Barberton Consultores E Servicos LDA v Foster?s Australia Limited

Barberton Consultores E Servicos LDA (the Opponent) opposed the application by Foster's Australia Limited (the Applicant) for registration of the trade mark DIPLOMATICO. The Opponent relied on its registered trade mark DIPLOMATICO, registered under number 576434, with a priority date of 13 April 1992, for goods in Class 33, specifically alcoholic beverages excluding beers and diplomatic punch. The Opponent asserted that its trade mark had been used in Australia in relation to rum, with modest sales prior to the Applicant's priority date. The decision was made by Hearing Officer Iain Thompson of the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark should be rejected under section 44(1) of the relevant Act. This required determining if the Applicant's trade mark was substantially identical with, or deceptively similar to, the Opponent's registered trade mark for similar or closely related goods, and if the priority date of the Applicant's trade mark was not earlier than that of the Opponent's registration. The onus was on the Opponent to establish one or more grounds of opposition on the balance of probabilities.

The Hearing Officer found that the Opponent had not established its opposition to any extent. Consequently, the Applicant's trade mark application was permitted to proceed to registration one month from the date of the decision, unless a notice of appeal was served, in which case registration would be stayed pending the outcome of the appeal. The Applicant, having been successful, was awarded its costs against the Opponent on the official scale.