Marquis Macadamias Ltd v Mars Australia Pty Ltd

Introduction 1 This proceeding concerns an application by the appellant (Marquis Macadamias) for registration of Australian trade mark number 2026493 in classes 29, 30 and 31 for the logo trade mark shown below (the MM Mark): 2 On 29 October 2019, a delegate of the Registrar of Trade Marks (Registrar) accepted the application under s 33 of the Trade Marks Act 1995 (Cth) (the TM Act). The respondent (Mars) opposed registration pursuant to s 52(1). On 8 December 2021, a different delegate of the Registrar upheld Mars' opposition to the application on the ground stated in s 44 of the TM Act, based upon Mars' "M&M's" trade marks. The delegate directed that the application be refused registration on the Australian Register of Trade Marks in respect of all goods (the refusal decision): Mars Australia Pty Ltd v Marquis Macadamias Ltd [2021] ATMO 152. 3 By notice of appeal filed 20 January 2022, Marquis Macadamias appealed from the refusal decision pursuant to s 56 of the TM Act. 4 By a notice of contention filed 9 February 2022, Mars contended that the refusal decision should be affirmed on grounds other than those upon which the delegate relied, specifically s 60 of the TM Act (on the basis that owing to Mars' reputation in Australia in its various M&M's trade marks, the use of the MM Mark would be likely to deceive or cause confusion) and s 42(b) of the TM Act (on the basis that the use of the MM Mark would be contrary to ss 18 and 29 of the Australian Consumer Law, being Sch 2 to the Competition and Consumer Act 2010 (Cth), or would constitute passing off, again by reason of Mars' reputation in its M&M's trade marks). 5 On 24 February 2022, prior to the first case management hearing listed on 25 February 2022, the parties provided the Court with signed consent orders disposing of the appeal. The proposed orders were as follows: (1) The decision of the delegate of the Registrar of Trade Marks given on 8 December 2021 in respect of the Application be set aside. (2) The specification of goods for the Application be amended as shown immediately below: Class 29: Candied nuts; Edible nuts; Flavored nuts; Flavoured nuts; Food products made from cooked nuts; Food products made from dried nuts; Food products made from nuts; Food products made from preserved nuts; Ground nuts; Macadamia nuts, processed; Mixtures of fruit and nuts; Mixtures of nuts and dried fruits; Nuts, prepared; Pastes made from nuts; Preparations consisting wholly or principally of nuts; Prepared nuts; Prepared snacks made from nuts; Processed nuts; Roast nuts; Roasted nuts; Salted nuts; Blanched nut kernels; Nut butter; Nut oils; Nut milk; Nut products for food; Nut-based spreads; nut-based snack bars; Milk substitutes Class 30: Chocolate coated macadamia nuts; Chocolate coated nuts; Chocolate spreads containing nuts; Chocolate-based spreads also containing nuts; Chocolate-coated nuts; Coated nuts (confectionery), namely honey roasted nuts and wellness balls including macadamias and macadamia paste; Gingerbread nuts; Sweet coated nNut confectionery, excluding chocolate-related nut confectionery; Nut flours; Sandwich spread made from chocolate and nuts; Sauces containing nuts, excluding chocolate-related sauces; Sauces flavoured with nuts, excluding chocolate-related sauces; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery), namely health bars; Confectionery; Ice confections, excluding chocolate-related ice confections; Confectionery bars; Sauces (condiments) , excluding chocolate-related sauces; Sauce mixes, excluding chocolate-related sauce mixes; Sauce powders, excluding chocolate-related sauce powders; Mixes for preparing sauces, excluding chocolate-related mixes for preparing sauces. Class 31: Edible nuts (unprocessed); Fresh nuts; Kola nuts; Macadamia nuts, unprocessed; Nuts fruits); Raw nut kernels; Unprocessed nuts (3) The Application proceed to registration with the amended specification of goods as set out in (2). (4) There be no order as to costs. 6 As can be seen, the goods set out at proposed order 2 comprise a narrower specification than that for which Marquis Macadamias originally sought to register the MM Mark. 7 The Court requested the parties to file submissions in support of the consent orders addressing, in particular, the power of the Court to make the orders sought by consent. Those submissions were filed on 7 March 2022. 8 In their written submissions, the parties confirmed that they have resolved their dispute and are each content for the application to proceed to registration on the basis of the amended scope of goods, which reduces the scope of goods covered within Class 30. Although not stated expressly, I infer from that statement that the parties have resolved their dispute on the basis that: (a) Marquis Macadamias requests the above amendment to the specification of goods in its application; and (b) upon the above request being accepted, Mars withdraws its opposition to the application. 9 The Registrar of Trade Marks was provided with a copy of the proposed consent orders and, by letters dated 11 and 18 February 2022, a representative wrote to the parties confirming that the Registrar had no objection to the proposed orders. 10 For the reasons set out below, I am satisfied that the orders as sought by the parties by consent are within power and are appropriate to be made.

Allowing the appeal by consent 11 Section 56 of the TM Act provides, relevantly, that an applicant or opponent may appeal to the Federal Court from a decision of the Registrar under s 55. Section 197 provides, relevantly, that on hearing an appeal against a decision of the Registrar, the Federal Court may, amongst other things: (a) affirm, reverse or vary the Registrar's decision or direction; and (b) give any judgment, or make any order, that, in all the circumstances, it thinks fit. 12 The Court, in exercising its powers in an appeal under s 56 is engaged in a hearing de novo and must apply the same legal criteria that the Registrar is required to apply: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at [32] and [33] per French J, with whom Tamberlin J agreed.

Power to amend specification of goods 13 The Registrar has power to amend the particulars of a trade mark application in various circumstances. Relevantly, s 63(1) of the TM Act provides that the Registrar may, at the request of the applicant or of his or her agent, amend an application for the registration of a trade mark in accordance with section 64, 65 or 65A. Section 65 applies where, as in this case, particulars of the application have been published under s 30. Section 65(7) provides that an amendment may be made to a particular specified in the application unless the amendment would have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted. 14 I am satisfied that the amendments to the specification of goods in the application requested by Marquis Macadamias have the effect of narrowing the specification and, accordingly, do not have the effect of extending the rights that (apart from the amendment) the applicant would have under the registration if it were granted. Accordingly, the Registrar would have had power to make the amendment without advertising the request for the amendment. By virtue of s 197 of the TM Act, the Court can exercise the same power that the Registrar could have exercised (pursuant to ss 63 and 65(7)) to amend the goods specified in the application: see Frucor Beverages Ltd v Coca-Cola Company [2018] FCA 993; 358 ALR 336 at [201] and [204]-[205] per Yates J.

Power to order registration of the trade mark 15 It is implicit from s 68 that a person who has filed a notice of opposition to registration may withdraw their opposition. Section 68(1)(ii) provides that, if that occurs, the Registrar must register the trade mark that has been accepted for registration. Again, by virtue of s 197 of the TM Act, the Court can exercise the same power that the Registrar could have exercised in the same circumstances. 16 In a number of cases, the Court has considered whether there is any impediment to the Court ordering the registration of a trade mark where opposition has been withdrawn. It is now well established that, where the only opposition to the registration of a trade mark is withdrawn, the parties seek orders by consent setting aside the Registrar's decision refusing registration and ordering that the application proceed to registration, and the Registrar does not wish to be heard on the making of the consent orders, the orders are both within power and appropriate: see Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218 at [5]-[8] per Nicholas J; Suyen Corp v Americana International Ltd [2011] FCA 300 at [13] per Dodds-Streeton J; Hungry Spirit Pty Ltd ATF Hungry Spirit Trust v Fit n Fast Australia Pty Ltd [2019] FCA 1277 at [6] per Burley J. However, it may be necessary for the Court to proceed to determine the appeal where the opposition raises public interest issues and the Registrar is unable to inform the Court that she or he has no objection to registration: a2 Milk Co Ltd v LD&D Australia Pty Ltd (2021) 164 IPR 293 at [6]-[10] per Bromwich J. 17 In light of the withdrawal of opposition by Mars and the Registrar's confirmation that she does not oppose the orders sought by the parties, I am satisfied that it is within power and appropriate to order that the Registrar's refusal decision be set aside and that the application proceed to registration.

Costs 18 The final order sought by the parties is that there be no order as to costs. I will make an order accordingly. I certify that the preceding eighteen (18) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice O'Bryan.