PURATOS v International Foodstuffs Co LLC

[2025] ATMO 161

TRADE MARKS ACT 1995

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

Re:Opposition by PURATOS to registration of trade mark application number 2306490 (class 30) - CREMFUL - in the name of International Foodstuffs Co LLC

Delegate:

Tracey Berger

Representation:

Opponent: Wynnes Patent & Trade Mark Attorneys Pty Ltd

Applicant: None

Decision:

2025 ATMO 161

Trade Marks Act 1995 (Cth) – opposition under section 52 – reg 4.15A considered and established – trade mark registration refused

Background

1. This is a decision on the opposition by PURATOS (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below filed in the name of International Foodstuffs Co LLC (‘Applicant’):

Trade Mark:               CREMFUL                  (‘Trade Mark’)

Number:2296775  (‘Application’)

Filing Date:                11 October 2022        (‘Relevant Date’)        

Specification:            Class 30: Chocolates, confectionery, candies, biscuits, cakes, pasta, macaroni, noodles, instant noodles, spaghetti, vermicelli, yeast, baking powder and other bakery ingredients, salad dressings, mayonnaise, vinegar, ketch up and sauces (condiments), ready to cook dough products, frozen dough, frozen parathas, ice creams, non-dairy frozen desserts, frozen fruit desserts, ice desserts, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, bread, pastry, treacle, salt, mustard, flour made from cereals, spices, food beverages (herbal), gravies, herbal tea, honey, popcorn

(‘Applicant’s Goods’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 March 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 22 April 2024.  The Applicant filed a Notice of Intention to Defend on 8 May 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support on 8 August 2024 consisting of a Statutory Declaration of Ewen Cardinal Wynne made on 7 August 2024 with Exhibits ECW-01 to ECW-17 (‘Wynne’). No other evidence was filed in the proceedings.

4.     Once the time for filing evidence had ended, the parties had an opportunity to request a hearing.  The Opponent requested a hearing by way of written submissions and the Applicant did not ask to be heard.  The Opponent’s submissions were filed on 24 June 2025.  I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine.  I do so based on the aforementioned materials.

Grounds and onus

5.     In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44/reg 4.15A, 58, 58A and 60. 

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the Trade Mark.

[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).

Evidence

7.     The Opponent, established in 1919, has been supplying ingredients for bakery products, pastries, chocolates, and similar goods since then.  Its products are available in over 100 countries. It employs over 9,000 people worldwide, including 31 in Australia. The Opponent operates subsidiaries in 81 countries (including Australia), has production facilities in 52 countries (including Australia), and maintains 93 support facilities globally, also including Australia.

8.     The Opponent first used the mark CREMFIL (‘Opponent’s Mark’) for its goods in 1996 and has been using this mark continuously in Australia since 2014.  The Opponent’s Mark is protected in Australia under registration number 1821099 (International Registration 1328461) (‘Opponent’s Registration’) as detailed below:

Number	Trade Mark	Priority Date	Specification
1821099 (IR 1328461)	CREMFIL	3/5/2016	Class 30:  Flour and preparations made of cereals; bread, pastry and confectionery; puff pastry; croissants, chocolate rolls and similar dough products, particularly dough products manufactured on the basis of puff pastry; frosting; fruit sauces; bread improvers being yeast or cereal based preparations; dough mixes and bread-making agents in powder and paste form; mixes for pastry cakes; yeast, yeast powder, baking soda and baking-powder; sugar and fondant; aromatic preparations for food; bavarois powders, custards and custard powders, pastry creams, flans and almond pastes; coffee, tea and cocoa; chocolate and chocolate products (‘Opponent’s Goods’)

9.     Wynne details the Opponent’s promotion of the Opponent’s Goods under the Opponent’s Mark on its websites at and on its social media accounts, and in product brochures.  Wynne provides the approximate annual value of sales of goods under the Opponent’s Mark for 2019-2022 and annual advertising expenditure for 2020-2022.

10.     The remainder of Wynne constitutes submissions which it is not necessary to summarise at this time.

Discussion

Regulation 4.15A

11.     Regulation 4.15A relevantly provides:

4.15A  Grounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

(1) For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

(ii) a trade mark in respect of which the Registrar has received notification of an IRDA;

held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

12.     To succeed on this ground of opposition, the Opponent must nominate a protected international trade mark(s) that meets the following requirements:

·is in the name of a person other than the Applicant (‘first requirement’);

·has a priority date which is earlier than the Relevant Date (‘second requirement’);

·covers goods and/or services which are either similar and/or closely related to the Applicant’s Goods (‘third requirement’); and

·is substantially identical with, or deceptively similar to, the Trade Mark (‘fourth requirement’).

13.     In its SGP, the Opponent nominates the Opponent’s Registration in support of this ground.  The Opponent’s Mark satisfies the first and second requirements in that the registration is in the name of a person other than the Applicant and has an earlier priority date than the Trade Mark.

14.     In relation to the third requirement, s 14 provides that two sets of goods are similar if they are the same or of the same description.  The factors to be considered are the nature of the goods, their uses and the trade channels through which they are bought and sold.[4]  The term ‘goods of the same description’ is given a wide construction and is not limited to ‘goods substantially analogous in kind, or commonly used as mere substitutes or alternatives the one for the other’.[5]  Two sets of goods are not necessarily similar simply because they are foods or intended for human consumption but rather it is a question of fact from a business and commercial point of view.[6]     

[4] Jellinek's Application (1946) 63 RPC 59 (Romer J).

[5] Lyons & Co Ltd's Application [1959] RPC 120, 128 (CA UK); see also San Remo Macaroni Co Pty Ltd v San Remo Gourmet Coffee Pty Ltd [2000] FCA 1842; McCormick & Co Inc v McCormick 2000] FCA 1335.

[6] M. Davidson, I. Horak.  Shanahan’s Australian Law of Trade Marks and Passing Off (7^th ed online, 2022) Lawbook Co., [35.510].

15.     In my view, the Opponent’s Registration covers goods which overlap directly or encompass many of the Applicant’s Goods.  I consider the following goods of the Applicant are covered by the Opponent’s Goods:

·   ‘Chocolates, confectionery, candies, yeast, baking powder, coffee, tea, cocoa, sugar, bread, pastry and flour made from cereals’;

·   ‘pasta, macaroni, noodles, instant noodles, spaghetti, vermicelli’ are all ‘preparations made of cereals’;

·   herbal tea which is a type of tea;

·   spices are a type of ‘aromatic preparations for food’.

16.     Further, I regard other goods claimed by the Applicant as similar to the Opponent’s Goods including:

·     ‘cakes, ready to cook dough products, frozen dough, frozen parathas’ are the same or similar as ‘bread,..croissants, chocolate rolls and similar dough products; dough mixes…flans’;

·     ‘chocolate and chocolate products, custards, chocolate rolls, fruits sauces, pastry and dough products’ are similar to the Applicant’s biscuits, ice creams and other desserts;

·     coffee is similar to artificial coffee;

·     ‘other bakery ingredients’ are the same or similar to items such as the following ‘baking soda and baking’ powder; sugar; bavarois powders, custard powders, flour’ in the Opponent’s Registration; and

·     popcorn is similar to confectionery      

17.     However, a number of items are not, in my view, similar goods to the Opponent’s Goods including ‘salad dressings, mayonnaise, vinegar, ketch up (sic) and sauces (condiments); rice; tapioca; sago; gravies; honey’.  Such goods are typically manufactured by different traders to the Opponent’s Goods, sold through different parts of the store and have a different nature and purpose to the Opponent’s Goods. 

1. I turn now to the final requirement namely the question of whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark.  The Opponent submits that the Trade Mark is deceptively similar to the Opponent’s Mark and arguably is substantially identical. 

   19.     The marks to be compared in the present case are:

Opponent’s Mark	Trade Mark
CREMFIL	CREMFUL

20.     I agree with the Opponent that it is arguable that the two marks are substantially identical on a side by side comparison but as the Opponent has not pressed this point and given it is sufficient for the purposes of reg 4.15A if the marks are deceptively similar, I turn to this question.

21.     Section 10 provides that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

22.     In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J made the following comments with respect to deceptive similarity:

The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

[7] [1963] HCA 66, [13] (Windeyer J).

23.     As the High Court explained in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd:

The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.[8]

[8] (2023) 277 CLR 186, [26] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

24.     In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J noted the following regarding the risk of deception or confusion:

While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[9]

[9] (1954) 91 CLR 592, 594 (‘Southern Cross’).

25.     What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and each of the Opponent’s Marks, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.

26.     It is readily apparent that both marks consist of 7 letters and share the prefix ‘CREM-“ which, in my view, will likely suggest to consumers the word ‘cream’ particularly in the context of many of the parties’ goods.  The suffixes ‘-FIL’ and ‘-FUL’ differ by only letter and are phonetically similar.  Further, as the Opponent notes in Wynne,[10] ‘-FIL’ is the phonetic equivalent of the word ‘fill’ which is a verb meaning ‘to make full’ and similarly, the suffix ‘-FUL’ is phonetically identical to ‘full’ which means ‘filled’.  Hence the Opponent submits that the two marks ‘have the same linguistic basis and have a connected meaning’.  I consider that the overall impression of the two marks is that they are visually, aurally and conceptually similar.  Taking into account the imperfect recollection of consumers, I believe that consumers may readily confuse the marks.  Accordingly, I am satisfied that the Opponent’s Mark is at least deceptively similar to the Trade Mark. 

[10] Referencing the Macquarie Dictionary, 3^rd edition.

27.     In summary, the Opponent has established a ground for opposition under Reg 4.15A with respect to the following goods:

Chocolates, confectionery, candies, biscuits, cakes, pasta, macaroni, noodles, instant noodles, spaghetti, vermicelli, yeast, baking powder and other bakery ingredients, ready to cook dough products, frozen dough, frozen parathas, ice creams, non-dairy frozen desserts, frozen fruit desserts, ice desserts, coffee, tea, cocoa, sugar, artificial coffee, bread, pastry, salt, mustard, flour made from cereals, spices, food beverages (herbal), herbal tea, honey (‘Conflicting Goods’)

28.     The goods for which I have not found the reg 4.15A ground of opposition established are:

salad dressings, mayonnaise, vinegar, ketch up and sauces (condiments), rice, tapioca, sago, treacle, gravies.

Decision

29.     The Opponent has established a ground of opposition under reg 4.15A for the Conflicting Goods.

30.     In Apple Inc v Registrar of Trade Marks, Yates J stated that:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[11]

[11] [2014] FCA 1034, [232].

31.     Under the principles outlined above, the Registrar may proceed to reject an application in its entirety where an opposition has been established for some but not all of an applicant’s goods or services, but also has a discretion to offer an amendment to an applicant, allowing it to remove the goods and services for which a ground of opposition has been established.  I note that in in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[12]

[12] [2014] FCA 373, [231].

32.     The Opponent has established a ground of opposition under reg 4.15A for most of the Applicant’s Goods.  Neither party has suggested an amendment to the Applicant’s Goods and the Applicant has not participated in the proceedings other than filing a Notice of Intention to Defend.  Accordingly, in all the circumstances, I do not consider it appropriate to exercise my discretion to offer the Applicant an opportunity to amend the Application by deleting the Conflicting Goods and I refuse the Application for possible registration in its entirety.

33.     If the Registrar is served with a notice of appeal within one month from the date of this decision, I direction that the disposition of the Application be in accordance with the court’s order or direction.

34. The Opponent has requested an award of costs and as costs generally follow the event, I award costs against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

12 August 2025