Never going to be a Nex1

Never going to be a Nex1 - Griffith Hack

24 April 2012

Nexans S.A. v Nex 1 Technologies Co. Ltd. [2012] FCA 180

The Facts

A judge of the Federal Court recently heard an appeal from an opposition decision of a delegate of the Registrar of Trade Marks,
concerning an attempt by Nexans, owner of the trade marks NEXANS and

to prevent registration of the trade mark
, in the name of Nex 1 Technologies Co Ltd.
The trade marks of the parties covered identical and similar goods in Class 9, including cabling and wiring. The opponent was unsuccessful in the opposition before the delegate of the Registrar of Trade Marks, and appealed to the Federal Court. Further evidence not available during the original opposition was introduced in the Federal Court, including evidence of the opponent’s retail sales in Australia, evidence of the opponent’s worldwide advertising expenditure, and evidence concerning the opponent’s successful opposition against the applicant concerning the same trade marks before the European Union Trade Marks Office.

The grounds

Nexans relied on grounds of opposition under sections 60, 44 and 42b of the Trade Marks Act 1995. The Judge considered the section 60 ground first, as this ground offered the lowest hurdle for Nexans to establish. In the event, the Judge found that the section 60 ground was established. It was therefore not necessary to consider the remaining grounds.

Section 60 allows an opponent to oppose registration of a trade mark on the basis that the opponent’s earlier trade mark has acquired a reputation prior to the filing date of the applied-for trade mark, and that because of that reputation, use of the applied-for trade mark is likely to deceive or confuse consumers.

In this instance, it was clear that the NEXANS trade marks had been in use prior to the filing date of the
application. It was
also clear that the goods of the parties overlapped.

The decision

The Judge found that the NEXANS trade marks had acquired a reputation in Australia, noting that the trade marks had been in use since 2001, the substantial sales of NEXANS goods, and the promotional activities of Nexans.

The Judge then turned to the issue of whether use of NEXANS trade marks.
was likely to deceive or confuse, because of the reputation of the

The test to be decided was whether there was a real likelihood that a reasonable person, or a number of persons in the relevant class of purchasers, would be caused to wonder whether the goods of the parties came from the same source. The enquiry is a broad one, with all surrounding circumstances to be considered. It is not necessary for the trade marks of the parties to be deceptively similar, although the more similar the trade marks, the greater the likelihood of deception or confusion.

The Judge was of the view that the goods of the parties included low priced consumer items which are casual purchases.
The Judge was also of the view that the primary visual impression of the NEXANS and
trade marks was the prefix
“NEX”, and noted that this prefix was not common.

The Judge found that after taking into account the reputation of the NEXANS trade marks, and the similarity of the trade marks of the parties caused by the sharing of the prefix “NEX”, that there was a real and substantial risk of consumers wondering if
brand goods came from the same source as NEXANS brand goods.

The appeal was therefore successful, and registration of
was denied.

The full decision can be reviewed here.

For further information, please contact:
Simon Gapes, Associate Lawyer & Trade Marks Attorney
Email Simon