A recent Trade Marks Office decision that suspended three
pending opposition proceedings in relation to trade mark
applications made by Cadbury UK Limited for certain shades of
purple has been overturned by the Federal Court. A copy of this
appeal decision can be read
here (Cadbury UK Ltd v Registrar of Trade Marks
 FCA 1126 (1 August 2008).
Readers may recall that the decision of the
Registrar's delegate to put opposition proceedings on
hold was reported by the
Australian Trade Marks Law Blog in February. Newcomers may
want to refer to this
article for a brief summary of events in the ongoing
chocolate battle between Darrell Lea and Cadbury Schweppes.
Background in Brief
Darrell Lea applied to suspend opposition proceedings for
Cadbury's trade mark application No's 1120614,
1120615 and 1120621 each of which seeks to protect a discrete
shade of purple for goods in Class 30. Darrell Lea succeeded
and the following direction was made:
"[T]he present oppositions be suspended until the
Federal Court decision in the passing off proceeding is
handed down. If there is no appeal from that decision, the
present oppositions shall be lifted from suspension, and
further directions given such that the opposition will
continue through the evidence stages in accordance with
normal practice and procedure."
Justice Finkelstein commenced the substantive part of his
decision by pointing out that both parties had failed to do
their case homework. He attributed blame to both parties for
not having referred the delegate to the relevant authorities
and said that this was the reason she had arrived at an
incorrect decision. Consequently both parties were left to bear
their own costs.
The legal basis for Justice Finkelstein setting aside the
delegate's decision was two fold:
1. The decision amounts to a refusal by the delegate to
hear the opposition proceedings
Justice Finkelstein went through the Registrar's
powers and duties. He noted that the Registrar (or his
delegate) has the power to adjourn a hearing,
Reg 21.15 (9) and although the Regulations do not contain
an express power to suspend or temporarily stay opposition
proceedings, the Registrar has control over procedures of
opposition proceedings and can presumably do so. He decided
that this power had not been properly exercised.
Overall, he found that the "suspension of the
opposition proceedings for an indefinite period amounted to a
denial of justice".
2. The delegate put too much significance on findings of
fact by the Federal Court
Justice Finkelstein noted that the delegate correctly found
that the outcome of the Federal Court proceedings (in the
related passing off proceedings brought by Cadbury) was
important since it could resolve issues which would require
determination in the opposition proceedings. However, Justice
Finkelstein held that the delegate had gone too far and had
placed too much significance on the public interest of avoiding
inconsistent fact finding. He found that "there is a
real risk that the delegate was not going to decide for herself
the issues that must be decided to dispose of the opposition
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