Smith Kline and French Laboratories (Aust) Ltd v Registrar of Trade Marks

Smith Kline and French Laboratories (Aust) Ltd sought to register the trade mark "ESKIMO" for a range of pharmaceutical preparations. The Registrar of Trade Marks opposed the registration on the grounds that the mark was deceptive and likely to deceive or cause confusion, as it was identical to a registered trade mark owned by a third party, "ESKIMO" for ice cream. The matter came before Windeyer J in the Supreme Court of New South Wales.

The central legal issue before the Court was whether the proposed trade mark "ESKIMO" for pharmaceutical preparations was likely to deceive or cause confusion, given the existence of the identical registered trade mark "ESKIMO" for ice cream. This required the Court to consider the principles of trade mark law concerning the likelihood of deception and confusion, particularly where identical marks are sought for goods in different classes.

Windeyer J reasoned that while the goods were of different descriptions, the identity of the mark was a significant factor. His Honour considered the potential for consumers to encounter both products and the possibility of a mistaken belief that the pharmaceutical preparations originated from the same source as the well-known ice cream. Applying the principles of trade mark law, the Court determined that the use of the identical mark for pharmaceutical preparations was indeed likely to deceive or cause confusion.

Consequently, the Court dismissed the application for registration of the trade mark "ESKIMO" by Smith Kline and French Laboratories (Aust) Ltd.