Self Care Corporation Pty Ltd v Johnson & Johnson

This matter concerned an opposition by Self Care Corporation Pty Ltd (the Opponent) to the registration of a trade mark by Johnson & Johnson (the Applicant). The Opponent relied on its registered trade mark ALFREE, used in relation to toothpaste, and alleged that the Applicant's proposed mark would cause deception or confusion. The hearing was conducted by Michael Kirov, a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the Opponent had established any of the grounds of opposition it had raised. Specifically, the delegate considered the grounds relating to the potential for deception or confusion arising from the similarity between the Applicant's proposed mark and the Opponent's ALFREE mark, as well as a ground under section 42(b) of the relevant Act. The onus was on the Opponent to establish these grounds.

The delegate found that the Opponent had not established any of the grounds of opposition. While the Opponent provided evidence of its use of the ALFREE trade mark in Australia, including its availability through various retail channels, this evidence was not sufficient to satisfy the legal requirements for the opposition. The delegate specifically noted that the ground based on section 42(b) of the Act had not been established.

Consequently, the delegate decided to allow the Applicant's trade mark application to proceed to registration, subject to a one-month period from the date of the decision, during which registration would be stayed if an appeal was filed. The Opponent was also ordered to pay the Applicant's costs.