Clinique Laboratories, LLC v Clinique La Prairie Franchising SA

Clinique Laboratories, LLC (‘the Opponent’) opposed the extension of protection to Australia of an international trade mark registration, CLINIQUE LA PRAIRIE, held by Clinique La Prairie Franchising SA (‘the Holder’). The application by the Holder was for protection in Classes 5 and 32, relating to mineral food supplements and non-alcoholic beverages respectively, with a priority date of 30 November 2009. The Opponent filed a notice of opposition nominating all possible grounds under the Trade Marks Act 1995, but ultimately indicated it would only pursue the ground under section 60 of the Act. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established, on the balance of probabilities, the ground of opposition under section 60 of the Trade Marks Act 1995. This section concerns the use of a trade mark that is likely to deceive or cause confusion. The Opponent bore the onus of proving this ground.

The delegate considered the evidence filed by both parties, which included statutory declarations from representatives of each company. While the Opponent nominated all grounds of opposition initially, it narrowed its focus to section 60. The delegate's decision was to grant protection for the trade mark in Class 32, covering mineral and aerated waters, non-alcoholic beverages, fruit drinks, fruit juices, and syrups. However, the delegate refused the extension of protection for the trade mark in Class 5, which related to mineral food supplements and nutritional additives for medical purposes. The delegate directed that protection in Class 32 would extend one month from the decision date, unless an appeal was filed, in which case protection would be stayed pending the appeal. Each party was ordered to bear their own costs.