Fresh Venture Group Pty Ltd v Box Corporate Food Services Pty Ltd [2018] ATMO 4 (12 January 2018)


A recent Trade Marks Office decision has confirmed that the mark THE FRUIT BOX is descriptive of “retailing, wholesaling, direct selling and on-line selling of goods, including fruits and vegetables” services in Class 35.

Box Corporate Food Services Pty Ltd had successfully secured acceptance of its application for the mark THE FRUIT BOX when it was opposed by Fresh Venture Group Pty Ltd.

The basis for the opposition was that (i) the mark THE FRUIT BOX is not capable of distinguishing the nominated services (section 41) and (ii) the mark THE FRUIT BOX is substantially identical with or deceptively similar to a prior Australian registration or application (section 44).

The Delegate chose to consider the ground based on inherent distinctiveness first and as it was established, did not need to consider the other ground. In Australian opposition proceedings, an opponent is only required to establish one ground of opposition to be successful.

Applying the High Court decision in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48; (2014) 109 IPR 154, the Registrar’s Delegate held that the “ordinary signification” of the mark THE FRUIT BOX is likely to be of “a box of fruit”. Box Corporate argued that the inclusion of the word “the” changes the meaning of the phrase from the general to the particular and although the Delegate agreed with this, it was not enough to change the position that a consumer would easily bring to mind an idea of a fruit box when faced with the THE FRUIT BOX trade mark. Box Corporate’s arguments were further hampered by evidence tendered by Fresh Venture that the phrases “THE FRUIT BOX” or “FRUIT BOX” are commonly understood and used terms within the fruit and vegetable retail and wholesale markets within Australia.

The Delegate concluded that section 41(4) of the Trade Marks Act 1995 applied namely that the mark is to some extent, but not sufficiently, inherently adapted to distinguish the designated services from the goods or services of other person. This finding does not need to be fatal to an application if it can be shown through evidence that the trade mark does or will distinguish the designated services as being those of the applicant.

Although Box Corporate provided declarations from customers vouching for an association between the trade mark THE FRUIT BOX and Box Corporate, the evidence was unclear as to whether the customers were referring to the word mark THE FRUIT BOX or the composite mark  . The Delegate also relied on evidence filed by Venture Fresh relating to the size and extent of the retail and wholesale fruit and vegetable marks within Australia to conclude that Box Corporate’s evidence was insufficient to show that the mark THE FRUIT BOX does or will distinguish the retailing of fruit as being the services of Box Corporate.

As a result, the Delegate refused registration of the THE FRUIT BOX mark.

If you would like to read the full decision, please click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.

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