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 [2008] 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."

Cadbury sought judicial review of this decision under the Administrative Decisions (Judicial Review) Act 1977. The Registrar of Trade Marks was made a party to these proceedings but played a non-partisan role.

The Decision

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.

Justice Finkelstein found that a case should not be adjourned for an indefinite period and referred to Geelong Football Club Ltd v Clifford [2002] VSCA 212 (Geelong) and City of Sydney Council v Satara [2007] NSWCA 148 in support He noted that one exception would be an appeal to the High Court which would resolve a dispute between inconsistent authorities binding on a trial court (identified by Ormiston JA in Geelong).

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 proceedings".

Related News

Also, hot off the press: Justice Heerey's Orders on costs handed down on 31 July 2008 in relation to the passing off and breach of Section 52 proceedings brought by Cadbury Schweppes against Darrell Lea ( Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd (No 9) [2008] FCA 1115 ). For a comprehensive discussion of this part of the chocolate wars, see Mark Davison's article published by the Australian Trade Marks Law Blog here.

Cadbury is seeking leave to appeal the judgment...Of course.

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