Snap Franchising Limited v IceColdNow, Inc

Snap Franchising Limited (the Opponent) opposed the extension of protection to Australia of an international trade mark registration held by IceColdNow, Inc (the Holder). The trade mark, registered internationally under number 1734341 and designated for Australia as application number 2362758, comprised the device "S SNAPCHILL". The specification of goods and services included coffee beverages in Class 30, and processing services for coffee beverages, namely brewing, chilling, and packaging, in Class 40. The opposition was heard by a delegate of the Registrar of Trade Marks.

The Opponent advanced several grounds of opposition under the *Trade Marks Act 1995* (Cth), including sections 42(b), 43, 44, 58A, 59, 60, and 62A. The primary legal issue was whether the Opponent had discharged its onus of proving, on the balance of probabilities, that any of these grounds of opposition were established as at the relevant date, which was the filing date of the international registration. The Opponent's evidence focused on its own extensive use and promotion of various "SNAP" trade marks in Australia across a broad range of goods and services, and on claims that the Holder had not used the opposed trade mark in Australia.

The delegate considered the ground of opposition under section 44, which requires the applicant's trade mark to be substantially identical with or deceptively similar to a registered trade mark for similar or closely related goods or services, where the registered trade mark has an earlier priority date. The Opponent relied on its own registered trade marks for this ground. However, the delegate found that the Opponent's evidence did not establish that its registered trade marks were for goods or services that were similar or closely related to the Holder's specified goods and services (coffee beverages and processing thereof). The delegate also noted that the Opponent had not provided evidence to establish the other grounds of opposition.

Consequently, the delegate concluded that the Opponent had failed to establish any of the grounds of opposition. The delegate therefore ordered that the opposition be dismissed and that protection of the international registration be extended to Australia.