Cadbury Schweppes Proprietary Limited, Effem Foods Pty Ltd v Societe Des Produits Nestle SA

This matter came before Ian Thompson, a Hearing Officer acting as a delegate of the Registrar of Trade Marks, concerning an opposition filed by Cadbury Schweppes Proprietary Limited and Effem Foods Pty Ltd (the opponents) against an application by Societe Des Produits Nestle SA (the applicant) to register a trade mark. The dispute centred on the registrability of an annular shape for confectionery goods.

The primary legal issues before the Hearing Officer were whether the annular shape lacked inherent distinctiveness to the extent that it should be refused registration under subsection 41(6) of the relevant Act, and whether the applicant had made use of the trade mark as filed, or if any use had been made as a trade mark, as required by section 58. The opponents argued that the shape was one of a finite number of suitable shapes for oral insertion, was commercially desirable for maximising taste and minimising material, and had been adopted by other traders for similar confectionery products. They also contended that the applicant had not used the shape mark as filed, but rather with the "LIFE SAVERS" trade mark embossed upon it, and that any use was not as a trade mark.

The Hearing Officer found that the opponents had established their opposition on the basis that the trade mark lacked inherent distinctiveness. While acknowledging the applicant's submission that the mark might fall under section 41(5) and that use could have made it factually distinctive, the Hearing Officer ultimately concluded that the arguments regarding the lack of inherent distinctiveness under section 41(6) were persuasive. The Hearing Officer also determined that the opponents had not established their ground concerning ownership under section 58, noting that ownership can arise through use or application filing.

Consequently, the Hearing Officer decided to refuse the registration of the trade mark application. The opponents were successful in their opposition, and the Hearing Officer ordered costs against the applicant.