Johnny Walker Pty Ltd v Chocolatier (Aust) Pty Ltd

Johnny Walker Pty Ltd ("Walkers") opposed the registration of the trade mark application 734269, "CHOCOLATIER AUSTRALIA", filed by Chocolatier (Aust) Pty Ltd ("the applicant") for confectionery including chocolate products. The opposition was heard by a delegate of the Registrar of Trade Marks. Walkers based its opposition on two grounds: that the applicant's mark was deceptively similar to existing trade marks and that the applicant had not made a proper case for registration.

The delegate was required to determine whether the applicant's trade mark was deceptively similar to any registered trade marks or trade marks with a reputation in Australia, and whether the applicant's mark was capable of distinguishing its goods in trade. The delegate also had to consider the evidence of use and potential confusion presented by both parties.

In relation to the ground that the mark was not capable of distinguishing, the delegate noted that the current legislative standard was less stringent than previous tests and that the applicant's mark, when viewed as a whole with its get-up, was not inherently incapable of distinguishing. While acknowledging that Walkers had presented evidence suggesting that a significant portion of the applicant's product was sold unbranded, the delegate found that the applicant's sales figures were substantial and that some customers were aware of the applicant as a trade source. Regarding deceptive similarity, the delegate found that the only common element between the marks was the word "chocolatier," which was common to the trade. The delegate found the evidence of confusion to be largely anecdotal, open to interpretation, and insufficient to establish a significant risk of deception or confusion under the current legislation, which requires more than a mere possibility of confusion.

Ultimately, the delegate found that neither ground of opposition had been established. The delegate ordered that the opposition be dismissed and awarded costs against Walkers. The applicant's trade mark application was permitted to proceed to registration, subject to the usual appeal period.