Teka Industrial SA v Deka Australia Pty Ltd

This matter concerned oppositions filed by Teka Industrial SA (the Opponent) against two Australian trade mark applications by Deka Australia Pty Ltd (the Applicant). The Opponent contended that its registered trade marks were similar to the Applicant's proposed marks and that the goods and services for which the Applicant sought registration were similar or closely related to those covered by the Opponent's registrations. The Opponent further argued that its mark had acquired a reputation in Australia, and therefore, the use of the Applicant's marks would likely cause confusion or deception. The Applicant broadly denied these allegations.

The court was required to determine two primary grounds of opposition. Firstly, whether the Applicant was the owner of the trade marks under section 58 of the *Trade Marks Act 1995* (Cth). Secondly, whether the Applicant's trade marks were substantially identical with, or deceptively similar to, the Opponent's registered trade marks in respect of similar or closely related goods and services, pursuant to section 44 of the Act.

Regarding the section 58 ground, the court found that the Opponent had not established that someone other than the Applicant was the first user of the trade marks in Australia for goods and services of the same kind. The court noted that the trade marks under comparison were not substantially identical, referencing established tests for substantial identity. Furthermore, evidence of a deed of assignment executed in 2014 addressed any suggestion that a party other than the Applicant was the owner of the trade marks. On the section 44 ground, the court determined that the trade marks were not substantially identical or deceptively similar.

Ultimately, the court decided to refuse registration for both of the Applicant's applications. However, the court indicated that if the Applicant amended one of its applications to remove specific goods ("heating apparatus", "apparatus for water heating", and "heating installations (water)"), that application could proceed to registration. No award of costs was made, as the Opponent had not made a claim for costs.