Pepsi-Cola Bottlers Australia Pty Ltd v Berri (NSW) Limited

[2001] ATMO 36

TRADE MARKS ACT 1995

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

Re:Opposition by Pepsi-Cola Bottlers Australia Pty Ltd to registration of trade mark application 777572(32) - SUNNY DELIGHT - filed in the name of Berri (NSW) Limited (formerly National Foods Juice Limited)

Background

Berri (NSW) Limited (formerly National Foods Juice Limited) ("the applicant") filed trade mark application 777572 on 5 November 1998. The application was for the word trade mark SUNNY DELIGHT and covered the statement of goods "mineral and aerated waters and other non-alcoholic drinks; fruit juices and fruit drinks" in Class 32

Following examination, the Registrar advertised the trade mark as accepted in the Australian Official Journal of Trade Marks on 17 June 1999. Pepsi-Cola Bottlers Australia Pty Ltd ("the opponent") filed notice of opposition to the trade mark's registration on 16 September 1999. That notice listed the following grounds of opposition:

1. The applicant is not the owner of the trade mark.

2. The trade mark is not capable of distinguishing the applicant's goods in respect of which the trade mark is sought to be registered from the goods or services of other persons.

3. The use of the trade mark would be contrary to law.

4. The use of the trade mark would be likely to deceive or cause confusion.

5. Such other grounds as may be allowed by the Registrar.

Requests for extension of time to serve evidence in support were filed on 16 December 1999 and 16 March 2000. The requests for extension were granted and evidence in support was due to be served by 16 June 2000. Despite notices of overdue evidence being sent to the opponent on 30 June 2000 and 12 January 2001, no evidence in support of the opposition has been served on the applicant or this office.

The applicant lodged evidence in answer on 22 September 2000. This evidence comprised a statutory declaration by Sally Maree Dunstan a solicitor employed by Corrs Chambers Westgarth, acting on behalf of the applicant. In answer to the notice of opposition, Ms Dunstan stated:

1. The opponent has not served evidence in support of its opposition. In particular it has not provided any evidence to support the five grounds of opposition listed in its Notice of Opposition dated 15 September 1999.

2. The filing date of the Trade Mark predates any application by the Opponent for a mark includes [sic] the words "SUNNY" or "DELIGHT" or any similar mark.

3. Further, a search of the Australian Trade Marks Register does not, I believe, disclose any record for a trade mark owned by the Opponent which would support the grounds listed in the Notice of Opposition.

4. I am advised by the Applicant that it is not aware of any use in Australia by the Opponent of an unregistered trade mark which would provide evidence in support of the grounds listed in the Notice of Opposition.

Neither party has requested to be heard in this matter. Accordingly, the issue has come to me as a delegate of the Registrar of Trade Marks to decide on the material held in this Office.

Evidence

As discussed above, there is no evidence in support of the opposition.

Evidence in answer to the opposition is the statutory declaration by Ms Dunstan discussed above.

The material on the Office file that I have considered is the clear report from the examiner.

Discussion

Under the Trade Marks Act 1995 ("the Act"), there is a presumption of registrability. Section 55 of the Act requires that "the Registrar must decide ... having regard to the extent (if any) to which any ground on which the application was opposed has been established." It follows that the proponent of the ground of opposition, the opponent, has the onus of establishing those grounds.

I am not aware of any judicial authority regarding the interpretation of "establishes" with respect to s55. However, Branson J in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498, at 505, when discussing s46(6) of the Act, stated "The applicant will so "establish" by placing before the decision-maker material upon which he or she is persuaded, on the balance of probabilities ..."

The opponent has not placed before me any material that could persuade me to any extent of any of the grounds on which the application was opposed. The applicant has provided evidence that negatives the grounds put forward by the opponent. The material on the Office file does not support the grounds of opposition.

Conclusion

I have found that none of the grounds relied upon by the opponent in the notice of opposition have been established. In my capacity as the delegate of the Registrar, I dismiss the opposition. I direct that, subject to any appeal from this decision, this application may proceed to registration on payment of the registration fee.

Jock McDonagh
Hearing Officer

14 May 2001