Canterella Bros. Pty Ltd v Sunbeam Corporation Ltd

This matter came before Rachel Dunn, Hearing Officer at the Trade Marks Hearings, concerning an opposition by Sunbeam Corporation Ltd against the trade mark application by Canterella Bros. Pty Ltd. The dispute centred on Canterella Bros.' application to register a trade mark, with Sunbeam Corporation Ltd opposing the registration on several grounds.

The primary legal issues before the Hearing Officer were whether the applicant's trade mark should be refused registration under sections 44 and 41 of the relevant legislation. Specifically, under section 44, the court had to determine if the opponent's earlier trade marks were deceptively similar to the applicant's mark and if they covered the same or similar goods. Under section 41, the court considered the distinctiveness of the applicant's mark in relation to the goods for which it was sought.

The Hearing Officer found that the opponent had established the ground of opposition under section 44. Priority clearly lay with the opponent's earlier filed trade mark. The Hearing Officer was satisfied that the trade marks were deceptively similar, noting minimal visual, oral, and aural differences between the marks and considering the Italian origin of the terms. The crucial factor for this ground was the similarity of goods, with the opponent's mark covering ice cream and ice confections, including gelato, and the applicant's mark covering machines for making ice cream, confections, and gelato. The Hearing Officer found that a connection would be perceived by consumers as one set of goods was used to manufacture the other. The ground under section 41 was also considered, with evidence presented regarding the common use of the term "gelato" in the Australian food industry.

Ultimately, the Hearing Officer determined that the trade mark application could proceed to registration if the applicant was prepared to limit its specification of goods to "machines including ice cream making machines, gelato making machines and machines for making other iced confectionary; all foregoing goods being for domestic use." If this limitation was not made, the application would be refused in its entirety. Both parties were directed to bear their own costs.