David Freeman and Goodness Plus Pty Ltd v Société des Produits Nestlé S.A

David Freeman and Goodness Plus Pty Ltd (the opponents) opposed the registration of a trade mark by Société des Produits Nestlé S.A. (the applicant) in the Australian Trade Marks Office. The dispute concerned the applicant's proposed registration of the trade mark "NESFIT" for a range of food products, including biscuits, cakes, and cereals. The opponents argued that the proposed mark was substantially identical with or deceptively similar to their existing trade mark "NESCAFÉ" and that registration should be refused under section 52 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the delegate of the Registrar of Trade Marks was whether the applicant's proposed mark "NESFIT" was substantially identical with or deceptively similar to the opponents' registered trade mark "NESCAFÉ" for the purposes of section 44 of the *Trade Marks Act 1995* (Cth). This section prohibits the registration of a trade mark if it is substantially identical with or deceptively similar to an earlier trade mark.

The delegate considered the similarities and differences between the two marks, noting the common prefix "NES". However, the delegate found that while there was a degree of similarity, the marks were not substantially identical. The delegate then assessed whether the marks were deceptively similar, taking into account the goods for which registration was sought. Ultimately, the delegate found that section 44 of the Act was partially established, meaning that the proposed mark was deceptively similar to the opponents' earlier mark for some of the goods.

Given this finding, the delegate provided the applicant with an opportunity to amend its application to remove the goods for which the mark was found to be deceptively similar. The applicant amended its application accordingly, and the delegate then determined that the amended application should proceed to registration.