SABMILLER INTERNATIONAL B.V. V TOPFLIGHT HOLDINGS PTY LTD. [2014] ATMO 50

Topflight Holdings Pty Ltd filed a trade mark application covering fruit based foods and the serving of the same in Classes 29, 30, 32 and 43 for the below mark.

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The opponent, SABMiller International pursued an opposition on the grounds pursuant to sections 59 and 60 based on the use of what it claimed to be a similar trade mark on its APPLETISER brand of drinks (the various versions of this trade mark are shown below).

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Both sides filed a large amount of evidence related to the development and use of the respective trade marks. The Hearing Officer was quick to note that in her view the respective trade marks shared some ‘very striking similarities’.

In an attempt to counter this, the applicant variously argued that; the apple is a generic common shape and the opponent does not have a reputation in its fruit device trade marks as they are always used in conjunction with the words APPLETISER or GRAPETISER. However, the Hearing Officer noted that there was nothing in the applicant’s evidence to support the assertion that an apple device was commonly used in the industry.

On the point of the opponent’s use of its apple device marks, the Hearing Officer took the view that despite use with other marks, there was still certain use of the apple device as trade marks. In coming to this view, the Hearing Officer found support in an earlier Office decision - ‘[w]ould anyone seriously contend that the word NIKE alone is not used as a trade mark because it is usually accompanied by a “swoosh” logo? No’. All of this was supported by three trade declarations attesting to the renown of the apple device on its own.

Given the similarity of the marks and the prior reputation enjoyed by the opponent in its apple device, the Hearing Officer found that there would be a significant number of Australian’s who would, at least, have some doubt as to the origin of the applicant’s goods and services as a result of the reputation of the opponent's mark.

The application was refused.

To view the Office decision, click here.