TWM Imports Pty Ltd v Hangzhou Great Star Industrial Co., Ltd

This decision concerns an opposition by TWM Imports Pty Ltd (the Opponent) against the registration of a trade mark by Hangzhou Great Star Industrial Co., Ltd (the Applicant). The dispute centred on whether the Applicant's proposed trade mark, when used in relation to its goods, was likely to deceive or cause confusion, thereby infringing section 60 of the relevant Act. The matter was heard by Nicholas Smith, Hearing Officer, acting as the Delegate of the Registrar.

The primary legal issue before the court was to determine whether the Applicant's trade mark, when applied to its proposed goods, would be likely to deceive or cause confusion among consumers. This required an assessment of the similarity between the trade marks, the nature of the goods in question, the reputation of the Opponent's existing trade mark, and the potential for consumers to mistakenly believe that the Applicant's goods originated from the same source as the Opponent's goods.

The Hearing Officer applied established principles regarding the interpretation of "deceive" and "cause confusion" under section 60 of the Act, drawing on case law such as *Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd* and *Registrar of Trade Marks v Woolworths Ltd*. The court found that the Applicant's trade mark and the Opponent's trade mark were essentially identical. Despite the Applicant's evidence suggesting different primary uses (hand tools versus more expensive power tools), the Hearing Officer noted the broad range of goods for which the Applicant sought registration, including hand tools, electric tools, and other items used in wood and metal work, which overlapped with the Opponent's offerings. Crucially, the court observed that it is common for trade marks used for power tools to also be used for hand tools and vice versa, leading consumers to associate brands across both categories. Considering the Opponent's 20-year reputation in Australia for a wide variety of hand and power tools, the Hearing Officer concluded that consumers familiar with the Opponent's mark were likely to see the Applicant's identical mark on its goods and wonder if they came from the same source, thus establishing a likelihood of deception or confusion.

Consequently, the Hearing Officer found that the Opponent had successfully established the ground of opposition under section 60 of the Act. Accordingly, the application for registration of the trade mark was refused. The Hearing Officer also awarded costs against the Applicant in favour of the Opponent.