Consorzio Del Formaggio Parmigiano Reggiano v Kraft Foods Group Brands LLC

The Consorzio Del Formaggio Parmigiano Reggiano (the Opponent) opposed the registration of a trade mark by Kraft Foods Group Brands LLC (the Applicant). The dispute concerned the Applicant's proposed trade mark, and the Opponent sought to prevent its registration. The decision was made by Tracey Berger, a Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issues before the Hearing Officer were whether the Opponent had established grounds for opposition under sections 52 and 60 of the relevant legislation. Specifically, the Opponent contended that the proposed trade mark should not be registered because it would be likely to deceive or cause confusion, and that its use would be contrary to law. The Opponent also argued that it had acquired a reputation in the term "Parmesan" in Australia.

The Hearing Officer considered extensive evidence filed by both parties, including declarations from individuals such as the Opponent's President, legal representatives, market researchers, and industry specialists, as well as evidence from the Applicant's representatives and experts. The Opponent's evidence aimed to demonstrate that "Parmesan" is used interchangeably with "Parmigiano Reggiano" in Australia and that the Opponent has a reputation in the term "Parmesan". However, the Hearing Officer found that the Opponent had failed to establish the requisite reputation in Australia for the term "Parmesan".

Consequently, the Hearing Officer concluded that the Opponent had not established any grounds for opposition. The trade mark application was therefore permitted to proceed to registration, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. The Hearing Officer also ordered that the Opponent pay the Applicant's costs.