George Karounos as Trustee for the RFC Trust v Kraft Foods Limited

This decision concerns an opposition by George Karounos as trustee for the RFC Trust (the opponent) to the registration of the trade mark application KRAFT MAYO REAL MAYONNAISE AND DEVICE, filed by Kraft Foods Limited (the applicant) in class 30 for 'mayonnaise'. The applicant's application was accepted and advertised, and the opponent subsequently filed a notice of opposition. The applicant failed to file evidence in answer, and the matter proceeded to a decision by a delegate of the Registrar of Trade Marks based on the written materials.

The opponent raised several grounds of opposition, including those under sections 41, 42, 43, 44, 58, 59, and 60 of the Trade Marks Act 1995, as well as potential claims under sections 52 and 53 of the Trade Practices Act 1974. The delegate found that the opposition had not been established under sections 42, 43, 59, 52, or 53 due to insufficient evidence. The remaining grounds to be considered were those under sections 41, 44, 58, and 60.

In relation to section 41, which concerns a trade mark's capability to distinguish the applicant's goods, the delegate considered expert marketing evidence but ultimately applied the legal test from *Clark Equipment Company v Registrar of Trade Marks*, focusing on whether other traders, acting honestly, would be likely to use the mark or parts of it for similar goods. The delegate found that the word "KRAFT" was not likely to be used by other traders, and the mark as a whole, including device elements and get-up, provided sufficient indicators to distinguish the applicant's goods, thus dismissing this ground. For section 44, concerning identical or deceptively similar trade marks, the opponent relied on two previous trade marks, REAL and REAL FISH'N CHIPS with device. However, the REAL mark had been cancelled, and the delegate found the REAL FISH'N CHIPS mark was neither substantially identical nor deceptively similar to the applicant's mark, leading to the dismissal of this ground.

The delegate also dismissed the opposition under section 58, which relates to the applicant not being the owner of the trade mark. This required the opponent to demonstrate a prior, substantially identical mark. The delegate found that neither the REAL mark nor the REAL FISH'N CHIPS mark met the threshold of substantial identity with the applicant's mark, referencing *Carnival Cruise Lines Inc. v Sitmar Cruises Ltd*. Finally, under section 60, which addresses trade marks that have acquired a reputation, the delegate found that the opponent's evidence did not establish that the REAL or REAL FISH'N CHIPS marks had acquired a reputation in Australia sufficient to cause deception or confusion if the applicant's mark were used. The delegate noted that court decisions had found these marks had not been used sufficiently to maintain their registration or scope.

Consequently, the delegate dismissed the opposition in its entirety. The delegate directed that the trade mark application could proceed to registration upon payment of the fee, subject to any appeal. Costs were awarded against the opponent.