Rafic Pty Ltd v Société des Produits Nestlé S.A

Case [2022] ATMO 148

TRADE MARKS ACT 1995



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

Re:Opposition by Société des Produits Nestlé S.A. to registration of trade mark application number 2070040 (class 30) – ROWNTREE'S – in the name of Rafic Pty Ltd

Delegate: Nicholas Barbey
Representation: Opponent: Banki Haddock Fiora
Applicant: Hazan Hollander
Decision: 2022 ATMO 148
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60 and 62A pursued – none established – trade mark may proceed to registration

Background

  1. This decision concerns an opposition brought by Société des Produits Nestlé S.A. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

    Trade Mark:      ROWNTREE'S          (‘Trade Mark’)         

    Application Number:             2070040

    Applicant:  Rafic Pty Ltd             (‘Applicant’)

    Filing Date:  19 February 2020

    Specification:  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 (‘Goods’)

  2. The acceptance of the Trade Mark for possible registration was advertised on 20 July 2020. The Opponent filed a notice of intention to oppose on 21 September 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 21 October 2020. A notice of intention to defend was filed by the Applicant on 18 December 2020.

  3. Evidence in support (‘EIS’) was filed by the Opponent and an oral hearing was requested. Written submissions were filed by the Opponent on 20 May 2022 (‘Opponent’s Submissions’) and by the Applicant on 27 May 2022 (‘Applicant’s Submissions’).

  4. As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 3 June 2022. Alison McGinn of Banki Haddock Fiora presented submissions on behalf of the Opponent and Peter Whitehead of Hazan Hollander presented submissions on the Applicant’s behalf.

    Grounds of opposition, onus and standard of proof

  5. The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]

  6. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 19 February 2020 (‘Relevant Date’), being both the filing and priority date of the…

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Details
AGLC
Rafic Pty Ltd v Société des Produits Nestlé S.A [2022] ATMO 148
Case
[2022] ATMO 148
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by Société des Produits Nestlé S.A. (the Opponent) to the registration of trade mark application number 2070040, for the mark ROWNTREE'S in class 30, by Rafic Pty Ltd. The decision was made by Nicholas Barbey, Hearing Officer and Delegate of the Registrar of Trade Marks.

The legal issues before the court were whether the Opponent had established any grounds for opposing the registration of the ROWNTREE'S trade mark. The Opponent contended that it had continuously and consistently used the ROWNTREES trade mark and brand in respect of confectionery goods worldwide since 1881, and specifically in Australia since at least 1927. It also claimed to retain an intention to use the mark and that it was being used in Australia through an authorised distributor.

The Hearing Officer found that the Opponent had not established a ground of opposition. While the Opponent provided evidence of its historical use of the ROWNTREES brand, including its acquisition of the brand in 1988 and its continued use in the UK and promotion on social media, the evidence regarding substantial use in Australia was not sufficiently established to warrant opposition. The Opponent's previous Australian trade marks incorporating the ROWNTREES name had not been renewed, and the current evidence of use through a distributor, while present, did not meet the threshold for a successful opposition.

Consequently, the trade mark application number 2070040 was permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The Opponent was ordered to pay the costs of the proceedings.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Section 55 of the Act relevantly provides:Decision(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established. The Opponent has not established a ground of opposition. Trade mark application number 2070040 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.Costs Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).Nicholas BarbeyHearing OfficerDelegate of the Registrar of Trade Marks31 August 2022ANNEXURE A

Ratio Decidendi

Legal Principle Established

The EIS consists of a declaration made on 22 March 2021 by Alex I (Customer Business Manager – New Business of Nestlé Australia Ltd) with Exhibits AI-1 to AI-26 (‘AI Declaration’). According to the AI Declaration, the Opponent is a food and beverage manufacturer that was founded in 1866 and currently ‘operates in more than 190 countries’.[3] The Opponent’s ‘products are available in nearly every country around the world’ and include goods such as coffee, confectionery, dairy products and pet care foods.[4][3] AI Declaration, [9].[4] Ibid [9]–[10]. Mr I describes the history of ROWNTREES pointing out that initially cocoa, gumdrops and pastilles were produced under this brand in the late 19th century. The ROWNTREES brand was subsequently acquired by the Opponent from Rowntree plc in 1988. Mr I states that, at the time of acquisition, ‘Rowntree plc was the world’s fourth biggest manufacturer of confectionery and chocolate’ and that ‘sales of products manufactured by Rowntree plc accounted for 37% of all sales in the confectionery and chocolate category in the UK’.[5] Mr I declares that the Opponent ‘decided to keep the ROWNTREES brand as the name of its fruit confectionery range made in the UK’ post acquisition.[6][5] Ibid [15].[6] Ibid [18]. The AI Declaration states that the ‘ROWNTREES trade mark and brand have been continuously and consistently used in respect of confectionery goods’ worldwide since 1881.[7] The Opponent is the owner of trade marks across various jurisdictions that incorporate the word ‘ROWNTREES’. However, the AI Declaration clarifies that the Opponent ‘mainly promotes and sells its ROWNTREES branded confectionery in the UK market’ and it has a dedicated website for this brand accessible at (‘Opponent’s Website’).[8] The Opponent also promotes the ‘ROWNTREES brand and products’ on its Facebook, Twitter, YouTube and Instagram pages. Advertising of ‘ROWNTREES products’ is also declared as having taken place ‘in magazines and newspapers in Australia and overseas’.[9] [7] Ibid [19].[8] Ibid [36].[9] Ibid [44]. Mr I declares that the ROWNTREES trade mark has been used in Australia since at least 1927 and it is currently used in Australia in relation to fruit gums, fruit pastilles and jelly tots.[10] Reference is made to the following Australian trade marks that were previously registered by the Opponent (collectively ‘Opponent’s Marks’):[11][10] Ibid [22]–[23].[11] Relevant details of each listed trade mark as well as additional trade marks cited by the Opponent are listed in Annexure A to this decision. I note trade mark number 316434 was also particularised in the AI Declaration, however, the owner on record of this trade mark is ‘Rowntree MacKintosh PLC’ and not the Opponent. According to the AI Declaration, the Opponent made a ‘commercial decision’ not to renew any of the Opponent’s Marks.[12] Nevertheless, the Opponent is said to retain ‘an intention to use the ROWNTREES trade mark, and has in fact used it, and continues to use it, to a substantial extent in Australia’.[13] To this end, Mr I declares that since 2014, ‘ROWNTREES branded goods’ have been ‘provided in Australia by an authorised distributor based in Western Australia called British Provender’.[14] These goods ‘are available for purchase by Australian consumers in a wide range of retail outlets’ including Woolworths, Coles as well as via online retailers such as Amazon.[15] Discussion[12] AI Declaration, [25].[13] Ibid.[14] Ibid [28].[15] Ibid [29].Section 58