Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd

In the case of Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd, the parties contested the validity and infringement of trade marks under the Trade Marks Act 1995 (Cth). Caporaso challenged the registrability of Mercato Centrale’s trade mark and claimed that Mercato Centrale’s marks infringed on their own registered marks. The primary judge found that the trade mark in question was inherently adapted to distinguish, rendering evidence of prior use irrelevant. The primary judge also found that Caporaso was not the owner of a registered trade mark for certain services and ordered the registration to be narrowed accordingly. Furthermore, the primary judge held that the Mercato Centrale mark was not deceptively similar to the Caporaso mark, and the other Caporaso marks were not infringed by any of the Mercato Centrale marks.

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.