FEDERAL COURT OF AUSTRALIA Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218 Citation: Societe Des Produits Nestle S.A. v Aldi Stores (A Limited Partnership) [2010] FCA 218 Parties: SOCIETE DES PRODUITS NESTLE S.A. v ALDI STORES (A LIMITED PARTNERSHIP) File number NSD 1478 of 2008 Judge: NICHOLAS J Date of judgment: 5 March 2010 Legislation: Trade Marks Act 1995 (Cth) ss 56, 68(1) Patents Act 1990 (Cth) s 60(4) Cases cited: Cadbury Schweppes Pty Limited v Effem Foods Pty Limited (2006) 69 IPR 584 applied European Community v Commissioner of Patents (2006) 68 IPR 539 applied Date of hearing: 5 March 2010 Date of last submissions: 5 March 2010 Place: Sydney Division: GENERAL DIVISION Category: No catchwords Number of paragraphs: 10 Solicitor for the Applicant: Banki Haddock Fiora Solicitor for the Respondent: Swaab Attorneys IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1478 of 2008 BETWEEN: SOCIETE DES PRODUITS NESTLE S.A. Applicant AND: ALDI STORES (A LIMITED PARTNERSHIP) Respondent JUDGE: NICHOLAS J DATE OF ORDER: 5 MARCH 2010 WHERE MADE: SYDNEY BY CONSENT THE COURT ORDERS THAT: 1. The appeal from the decision of the delegate of the Registrar of Trade Marks given on 27 August 2008 in respect of trade mark application no. 822780 be allowed. 2. The decision be set aside. 3. The trade mark application the subject of the appeal proceed to registration. Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. The text of entered orders can be located using Federal Law Search on the Court's website. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION NSD 1478 of 2008 BETWEEN: SOCIETE DES PRODUITS NESTLE S.A. Applicant AND: ALDI STORES (A LIMITED PARTNERSHIP) Respondent JUDGE: NICHOLAS J DATE: 5 MARCH 2010 PLACE: SYDNEY REASONS FOR JUDGMENT (Revised from Transcript) 1 This is a proceeding under s 56 of the Trade Marks Act 1995 (Cth) (the Act) in which the applicant appeals against the decision of a delegate of the Registrar of Trade Marks given on 27 August 2008 upholding the respondent's opposition to trade mark application 822780. The trade mark in issue is for the shape of goods. The shape is described in an endorsement to the application as being four bars attached to one another by a thin base as depicted in various representations attached to the application form. The goods in respect of which registration is sought are: Chocolate confectionary being chocolate-coated confectionary blocks or bars and chocolate-coated wafer biscuits. 2 The delegate found the respondent had made out a ground of opposition under section 41 of the Act and refused to register the trade mark. 3 The parties have now agreed to resolve the appeal by consent. They ask the Court to allow the appeal so that the trade mark may proceed to registration. 4 The applicant has produced to the Court a copy of a letter from the Deputy Registrar of Trade Marks which indicates that the Registrar has no objection to the decision of his delegate being set aside so that the application may proceed to registration. 5 Ms Rubagotti for the applicant has helpfully drawn my attention to two cases each of which was concerned with an appeal under s 60(4) of the Patents Act 1990 (Cth) in respect of a successful opposition to a patent application. The first is a decision of Young J in European Community v Commissioner of Patents (2006) 68 IPR 539. It was followed by Lindgren J in Cadbury Schweppes Pty Limited v Effem Foods Pty Limited (2006) 69 IPR 584. In that case Lindgren J said at para [17]: It is important to note that in the light of the history of the application, and, in particular, the commissioner's acceptance of the application and the complete specification, s 61 of the [Patents Act 1990] would have obliged the commissioner to grant the patent if there had been no opposition to the grant. In substance, that is now the position on the appeal. 6 The statutory scheme under the Act is relevantly to the same general effect. Section 68(1) of the Act provides: (1) The Registrar must, within the period provided under the regulations, register a trade mark that has been accepted for registration: (a) if there has been no opposition to the registration; or (b) in a case where there has been an opposition: (i) if the Registrar's decision, or (in the case of an appeal against the Registrar's decision) the decision on appeal, is that the trade mark should be registered; or (ii) if the opposition has been withdrawn; or (iii) if the opposition has been dismissed under section 222. Otherwise, the application for the registration of the trade mark lapses. 7 The trade mark the subject of the present appeal was accepted for registration. It would have been registered were it not for the opposition lodged by the respondent. 8 I have taken account of the Registrar's attitude which I regard as a matter of some importance in the present circumstances. 9 It is in no sense self-evident that the mark the subject of the appeal should not be registered. Nor is there any evidence before the Court which would lead me to the conclusion that it should not be registered. 10 I am therefore satisfied that I should make the following orders: 1. The appeal from the decision of the delegate of the Registrar of Trade Marks given on 27 August 2008 in respect of trade mark application no. 822780 be allowed. 2. The decision be set aside. 3. The trade mark application the subject of the appeal proceed to registration. I note that the parties have agreed that there should be no orders as to costs. I certify that the preceding ten (10) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Nicholas. Associate: Dated: 12 March 2010