ENAGIC AUSTRALIA PTY LTD AND ENAGIC CO., LTD V HORIZONS (ASIA) PTY LTD [2014] ATMO 72

Horizons application for KANGEN opposed by Enagic Australia and Enagic Co.

Enagic was able to demonstrate prior use, in the United States, of the trade mark KANGEN WATER, however, it was unable to establish any genuine use in Australia of this trade mark prior to the relevant date. As such, the opposition on the grounds of sections 42(b), 58 and 60 failed.

The applicant had at the same time as filing its KANGEN application, also filed for and adopted the ENAGIC trade mark (used by the opponent, the Enagic companies). Enagic noted this as an inference that Horizons was attempting to profit from its already established business. Enagic also noted that there was some doubt as to the reasons given for the adoption of the KANGEN trade mark by Horizons, in that it claimed the trade mark was derived from the Mandarin word for ‘healthy’ pronounced “KANG-GEN”, whereas, the two Chinese characters for ‘healthy’ in Mandarin is actually “KANG JIAN”.

The Hearing Officer conceded that there was an ‘inference’ of bad faith, however, this was not sufficient to support the allegation that the application had been made in bad faith.

The opposition failed on all grounds and the application will proceed.

To view the Office decision, click here.