Omega Diagnostics Limited v Nutritics Limited

This decision concerns an opposition by Omega Diagnostics Limited (the Opponent) against two Australian trade mark applications filed by Nutritics Limited (the Applicant), specifically applications 2272277 and 2272279, which both relate to the mark FOODPRINT. The Opponent sought to oppose these applications on grounds including sections 44 and 58 of the *Trade Marks Act 1995* (Cth). The core of the dispute revolved around whether the Opponent had established prior use of its FOODPRINT app and associated marks in Australia, and whether its goods and services were of the "same kind" as those sought by the Applicant.

The Delegate was required to determine whether the Opponent had successfully demonstrated that its FOODPRINT app was available in Australia prior to the relevant dates for the applications. Further, the Delegate had to consider whether the Opponent's food intolerance diagnostic tests were the "same kind of thing" as the Applicant's goods and services, as defined by the Act, and whether the Opponent's trade marks were substantially identical to the Applicant's trade marks. The Delegate also addressed whether the Opponent could rely on grounds not fully particularised in its Statement of Grounds and Particulars.

In reaching a decision, the Delegate found that the Opponent's evidence did not establish that the FOODPRINT app was available in Australia before the relevant dates, noting that an award from an Australian design program did not necessitate Australian availability or sale. The Delegate also concluded that while the Opponent's evidence demonstrated use of its marks for food intolerance diagnostic tests, this did not constitute trade in the broader categories of goods and services pleaded, such as computer hardware, software, or online databases. Applying the principle that "same kind of thing" requires goods or services to be essentially the same or true equivalents, the Delegate determined that the Opponent's diagnostic tests were not the same kind of thing as the Applicant's goods and services. Consequently, the section 58 ground of opposition was unsuccessful, and it was not necessary to consider the substantial identity of the trade marks.

The Delegate ordered that the Opponent's opposition be dismissed and that the applications proceed to registration one month from the date of the decision, unless an appeal was filed. The Applicant was awarded costs against the Opponent, with costs for one application being on the standard scale and for the other application being on a reduced scale.