FEDERAL COURT OF AUSTRALIA
Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156
Appeal from: Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138 File number: SAD 41 of 2024 Judgment of: KATZMANN, WHEELAHAN AND HESPE JJ Date of judgment: 6 December 2024 Catchwords: TRADE MARKS — s 62(b) of the Trade Marks Act 1995 (Cth) – where an Examiner considered that a trade mark under examination was not inherently adapted to distinguish in respect of a certain class, and sought evidence or representations as to the trade mark applicant’s prior use of the mark – where the representations as to prior use by the trade mark applicant were false – where the primary judge held that the trade mark in question was inherently adapted to distinguish, and so evidence of prior use was irrelevant to the registrability of the mark – whether the primary judge erred in holding that evidence or representations are not “false in material particulars” unless false in a way that affects the registrability of the trade mark – Colorado Group Ltd v Strandbags Group Pty Ltd [2006] FCA 160; 67 IPR 628 and Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506, considered – held: the ground of opposition in s 62(b) can be established even where the evidence or representations in question are false in particulars that were not relevant to a proper assessment of the registrability of a mark, provided the requisite causal link with the acceptance of the mark for registration exists.
TRADE MARKS — s 88(1) of the Trade Marks Act – where the primary judge found that the appellant (Caporaso) was not the owner of a registered trade mark in respect of certain services – where the primary judge ordered that the trade mark registration be narrowed to exclude those services – whether the primary judge erred in failing to exercise, or to consider exercising, the discretion not to order that the Register be rectified – held: if the issue arose, it would be appropriate to order that the Register be rectified.
TRADE MARKS — deceptive similarity – where the respondent (Mercato Centrale) employed three trade marks – where Caporaso alleged that each of the Mercato Centrale marks infringed each of the Caporaso marks – where the primary judge held that the mark MERCATO CENTRALE was not deceptively similar to the mark MERCATO – where the primary judge proceeded on the basis that the word centrale had no ordinary signification in English – where it was accepted on appeal that the word centrale would be understood to mean central – held: if not cancelled, the MERCATO mark would have been infringed by the MERCATO CENTRALE mark – neither of the other Caporaso marks was infringed by any of the Mercato Centrale marks.
HIGH COURT AND FEDERAL COURT — observations on the correct approach to appellate review of evaluative findings…
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- AGLC
- Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156
- Case
- [2024] FCAFC 156
- Decision Date
CaseChat Overview and Summary
The court was required to decide whether the primary judge erred in her assessment of the evidence provided by Caporaso regarding prior use, the relevance of false evidence in the registration process, and the deceptive similarity between the trade marks. Additionally, the court had to determine whether the primary judge erred in failing to exercise the discretion not to rectify the Register of Trade Marks and whether the appellate court should apply a correctness standard to the primary judge's evaluative findings.
The court held that the ground of opposition in s 62(b) of the Trade Marks Act could be established even if the evidence or representations were false in particulars that did not affect the registrability of the mark. The court found that the primary judge did not err in her assessment that the Mercato Centrale mark was not deceptively similar to the Caporaso mark. The court also held that if the issue arose, it would be appropriate to order that the Register be rectified. The court emphasised that the applicable standard of appellate review is the correctness standard for evaluative decisions, as established by the High Court in Warren v Coombes.
The appeal was dismissed, and the cross-appeal was allowed. The primary judge's orders were set aside, and the cross-claim was allowed. The registration of the Plain Word Mark was cancelled, and the respondent's costs were ordered to be paid by the appellant. The parties were given an opportunity to seek a variation of the orders for costs.
Orders
Orders of the court
1. The appeal be dismissed.
2. The cross-appeal be allowed.
3. Orders 2 to 5 of the orders made on 26 February 2024 and the order made on 19 March 2024 be set aside and, in their place, it be ordered that:
(a) The cross-claim be allowed.
(b) Pursuant to s 88(1)(a) of the Trade Marks Act 1995 (Cth), the Register of Trade Marks be rectified by cancelling the registration of Trade Mark No 1760112 for the word “MERCATO”.
(c) subject to order 5 below, the applicant pay the respondent’s costs of the proceeding (including the cross-claim).
4. Subject to order 5 below, the appellant (cross-respondent) pay the respondent’s (cross appellant’s) costs of the appeal and cross-appeal.
5. Either party or both parties may seek a variation of the orders for costs in paragraphs 3(c) and 4 by filing and serving by 4.00 pm on 13 December 2024 any evidence and a written submission of no more than three pages, 1.5 spacing, 12 point font, in which event –
(a) the other party may by 4.00 pm on 20 December 2024 file and serve any evidence and a responding written submission of no more than three pages, 1.5 spacing, 12 point font; and
(b) any reply evidence and a reply submission of no more than two pages, 1.5 spacing, 12 point font, is to be filed and served by 4.00 pm 17 January 2025.
6. Subject to further order, any application for variation of the orders for costs will be determined on the papers.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
With respect to the primary judge’s consideration of marks other than the Plain Word Mark and the mark MERCATO CENTRALE, Mercato Centrale submitted that the primary judge worked incrementally, comparing the words in each mark before analysing how different stylisations affected the inquiry. Senior counsel for Mercato Centrale emphasised the striking visual differences between the Red Man Logo and the Mercato Centrale Logo in particular.Deceptive similarity — ConsiderationThe applicable standard of appellate review Grounds three to 11 of the amended notice of appeal claimed that the primary judge erred in her Honour’s assessment of deceptive similarity between the Caporaso marks and the Mercato Centrale marks. The parties made competing submissions about the approach that this Court should adopt to the appellate review of the primary judge’s assessment. Caporaso submitted that the eight claimed errors identified above “caused the primary judge’s process of evaluation … to miscarry, such that the Full Court should carry out its own evaluation and undertake the task of trade mark comparison afresh”. Senior counsel for Caporaso structured his oral submissions around these eight errors, and a consequential fresh comparison of the relevant marks. Mercato Centrale submitted that this appeal is a rehearing, not a new hearing. In Mercato Centrale’s submission, the determination of whether trade marks are deceptively similar to each other is a factual enquiry consisting of an evaluative and essentially impressionistic assessment, on which reasonable minds may differ. Accordingly, Mercato Centrale submitted, it is not sufficient for the success of the appeal that the Full Court might itself have reached a different conclusion from the primary judge on the question of deceptive similarity. The approach advocated by Mercato Centrale does not reflect the correct approach to the exercise of this Court’s appellate jurisdiction, as it has been explained in judgments of the High Court, and especially in Warren v Coombes (1979) 142 CLR 531 at 551 (Gibbs ACJ, Jacobs and Murphy JJ). In GLJ v Trustees of the Roman Catholic Church for the Diocese of Lismore [2023] HCA 32; 414 ALR 635 (GLJ) and Steven Moore (A Pseudonym) v The King [2024] HCA 30; 98 ALJR 1119 (Moore), the High Court reaffirmed some of the principles governing the standard of appellate review on an appeal by way of rehearing. Essentially, the applicable standard of appellate review is the product of two factors: the nature of the appellate court’s powers; and the nature of the decision made by the court below. As to the nature of the decision made by the court below, the High Court has emphasised the distinction between the principles essayed in House v The King (1936) 55 CLR 499, which apply to appellate review of discretionary decisions where the primary decision-maker is allowed some latitude as to the choice of the decision to be made, and the “correctness standard”, which applies to “questions to which there is but one legally permissible answer, even if that answer involves a value judgment”: see GLJ at [16] (Kiefel CJ, Gageler and Jagot JJ, Steward J agreeing at [95], Gleeson J agreeing at [161]). The correctness standard has been applied by Full Courts to evaluative decisions in a number of contexts, such as those involving defamatory meaning, and whether a deed of company arrangement should be terminated: see Bazzi v Dutton [2022] FCAFC 84; 289 FCR 1 at [22]–[26] (Rares and Rangiah JJ), and Project Sea Dragon Pty Ltd (Subject to a Deed of Company Arrangement) v Canstruct Pty Ltd [2024] FCAFC 141 at [114]–[118] (Jackman J, O’Callaghan J and McElwaine J agreeing). The correctness standard has also been applied by the High Court to the evaluative question whether tendency evidence has “significant probative value” for the purposes of s 97(1)(b) of the Evidence Act 2008 (Vic): R v Dennis Bauer (A Pseudonym) [2018] HCA 40; 266 CLR 56 at [61] (Kiefel CJ, Bell, Gageler, Keane, Nettle, Gordon and Edelman JJ), with the Court stating that on appeal, “it is for the court itself to determine whether evidence is of significant probative value, as opposed to deciding whether it was open to the trial judge to conclude that it was”.