Marci Polo Foods Pty Ltd v Benino Fine Foods (Aust) Pty Ltd

Marci Polo Foods Pty Ltd (the applicant) sought to register the trade mark MARKO in Australia. Benino Fine Foods (Aust) Pty Ltd (the opponent) opposed this application, relying on its registered trade marks for pickled vegetables, which had been in use since 1983 and generated significant annual wholesale sales. The opponent argued that the proposed MARKO trade mark was deceptively similar to its own registered marks, leading to a likelihood of confusion among consumers.

The primary legal issue before the Hearing Officer was whether the applicant's proposed trade mark MARKO was deceptively similar to the opponent's registered trade marks, such that its use would be likely to deceive or cause confusion within the meaning of the relevant provisions of the Act, specifically sections 58, 44(1), 60, and 42. The court also considered the extent of use of the MARKO trade mark in Australia by the applicant and its predecessor in title, and the nature of the agreements between the applicant and the Polish company.

The Hearing Officer found that the opponent had established a significant reputation in the Australian market for pickled vegetables under its trade marks. While the applicant had agreements permitting it to register the "name" MARKO, the evidence of the applicant's use of the trade mark MARKO in Australia was vague and of low probative weight, particularly given the applicant imported goods under multiple trade marks. Crucially, the Hearing Officer noted that the applicant sought to introduce evidence of its trade mark in use, which differed from the mark as applied for, suggesting the applied-for mark was illustrative rather than representative of actual use. Applying the principles of deceptive similarity and the likelihood of confusion, the Hearing Officer concluded that the opponent had established grounds for opposition.

Consequently, the Hearing Officer refused to register the trade mark MARKO under application number 928996. As the opponent was successful in its opposition, the Hearing Officer ordered that the applicant pay the opponent's costs.