Cadbury Limited v Unilever PLC - [1998] ATMO 36

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF
TRADE MARKS, WITH REASONS

Re:
Opposition by Unilever PLC to the registration of trade mark application number 664808 in the name of Cadbury Limited.

Background:

After examination, trade mark application 664808 was advertised by the Trade Marks Office as having been accepted for registration. The applicant is Cadbury Limited, which I will refer to simply as “the applicant” from this point.

The applicant is seeking to register a series of trade marks. These are as follows:

Both marks, which differ only in the width and number of the background stripes, are sought to be registered without any limit as to colour. In the decision that follows, I will speak of the two trade marks as though they were one. That will be convenient as the difference between them has no bearing on the outcome of my decision.

The applicant has applied to register the trade mark for “ice cream; ices and ice confectionery in this class”.

Unilever PLC, (“the opponent”) now opposes the registration of the application. It has relied, initially, on various grounds set out under division 2 of part 5 the 1995 act. That division allows an opponent to rely on, but only on:

any of the grounds open to the registrar to consider prior to deciding to accept the application, other than that the trade mark is incapable of being represented graphically. These are set out in division 2 of part 4 of the act.
any of the additional grounds open for the purposes of opposition. These are set out in ss 58 - 62.

The opposition process has followed the course set out in the regulations. The opponent’s declarations in support of the opposition are by Brian Elkington and Robert Tozer. The former is a solicitor, the assistant corporate counsel for the opponent’s Australian subsidiary. He has made a declaration that sets out the essentials of the opponent’s case. I will summarise these briefly, as follows:

The opponent has registered the following trade marks, on which it relies: 175701, 184103, 294034 and 363610. Those four registrations show minor variations in the bordering of the oval shape and in the squaring off, or rounding, of the tops of the vertical stripes. The two first-numbered registrations are the extremes of these variations.

175701 184103

294034 363610

In Australia, the first-numbered of the trade marks has apparently always been used with and containing the opponent’s well-known house mark STREETS. On the world stage the position is somewhat different, as I will explain below.

As to the mark in use, the evidence suggests that the version with the word STREETS is widely known. Where the trade mark is used in colour, the word STREETS is in dark blue, the oval in a lighter blue and the stripes in red, all on a white background.

Mr Elkington’s declaration goes on to talk of the overseas situation. There, in other operations carried out by the opponent, the same basic device…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Cadbury Limited v Unilever PLC

Details

AGLC: Cadbury Limited v Unilever PLC [1998] ATMO 36
Case: [1998] ATMO 36
Decision Date: 24 July 1998

CaseChat Overview and Summary

This matter concerns an opposition by Unilever PLC to the registration of a series of trade marks by Cadbury Limited for ice cream and related confectionery. The trade marks in question, which differ only in the width and number of background stripes, were sought to be registered without any limit as to colour. Unilever PLC, the opponent, relied on several grounds, including deception or confusion, conflicting prior registrations, and conflicting prior reputation.

The delegate of the Registrar of Trade Marks was required to determine whether the proposed registration would be likely to deceive or cause confusion under section 43 of the *Trade Marks Act 1995* (Cth), considering any inherent connotations of the mark. The delegate also had to assess whether the applicant's trade marks were substantially identical with or deceptively similar to the opponent's registered trade marks, and whether the goods were similar, under section 44(1) of the Act. Finally, the delegate needed to consider whether the applicant's proposed use of the trade mark would be likely to cause confusion or deception due to the opponent's prior reputation in the market under section 60 of the Act.

Regarding section 43, the delegate found that a trade mark's reputation alone does not confer a connotation for the purposes of this section. The delegate reasoned that the opponent's trade marks, by virtue of their fame, had not acquired a meaning in the public domain that would trigger section 43. On the issue of section 44, the delegate noted that the onus rests on the opponent to establish a case. While acknowledging some visual similarities between the marks, the delegate ultimately found that the primary weight lay in the distinctiveness of the names "STREETS" and "CADBURY". The delegate also discounted an instance of alleged confusion by a consumer as being due to undue carelessness or haste, falling outside the ordinary concerns of the Act. However, concerning one of the opponent's registered marks (registration number 175701), which featured a blank space within the design, the delegate considered that the potential for use with descriptive words was a legitimate consideration, and that this mark, in conjunction with the possibility of descriptive use, could lead to confusion.

The delegate rejected the opposition based on sections 43 and 60. However, the delegate found that the opposition succeeded under section 44(1) in relation to trade mark registration number 175701, due to the potential for confusion arising from the use of that mark with descriptive words in the blank space. Consequently, the delegate ordered that the application for registration be rejected in respect of trade mark number 175701, but allowed to proceed in respect of the other registrations.

Orders