San Pellegrino SPA v CSP International Industria Calsze SPA

This matter came before Terry Williams, Hearing Officer, concerning an opposition filed by San Pellegrino SPA against an International Registration Designating Australia (IRDA) held by CSP International Calze SPA. The dispute centred on CSP International Calze SPA's claimed ownership and intended use of the trade marks SAN PELLEGRINO and S PELLEGRINO in Australia, which San Pellegrino SPA contended should not be granted protection.

The legal issues before the Hearing Officer were whether the holder's claim to ownership of the trade marks in Australia was valid under section 58 of the relevant legislation, and whether the use of these trade marks by the holder would be contrary to law under section 42. Additionally, the opponent raised a ground under section 60 concerning potential confusion arising from its own established use and reputation in Australia, though the Hearing Officer made no finding on this particular ground.

The Hearing Officer's reasoning focused on a contract entered into by the parties in 1993, which was considered a valid agreement under Italian law. This contract effectively divided territories for trade mark usage, designating the SANPELLEGRINO, SAN PELLEGRINO, S. PELLEGRINO, and PELLEGRINO trade marks as the exclusive property of San Pellegrino SPA outside of specific European countries, Turkey, and Israel. Consequently, the contract stipulated that CSP International Calze SPA could not use these trade marks to distinguish its goods. Given that CSP International Calze SPA did not have an Australian address for service, did not file evidence in response to the opposition, and did not appear at the hearing, the Hearing Officer was satisfied that the holder was not the owner of the trade marks in Australia and that their use would be contrary to law.

Accordingly, the Hearing Officer refused to extend protection to the trade marks in Australia in respect of all goods listed in the IRDAs and ordered CSP International Calze SPA to pay the costs of San Pellegrino SPA.