Societe Des Produits Nestle S.A. v Newmans Chocolates Ltd

Societe Des Produits Nestle S.A. (Nestle) opposed an application by Newmans Chocolates Ltd for registration of a trade mark. Nestle contended that the proposed mark was deceptively similar to its own registered trade marks and that it had acquired a reputation in the confectionery market. The hearing was conducted before an officer of the Trade Marks Hearings.

The primary legal issues before the court were whether the applicant's trade mark was deceptively similar to Nestle's registered trade marks under section 44 of the *Trade Marks Act 1995* (Cth), and whether Nestle's trade marks had acquired a reputation in Australia for the purposes of section 60 of the Act. The court was required to consider the evidence of trade mark use, sales, and advertising, as well as expert opinions on the likelihood of deception or confusion.

The hearing officer noted that Nestle used two related trade marks: "MILKY BAR" (two words) and "MILKYBAR" (one word). The evidence indicated that the one-word version was a more recent innovation, with the majority of use on 50-gram blocks of white chocolate featuring the two-word mark. The hearing officer found that Nestle's own submissions treated the one-word and two-word marks as distinct, suggesting that Nestle itself perceived a significant difference. Consequently, the hearing officer concluded that the "MILKYBAR" trade mark, on which Nestle exclusively relied for its section 60 claim, did not have the requisite reputation. Furthermore, the hearing officer determined that the grounds of opposition had not been established.

The hearing officer ordered that the costs of the proceedings be paid by the opponent, Nestle, on the official scale. The application for registration was permitted to proceed, subject to Nestle notifying the Registrar of any appeal within one month.