Confectionary chronicles: glucose jelly bean trade mark application appealed

On 9 August 2023, the Registrar of Trade Marks handed down a decision in favour of Nova Pharmaceuticals Australasia Pty Ltd (Nova) regarding its GLUCO BOOST trade mark in an opposition matter against The Pharmacy Guild of Australia and Gold Cross Products and Services Pty Ltd (Opponents) (The Pharmacy Guild of Australia and Gold Cross Products and Services Pty Ltd v Nova Pharmaceuticals Australasia Pty Ltd [2023] ATMO 111).  But the victory has not yet crystallised, as the PGA appealed the decision to the Federal Court (VID680/2023) on 30 August 2023.  The parties await the Federal Court showdown to determine whether the Nova GLUCO BOOST will proceed to registration.

Nova’s GLUCO BOOST application & PGA’s Opposition

Nova’s application for GLUCO BOOST was filed on 9 June 2020 in classes 5 (Dietetic confectionery adapted for medical purposes; medicated confectionery including glucose jelly beans) and 30 (Confectionery including glucose jelly beans).  The acceptance was advertised as accepted on 10 November 2020 which kicked off the two month opposition period.

In January 2021, the Pharmacy Guild of Australia (PGA), owner of the prior-registered GLUCOJEL mark in class 30, and Gold Cross Products and Services Pty Ltd opposed the application asserting various grounds, ultimately pursuing the following at the hearing in May 2023:

• GLUCO BOOST was substantially identical, or deceptively similar, to prior registrations for GLUCOJEL, (owned by PGA) and GLUCOBEANS (owned by a third party, CW Retail Holdings Pty Ltd) pursuant to s44 of the Trade Marks Act 1995 (Cth) (Act).
• PGA’s mark GLUCOJEL has garnered significant reputation such that the use of GLUCO BOOST would cause consumer deception or confusion (pursuant to s60 of the Act).
• The use of GLUCO BOOST would therefore be contrary to law (pursuant to s42(b) of the Act).

Despite the PGA’s very significant reputation in the GLUCOJEL mark, the Registrar found in favour of Nova on all three counts.

Section 44 – Substantially Identical or Deceptively Similar

It was undisputed that the application for GLUCO BOOST covers the same and/or related goods in classes 5 and 30 to both prior registered trade marks.  The critical issue was whether the marks are substantially identical or deceptively similar.

In its decision handed down on 9 August 2023, the Registrar said “no”, finding that “GLUCO BOOST” was neither substantially identical nor deceptively similar to GLUCOJEL or GLUCOBEANS despite the common prefix “GLUCO-” because the different suffix elements “BOOST”, “JEL” or “BEANS” contributed distinctiveness of the marks.  The Registrar acknowledged the descriptive nature of the “GLUCO-” prefix in the context of glucose-based confectionery.

Interestingly, since the decision, prior registered mark GLUCOBEANS was cancelled on 22 August 2023 at the owner’s request (CW Retail Holdings Pty Ltd).

Section 60 – Reputation in Australia

The Opponents argued that use of GLUCO BOOST by Nova would likely deceive or cause confusion due to the strong reputation of GLUCOJEL in the Australian market under s60 of the Act.

PGA’s very significant reputation in GLUCOJEL was acknowledged by the applicant and confirmed by the Registrar, who considered nonetheless that the common “GLUCO-” prefix in the marks did not create a likelihood of deception or confusion, because of its descriptive nature, placing greater weight on the distinctiveness of the -JEL, -BOOST and -BEANS suffixes.

Section 42(b) – Contrary to Law

The Opponents allegations under section 42(b) were that the use of the GLUCO BOOST mark would be contrary to Australian Consumer Law as it would likely deceive or cause confusion.  Given the Registrar’s finding under s60 that GLUCO BOOST is not likely to deceive or confuse consumers, this ground of opposition also failed.

Federal Court Appeal

On 30 August 2023 PGA appealed the Registrar’s decision to the Federal Court (VID680/2023) so the parties await the Federal Court sugar-coated showdown to see whether the Nova GLUCO BOOST will proceed to registration.  The Case Management hearing is scheduled for 2 February 2024 and the GLUCO BOOST application will remain pending until the Federal Court delivers its decision.

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