Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767

FEDERAL COURT OF AUSTRALIA

Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767 TRADE MARKS – appeal from a decision of the Registrar of Trade Marks to register respondent's mark "Whackos" for pet food – whether mark substantially identical or deceptively similar to applicant's registered marks "Schmackos" or "Dogs go wacko for Schmackos" – whether likelihood of deception or confusion with applicant's marks TRADE MARKS – whether applicant owned common law mark "Go wacko" Trade Marks Act 1955 (Cth)ss 44(1),60 Kolotex Glo Australia Pty Ltd v Sara Lee Personal Products (Australia) Pty Ltd (1993) 26 IPR 1 discussed Mark Foy's Ltd v Davies Coop and Company Ltd (1956) 95 CLR 190 considered and explained Pepsico Australia Pty Ltd & Anor (t/as Frito-Lay Australia) v Kettle Chip Co Pty Ltd (1996) 135 ALR 192 referred to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 applied Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242 discussed The Macquarie Dictionary (3rd ed, 1997) EFFEM FOODS PTY LTD v WANDELLA PET FOODS PTY LTD NSD 2022 of 2005 MOORE J 23 JUNE 2006 SYDNEY IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NSD 2022 of 2005

BETWEEN: EFFEM FOODS PTY LTD

APPLICANT

AND: WANDELLA PET FOODS PTY LTD

RESPONDENT

JUDGE: MOORE J

DATE OF ORDER: 23 JUNE 2006

WHERE MADE: SYDNEY

THE COURT ORDERS THAT: 1. The appeal from the decision of the Delegate of the Registrar of Trade Marks made on 4 October 2005 be allowed. 2. The decision of the Delegate of the Registrar of Trade Marks made on 4 October 2005 be reversed. 3. The application to register the trade mark "Whackos" be refused. 4. The respondent pay the applicant's costs of the application. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA