Case Notes, Deceptively similar?, s 44 TMA


ATMO case note: Screen Technics Pty Limited v S-TECH Holdings Pty Ltd [2017] ATMO 1

Applicant’s mark: SCREENTECH

Relevant class(es):

Goods: Class 9: Electronic displays and signs, illuminated displays and signs; mobile display screens; displays for advertising, traffic control, sporting events and signalling;

Class 11: Lighting apparatus and accessories; LED lights

Opponent’s mark: SCREEN TECHNICS

Registered and used in relation to AV projection screens.

Grounds of opposition: ss 42, 58, 58A, 44, 60.

No grounds established – mark to proceed to registration.

Section 44

Hearing Officer McDonagh held that SCREENTECH and SCREEN TECHNICS are deceptively similar but, given the applicant’s long use of its mark, which pre-dates the priority date of the opponent’s mark and the opponent’s first use of its mark, the mark was registrable under ss 44(3) and 44(4).

Sections 58

This ground was not made out because the parties’ marks were held to be not substantially identical.

Section 58A

This section only applies in relation to marks accepted under s 44(4),  not s 44(3).  In any event, the opponent had not established first use.

Section 60

HO McDonagh considered that the opponent’s reputation was confined to “the audio/visual screen projector market for home theatres, boardroom presentations, and educational and training facilities” whereas the applicant “produces and markets electronic signage that is typically used outdoors or in public places”.  Therefore, the concluded, the opponent had not established the requisite likelihood of confusion.

Section 42(b)

This ground failed for the same reason as s 60.



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