Tiodize Company, Inc v Unichema Chemicals Limited

This matter concerned an opposition by Unichema Chemicals Limited to the registration of the trade mark TIOLUBE, applied for by Tiodize Company, Inc. The trade mark was accepted in Class 4 for a protective coating in the form of a lubricant. Unichema Chemicals Limited opposed the application based on its prior registrations of the trade marks PRIOLUBE (in Class 4 for lubricants) and PRIOLUBE (in Class 1 for chemical products). The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the applied-for trade mark TIOLUBE was substantially identical or deceptively similar to the opponent's registered trade marks PRIOLUBE, and whether the goods for which registration was sought were the same as, or goods of the same description as, the goods covered by the opponent's prior registrations. These questions were to be determined under section 33 of the relevant Act.

The delegate found that the goods for which TIOLUBE was sought were the same goods as those covered by the PRIOLUBE registration in Class 4 (lubricants). However, the delegate determined that while some goods covered by the PRIOLUBE registration in Class 1 were not the same goods, they were goods of the same description as those for the TIOLUBE application, particularly given the broad specifications and potential for common trade sources, distribution channels, and users. Regarding the similarity of the marks, the delegate concluded that TIOLUBE and PRIOLUBE were not substantially identical, noting differences in their initial letters and overall visual presentation. Crucially, the delegate found that the marks were not deceptively similar, applying the principles of assessing the impression left on the customer, considering the sound and appearance of the marks, and the likely degree of care exercised by purchasers of such goods. The delegate noted the lack of evidence regarding customer class and trade circumstances but found that the prefixes PRIO- and TIO- looked and sounded sufficiently different, with PRIO- also having a resemblance to the word "prior," to avoid deception or confusion.

Consequently, the delegate dismissed the opposition, finding that the grounds for opposition were not met, and directed that the application proceed to registration. Costs were awarded to the applicant, Tiodize Company, Inc.