Mars Australia Pty Ltd v Katong Club Pty Ltd

Mars Australia Pty Ltd (the Opponent) opposed the registration of the trade mark KATONG HOUSE by Katong Club Pty Ltd (the Applicant). The Opponent, a significant manufacturer and distributor of food products, including snack foods and confectionary, asserted its long-standing use of the KAN TONG brand in Australia since the 1970s for various pre-packaged Asian cuisine inspired sauces, pastes, and meals. The Opponent provided evidence of substantial sales and extensive advertising and promotional activities for these goods, dating back to the 1970s and continuing to the present. The Applicant's business name, KATONG HOUSE, was registered in November 2020 for a restaurant specialising in Singaporean food, with plans to sell sauces, frozen meals, and pre-packed food from the establishment.

The central legal issue before the court was whether the Opponent had established at least one ground of opposition to the registration of the Applicant's trade mark on the balance of probabilities, with the relevant date for determining the parties' rights being the date of the opposition. Specifically, the court was required to consider if the Opponent's prior use of its KAN TONG marks for similar goods created a likelihood of confusion or deception, thereby justifying the opposition.

The court considered the evidence presented by the Opponent regarding its extensive use and promotion of the KAN TONG trade mark on a wide range of Asian-inspired food products sold nationally through major retailers. This evidence included details of substantial sales figures and advertising expenditure dating back several decades, as well as examples of trade mark use on packaging and in promotional materials. The court noted that the Opponent bore the onus of proving its grounds of opposition on the balance of probabilities.

The court found that the Opponent had established its grounds of opposition. The extensive and long-standing use of the KAN TONG trade mark by the Opponent on goods that were similar to those the Applicant intended to sell, coupled with substantial sales and advertising, created a likelihood of confusion or deception among consumers. Consequently, the court ordered that the opposition be upheld.