Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd

In the Federal Court of Australia, Nettlefold Advertising Pty Ltd (the applicant) sought to appeal a decision of a delegate of the Registrar of Trade Marks, who dismissed the applicant's opposition to the registration of a trade mark by Nettlefold Signs Pty Ltd (the respondent). The applicant argued that the use of the trade mark "nettlefold signs" would be likely to deceive or cause confusion and that it would otherwise not be entitled to protection in a court of justice, under s 28(a) and (d) of the Trade Marks Act 1955 (Cth). The appeal was governed by the provisions of the Trade Marks Act 1955 (Cth) and was by way of hearing de novo. Before the delegate and on this appeal the applicant relied on ss 28(a) and (d) of the Act.

The court held that the applicant had discharged the onus of establishing a reputation in its mark sufficient to found an objection under s 28 of the Act. The court was satisfied that at the priority date the applicant had a substantial reputation in connection with the name "Nettlefold." The applicant's promotional campaign in early 1989 would have been likely to increase public awareness of a name already well known in connection with outdoor advertising since the early 1970s. The display of the name on the applicant's advertising sites would indicate to the public that a business using the name "Nettlefold" had a connection with the organisation of the advertisement. The court was also satisfied that there was a likelihood of deception or confusion because both marks used a surname in lower case, which would make people think that the mark in suit was merely a variation or re-modelling of the applicant's mark. The chevron device and other embellishments in the respondent's mark would not be enough to counter such a reaction in the minds of most people. However, the court was not satisfied there was "blameworthy conduct" on the part of the respondent. The respondent's conduct also has to be viewed in the context that the present controllers paid a large amount of money essentially for the use of the name "Nettlefold" in connection with a business which could properly be described as a sign business.

The court held that the requirement of s 28(d) was cumulative on s 28(a) of the Act. The court was bound by the decisions of the Full Court in Riv-Oland and Murray Goulburn. The court ordered that the application be dismissed with costs including reserved costs.