Noshu Foods Pty Ltd v Torquay Beverage Company Pty Ltd

Noshu Foods Pty Ltd (‘Opponent’) opposed the registration of the trade mark NO.SH HARD SODA WATER (figurative) by Torquay Beverage Company Pty Ltd (‘Applicant’) in Class 33 for alcoholic beverages. The opposition was brought under section 52 of the Trade Marks Act 1995 (Cth), with grounds raised under sections 42(b), 43, and 60 of the Act. The relevant date for determining the rights of the parties was 15 May 2020, being the filing and priority date of the Applicant’s trade mark application.

The legal issues before the delegate were whether the Applicant's trade mark should be refused registration on the grounds that it was likely to deceive or cause confusion under section 43, or whether its use would be likely to deceive or cause confusion due to the Opponent's trade mark having acquired a reputation in Australia under section 60. The Opponent also initially raised a ground under section 42(b), but this was not pressed. The delegate also considered preliminary matters regarding the admissibility of late-filed evidence and the scope of the section 43 claim.

The delegate determined that the Opponent had failed to establish its grounds of opposition. Regarding the section 43 ground, the Opponent attempted to argue that the words "HARD SODA WATER" in the applied-for mark conveyed a misleading connotation, but this argument had not been pleaded in the Statement of Grounds and Particulars and was therefore not considered. The delegate found that the Opponent had not established that its mark NOSHU had acquired a reputation in Australia sufficient to cause deception or confusion under section 60, noting that reputation must be established as a fact and cannot be assumed. The Opponent's attempt to introduce late-filed financial evidence was also refused due to procedural irregularities and a lack of compelling justification.

Consequently, the delegate found that no grounds for opposition had been established and ordered that the trade mark application proceed to registration.