The Opponent (Ice Cream Group) filed an opposition to registration of the accepted Trade Mark application (Dixie Cup and logo) in the name of Australasian Food Group, who were trading as ‘Peters Ice Cream’. Ice Cream Group bore the onus of proof to be successful in their opposition and provided evidence in support. This evidence highlighted that the use of the term ‘Dixie Cup’ was originally a brand name coined in the USA but claimed that ‘Dixie Cup’ had since entered Australian vocabulary as meaning disposable paper cups. This was supported by dictionary definitions of ‘Dixie Cup,’ which refer to small disposable cups. Ice Cream Group distribute their goods through ‘Everest Ice Cream’ who use small disposable cups using the term ‘Dixie Cups’ to describe the packaging.
Essentially, Ice Cream Group asserted that Peters Ice Cream was not the original owner or creator of the name ‘Dixie Cup’ and attempted to succeed in their opposition relying upon section 41 of the Trade Marks Act 1995 (Cth)2 , which provides that an application for a trademark must be rejected if the trademark is not capable of distinguishing the applicant’s goods or services from those of other traders.3 It was highlighted that the Applicant’s use of the word would confuse customers who could not distinguish between their goods and those of other traders.4
The Registrar considered that Ice Cream Group did not establish grounds of opposition in relation to the word mark and the logo trademarks, and thus, their application was registered. It was emphasised that if relying upon section 41 of the Trade Marks Act 1995 (Cth) 5, a two-step process is utilised to assess the distinctiveness of an applicant’s trademark in relation to distinguishing its goods or services. This test was drawn from Cantarella Bros Pty Ltd v Modern Trading Pty Ltd 6 and involves assessing the ordinary significance of the Trade Mark in Australia to consumers who will purchase the product and, if established, considering whether other trades would legitimately desire to use the trade mark for the sake of its ordinary signification in respect of the same or similar products.
In this instance, the Registrar considered that the probative value of Everest’s use of ‘Dixie Cup’ is diminished by their failure to corroborate their use of the term for the previous 30 years. This undermined the ordinary significance of the term. As a result, no legitimate desire for other traders to use the Trade Mark was considered to exist meaning that the opposition to registration in accordance with section 41 of the Trade Marks Act 1995 (Cth) failed.
This decision highlights the importance when seeking to oppose the registration of an accepted Trade Mark application when relying upon section 41 to find the ordinary significance of the Trade Mark and promote the Registrar that other traders legitimately seek to use the Trade Mark for its ordinary significance.
1 Trade Marks Act 1995 (Cth) s 52 (‘Trade Marks Act’).
2 Ibid s 41.
6 Cantarella Bros Pty Ltd v Modern Trading Pty Ltd  HCA 48.