Rafic Pty Ltd v Société des Produits Nestlé S.A

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.