Chubpak Australia Pty Ltd v Aristopet Pty Ltd

This case concerns an opposition filed by Chubpak Australia Pty Ltd (the opponent) against the trade mark application number 676438 by Aristopet Pty Ltd (the applicant). The applicant sought to register the word and device mark "aristopet" for pet care and veterinary products in class 5. The opponent, which uses the trade mark "aristocat" for pet foods in class 31, opposed the registration on three grounds: the onus on the applicant, contravention of subsection 44(1), and contravention of section 60 of the *Trade Marks Act 1995* (Cth). The hearing was conducted before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the applicant's trade mark was deceptively similar to the opponent's registered trade mark "aristocat" and whether the goods for which the applicant sought registration were similar to those covered by the opponent's registrations, for the purposes of section 44(1). Additionally, the delegate had to consider whether the applicant's trade mark, being deceptively similar to a trade mark that had acquired a reputation in Australia, would be likely to deceive or cause confusion, pursuant to section 60. The delegate also addressed the general onus on an applicant in opposition proceedings, noting that while section 33 of the Act presumes registrability upon acceptance, the burden of proof in opposition proceedings shifts to the applicant once the opponent establishes a prima facie case.

In relation to section 44(1), the delegate found the applicant's trade mark "aristopet" to be deceptively similar to the opponent's "aristocat" mark, considering the shared prefix "aristo" and the conceptual similarity between the suffixes "cat" and "pet". The delegate also determined that some of the applicant's goods in class 5, specifically "dietetic foods and dietetic food additives adapted for veterinary purposes," were of the same description as the opponent's goods in class 31, which include foodstuffs for animals. Consequently, the opposition succeeded in part under section 44(1) concerning these specific goods. Regarding section 60, the delegate found that while the opponent had established some reputation in its "aristocat" mark for cat food, this reputation was limited due to the narrow range of goods and lack of evidence of brand extension. However, the delegate concluded that there was a sufficient nexus between the opponent's foodstuffs for animals and the applicant's dietetic foods and additives for veterinary purposes to create a reasonable likelihood of deception or confusion, thus allowing the opposition to succeed under section 60 to the same extent as under section 44(1).

The delegate ordered that the opposition succeeded in part, and the application for registration of the trade mark "aristopet" would be rejected unless the applicant amended its specification of goods to exclude "dietetic foods and dietetic food additives adapted for veterinary purposes."