Effem Foods Pty Ltd v Marks and Spencer Plc

Effem Foods Pty Ltd (the applicant) sought to register the trade mark "CHOCOLATE MINTS" in class 30 of the Nice Classification. Marks and Spencer Plc (the respondent) opposed this application, arguing that the mark was not capable of distinguishing the applicant's goods from those of other persons. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "CHOCOLATE MINTS" was capable of distinguishing the applicant's goods, namely confectionery, from the goods of other persons, as required by section 41(1) of the Trade Marks Act 1995 (Cth). This involved considering whether the term was inherently adapted to distinguish or whether it had acquired distinctiveness through use.

The Court reasoned that the term "CHOCOLATE MINTS" was a descriptive term for a type of confectionery. It found that the applicant had not established that the mark was inherently adapted to distinguish its goods, nor had it demonstrated that the mark had acquired distinctiveness through use in Australia. The Court applied the principles that descriptive terms are generally not registrable as trade marks unless they have acquired a secondary meaning through extensive use.

The application for registration of the trade mark was dismissed.