Ferrero S.p.A v Nuts-about-tella Pty Ltd

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TRADE MARKS ACT 1995



DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Ferrero S.p.A to registration of trade mark application 1747769 (43) – nuts-about-tella - in the name of Nuts-about-tella Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 147

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42, 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1.  This decision concerns an opposition brought by Ferrero S.p.A (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Nuts-about-tella Pty Ltd (‘Applicant’): 

Application Number:

1747769

Filing Date:

28 January 2016

Services:

Class 43: Providing food and drink

(‘Applicant’s Services’)

Trade Mark:

nuts-about-tella

(‘Trade Mark’)

  1. Following the advertisement on 23 June 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 August 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 22 September 2016. The SGP raised grounds of opposition under ss 42, 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 28 October 2016.

    Evidence

    3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 2 February 2017.  This evidence consists of a declaration made on 1 February 2017 by Derek Lath, the Institutional Affairs Director of Ferrero Australia Pty Ltd, a related body corporate of the Opponent, with exhibits DLL-1 to DLL-25 (‘Lath Declaration’).

  2. The Applicant filed Evidence in Answer (‘EIA’) on 16 May 2017.  This evidence consists of a declaration made on 16 May 2017 by Mark Anthony Elkhouri, the director of the Applicant, with Exhibits ME-1 to ME-6 (‘Elkhouri Declaration’). 

  3. The Opponent filed Evidence in Reply (‘EIR’) on 21 July 2017.  This evidence consists of a declaration made on 20 January 2017 by Julie McIntosh, the Chief Financial Officer of Ferrero Australia Pty Ltd, with exhibits JM-1 to JM-2 (‘McIntosh Declaration’).

  4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 8 March 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 9 April 2018 the Applicant filed its submissions (‘Applicant’s Submissions’).  On 17 May…

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Details
Case
[2018] ATMO 147
Decision Date

CaseChat Overview and Summary

Ferrero S.p.A. (the Opponent) opposed an application by Nuts-about-tella Pty Ltd (the Applicant) to register a trade mark. The dispute concerned the potential for consumer deception and confusion arising from the Applicant's proposed mark, given the Opponent's established use and registration of its own trade marks, particularly in relation to confectionery products. The matter was heard by Nicholas Smith, a delegate of the Registrar of Trade Marks.

The court was required to determine whether the grounds of opposition raised by the Opponent under sections 42, 44, 60, and 62A of the relevant Act had been established. These grounds typically relate to issues such as misrepresentation, deceptive similarity, and the use of marks that are identical or deceptively similar to earlier trade marks or trade marks that have acquired distinctiveness. The court's task was to assess the evidence presented by both parties to decide whether the Applicant's trade mark application should be refused or allowed to proceed to registration.

The delegate found that the Opponent had failed to establish any of the grounds of opposition it had nominated. The Opponent's evidence, including declarations from representatives of Ferrero Australia Pty Ltd, detailed the long-standing and extensive use and promotion of its "Nutella" trade marks in Australia since 1970, asserting significant sales and global recognition. However, the delegate concluded that this evidence was insufficient to demonstrate that the Applicant's mark would lead to deception or confusion among consumers. Consequently, the delegate decided that the trade mark application could proceed to registration, subject to the usual period for appeal and any subsequent court directions. The Applicant was awarded costs against the Opponent.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Following the advertisement on 23 June 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 August 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 22 September 2016. The SGP raised grounds of opposition under ss 42, 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 28 October 2016. Evidence3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 2 February 2017. This evidence consists of a declaration made on 1 February 2017 by Derek Lath, the Institutional Affairs Director of Ferrero Australia Pty Ltd, a related body corporate of the Opponent, with exhibits DLL-1 to DLL-25 (‘Lath Declaration’). The Applicant filed Evidence in Answer (‘EIA’) on 16 May 2017. This evidence consists of a declaration made on 16 May 2017 by Mark Anthony Elkhouri, the director of the Applicant, with Exhibits ME-1 to ME-6 (‘Elkhouri Declaration’). The Opponent filed Evidence in Reply (‘EIR’) on 21 July 2017. This evidence consists of a declaration made on 20 January 2017 by Julie McIntosh, the Chief Financial Officer of Ferrero Australia Pty Ltd, with exhibits JM-1 to JM-2 (‘McIntosh Declaration’). Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail themselves of these opportunities at that time. By letter issuing from IP Australia on 8 March 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. On 9 April 2018 the Applicant filed its submissions (‘Applicant’s Submissions’). On 17 May 2018 the Opponent filed its submissions (‘Opponent’s Submissions’). I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.The Opponent8. The Opponent is an Italian confectionary company. The Opponent is, amongst other marks, the registered owner of the trade marks set out below (‘Opponent’s Trade Marks’). The Lath Declaration contains the following claims/statements:· In 1949 the Opponent’s founder Pietro Ferrero created a hazelnut and cocoa spread, named Supercrema Giadujia, which in 1963 was renamed Nutella.· By 2015 the Opponent’s Nutella products were sold in approximately 170 countries around the world and have received global promotion through significant sponsorship and marketing.· In Australia, Nutella-branded spread and other goods branded with the Nutella Mark have been sold continuously through all states and territories in Australia since 1970. The Opponent’s Trade Marks have been used by the Opponent and its licensees on advertising, product packaging, display boxes and point of sales material. The Opponent’s Trade Marks have been promoted extensively in Australia for almost 40 years through a variety of marketing methods including television advertising and point of sale materials. · The Opponent’s sales in Australia from 1995 to 2016, as measured in Australian dollars, and from 1981-2015 in kilos, are very significant. · Given the visual, aural and conceptual similarities between the Opponent’s Trade Marks and the Trade Mark, the Opponent believes that consumers will be deceived and/or confused by use of the Trade Mark.

Decision

Reasons for decision

I find that the Opponent has failed to establish the ground of opposition under s 62A.Decision61. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1747769 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.Costs62. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).Nicholas SmithHearing OfficerOppositions and Hearings18 September 2018 Annex 1 Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocksClass 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fatsClass 30: Coffee, tea, sugar, rice, tapioca, sago, substitute of coffee, flour, pressing of cereals (excluded forages); bread, biscuits, cakes, pastry and confectionary, eatable ice-creams; honey, treacle, yeast, baking powder; salt, mustard, pepper, vinegar, sauces; spices; ice; spread creams; chocolate and chocolate product, specially pastry for chocolate beverage, chocolate pastry, coverings, in particular chocolate coverings, chocolate, praline, chocolate products for decorations of Christmas tree, goods substantial in chocolate covering eatable with alcoholic stuffed, sugar articles, pastry, chewing gum, chewing gum without sugar, candies without sugarClass 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beveragesClass 33: Alcoholic beverages (except beers)Class 35: Advertising; business management; business administration; office functionsClass 41: Education; providing of training; entertainment; sporting and cultural activitiesClass 43: Services for providing food and drink; temporary accommodation

Ratio Decidendi

Legal Principle Established

The Opponent filed Evidence in Reply (‘EIR’) on 21 July 2017. This evidence consists of a declaration made on 20 January 2017 by Julie McIntosh, the Chief Financial Officer of Ferrero Australia Pty Ltd, with exhibits JM-1 to JM-2 (‘McIntosh Declaration’). Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party chose to avail themselves of these opportunities at that time. By letter issuing from IP Australia on 8 March 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record. The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon. On 9 April 2018 the Applicant filed its submissions (‘Applicant’s Submissions’). On 17 May 2018 the Opponent filed its submissions (‘Opponent’s Submissions’). I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:(a)to refuse to register the trade mark; or(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.The Opponent8. The Opponent is an Italian confectionary company. The Opponent is, amongst other marks, the registered owner of the trade marks set out below (‘Opponent’s Trade Marks’). The Lath Declaration contains the following claims/statements:· In 1949 the Opponent’s founder Pietro Ferrero created a hazelnut and cocoa spread, named Supercrema Giadujia, which in 1963 was renamed Nutella.· By 2015 the Opponent’s Nutella products were sold in approximately 170 countries around the world and have received global promotion through significant sponsorship and marketing.· In Australia, Nutella-branded spread and other goods branded with the Nutella Mark have been sold continuously through all states and territories in Australia since 1970. The Opponent’s Trade Marks have been used by the Opponent and its licensees on advertising, product packaging, display boxes and point of sales material. The Opponent’s Trade Marks have been promoted extensively in Australia for almost 40 years through a variety of marketing methods including television advertising and point of sale materials. · The Opponent’s sales in Australia from 1995 to 2016, as measured in Australian dollars, and from 1981-2015 in kilos, are very significant. · Given the visual, aural and conceptual similarities between the Opponent’s Trade Marks and the Trade Mark, the Opponent believes that consumers will be deceived and/or confused by use of the Trade Mark.