Cadbury Limited v Unilever PLC

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.