Clearlight Investments Pty Ltd v Barilla G.e R. Fratelli – Societa per Azioni [2017] ATMO 38


Clearlight is the owner of several Australian trade mark registrations relating to the SAN REMO brand of pasta and related food products, including SAN REMO PASTA PRONTO and the SAN REMO PASTA PRONTO Logo.

Barilla is the owner of several Australian trade mark registrations relating to the BARILLA brand of pasta and related food products.

This matter concerned the opposition by Clearlight to the registration of the trade mark BARILLA PASTA PRONTO filed by Barilla in respect of various foods in Classes 29 and 30.  The decision focuses mainly on two of the grounds pressed by Clearlight, namely those pursuant to sections 44 (prior similar marks) and 60 (prior reputation).

In coming to his decision, the hearing officer first noted that, in relation to the goods at issue, ‘PASTA’ and ‘PRONTO’ were entirely descriptive terms and consumers would be aware of the ordinary descriptive meaning conveyed by those words.  In support of this view, the hearing officer noted that both parties ran into objections when attempting to register ‘PASTA PRONTO’ as a trade mark in Australia.

On the basis that ‘PASTA PRONTO’ would be seen as descriptive, the hearing officer noted that in his view the comparison to be made under section 44 was effectively SAN REMO v BARILLA.  These two obviously different trade marks were not, in the hearing officer’s mind, likely to be confused.  As such, the section 44 ground failed.

Under section 60, the hearing officer was not persuaded that Clearlight had used the trade mark PASTA PRONTO to such an extent that it would have acquired a reputation in those words alone.  As such, there was no case to answer under section 60.

The remaining grounds also failed and the BARILLA PASTA PRONTO trade mark is now registered.

To view the Office decision, click here.

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