Bickfords Trading Pty Ltd v Frucor Suntory New Zealand Limited

Bickfords Trading Pty Ltd (the Opponent) opposed the application by Frucor Suntory New Zealand Limited (the Applicant) to register the trade mark "THE REAL MCCOY" for fruit juice. The Opponent relied on several grounds, including section 44 of the *Trade Marks Act 1995* (Cth), asserting that the Applicant's mark was substantially identical or deceptively similar to the Opponent's registered trade marks for "THE REAL MCCOY" whiskey products. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Applicant's proposed trade mark for fruit juice was substantially identical or deceptively similar to the Opponent's registered trade marks for whiskey, and if so, whether the conditions for rejection under section 44 of the Act were met. The delegate also considered whether any exceptions under subsections 44(3) or 44(4) of the Act, relating to honest concurrent use or continuous use, applied.

The delegate found that the Opponent owned registered trade marks for "THE REAL MCCOY" used in relation to whiskey. The Applicant also used the name "MCCOY" and later "THE REAL MCCOY" for fruit juice in New Zealand. The delegate determined that the Applicant had not made submissions or provided sufficient evidence to establish honest concurrent use or continuous use under section 44(3) or 44(4) of the Act. Consequently, the delegate concluded that the Opponent had established its ground of opposition under section 44.

As the Opponent had successfully established a ground of opposition, the delegate, acting as a delegate of the Registrar, refused to register the Applicant's trade mark. The Opponent was awarded costs against the Applicant.