PB Foods Limited v Malanda Dairyfoods Limited

This decision concerns an opposition by Malanda Dairyfoods Limited (Malanda) to the registration of the trade mark CHOC CHILL, application number 577936, filed by PB Foods Limited (PB Foods). The opposition was brought under the provisions of the *Trade Marks Act 1955* (Cth). Malanda contended that its prior use of the trade mark CHILL for flavoured milk rendered PB Foods' application for CHOC CHILL either substantially identical or deceptively similar, likely to deceive or cause confusion, and that the proposed endorsements for variations of the mark were also problematic.

The delegate was required to determine several legal issues, including whether the use of CHOC CHILL by PB Foods could be attributed to the applicant itself, given that evidence indicated use by its subsidiary, Brownes Dairy Pty Ltd. The delegate also had to consider Malanda's claim to proprietorship based on prior use of the CHILL trade mark, and whether the CHOC CHILL mark, with its proposed variations, was substantially identical or deceptively similar to CHILL, leading to a likelihood of deception or confusion. Finally, the delegate had to assess the applicability of provisions relating to honest concurrent use or other special circumstances.

The delegate reasoned that use by a wholly-owned subsidiary like Brownes Dairy Pty Ltd could be attributed to the parent company, PB Foods, as the necessary control mechanism existed. Regarding proprietorship, the delegate found that while the marks were not identical, the CHOC CHILL mark, with its variable descriptive component, created a total impression of similarity when compared to Malanda's CHILL mark, supporting Malanda's claim to prior proprietorship. However, the delegate also considered the limited period of concurrent use and the geographically separated markets. Ultimately, the delegate found that while Malanda had established prior proprietorship, special circumstances, including the short period of concurrent use and the distinct geographical markets, allowed for the exercise of discretion under section 34(1) of the Act.

Accordingly, the delegate ordered that the application for the trade mark CHOC CHILL would be registered, but subject to a limitation to the State of Western Australia, unless PB Foods indicated its agreement to this territorial limitation within two months, in which case the application would be refused.