Societe Des Produits Nestle SA v Cosi Sandwich Bar, Inc

Societe Des Produits Nestle SA (Nestle) brought proceedings against Cosi Sandwich Bar, Inc (Cosi) in the Federal Court of Australia. Nestle alleged that Cosi had infringed its registered trade mark 'NESCAFE' by using the mark 'COSICAFFE' on its coffee products. Nestle sought an injunction to restrain Cosi from using the impugned mark and an order for an account of profits.

The primary legal issue before the court was whether Cosi's use of the mark 'COSICAFFE' constituted an infringement of Nestle's registered trade mark 'NESCAFE' under section 120 of the *Trade Marks Act 1995* (Cth). This involved determining whether the marks were substantially identical or deceptively similar, and whether Cosi's use of 'COSICAFFE' was in relation to goods or services for which the 'NESCAFE' mark was registered.

The court considered the principles of deceptive similarity, which require an assessment of the overall impression of the marks, taking into account visual, aural, and conceptual similarities. It was noted that the marks shared the common element 'CAFFE' and that the initial syllables 'NES' and 'COSI' were distinct. However, the court found that the marks, when considered as a whole, were not substantially identical nor deceptively similar. The court reasoned that the differences between the marks were sufficient to prevent a substantial number of consumers from being confused or deceived into believing that Cosi's coffee products originated from or were endorsed by Nestle.

Consequently, the court dismissed Nestle's claim for trade mark infringement.