Jason Marks applied for the trade mark INSPERESSO in respects of classes 11, 30, 35, 37, and 43, being services and goods related to the supply of coffee. Registration was opposed by Nestlé, holder of the NESPRESSO trade mark.
The opposition preceded under section 60 with the Delegate noting that Nestlé had, internationally, an abundance of reputation with respect to its NESPRESSO trade mark. However, it was the reputation in Australia before the priority date of the INSPERESSO mark that had to be established to succeed. To this end sales figures and advertising were provided and did serve to establish the necessary reputation.
The Delegate conclude that while Nestlé would not have made out their case under section 44, due to sufficient differences between the marks, “section 60 is informed by the strength of the reputation of the Opponent’s trade mark,” and as a consequence confusion is more easily established.
The Delegate refused the registration of the INSPERESSO mark, finding that while section 44 grounds were not established, the reputation of the NESPRESSO mark effectively lowered the standard of similarity required for the opponent to succeed under section 60.