sound, appearance, and meaning, and that the suffix "MO" served as a qualifier. The applicant contended that the trade mark landscape for goods in Class 9 was crowded with marks beginning with "TEC," "TECH," or "TEK," necessitating a limited scope of monopoly for such registrations, and that purchasers would be able to differentiate between the marks.

The delegate applied the test for substantial identity from *Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd*, comparing the marks side by side and assessing the overall impression. The delegate found that TECMO and TEC were not substantially identical, noting the clear enunciation of both syllables in TECMO. Regarding deceptive similarity, the delegate considered the principle of imperfect recollection and the nature of the goods, which involved significant expenditure and thus likely careful purchasing decisions. The delegate also rejected the opponent's submission that "MO" qualified "TEC" as an obsolete definition from the Shorter Oxford Dictionary, viewing TECMO as an invented word. The delegate concluded that, given the crowded field of similar marks and the careful purchasing habits for such goods, there was no reasonable likelihood of deception or confusion.

Consequently, the delegate found that the applicant's trade mark was neither substantially identical nor deceptively similar to the opponent's registered trade mark. As the opponent relied exclusively on this ground, the opposition was dismissed, and the applicant's trade mark was directed to proceed to registration, with costs awarded to the applicant.