Snow Confectionery Pty Ltd v Snow Brand Milk Products Co Limited

Snow Confectionery Pty Ltd (the applicant) sought to register the trade mark "SNOW" in relation to confectionery. Snow Brand Milk Products Co Limited (the opponent) opposed this registration, relying on its prior registration of the trade mark "SNOW BRAND" for dairy products, including milk and ice cream. The matter came before the Registrar of Trade Marks, whose decision was then appealed to the Federal Court of Australia.

The primary legal issue before the Federal Court was whether the applicant's proposed trade mark "SNOW" was deceptively similar to the opponent's registered trade mark "SNOW BRAND" for the purposes of section 60 of the *Trade Marks Act 1995* (Cth). This section prohibits the registration of a trade mark if it is deceptively similar to an earlier trade mark. The court was required to consider the likelihood of consumers being deceived or confused into believing that the confectionery sold under the "SNOW" mark originated from, or was in some way connected with, the proprietor of the "SNOW BRAND" mark.

In determining deceptive similarity, the court applied the established principles of comparison, which involve considering the marks as a whole, the aural, visual, and conceptual similarities, and the goods in question. The court found that while the applicant's mark was shorter, the dominant and distinctive element of the opponent's mark was the word "SNOW". Given the commonality of the word "SNOW" and the potential for overlap in consumer perception, particularly in relation to frozen confectionery which could be considered a related good, the court concluded that there was a real likelihood of deception or confusion. The court noted that the opponent's mark had acquired a significant reputation in the market.

The Federal Court allowed the appeal, setting aside the Registrar's decision and ordering that the application for registration of the trade mark "SNOW" be refused.