McCallum Industries Limited v. HJ Heinz Company Australia Ltd.

The Applicant filed a Notice of Application, seeking to expunge the Respondent’s trade-mark “OX & PALM”. The Applicant has a registration for the trade-mark “PALM & Device”.

The Court first considered the Respondent’s argument that the Applicant is not a “person interested”, as required by the Trade-marks Act. The Court noted that the Applicant must establish that it will be affected or reasonably apprehends that it may be affected by the impugned trade-mark. Further, the Applicant must show that it would suffer damage if the trade-mark remained on the Register. The Court held that there was no such evidence in the within case. However, the Court noted that the “person interested” threshold is low, and accordingly considered the Applicant’s arguments supporting its request for expungement.

The Court considered whether the two trade-marks are confusing and after reviewing the factors in section 6(5) of the Trade-marks Act as well as additional circumstances, the Court concluded that any similarities between the two trade-marks were insufficient to support a finding of confusion. In response to the Applicant’s argument that the OX & PALM trade-mark was not distinctive at the time the within application was commenced, the Court found that it was “adapted so as to distinguish”. Accordingly, the Court dismissed the application.