Corporativo Internacional Mexicano, S De R.L. De C.V v Intercontinental Great Brands LLC (Formerly Kraft Foods Global Brands LLC)

Corporativo Internacional Mexicano, S De R.L. De C.V (CIM) sought to register the trade mark "LA CATRINA" in Australia for a range of goods including confectionery, chocolate, and biscuits. Intercontinental Great Brands LLC (IGB), the owner of the registered trade mark "CADBURY" and other related marks, opposed this application. The dispute concerned whether CIM's proposed mark was deceptively similar to IGB's registered marks, and whether CIM's mark was capable of distinguishing its goods from those of IGB. The matter was heard in the Federal Court of Australia.

The primary legal issues before the Court were: (1) whether the proposed trade mark "LA CATRINA" was deceptively similar to IGB's registered trade marks, particularly "CADBURY", for the purposes of section 60 of the *Trade Marks Act 1995* (Cth); and (2) whether CIM's proposed mark was capable of distinguishing its goods from those of IGB, as required by section 41 of the *Trade Marks Act 1995* (Cth).

Justice Murray considered the principles of deceptive similarity, which involve an assessment of whether an ordinary and reasonable consumer, with imperfect recollection, would be deceived or confused into believing that the goods offered under the impugned mark originate from the owner of the registered mark. The Court analysed the visual, aural, and conceptual similarities between "LA CATRINA" and "CADBURY", taking into account the respective goods and the target consumers. The Court also examined the distinctiveness of the proposed mark, considering whether it possessed inherent adaptability to distinguish CIM's goods.

The Court found that there was no deceptive similarity between "LA CATRINA" and IGB's registered marks. Furthermore, the Court determined that "LA CATRINA" was capable of distinguishing CIM's goods. Accordingly, the opposition was dismissed, and CIM was permitted to proceed with its trade mark application.