C Coconut Water Pty Ltd v Natural Raw C Pty Ltd [2014] ATMO 119


C Coconut Water opposed registration of the trade mark RAWC for beverages in Class 32, filed by Natural Raw C.

The opponent attempted to argue that the applicant’s trade mark was likely to deceive (section 43) as it implied that the goods were not ‘raw’. The Hearing Officer noted that there were several meanings to the English word ‘raw’ and that it was relatively commonly used to describe ‘health foods’ and not in a literal sense of a select definition that would have meant the trade mark’s inherent nature created likely deception.

It is interesting to note that the opponent, represented by Counsel, also attempted to argue, by reference to section 43, that the applicant’s trade mark was likely to lead to confusion as a result of the opponent’s prior marks. The Hearing Officer noted that section 43 relates to the inherent nature of the trade mark itself and not in relation to other trade marks.

Pursuant to section 44, the opponent argued that its below trade mark was deceptively similar to the RAWC trade mark.

The Hearing Officer found that the respective trade marks were not deceptively similar when considered as wholes.

The opponent was not able to shift the onus with respect to its allegation that the applicant did not intend to use its trade mark at the time it was filed (section 59), nor was the opponent able to demonstrate that it had sufficient reputation to satisfy the first test under section 60, or that the application was made in bad faith (section 62A). Consequently, the application is to proceed to registration with costs awarded against the opponent.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions.

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