Opposition by Rafic Pty Limited to registration of trade mark application number 2102375 (class 30) -

[2025] ATMO 85

TRADE MARKS ACT 1995

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

Re:Opposition by Rafic Pty Limited to registration of trade mark application number 2102375 (class 30) - ROWNTREES - in the name of Société des Produits Nestlé S.A.

Delegate:

Nicole Worth

Representation:

Opponent: Hazan Hollander

Applicant: Banki Haddock Fiora

Decision:

2025 ATMO 85

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 44 considered – goods of the same description – s 44 partially established – goods amended – trade mark to proceed to registration.

Background

1. This decision is pursuant to an opposition by Rafic Pty Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] (‘Act’) to registration of the trade mark detailed below, in the name of Société des Produits Nestlé S.A. (‘Applicant’).

   Trade mark:             ROWNTREES (‘Trade Mark’)

   Application no.:                  2102375

   Filing date:  9 July 2020

   Goods:Class 30: Cocoa and cocoa-based beverages; chocolate-based beverages; fruit gums, fruit pastilles, jelly candies; sugar; chewing gum; water ices, frozen yoghurts (‘Applicant’s Goods’).

   Endorsement:  Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [1] All references to sections or regulations in this decision are references to sections of the Trade Marks Act 1995 (Cth) or regulations of the Trade Marks Regulations 1995 (Cth), unless otherwise indicated.

2. The application to register the Trade Mark was filed on 9 July 2020. It was examined as required by s 31 and in due course was accepted for possible registration under the provisions of s 44(4) (indicating that a prior similar mark had posed a barrier to the Trade Mark’s acceptance but the Applicant filed evidence of prior continuous use of its Trade Mark in order to gain acceptance). The acceptance was advertised on 2 May 2023.

3. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 24 July 2023. The Applicant subsequently filed its Notice of Intention to Defend the application for registration.

4. Evidence was filed in due course, discussed further below, after which the parties requested a hearing. I heard the matter, as a delegate of the Registrar of Trade Marks, on 19 March 2025. The Opponent was represented by Peter Whitehead of Hazan Hollander, who made oral and written submissions on the Opponent’s behalf. The Applicant was represented by Alison McGinn and Vina Ngo of Banki Haddock Fiora, who made written and oral submissions on the Applicant’s behalf.

Grounds and Onus

1. The SGP nominated grounds of opposition under ss 44 and 42(b). The basis for the ground under s 44 is the Opponent’s registered trade mark ROWNTREE’S, and the basis for the ground under s 42(b) is that use of the Trade Mark would constitute infringement of the Opponent’s trade mark under s 120. The Opponent did not press the ground under s 42(b), and so I treat the ground as abandoned. To successfully oppose registration the Opponent needs to establish the ground under s 44.

2. The onus of proof rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are determined is the filing date of the application,[4] which is also the priority date for the purpose of s 44.

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

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, 594 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’).

Evidence

1. The evidence filed in this matter comprises declarations by the following:

   Evidence in Support

   Katie Lau, lawyer at Hazan Hollander, with exhibit KL-1, dated 12 December 2023 (‘Lau’).

   Evidence in Answer

   Vina Ngo, solicitor at Banki Haddock Fiora, with exhibits VN-1 to VN-10, dated 15 March 2024 (‘Ngo’).

   Exhibit VN-3 to Ngo is a declaration by Alex I, Customer Business Manager – New Business of Nestlé Australia Ltd, an authorised user of trade marks owned by the Applicant (‘Alex I’). Alex I was originally filed in respect of a previous dispute between the parties.

   Exhibit VN-4 to Ngo is another declaration by Alex I, filed during the examination of the Trade Mark in response to the ground for rejection under s 44 raised by the examiner (‘Alex I2’).

2. For the Opponent, Lau identifies that the Opponent is the registered owner of the following trade mark:

   Trade mark:             ROWNTREE’S (‘Opponent’s Trade Mark’)

   Application no.:                  2070040

   Filing date:  19 February 2020

   Goods:Class 30: Biscuit products; Biscuits; Snack bars consisting of chocolate; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Snack food products made from rice; Snack foods made from corn; Snack foods made of wheat; Snack foods prepared from cereals; Snack foods prepared from grains; Snack foods prepared from maize; Snack foods prepared from potato flour; Snack products made of cereals; Snack products made principally of cereals; Snacks manufactured from cereals; Snacks manufactured from muesli; Snack foods consisting principally of bread; Snack foods consisting principally of pasta. (‘Opponent’s Goods’)

3. The single exhibit to Lau is a bundle of printouts of the results of searches for products at the websites ‘ ‘ and ‘ collectively named the ‘Online Product Listings’. The Online Product Listings comprise a selection of products offered by the brands Pana Organic, Hershey’s, Cadbury, Freedom Foods, Mars, Bounty, Oreo, Snickers, Reese’s, Milo, M&M and Sanitarium. It demonstrates that the aforementioned brands have products ranging from confectionery, snack bars and chocolate bars, frozen desserts and ice cream, milk beverages and preparations for making beverages, muesli, cereals and biscuits.

4. For the Applicant, Ngo sets out a history of the Trade Mark. The Applicant formerly owned several Australian trade mark registrations containing or comprising ROWNTREE or ROWNTREE’S in respect of goods including chocolate, confectionery, jellies, biscuits and snack foods. Extracts of thirteen trade marks are provided, the earliest of which is dated 1940. It is declared that all these registrations have been removed from the Register as they were not renewed owing to a commercial decision by the Applicant not to do so.

5. Ngo also sets out that the parties have been involved in a previous opposition, wherein the Applicant opposed registration of the Opponent’s Trade Mark. The Alex I declaration was filed in support of the grounds of opposition nominated, and during those proceedings the Opponent deleted some of the goods specified in the Opponent’s Trade Mark. Ultimately however, the Applicant was unable to establish any of its nominated grounds in that opposition. According to Ngo, the Applicant made a commercial decision not to file an appeal in that matter and so the Opponent’s Trade Mark proceeded to registration.

6. During examination of the Trade Mark, the Opponent’s Trade Mark was raised as the basis for a ground for rejection under s 44. In response, the Applicant filed Alex I2. Ngo declares that following discussions with the examiner it was determined that:

   “Cocoa and cocoa-based beverages; chocolate-based beverages; sugar; chewing gum; water ices, frozen yoghurts” were not similar goods to [the Opponent’s] Amended Goods;

   and

   “fruit gums, fruit pastilles, jelly candies” were goods on which [the Applicant] had shown prior continuous use.[5]

   [5] Ngo, [19].

7. The specification of the goods of the Trade Mark was amended accordingly, and the application was accepted under the provisions of s 44(4).

8. Under the heading ‘Dissimilarity of [the Opponent’s] Amended Goods and [the Applicant’s] Goods’, Ngo exhibits screenshots of the results of various searches of the websites ‘ ‘ and ‘ The search terms used reflect the parties’ goods, such as ‘chocolate milk’, ‘sugar’, ‘chewing gum’ and ‘ice blocks’ in respect of the Applicant’s goods, and ‘biscuits’, ‘snack bars’ and ‘cereal snacks’ in respect of the Opponent’s goods (these are not exhaustive lists of the search terms shown in Ngo). The results of the searches indicate, to varying degrees, differences in the brands under which those goods are sold.

9. Alex I and Alex I2 give a more detailed account of the history of the Trade Mark. I mention here that Alex I is more than 1100 pages long and no specific reference is made to it in the Applicant’s submissions. Additionally, it would appear that the relevant information in Alex I has been duplicated in Alex I2. That which has not been duplicated relates primarily to use in the UK or in jurisdictions other than Australia. For these reasons I do not refer to Alex I from this point onwards.

10. According to Alex I2, a grocery store named William Tuke and Sons was established in York, England in 1725, which expanded and specialised in the sale of tea, chocolate and roasted coffee beans. The owners of the store sold their interest in the chocolate and cocoa division to Henry Isaac Rowntree in 1862. He and his brother established Rowntree & Co. The brand and range of goods under the name ROWNTREE expanded, primarily to various chocolate and fruit confectionery products. In 1988 the Applicant acquired the Rowntree company, which at that time was the world’s fourth biggest manufacturer of confectionery and chocolate. After the acquisition, the Applicant kept ROWNTREE as the name of its fruit confectionery range.

11. The Applicant asserts to have first used the Trade Mark in Australia in 1927, and possibly earlier. Since 2014 ROWNTREE branded goods have been provided in Australia by British Provender, an authorised distributor, and the goods may be purchased in major supermarkets, specialty stores that sell British goods, and online retailers such as Amazon Australia. Screenshots and archived web pages of these various retailers, including Coles and Woolworths, show the goods sold in Australia to be fruit gums, fruit pastilles and jelly candies.[6] The archived web pages date from 2015 to 2019 and the screenshots are as at the date of the Alex I2 declaration. Further use of the Trade Mark upon fruit confectionery is shown in Aldi catalogues dated from 2019, 2020 and 2021. Confidential sales figures for goods bearing the Trade Mark sold via British Provender are provided for the years 2018 to 2020. I would characterise the sales figures as relatively modest (compared to what was once clearly more significant trade under the Trade Mark), although still commercially significant.

    [6] Alex I2, Exhibits AI-5 and AI-6.

Section 44

1. The relevant provisions of s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)     Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)        a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)       a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)     …

   (3)     If the Registrar in either case is satisfied:

   (a)       that there has been honest concurrent use of the 2 trade marks; or

   (b)       that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

(4)     If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)       beginning before the priority date for the registration of the other trade mark in respect of:

(i)        the similar goods or closely related services; or

(ii)       the similar services or closely related goods; and

(b)       ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Note 3: For priority date see section 12.

1. The Opponent identifies the Opponent’s Trade Mark as the basis of the ground under s 44. In order to succeed on this ground, the Opponent must show that its trade mark has a priority date earlier than that of the Trade Mark, that its trade mark is registered in respect of goods which are similar to the goods of the Applicant, and that its trade mark is deceptively similar to, or substantially identical with, the Trade Mark.

2. It is straightforward that the Opponent’s Trade Mark has a priority date which is earlier than the Trade Mark. I consider it also straightforward that the parties’ trade marks are substantially identical: ROWNTREES (the Trade Mark) differing from ROWNTREE’S (the Opponent’s Trade Mark) only by the absence of an apostrophe.[7] The remaining issue is whether the Applicant’s Goods are similar to the Opponent’s Goods.

   [7] The degree of similarity was not canvassed widely in submissions, however the parties were in agreement that the trade marks were at least deceptively similar.

3. Section 14 of the Act provides the following definition of similar goods.

   Section 14 – Definition of similar goods and similar services

   (1)     For the purposes of this Act, goods are similar to other goods:

   (a)       if they are the same as the other goods; or
   (b)       if they are of the same description as that of the other goods.

4. The expression ‘of the same description’ is not defined but is a term of art that was described by Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd as: ‘the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception’.[8] As a corollary, the greater the similarity between goods sold by different traders, the greater the likelihood of confusion if they are sold under the same or deceptively similar trade marks. The purpose of the expression is the avoidance of confusion.[9]

   [8] [1993] FCA 203, [27].

   [9] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27, [71] (Moore, Edmonds and Gilmour JJ).

5. In assessing whether goods are of the same description, the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd observed:

   The fact that examination of the nature of the applicant's goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant's goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd. (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd. v. Boden per Latham C.J. [1945] HCA 12; (1945) 70 CLR 84, at p 90. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek's Application (1946) 63 RPC 59. Romer J. thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek's Case (1946) 63 RPC 59 the Assistant-Comptroller elaborated on the observations of Romer J. in the following manner: "In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek's Application (1946) 63 RPC 59, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are 'of the same description'": In re an Application by John Crowther & Sons (Milnsbridge) Ltd. (1948) 65 RPC 369, at p 372.[10]

   [10] Southern Cross (n 3), 606.

6. It is the Opponent’s position that the Applicant’s Goods and the Opponent’s Goods are of the same description. The Opponent makes submissions specifically in relation to the Applicant’s Goods ‘cocoa and coca-based beverages; chocolate-based beverages; water ices; frozen yoghurts’, referring to the Online Product Listings in Lau which identify brands that produce these as well as one or more of the Opponent’s Goods. The Opponent does not specifically address the Applicant’s Goods ‘sugar; chewing gum; fruit gums, fruit pastilles, jelly candies’, although in its oral submissions the Opponent made some criticisms of the evidence relied upon by the Applicant to establish prior continuous use.

7. The Applicant’s position is that it has already established prior continuous use of the Trade Mark in respect of ‘fruit gums, fruit pastilles, jelly candies’, thereby overcoming the ground of opposition in respect of these goods. The Applicant further submits that its remaining goods ‘Cocoa and cocoa-based beverages; chocolate-based beverages; sugar; chewing gum; water ices, frozen yoghurts’ are different to the Opponent’s Goods, and that the decision to allow acceptance of the Trade Mark in respect of these goods confirms this. It refers to the search results of major supermarkets in Ngo, which identifies the brands that produce each of the remaining goods.

8. It is convenient to address first the goods for which the Applicant was found to have established prior continuous use, being fruit gums, fruit pastilles and jelly candies. The Applicant did not contend that these goods were different to those of the Opponent, and I confirm that I consider them similar to the various snack foods of the Opponent, particularly snack bars consisting of chocolate. I therefore consider whether s 44(4) does apply (the Applicant did not press that either limb of s 44(3) applied). The Applicant’s evidence establishing prior continuous use of the Trade Mark from before 19 February 2020 (the priority date of the Opponent’s Trade Mark) is primarily contained in Alex I2.

1. Alex I2 establishes that Rowntrees became a prominent name worldwide in relation to confectionery and chocolate during the twentieth century, and that once acquired by the Applicant in 1988 the Trade Mark was retained as the name for fruit confectionery produced by the Applicant in the UK. At least one archived web page is exhibited for each year from 2015 to 2019 demonstrating use of the Trade Mark in respect of fruit gums, fruit pastilles and/or jelly candies sold by way of Australian websites.[11] ‘Planograms’ showing the placement of products in Coles and Woolworths in 2014 and 2015 demonstrate prominent placement in the ‘UK Foods’ section of those supermarkets,[12] and additional promotion of the goods in Coles was allegedly undertaken by British Provender in 2016 (evidenced by a table entitled ‘COLES SUPERMARKETS - SUPPLIER PROMOTIONAL PROPOSAL - FY15’).[13] Aldi catalogues from 2019 to 2021 include the Applicant’s fruit confectionery under the Trade Mark, although only one is dated before the priority date of the Opponent’s Trade Mark.[14] Sales figures for the years 2018 to 2020 show relatively moderate, though increasing, sales of goods under the Trade Mark in Australia.

   [11] Alex I2, Exhibit AI-6.

   [12] Ibid, Exhibits AI-7 and AI-8.

   [13] Ibid, Exhibit AI-9.

   [14] Ibid, Exhibit AI-11.

2. Whilst this evidence does not demonstrate continuous use of the Trade Mark since its first claimed use in Australia, it does nonetheless satisfy me that the Trade Mark has been used continuously since before the priority date of the Opponent’s Trade Mark in respect of fruit gums, fruit pastilles and jelly candies. The ground of opposition in respect of these goods is therefore not established.

3. The remaining goods are: cocoa and cocoa-based beverages; chocolate-based beverages; sugar; chewing gum; water ices and frozen yoghurts. I deal with these in turn below, grouping them together where relevant.

Cocoa and cocoa-based beverages; chocolate-based beverages

1. Cocoa is defined in the Macquarie Dictionary as ‘the roasted, husked, and ground seeds of the cacao, Theobroma cacao, from which much of the fat has been removed’ and ‘a beverage made from cocoa powder’.[15] The Applicant contends that cocoa is different to the various snack goods of the Opponent because cocoa powder is a raw ingredient, not a readily consumable product, and is sold in the baking section of supermarkets and specialty stores. In respect of cocoa being a raw ingredient, I acknowledge that it is different in nature from a readily consumable product. However, producers of readily consumable chocolate do also produce cocoa powder – whether it be in a form for baking or blended with other ingredients as a preparation for beverages (for example both Nestlé and Cadbury are trade marks applied to chocolate, baking cocoa powder and cocoa drink preparations).[16] Additionally, a significant sector of consumers conduct their shopping online. Depending on how those consumers search for products, for example by brand name, products such as the Opponent’s ‘snack bars consisting of chocolate’ may be displayed together with products such as the Applicant’s ‘cocoa’. The differentiation based upon separate placement of goods in supermarkets and shops is therefore diminished in the context of online shopping.

   [15] Macquarie Dictionary (online at 1 April 2025) ‘Cocoa’ (def 1 and 2).

   [16] Evidenced both in Ngo, Exhibit VN-5 and Lau, Exhibit KL-1

2. I note also that ‘cocoa’ does not refer strictly to cocoa powder but includes also the beverage made from cocoa powder. In this context it may be considered in the same way as ‘cocoa-based beverages’ and ‘chocolate-based beverages’.[17] It is evident from Lau that some brands are applied to both snack foods on the one hand, and ready to drink chocolate or cocoa based beverages on the other hand, such as Messy Monkeys and Sanitarium.[18] When preparations to make such beverages are also taken into account (such as powdered formulations to be mixed with a liquid of choice), then the number of brands coinciding with snack foods increases. Examples include Nestlé Aero, Milo, Pana Organic, Cadbury and Sanitarium.[19]

   [17] I mention that chocolate- and cocoa-based-milk falls in a different class to chocolate- and cocoa-based-beverages in the NICE classification of goods and services (being an international classification system of goods and services applied for the registration of trade marks). However, classification has been found not to be a decisive criterion upon which to determine whether or not goods are ‘of the same description’, as reflected in the quote from Southern Cross at [23] of this decision.

   [18] Lau, Exhibit KL-1.

   [19] Lau, Exhibit KL-1; Ngo, Exhibits VN-5 and VN-9.

3. Given that there are already in existence traders who produce the goods of the Applicant and the goods of the Opponent under the same trade mark, I consider there is a reasonable basis to conclude that consumers are likely to wonder whether ‘cocoa, cocoa-based beverages and chocolate-based beverages’ under the trade mark ROWNTREES comes from the same source as chocolate, biscuits and snack foods under the substantially identical trade mark ROWNTREE’S. Section 44(1) is therefore established in respect of ‘cocoa, cocoa-based beverages and chocolate-based beverages’.

4. Whilst the Applicant and its predecessors previously applied the Trade Mark to cocoa and chocolate products, it appears from the evidence that use of the Trade Mark in Australia has been confined to fruit gums, fruit pastilles and jelly candies since at least 2014. I am therefore not satisfied that the provisions of either ss 44(3) or 44(4) may be applied in respect of these goods.

5. For that reason, the ground of opposition under s 44 is established in respect of ‘cocoa and cocoa-based beverages; chocolate-based beverages’.

Sugar

1. The Opponent did not make any submissions specifically in respect of sugar and has not produced any evidence in relation to sugar. The Applicant submits that the purpose and nature of sugar is very different to the various snack foods of the Opponent, it being a raw ingredient produced by different manufacturers to those who produce the various snack foods in the Opponent’s Goods. Its evidence[20] shows that traders of sugar do not usually also trade in snack foods, biscuits or chocolate.

   [20] Ngo, Exhibit VN-6.

2. I agree with the Applicant’s position. The nature and purpose of sugar is that of a raw ingredient used to sweeten foods or beverages, not to be consumed as is. From the evidence and from my own knowledge, sugar producers are usually quite separate to producers of snack foods. Even bearing in mind the relative uniqueness of the name ROWNTREE, I am not satisfied that there is more than a mere possibility of confusion[21] as to the origin of the goods under the respective trade marks.

   [21] Southern Cross (n 3), 595.

3. The ground of opposition in respect of ‘sugar’ therefore fails.

Chewing gum

1. The Opponent did not provide any submissions or evidence specifically in relation to chewing gum. The Applicant submits that the nature and purpose of chewing gum is different to the Opponent’s snack foods, it being used to freshen the breath and clean teeth after eating. It also submits that the manufacturing process of chewing gum is different to the various snack foods of the Opponent.

2. At the same time, there is evidence of a nexus between chewing gum and confectionery (in particular the brands ‘Mentos’ and ‘Eclipse’ which are applied to chewing gum, breath mints and candy chews).[22] Whilst the nature of the Opponent’s confectionery is a further step removed from this (the Opponent’s confectionery being snack bars consisting of chocolate and snack bars containing a mixture of grains, nuts and dried fruits), they are goods nonetheless sold in close proximity in physical stores. In supermarkets, for example, chewing gum is usually sold in the same aisle as chocolate and confectionery, and at check outs they are commonly displayed side by side along with healthier snack foods such as the Opponent’s snack bars containing a mixture of grains, nuts and dried fruit. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J considered ‘goods of the same description’ and noted:

   Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[23]

   [22] Ngo, Exhibit VN-7.

   [23] [2020] FCA 1808, [286].

3. Bearing the above in mind, I consider it likely that consumers would at least be caused to wonder whether ROWNTREES chewing gum originated from the same source as ROWNTREE’S chocolate bars, and if displayed side by side, also ROWNTREE’S snack bars of grains, nuts and dried fruit.

4. As already stated, the Applicant’s evidence indicates that it has used its trade mark in Australia since at least 2014 only on fruit gums, fruit pastilles and jelly candies. I am therefore not satisfied that the provisions of either ss 44(3) or 44(4) may be applied in respect chewing gum.

5. Accordingly, the ground of opposition in respect of ‘chewing gum’ is established.

Water ices and frozen yoghurts

1. The Opponent’s evidence shows that chocolate confectionery and ice cream products are often sold under the same trade marks, including Pana Organic, Hershey’s, Cadbury and Mars.[24] Similarly, it is relatively common for biscuits, cereal based snack foods and ice cream products to be sold under the same trade marks, including Oreo, Milo and Sanitarium.[25]

   [24] Lau, Exhibit KL-1.

   [25] Ibid.

2. The Applicant submits that water ices are fundamentally different to ice creams, having a different taste, mouthfeel and texture. It also submits that frozen yoghurt, whilst slightly more similar to ice cream, is nonetheless still different and is often sought by consumers wanting a more healthy or nutritious option to ice cream. It emphasises that what is under consideration is not the similarity of water ices and frozen yoghurts to ice cream, but the similarity of water ices and frozen yoghurts (not ice cream) to biscuits, snack bars of chocolate and the various snack foods of the Opponent.

3. Whilst I accept that the nature of water ices and frozen yoghurts is different to the Opponent’s goods, I consider that the use and purpose of the parties’ goods are similar. Both are ready to eat snacks or treats, consumed not usually as a meal but as an indulgence. I am not persuaded that the differences in the precise nature of the parties’ goods renders the chance of confusion unlikely, particularly where the Opponent trades in (or intends to trade in) a broad array of ready to consume snack foods. The parties’ evidence provides some support for this position. Aside from producers of chocolate also producing ice cream and frozen confections,[26] it is evident that brands such as Milo and Sanitarium produce a range of cereal-based snack foods, beverages and frozen confections (including ice cream and frozen desserts made from soy).

   [26] Lau, Exhibit KL-1.

4. Accordingly, I consider there to be a reasonable likelihood that consumers will be confused as to whether water ices and frozen yoghurt under the ROWNTREES trade mark originates from the same source as the Opponent’s various snack foods under the ROWNTREE’S trade mark.

5. As previously indicated, the evidence does not support that the provisions of ss 44(3) or 44(4) may be applied to goods other than fruit pastilles, fruit gums and jelly candy. The ground of opposition is therefore established in respect of water ices and frozen yoghurt.

Resolution of the Opposition

1. The ground of opposition has been established in respect of some, but not all, of the Applicant’s Goods. Specifically, the ground of opposition under s 44 has been established in respect of ‘cocoa and cocoa-based beverages; chocolate-based beverages; chewing gum; water ices, frozen yoghurts’. The ground has not been established in respect of ‘sugar’ and the Applicant has established prior continuous use of the Trade Mark under s 44(4) in respect of ‘fruit gums, fruit pastilles, jelly candies’.

2. In such circumstances, the Registrar has the discretion to offer an amendment to the Applicant to amend its goods by removing those for which the ground of opposition has been established.[27] I consider it appropriate to exercise that discretion here.

   [27] The Registrar also has the discretion to refuse and application in its entirety, per Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [232] (Yates J). Circumstances that may lead to such refusal include where an amendment would result in fine distinctions between goods or services such that confusion would be likely; or where a specification is broad and little or no effort has been made by a party to indicate an amendment it believes will remove the likelihood of confusion.

3. On 29 April 2025 I advised the Applicant that I intended to refuse the application for registration unless the Applicant amended it by removing the words struck out below in the Applicant’s Goods:

   Class 30: Cocoa and cocoa-based beverages; chocolate-based beverages; fruit gums, fruit pastilles, jelly candies; sugar; chewing gum; water ices, frozen yoghurts.

4. The Applicant agreed to amend its goods on 9 May 2025.

5. The amendment has now been made. On that basis, trade mark application 2102375 may proceed to registration not less than one month from the date of this decision. If the Regsitrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs in this matter. As both parties have had a measure of success, I decline to award costs.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

19 May 2025