Opposition by Cadbury UK Limited to extension of protection under regulation 17A.33 of the

[2025] ATMO 93

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Cadbury UK Limited to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2327244 (International Registration number 1706892) (class 30) – CRUNCHIEZ SURPIZE (figurative) - in the name of RELKON HELLAS

Delegate:

Timothy Brown

Representation:

Opponent: Andrew Sykes of Counsel, instructed by Griffith Hack

Holder: Thomson Geer

Decision:

2025 ATMO 93

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ss 44, 58, 60 and 42(b) nominated – s 60 established – extension of protection refused.

Background

1. This decision concerns an opposition brought by Cadbury UK Limited (‘Opponent’) under s 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection of following International Registration Designating Australia:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade Mark Number

2327244

International Registration Number

1706892

Trade Mark

(‘IRDA’)

Filing Date

25 October 2022

Owner

RELKON HELLAS (‘Holder’)

Goods

Class 30: Chocolate wafers; chocolates; chocolate caramel wafers; chocolate waffles; chocolate; wafered pralines; pralines made of chocolate; pralines; wafers; sweetmeats [candy]; chocolate candies; lollipops [confectionery]; sugar candy [for food]; bonbons made of sugar; ice creams containing chocolate; ice cream; confectionery ices; cones for ice cream; ice cream confectionery; chocolate for confectionery and bread; ice confectionery; jelly beans; gum sweets.

(‘Holder’s Goods’)

1. The IRDA was examined and advertised for possible extension of registration on 3 April 2023. The Opponent filed a Notice of Intention to Oppose on 12 April 2023, followed by a Statement of Grounds and Particulars on 5 May 2023. The Holder filed a Notice of Intention to Defend the opposition on 25 August 2023.

2. In accordance with the Regulations, the Opponent filed evidence in support of the opposition on 30 November 2023. The Holder filed evidence in answer on 4 March 2024. On 13 May 2024, the Opponent filed its evidence in reply.

3. At the conclusion of the evidence stage, the parties had the opportunity to request a hearing. Both parties requested to be heard. On 25 February 2025, I heard the matter as a delegate of the Registrar of Trade Marks (‘Registrar’). The Opponent filed written submissions prior to the hearing and was represented by Andrew Sykes of Counsel with instruction from Simon Gapes of Griffith Hack. The Holder did not file written submissions, nor appear at the hearing.

Grounds, Onus and Relevant Date

1. Regulation 17A.34 provides that an extension of protection may be opposed on any of the grounds on which an International Registration Designating Australia may be rejected and, on the grounds set out in ss 58 to 61 and 62A of the Act.

2. The nominated grounds of opposition are ss 42(b), 44, 58, and 60. The Opponent did not press s 58. The Opponent bears the onus of establishing the ground of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the priority date of the IRDA, 25 October 2022 (‘Relevant Date’).

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The following evidence was filed:

Declarant and Position	Date	Annexures
Evidence in Support
Meaghan Brodie, Marketing Manager of Mondelez Australia Pty Ltd (‘Brodie’)	29 November 2023	Annexures 1 to 6, including Confidential Annexures 3 and 4.
Evidence in Answer
Pantelis Taselaridis, Managing Director of the Holder (Taselaridis’)	1 March 2024	Annexures PT-1 to PT-17
Evidence in Reply
Rachael Lopez, associate lawyer at Griffith Hack (‘Lopez’)	13 May 2024	Annexures RCL-1 to RCL-6.

Opponent

1. The Opponent is a chocolate and confectionery company founded in 1824 in Birmingham, England. According to Brodie, the Opponent is currently a subsidiary of Mondelez International. Brodie attests that the Opponent is the owner of several well-known chocolate brands, including CRUNCHIE (‘Opponent’s Mark’). Brodie declares that the Opponent first began using the Opponent’s Mark in the United Kingdom in 1929 and introduced it in Australia during the 1950s. Annexed to Brodie are screenshots showing information summarising the history of the Opponent’s Mark from Wikipedia and Brodie Annexure 1.

Brodie declares that the Opponent’s Mark has been used primarily as the trade mark for a chocolate covered toffee honeycomb confection. Its use has since extended to a range of different food and beverage products, including milkshakes, doughnuts, ice cream and cakes. Products branded under the Opponent’s Mark are consistently represented with packaging in yellow or gold in combination with the colour purple. Brodie includes illustrative examples, such as:

The Opponent is the owner of a number of registered trade marks in Australia, relevantly:

Trade Mark Number	Trade Mark	Priority Date	Goods
592694	CRUNCHIE	18 December 1992	Class 30: Chocolate confectionery
887478	CRUNCHIE	29 August 2001	Class 29: Flavoured milk Class 30: Chocolate confectionery; ice cream products
2133977	CRUNCHIE	5 November 2020	Class 30: Non-medicated confectionery, chocolate, chocolate confectionery, sugar confectionery, frozen confectionery, ice cream, ices, frozen desserts, muesli desserts and ice cream desserts, chilled desserts, cakes, biscuits, bakery products, cheesecakes, donuts, waffles, sweets, chewing gum, cocoa; cocoa beverages; chocolate beverages; cookies; brownies; wafers; chocolate spreads; frozen yoghurt; dough products; puddings

1. Annexed to Brodie are the sales figures in Australia from 2020 to 2023 for chocolate, chocolate products, and licensed ice cream products bearing the Opponent’s Mark.[5] Omitted from these figures are Easter egg sales. Also annexed to Brodie are Australian sales figures from 2020 to 2023 for cakes, donuts and chocolate spreads bearing the Opponent’s Mark.[6] According to Brodie, products bearing the Opponent’s Mark are sold across Australia in supermarkets, department stores, service stations, convenience stores, and similar retailers, including Coles, Woolworths, IGA stores, 7-Eleven, Big W and Kmart. Brodie includes photographs of retailers offering products bearing the Opponent’s Mark for sale.[7]

   [5] Ibid Confidential Annexure 3.

   [6] Ibid.

   [7] Ibid Annexure 5.

2. Brodie also includes historical examples of advertisements bearing the Opponent’s Mark in Australia, including screenshots of video advertisements from 1959, 1966, 1982, 1985, 1986 and 1988.[8] Annexed to Brodie are the marketing expenditure figures of Mondelez Australia Pty Ltd (‘Mondelez Australia’) for products bearing the Opponent’s Mark from 2020 to 2023. Brodie declares that Mondelez Australia is an authorised user of the Opponent’s Mark.[9]

   [8] Ibid Annexure 6.

   [9] Ibid [4].

3. Lopez provides details on the licensed use of the Opponent’s Marks by Australian Food Group and Krispy Kreme, along with screenshots of Australian retailers offering for sale products bearing the Opponent’s Mark. Examples from Lopez are reproduced below:

[10]

[10] Lopez Annexure RCL-1a to 3a.

1. Lopez includes photographs of the Opponent’s products with Opponent’s Mark being sold next to the Holder’s products at the Reject Shop and Kmart in Northland Shopping Centre, Preston, Victoria.[11] Also annexed to Lopez are screenshots of search results for ‘crunch’ and ‘crunchie’ conducted at the websites of various online retailers, including kmart.com.au, catch.com.au and target.com.au. These search results include both the Holder’s and Opponent’s products.[12]

   [11] Ibid Annexure RCL-4a.

   [12] Ibid [11]; Annexure RCL-4d.

Holder

1. The Holder is an importer and distributor of chocolate and confectionery established in 1997. Taselaridis declares that the Holder began using the IRDA in Australia in August 2023 for a product consisting of a wafer with praline filling shaped like an ice cream, containing a hidden toy. Mr Taselaridis explains that the word ‘CRUNCHIEZ’ was chosen to convey the texture, that is, the ‘crunchiness’, of the Holder’s product.

2. The Holder’s product is available in Australia via third party retailers, including Kmart, The Reject Shop and independent grocers. Annexed to Taselaridis are the Holder’s sales in relation to goods sold under the IRDA in Australia since August 2023, and an estimation of the Holder’s annual revenue. Annexed to Taselaridis are photos from 22 February 2024 of the Holder’s goods at Kmart and the Reject Shop, and screenshots from various retailers’ websites displaying the goods for sale.

3. Mr Taselaridis declares that the Holder utilises a number of advertising mediums to promote its goods, including television commercials, social media and influence advertising. No examples are provided. However, included in Taselaridis is the Holder’s advertising expenditure since August 2023.[13]

   [13] Ibid Confidential Annexure PT-7.

4. Annexed to Taselaridis is an extract from the Holder’s registration with the United States of America Patents and Trademarks Office (serial number 79360027) (‘US Designation’).[14] According Taselaridis, the US Designation was objected to on the basis that ‘CRUNCHIEZ’ is a misspelling of ‘crunchies’, and the Holder was required to disclaim the exclusive right to use the word ‘crunchies’.

Discussion and Reasons

[14] Taselaridis Annexure PT-12.

Section 60

1. Section 60 provides:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To establish this ground of opposition, the Opponent must establish:

   • a reputation was acquired by another trade mark in Australia before the Relevant Date; and
   • because of the reputation of the other trade mark, use of the IRDA would be likely to deceive or cause confusion.

3. The Opponent relies on its use of the Opponent’s Mark in Australia and contends that as of the Relevant Date the Opponent’s Mark had established a reputation in Australia in connection with chocolate, confectionery and other food products, such that use of the IRDA would be likely to deceive or cause confusion.

Reputation

1. Reputation in the context of section 60 involves recognition of the other trade mark by the public generally’.[15] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[16]

   [15] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [16] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[17] or by providing evidence of high volume of sales,[18] advertising expenditure or other promotion of goods or services to which the trade mark applies.[19] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[20]

   [17] Ibid [118].

   [18] McCormick (n 15) [86].

   [19] Ibid.

   [20] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. The reputation of the trade mark must be amongst a significant or substantial number of persons.[21] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[22] In this case, the relevant market is an expansive and large section of the Australian community, being the Australian population who buy, sell or consume chocolate or confectionery.

   [21] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [22] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

4. The evidence adduced by Opponent indicates that the Opponent’s Mark has been used for a significant period in Australia. This is supported with historical examples of advertisements of goods bearing the Opponent’s Mark from various dates between 1959 and 1988,[23] and contemporary examples of sale displays from supermarket retailers.[24]Although the sale figures and advertising expenditure provided by the Opponent pertain to a more contemporary period (2020 to 2023), they demonstrate significant volume of sales and substantial marketing expenditure in Australia in the years leading up to the Relevant Date. The sales figures are so significant, particularly noting the relatively inexpensive nature of chocolate and confectionery, that in my view, the Opponent’s Mark and its connection with confectionery would be widely recognised by most of the Australians public. Accordingly, I am satisfied that the Opponent’s Mark had acquired a strong reputation in Australia as of the Relevant Date in relation to chocolate and confectionery.

   [23] Brodie Annexure 6.

   [24] Ibid Annexure 5.

Likelihood of deception or confusion

1. The existence of a reputation does not necessarily mean use of the IRDA would be likely to deceive or cause confusion. The Opponent must establish a causal connection between the reputation of the Opponent’s Mark and the likelihood that notional use of the IRDA will deceive or cause confusion. The standards of deception and confusion were explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:[25]

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[26]

   [25] [1979] 19 RPC 410.

   [26] Ibid 423.

2. The test for deception or confusion turns on whether use of the IRDA would result in a reasonable number of people being caused to wonder whether the Holder’s Goods derive from the same trade source as another trade mark.[27] There must be a real tangible danger of deception or confusion occurring.[28] Section 60 does not require that the Holder’s goods be similar to those associated with the reputation of the Opponent’s Mark, nor that the relevant trade marks be substantially identical or deceptively similar in the manner of s 44. However, the similarity of the trade marks, and whether there is a connection between the Holder’s Goods and those in which the relevant reputation lies remain relevant considerations.[29]

   [27] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

   [28] Qantas Airways Limited v Edwards [2016] FCA 729, [145] (Yates J).

   [29] Ibid [142].

3. Taselaridis contains assertions that the Holder’s Goods and those associated with the Opponent’s Mark are not sold in close proximity. In support, Taselaridis provides photographs showing both the Opponent's goods and the Holder's goods, each bearing their respective trade marks, offered for sale in Kmart and The Reject Shop. I do not find the Holder’s assertions or evidence persuasive. The Holder’s Goods in Class 30 can be broadly characterised as confectionery and specifically include chocolate. These goods are the same or, at the very least, of a similar nature to the goods associated with the reputation of the Opponent’s Mark. The photographs which depict the Opponent’s and Holder’s goods, only serve to further convince me that consumers are likely to encounter both trade marks when purchasing the relevant goods. This is also evident in the examples from Lopez, which show the goods of parties, each bearing their respective trade marks, being sold on the shelves displaying confectionery in relative proximity.

4. Regarding the similarity of the trade marks, the Opponent submits that the trade marks are likely to be confused, noting:

• CRUNCHIEZ is a prominent element of the IRDA;

• The ‘z’ in ‘CRUNCHIEZ’ merely indicates a plural of ‘CRUNCHIE’.

• The element ‘SURPRISE’ is descriptive of products containing a concealed surprise, such as a toy, and does not serve to mitigate the chances of confusion.

1. In my view there is a significant degree of similarity between the trade marks. The Opponent’s Mark is comprised of the sole word ‘CRUNCHIE’ whilst the IRDA is comprised of the words ‘CRUNCHIEZ SURPISE’. ‘CRUNCHIE’ and ‘CRUNCHIEZ’ are variations of the word ‘crunchy’. Whilst ‘crunchy’ may describe the texture of some of the goods associated with the trade marks, ‘CRUNCHIE’ and ‘CRUNCHIEZ’ remain the main identifying features of the trade marks. Notably, both trade marks use the spelling variation ‘IE’ in place of ‘Y’.  In the case of the Opponent’s Mark, ‘CRUNCHIE’ is the sole element, whilst in the IRDA it is positioned above the ‘SURPRISE’ element of the trade mark. I consider this would lead to consumers identifying ‘CRUNCHIEZ’ as the leading element of the IRDA. The words ‘CRUNCHIE’ and ‘CRUNCHIEZ’ differ by only one letter, and consumers are likely to see ‘CRUNCHIEZ’ as the plural of ‘CRUNCHIE’. The addition of the word ‘SURPISE’ from the Opponent’s Mark is not sufficient to distinguish the two trade marks. The addition does little to alter the overall impression of the IRDA, in part due to the different stylisation of the ’CRUNCHIEZ’ and ‘SURPISE’ elements.

2. For these reasons I am satisfied that consumers familiar with the reputation of the Opponent’s Mark would have cause to wonder whether goods sold under the IRDA derive from the same source as those sold under the Opponent’s Mark and that use of the IRDA would likely result in confusion because of the reputation of the Opponent’s Mark. Accordingly, the ground of opposition under s 60 has been established.

Decision

1. Regulation 17A.34N(1) provides:

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

1. The Opponent has established a ground of opposition under s 60. Accordingly, I refuse to extend protection to trade mark number 2327244.

Costs

1. Both parties sought an award of costs. As the Opponent was successful in its opposition, I award costs against the Holder in accordance with Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

27 May 2025