Kraft Foods Schweiz Holding AG v Darrell Lea Chocolate Shops

This matter came before the Federal Court of Australia, with Justice Ian Thompson presiding. The dispute concerned an application by Kraft Foods Schweiz Holding AG (Kraft) for the registration of the trade mark "LILAC" for chocolate products. Darrell Lea Chocolate Shops (Darrell Lea) sought to oppose this application, alleging that the proposed mark was confusingly similar to its own use of the colour "boysenberry" in relation to chocolate products and store fit-outs, which it claimed had acquired distinctiveness. Darrell Lea also contended that it had not been properly notified of Kraft's application by its legal advisors, Deacons, and that had it been aware, it would have filed an opposition.

The primary legal issues before the Court were whether the proposed LILAC trade mark was capable of registration, and whether Darrell Lea had established a sufficient basis for its opposition, particularly in light of its claims regarding the use of the colour boysenberry and the alleged failure of its solicitors to notify it of the application. The Court was required to consider the principles of trade mark law concerning the registrability of colours, the potential for confusion between marks, and the evidentiary requirements for establishing distinctiveness through use.

Justice Thompson's reasoning focused on the lack of specific evidence provided by Darrell Lea to support its opposition. He noted that Mr Lea's declaration did not specify when Darrell Lea or its legal advisors became aware of Kraft's application, nor did it clearly explain why an FOI request was necessary at a late stage. Furthermore, the Court found that while Darrell Lea claimed to rely on its solicitors to monitor trade mark publications, the evidence did not establish that the solicitors had a clear mandate or had failed in their duty to advise Darrell Lea of the LILAC application. The Court also observed that the declaration contained confusing statements regarding the solicitors' alleged duty to inform Darrell Lea, and that the claim of extensive use of "boysenberry" was not sufficiently substantiated to establish distinctiveness that would preclude the registration of the LILAC mark.

Ultimately, the Court found that Darrell Lea had not discharged its evidentiary burden to establish grounds for opposition. Consequently, the Court ordered that Darrell Lea's opposition be dismissed.