Starlight Starbright Children's Foundation v Cadbury Ltd

This matter came before Hearing Officer Alison Windsor concerning an opposition filed by the Starlight Starbright Children's Foundation against an application by Cadbury Ltd to register a trade mark. The dispute centred on whether the applicant's proposed trade mark, in relation to its specified goods, was likely to cause confusion with the opponent's existing trade marks, given the nature of the opponent's charitable activities and fundraising methods. The opposition was brought under section 60 of the relevant legislation, which deals with the likelihood of deception or confusion.

The primary legal issue before the Hearing Officer was to determine whether the applicant's trade mark, if registered for the goods as specified, would be likely to deceive or cause confusion to the public, having regard to the opponent's use of its trade marks in its fundraising activities. The Hearing Officer also considered the effect of amendments to the legislation, ultimately concluding that the opposition should be assessed under the unamended form of section 60 as it stood at the commencement of the proceedings.

The Hearing Officer reasoned that the opponent's extensive charitable work, which involved soliciting funds through various means including cause-related marketing, meant that its trade marks were widely recognised in connection with its operations. The applicant's goods, while specified for manufacturing, were considered to be potentially similar to goods sold in general retail, and the broad nature of the goods claim in the application increased the likelihood of confusion. Consequently, the Hearing Officer found that the opponent had established its ground of opposition under section 60.

The Hearing Officer refused to register the trade mark in its current form. However, recognising that confusion would be unlikely if the goods specification were restricted to those for which the trade mark was actually used, the Hearing Officer provided an opportunity for the applicant to amend the specification to "chocolate and cocoa products sold in bulk for use in manufacturing". If such an amendment was requested within one month, the application could proceed to registration. No order as to costs was made, as both parties had achieved a measure of success.