Robert Harper and Company Proprietary Ltd v A Boake Roberts and Company Ltd

Robert Harper and Company Proprietary Ltd. (the opponents) appealed to the High Court of Australia from a decision of the Registrar of Trade Marks. The appeal concerned an application by A. Boake Roberts and Company Ltd. (the applicants) to register a trade mark for "Fruit Extracts" in class 42. The opponents, who were proprietors of numerous trade marks in class 42 for various food substances and ingredients, including preserved fruits and fruit juices, opposed the application on the grounds that the proposed mark was too similar to their existing marks and would likely deceive the public.

The primary legal issue before the High Court was whether the applicants had discharged the onus of proving that their proposed trade mark for "Fruit Extracts" would not be likely to deceive the public into believing that their goods were manufactured or sold by the opponents, given the similarity of the goods and the opponents' registered trade marks. A secondary issue arose regarding the potential rectification of the register due to non-user of the opponents' trade marks for certain goods.

The High Court allowed the appeal, finding that the applicants had not discharged the onus placed upon them. The Court applied the principles established in *Eno v. Dunn* and *Lever Bros. Ltd. v. Abrams*, which stipulate that in cases of doubt, the applicant must demonstrate that there is no reasonable probability of deception. The Court considered the nexus of similarity between the goods, noting that while fruit extracts were sold to manufacturers and the opponents' goods were sold to the public, there was sufficient similarity between preserved fruits, essences, and fruit extracts to cause confusion. The prominence of the star device and the word "Trufruit" on the applicants' proposed mark, coupled with the opponents' established "Star" and "Sun Brand" marks, created a likelihood that the public might confound the owners of the respective goods. The Court also considered the possibility of rectification of the register for non-user, but ultimately found it unnecessary to adjourn the hearing for that purpose, as the application for registration itself was refused.