Toyo Tire & Rubber Co Ltd v Jim Souvaliotis & Theo Kourtis

This matter concerned an opposition by Toyo Tire & Rubber Co., Ltd to the registration of the trade mark "NITTO" filed by Jim Souvaliotis and Theo Kourtis. The application sought registration for goods in Class 7, including exhaust manifolds and filters, and in Class 12, including alloy and steel rims, suspension parts, steering wheels, and other automotive spare parts and accessories, specifically mentioning tyres, filters, and brake pads. The opposition was heard by Hearing Officer Jock McDonagh, a delegate of the Registrar of Trade Marks, with the opponent represented and the applicants not appearing.

The court was required to determine three grounds of opposition: deceptive similarity under section 44 of the *Trade Marks Act 1995* (the Act), that the applicant was not the owner of the mark under section 58, and that the applicant did not intend to use the mark under section 59. The opponent relied on evidence of prior use of the "NITTO" mark for tyres in Australia and a registered trade mark for similar goods. The applicants provided no evidence or submissions.

Regarding section 44, the Hearing Officer found the applied-for mark deceptively similar to a cited registered mark but was not satisfied that the goods were similar enough to establish this ground. For section 59, the evidence did not demonstrate an intention not to use the mark, as waiting for registration before use is permissible. However, under section 58, the Hearing Officer was satisfied that the opponent had established it was the first user in Australia of the "NITTO" mark in respect of tyres, which were included in the applicant's Class 12 goods. The Hearing Officer found that tyres were not the "same kind of thing" as the other Class 12 goods, nor the Class 7 goods, thus limiting the success of this ground.

Consequently, the application was refused as it stood. However, the Hearing Officer allowed the applicants 14 days to amend the application by deleting "tyres" from the Class 12 goods. If amended, the application could proceed to registration after one month, subject to any appeal. The Hearing Officer declined to make an award of costs, directing each party to bear their own.