Spirits International B.V v SC Prodal '94 SRL

This matter concerned an opposition by Spirits International B.V. (the opponent) to the protection of a trade mark filed by SC Prodal '94 SRL (the holder) under the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth). The opposition was heard by Rachel Dunn, a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were whether the holder's trade mark should be rejected for registration based on grounds of opposition under sections 43, 44, and 60 of the Trade Marks Act. The opponent pursued these grounds, having abandoned others. Specifically, under section 43, the opponent argued that the trade mark was likely to deceive or cause confusion due to its connotations, either by suggesting a connection to the opponent's STOLICHNAYA trade mark or by suggesting "Russianness" through its prefix STALIN or its general appearance.

The delegate rejected the argument that the trade mark should be refused because it connoted the opponent's STOLICHNAYA mark, noting this interpretation of section 43 had been previously rejected by the Federal Court. The delegate also found that the trade mark did not establish the ground of opposition under section 43 based on a connotation of "Russianness," nor were the grounds under sections 44 and 60 established. Consequently, the delegate directed that protection of the trade mark STALINSKAYA be extended to Australia in respect of all claimed goods, one month from the date of the decision, subject to any appeal. The holder was awarded its costs against the opponent.