Santos Food Company Pty Ltd v Santos (Societe Par Actions Simplifiee)

This decision concerns an opposition brought by Santos Food Company Pty Ltd (the Opponent) against an application for an international trade mark registration by Santos (Societe Par Actions Simplifiee) (the Holder). The dispute primarily related to the Holder's proposed registration of the trade mark "SANTOS" for coffee grinders other than hand-operated, falling within Class 7 of the Nice Classification. The Opponent also initially raised objections concerning goods in Classes 8 and 21, but these were later clarified to be not in dispute. The matter was heard by Debrett Lyons, a Hearing Officer for Trade Marks and Designs.

The legal issues before the Hearing Officer were whether the Opponent had established any grounds for opposing the Holder's trade mark application. Specifically, the Opponent relied on grounds under section 43 and section 60 of the relevant legislation. Section 43 concerns the likelihood of deception or confusion arising from a connotation inherent in the trade mark itself, while section 60 addresses opposition based on an existing reputation in Australia of another trade mark, leading to a likelihood of deception or confusion.

The Hearing Officer reasoned that the section 43 ground of opposition was misconceived, as section 43 is directed to the inherent characteristics of the trade mark itself and not to confusion arising from the reputation of another trade mark. This aspect, the Hearing Officer noted, is dealt with under section 60. To succeed under section 60, the Opponent was required to demonstrate that one of its registered trade marks had acquired a reputation in Australia prior to the priority date of the Holder's application (5 October 2007), and that this reputation would cause the use of the Holder's trade mark to be likely to deceive or cause confusion. The Opponent failed to establish any of the grounds pursued.

Consequently, the Hearing Officer decided that the Holder's international registration (International Registration No. 789769) could proceed to protection for the Class 7 goods, subject to a one-month period for any appeal. The Opponent was ordered to pay the Holder's costs according to the official scale.