3M Company v Tish & Sash Cacoroski

This matter concerned an opposition by 3M Company to the registration of a trade mark application by Tish & Sash Cacoroski. The dispute centred on whether fungicides were goods of the same description as, or similar to, certain goods already registered under the applicant's trade mark. The Delegate of the Registrar of Trade Marks was required to determine the opposition.

The primary legal issue before the court was whether the applicant's proposed trade mark should be refused registration under section 44 of the *Trade Marks Act 1995* (Cth). This required an assessment of whether the goods for which registration was sought, specifically fungicides, were of the same description as, or similar to, goods in respect of which the opponent held registered trade marks, namely Class 1 goods (ingredients for skin care preparations) and Class 3 goods (cosmetic preparations and products for skin care).

The Delegate reasoned that the composition and function of fungicidal skin care products were critical. Drawing on the High Court's decision in *In Register of Trade Marks v Muller*, the Delegate noted the significance of "active ingredients" in pharmaceutical and medicated products. It was considered common consumer knowledge that the efficacy of such goods derived from an active ingredient, and that other ingredients were present to supplement this. While acknowledging that fungicides might be acquired through different trade channels as either an ingredient or a finished product, the Delegate found that their nature and purpose were such that they ultimately remained "of the same description." This conclusion was supported by the fact that a fungicide is both the ingredient and the product used by a consumer to treat a fungal infection. Furthermore, the Delegate found support for the contention that fungicides are used as ingredients in cosmetics, citing an extract from a Cosmetic Ingredients Reference Guide that identified fungicidal properties in ingredients used in creams, lotions, and mascara.

Consequently, the Delegate found that the opponent had succeeded in establishing the nominated ground of opposition under section 44 of the Act. The application to register the trade mark was refused. The applicant was also ordered to pay the opponent's costs.