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

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.