SociéTé Des Produits Nestlé S.A.

This decision concerns an application by SociéTé Des Produits Nestlé S.A. (the Applicant) to register a trade mark. The dispute arose from the Australian Trade Marks Office's rejection of the application. The matter was heard by Katrina Brown.

The court was required to determine whether the trade mark was inherently adapted to distinguish the designated goods and, if not, whether it did or would distinguish them as being those of the Applicant, having regard to the evidence of use and other relevant circumstances. Specifically, the court had to consider the impact of the trade mark being used in conjunction with other prominent trade marks and whether it functioned as a badge of origin in its own right.

The court found that while the Applicant had provided evidence of significant promotion and sales in Australia, these figures were not solely attributable to the trade mark in question. The court noted that the trade mark was invariably used alongside the highly distinctive FELIX and PURINA trade marks, and that the packaging and promotional materials did not sufficiently demonstrate that the trade mark would be perceived by the purchasing public as a trade mark separate from these other indicia. The court applied the principle that a trade mark must be capable of functioning as a badge of origin independently, and that its distinctiveness can be diminished by its close association with more dominant marks, likening it to a "limping mark."

Ultimately, the court was not satisfied that the trade mark did or would distinguish the designated goods as being those of the Applicant, and therefore dismissed the application.