Royal Doulton (UK) Pty Ltd v Confectionery Importers of Australia Pty Ltd

This matter concerned an opposition to a trade mark application brought by Royal Doulton (UK) Pty Ltd (the opponent) against Confectionery Importers of Australia Pty Ltd (the applicant). The dispute arose from the applicant's attempt to register the trade mark DOULTON for confectionery. The opponent, a well-known ceramics manufacturer with a history of using the DOULTON and ROYAL DOULTON trade marks, argued that the applicant's proposed mark would be deceptive or confusing, particularly given the opponent's own use of its trade marks on confectionery products through licensing agreements. The hearing was conducted by Iain Thompson, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the applicant's proposed trade mark DOULTON for confectionery should be refused registration. This required the delegate to consider whether the opponent had established grounds for opposition, specifically under section 60 of the *Trade Marks Act* (the Act), which deals with the registration of trade marks that are identical or deceptively similar to earlier trade marks used in Australia. The delegate also had to determine the extent to which any grounds of opposition had been established, as required by section 55 of the Act, in deciding whether to register the trade mark.

The delegate found that the opponent had successfully established its opposition under section 60 of the Act. The reasoning was based on the opponent's extensive and well-established use of the DOULTON and ROYAL DOULTON trade marks in Australia, not only on ceramics but also, significantly, on confectionery products through licensing arrangements. The delegate noted that the opponent had licensed its ROYAL ALBERT trade mark for use on biscuits, cakes, and puddings, and more pertinently, had licensed its trade marks to Confectionery Link Pty Ltd for the importation and manufacture of BUNNYKINS chocolates, which prominently featured the words "by ROYAL DOULTON". The substantial sales figures for these licensed confectionery products demonstrated a significant presence in the Australian market, leading to the conclusion that the applicant's proposed DOULTON mark for confectionery was likely to cause confusion or deception among consumers.

Consequently, the delegate refused to register the applicant's trade mark application. The opponent was awarded its costs against the applicant on the official scale.