Nutrition for Life International, LLC v Merck & Co Inc

This matter concerned opposition proceedings before the Australian Trade Marks Office, brought by Nutrition for Life International, LLC (the opponent) against two trade mark applications by Merck & Co Inc (the applicant). The dispute centred on the opponent's claim to prior use and reputation in the mark "Nutrition For Life" in relation to a book, which it argued should prevent the registration of the applicant's marks. The opponent relied on grounds of opposition under sections 58 and 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the opponent had used the title of its book, "Nutrition For Life," as a trade mark in the course of trade, and whether this use, or a reputation established by it, was sufficient to succeed under sections 58 and 60 of the Act. Section 58 requires an opponent to demonstrate ownership of the trade mark, typically through prior use, while section 60 requires proof of a reputation in a substantially identical or deceptively similar mark at the time of the applicant's filing date, such that public deception or confusion would likely arise from the applicant's use. Both grounds necessitate the existence of a sign used as a trade mark prior to the applicant's filing date.

The Hearing Officer found that the evidence presented by the opponent, primarily a declaration from the author attesting to sales and publicity of the book "Nutrition For Life," did not establish that the book's title had been used as a trade mark in the course of trade. The Hearing Officer concluded that the sales and publicity generated by the book did not constitute trade mark use, and therefore the opponent could not rely on the book's existence to support its grounds of opposition under sections 58 and 60. Consequently, all grounds of opposition were dismissed.

The Hearing Officer ordered that the applicant's trade mark applications proceed to registration one month from the date of the decision, unless an appeal was filed. Costs were awarded against the opponent, Nutrition for Life International, LLC, in accordance with the official scale.