Swizzels Matlow Limited v Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd

This matter concerned an opposition by Swizzels Matlow Limited (the opponent) to the registration of a trade mark by Tiger Food Brands Intellectual Property Holding Company (Pty) Ltd (the applicant). The dispute centred on the applicant's proposed registration of a trade mark for confectionery, which the opponent argued was deceptively similar to its own well-established trade mark for similar products. The decision was made by Alison Windsor, a Hearing Officer in the Trade Marks and Designs Hearings.

The court was required to determine whether the applicant's trade mark should be registered, considering the grounds of opposition raised by Swizzels Matlow Limited. These grounds included claims of substantial identity or deceptive similarity to a trade mark that had acquired a reputation in Australia, as well as other grounds under the *Trade Marks Act 1995* (Cth) which were ultimately found to be irrelevant or not established due to insufficient evidence. The primary focus of the decision was the ground under section 60 of the Act, which requires the opponent to demonstrate that its trade mark had acquired a reputation in Australia and that the applicant's use of its mark would be likely to deceive or cause confusion.

The Hearing Officer found that the onus was on the opponent to establish its grounds of opposition. While the opponent claimed significant market share, it provided insufficient evidence to support grounds under sections 41, 42, and 43. The grounds under sections 58 and 59 were also dismissed, the latter because the applicant had demonstrated significant use of its trade mark in the Australian market. Regarding the section 60 ground, the Hearing Officer noted that both parties had been trading in the same market since at least 1994 without any evidence of confusion. The presence of both parties' products displayed side-by-side in a supermarket photograph, provided by the opponent as evidence of use, further indicated a lack of confusion. Consequently, the Hearing Officer was not satisfied that the applicant's use of its trade mark would likely cause significant deception or confusion, and therefore the ground under section 60 was not established.

As none of the grounds of opposition were established, the Hearing Officer directed that the applicant's trade mark application could proceed to registration, subject to any appeal. The applicant was awarded costs against the opponent.