Compagnie Gervais Danone v Namice Pty Ltd

This decision concerns an opposition by Compagnie Gervais Danone ('the opponent') to the trade mark application by Namice Pty Ltd ('the applicant') for the mark DANES GOURMET COFFEE in class 30. The opponent filed its opposition on nine grounds under the *Trade Marks Act 1995* (Cth), but ultimately relied only on grounds under sections 41 and 44 of the Act. The matter was decided by a delegate of the Registrar of Trade Marks based on written submissions and evidence.

The primary legal issues before the delegate were whether the trade mark DANES GOURMET COFFEE was capable of distinguishing the applicant's goods from those of other traders under section 41, and whether it was substantially identical with or deceptively similar to any earlier registered trade marks or applications for registration owned by the opponent, under section 44. The opponent argued that the word "Danes" was descriptive of a Danish connection and lacked inherent distinctiveness, and that the applicant's mark was deceptively similar to its own "DAN" prefixed trade marks.

In relation to section 41, the delegate found that while "Gourmet Coffee" was descriptive, the word "Danes" was more likely to be perceived as a surname or personal name rather than a direct reference to the character or quality of coffee. The delegate considered the trade mark as a whole and concluded it was inherently adapted to distinguish the applicant's goods. Regarding section 44, the delegate analysed the phonetic and visual similarities between DANES GOURMET COFFEE and the opponent's cited trade marks, including DANY, DAN'UP, DANETTE, DANESSA, DANINO, DANONE, and DANNY BOY. The delegate found no substantial identity or deceptive similarity, noting significant differences in pronunciation and overall impression, and that the shared prefix "DAN" was insufficient to create confusion in a crowded field of similar trade marks.

The delegate dismissed the grounds of opposition under sections 41 and 44, as well as the remaining grounds which were not argued. Consequently, the delegate ordered that the trade mark application may proceed to registration, subject to any appeal. The opponent was also ordered to pay the applicant's costs.