PB Foods Ltd v Malanda Dairy Foods Ltd

The case of PB Foods Ltd v Malanda Dairy Foods Ltd involved an appeal by PB Foods Ltd (formerly Peters (WA) Limited) against a decision of a delegate of the Registrar of Trade Marks, who had refused PB Foods' application for the registration of the trade mark CHOC CHILL unless it agreed to limit such registration to the State of Western Australia. PB Foods sought orders for the registration of the trade mark without territorial limitation, or alternatively with less restrictive territorial limitation. Malanda Dairy Foods Ltd opposed the application, asserting its prior use of the trade mark CHILL for flavoured milk products in Queensland and the Northern Territory. The key legal issues revolved around whether the trade mark CHOC CHILL was substantially identical to the trade mark CHILL, whether there was honest concurrent use, and if there were special circumstances warranting the registration of CHOC CHILL.

The Federal Court considered the substantial identity of the trade marks CHOC CHILL and CHILL, noting that the marks were largely identical except for the prefix "Choc" in the applicant's mark. The court found that the marks were indeed substantially identical, as the difference in the prefix did not significantly alter the overall impression of the marks. Regarding honest concurrent use, the court examined the six established criteria, including the honesty of use, extent of use, degree of confusion likely to ensue, instances of confusion, relative inconvenience, and any conditions or limitations. PB Foods argued that once the honesty of use was established, other factors were of lesser importance. However, the court held that while the use by both parties was honest, the extent of use and the geographical separation of the markets were critical. The court found that the period of concurrent use was too short to justify registration on that basis alone. Nevertheless, the court identified special circumstances, such as the short period between the commencement of use by both parties and the similar extent of independent use in geographically separate regions, which allowed for the exercise of discretion under the Trade Marks Act. The court concluded that the registration of CHOC CHILL could proceed, subject to a limitation to the State of Western Australia.

The court varied the delegate’s decision by extending the period within which PB Foods could agree to the territorial limitation of registration to two months from the date of the judgment. The application was otherwise dismissed, and PB Foods was ordered to pay the respondent's costs of the application.