Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd
[2020] FCCA 1718
•30 June 2020
FEDERAL CIRCUIT COURT OF AUSTRALIA
| Chris AND DORA Di Lorenzo PARTNERSHIP v DENVERSIAN PTY LTD & ANOR | [2020] FCCA 1718 |
| Catchwords: INTELLECTUAL PROPERTY – Trade Marks – registration – opposition – appeal under s.56 of the Trade Marks Act 1995 (Cth) from decision of Registrar of Trade Marks under s.55 of the Act dismissing opposition and allowing registration pursuant to s.44(3) of the Act – whether any trade mark in fact used by the applicant (opponent) – no use established – whether, for the purposes of s.58, the trade marks are substantially identical – whether, for the purposes of s.58A, the Applicant first used a similar trade mark before the Respondent first used its trade mark – Applicant did not establish absolute first use, or any use – subjective intention did not constitute use for either s.58 or s.58A – whether honest concurrent use of the two trade marks for the purposes of s.44(3) – no actual confusion – Appeal dismissed. |
| Legislation: Federal Court Rules 2011 (Cth), rr.34.24, r.34.25 |
| Cases cited: Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 109 IPR 187 Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096; (2018) 133 IPR 417 |
First Applicant: | CHRIS AND DORA DI LORENZO PARTNERSHIP |
| First Respondent: | DENVERSIAN PTY LTD |
| Second Respondent: | THE REGISTRAR OF TRADE MARKS |
| File Number: | SYG 2334 of 2018 |
| Judgment of: | Judge Baird |
| Hearing date: | On papers |
| Date of Last Submission: | 29 January 2019 |
| Delivered at: | Sydney |
| Delivered on: | 30 June 2020 |
REPRESENTATION
| The Applicant was self-represented |
| The First Respondent was self-represented |
| The Registrar of Trade Marks was excused from appearing |
ORDERS
ORDERS that the Appeal from the decision of the Registrar of Trade Marks by her delegate Nicholas Smith given on 2 July 2018 in respect of the opposition to registration of Australian Trade Mark Application Number 1720917 be dismissed.
DIRECTS that the Registrar take all steps necessary for Australian Trade Mark Application Number 1720917 to proceed to registration with the present endorsements.
ORDERS the Applicant pay the Respondent costs of the appeal if any.
| FEDERAL CIRCUIT COURT OF AUSTRALIA |
SYG 2334 of 2018
| Chris And Dora Di Lorenzo Partnership |
Applicant
And
| DenversiAn Pty Ltd |
First Respondent
| THE REGISTRAR OF TRADE MARKS |
Second Respondent
REASONS FOR JUDGMENT
Background
The Applicant, who in the Notice of Appeal is self‑described as “Chris and Dora Di Lorenzo Partnership” (Di Lorenzo), appeals from a decision of a Delegate of the Registrar of Trade Marks given on 2 July 2018 on Di Lorenzo’s opposition to registration as a trade mark of Australian trade mark number 1720917 for the word mark “BLACK SHEEP” in respect of “Restaurants; restaurant services; café and bistro services” in class 43 of the Register of Trade Marks (Mark) filed in the name of the Respondent, Denversian Pty Ltd, on 10 September 2015.
DL Mark (the cited prior trade mark on the Register)
Chris Di Lorenzo and Dora Di Lorenzo are the registered owners of Australian trade mark number 1681212 for the stylised mark “BLACK SHEEP” (comprising stylised words with device) for specified goods in class 30 of the Register, including “aerated beverages (with coffee, cocoa or chocolate base); … beverages made from coffee”, and specified services in class 43 of the Register being “Coffee bar and coffee house services (provision of food and drink); Coffee shop services” (DL Mark). The DL Mark is registered with a priority date of its filing date, 16 March 2015. The priority date of a trade mark on the Register is determined pursuant to ss.6 and 12 of the Trade Marks Act 1995 (Cth). Pursuant to s.72, upon registration the rights in the trade mark accorded by the Act have effect from the filing date.
The DL Mark is as follows:
The full specification of the goods and services in respect of which the DL Mark is registered is attached to these reasons at Attachment A.
Whilst the DL Mark was applied for, and is registered in, the names of Chris Di Lorenzo and Dora Di Lorenzo, there is no claim on the Register that those two persons conduct business as a partnership, nor is there any evidence in support of the named Applicant in this proceeding that it is a legal entity, having legal personality separate from the two individuals Chris Di Lorenzo and Dora Di Lorenzo (c.f., s.27(2)(c) of the Act).
By reference to the filing of the initiating Court document and submissions filed in this proceeding, however, I will proceed on the basis that the Applicant is Chris Di Lorenzo and Dora Di Lorenzo, that they are the persons who jointly comprised the opponent in the Opposition proceeding opposing registration of the Mark before the Trade Marks Office of IP Australia, and that they style themselves as “Chris and Dora Di Lorenzo Partnership”. Accordingly, unless I expressly state otherwise, in these reasons I refer to the Applicant, and the persons Chris Di Lorenzo and Dora Di Lorenzo, as Di Lorenzo.
Acceptance of the Mark, and the Opposition proceeding
As I have stated (at [1] above), Denversian filed for registration of the Mark on 10 September 2015 (Relevant Date). The filing date is the priority date for the Mark. The Mark thus has a later priority date than that of the DL Mark.
Upon examination, the Mark was initially accepted for registration as a trade mark upon the application of s.44(4) of the Act. In 2017, during the Opposition proceedings, at the request of Denversian, the specification of services was narrowed to “restaurants; restaurant services; café and bistro services” (see at [1] above), and limited by the endorsement “Registration of this trade mark is limited to the State of Queensland.”
The Mark was advertised as accepted on 12 May 2016 in the Australian Official Journal of Trade Marks. Pursuant to s 52 of the Act, Di Lorenzo then brought an opposition to registration of the Mark. In their revised statement of grounds and particulars filed 30 August 2016, Di Lorenzo raised grounds of opposition under ss.42, 44, 58 and 58A of the Act. Denversian filed notice of intention to defend on 28 September 2016. The parties lodged evidence, and written submissions. The Delegate made his decision on the Opposition proceeding based on the written record.
By reference to the requirements of s.44(2) of the Act, the Delegate found that the DL Mark has a priority date earlier than the Mark (16 March 2015, and 10 September 2015, respectively), that the Mark is deceptively similar to the DL Mark, and is registered in respect of similar services, being coffee house services, to the services of the Mark, particularly café and bistro services, since they both involve the provision of food and drink to members of the public from a particular venue. The Delegate found that Di Lorenzo had established the ground of opposition pursuant to s 44(2) of Act.
Sub‑section 44(2) is subject, however, to the provisions of sub‑ss.44(3) and 44(4) of the Act. The Delegate was satisfied that Denversian adopted the Mark without knowledge of the DL Mark, that the businesses were substantially different (a café restaurant, and a mobile coffee van, respectively), operating in geographically distinct locations (Denversian in Queensland, and Di Lorenzo in Sydney, New South Wales), that it was apparent that Di Lorenzo had no plans to expand its business, with its limited reputation, into the Queensland market, and that allowing the Mark to proceed to registration would be unlikely to cause, and had not caused, any actual confusion between the two businesses. The Delegate found Denversian had established a reputation by use of the Mark, and that, given the reputation already built up by Denversian, Denversian would be inconvenienced if it was unable to protect and control the use of the Mark in its local region.
The Delegate was satisfied that there was honest concurrent use of the Mark and the DL Mark pursuant to s.44(3)(a) of the Act, and that in those circumstances, the application for the Mark should be accepted subject to the existing geographical limitation to Queensland (Delegate’s decision at [30]). Di Lorenzo thus failed to establish the ground of opposition pursuant to s.44 of the Act.
At [34], the Delegate found that as he had decided that the application for the Mark should be accepted under sub‑s.44(3), and the ground under s.58A is relevant only in the event that the application is accepted under the provisions of sub.s.44(1) (or under certain of the Trade Marks Regulations 1995 (Cth), not relevant to the application), the s.58A ground was not established. The Delegate further found that Di Lorenzo failed to establish any ground of opposition to registration of the Mark, and decided that the Mark may proceed to registration, subject to no appeal being brought within time. He awarded costs.
The parties were self-represented in the Opposition proceeding before the Delegate, and have been self-represented in this Court.
This proceeding (procedural background)
Di Lorenzo commenced this proceeding by filing a Notice of Appeal on 21 August 2018, naming the “Australian Trade Marks Office / Nicholas Smith” as the respondent (but not Denversian). Di Lorenzo identified the part of the Delegate’s decision appealed from as “in Particular s.58 ground”. They identified the orders sought and the grounds relied on as those set out in an Annexure 1 in the accompanying affidavit “sworn/affirmed” 14 August 2018 by “Chris & Dora Di Lorenzo Partnership”.
As is apparent from the above, the Notice of Appeal was filed out of time – more than 21 days from the date of the Delegate’s decision. It incorrectly named the Australian Trade Marks Office and the Delegate as parties, contrary to the requirements of r.34.24(1) - (3) of the Federal Court Rules 2011 (FCRules). Following the making of, and giving effect to, procedural orders permitting Di Lorenzo to file and serve an application for extension of time in which to file a notice of appeal, and requiring service on both the Registrar and Denversian in accordance with r.34.25 of the FCRules, Denversian was named as a proper party.
Upon the appearance of Ms Sian Bressolles, the sole director of Denversian, on behalf of the company, at the next case management hearing, the proceeding was, in substance, regularised. I made orders granting an extension of time, permitted the filing and service of an amended notice of appeal, ordered a timetable for the filing and service by Di Lorenzo of points of claim of Di Lorenzo’s opposition, with particulars of each ground, the filing and service by Denversian of points in answer to the grounds of opposition and any points of counterclaim in support of its claim to the Mark, and filing and service of evidence, and outlines of submissions.
I made orders removing, to the extent necessary, “Australian Trade Marks Office” and the Delegate as parties. At her request, the Registrar was excused from playing an active part in the proceeding. Completing the procedural aspects of this appeal, by consent I ordered that the proceeding be heard and determined on the papers.
Di Lorenzo grounds of opposition on the Appeal
By the amended notice of appeal dated 19 October 2018, Di Lorenzo appeals from the whole of the Delegate’s decision, and relies on grounds of opposition under ss.58 and 58A of the Act. The grounds relied on are stated to be as follows (without alteration):
1. Chris & Dora Di Lorenzo Partnership have earlier use of the same/similar trade mark ‘BLACK SHEEP’ – Section 58A
Chris & Dora Di Lorenzo Partnership first used the trade mark ‘BLACK SHEEP’ in September 2011, that is before Denversian Pty Ltd began to use the trade mark around December 2013. Use of the trade mark by Chris and Dora Di Lorenzo Partnership has been continuous.
Chris & Dora Di Lorenzo Partnership registered Trade mark 1681212 ‘BLACK SHEEP’ on 16 March 2015 for class 30 and class 43 as per classes listed below.
[see Attachment A to these reasons]
2. Denversian Pty Ltd is not the owner of the trade mark ‘BLACK SHEEP’ – Section 58
Chris & Dora Di Lorenzo Partnership are the owners of trade mark 1681212 “BLACK SHEEP’ registered on 16 March 2015 for goods in class 30 and services in class 43 as per classes listed above. Trade mark ‘BLACK SHEEP’ was first used by Chris & Dora Di Lorenzo Partnership in September 2011, that is before Denversian Pty Ltd filed trade mark application 1720917 ‘BLACK SHEEP’ on 10 September 2015. Application 1720917 ‘BLACK SHEEP’ is for services in class 43. Restaurants; restaurant services; café and bistro services.
In their statement of claim dated 26 October 2018, Di Lorenzo again stated the grounds of opposition as s.58 and s.58A of the Act, and reiterated the same claims to prior use. Additionally, in respect of the s.58 ground, Di Lorenzo asserted that because acceptance of the Mark had initially been rejected by the examiner under s.44 for being substantially identical/deceptively similar “Therefore, Di Lorenzo Partnership only needs to prove that they have prior use to Denversian.”
Denversian filed and served a document titled “statement of claim” in response, which stands as its points in answer or notice of contention. It contends that the Mark has been accepted under prior use, and that the DL Mark is a sufficiently different logo mark that it cannot and has not been mistaken for the Mark. Denversian relies upon, and extracted parts of, the Delegate’s decision, reiterating its continuous trading history as a restaurant and bistro operating 6 days a week since 2013 at the one location in Queensland, and referring to its evidence of use and honest trading lodged in the proceedings before the Trade Marks Office.
Relevant legal principles on an appeal to this Court from the decision of the Registrar
Although styled an “appeal”, this proceeding arises as a de novo hearing under s.56 of the Act from the decision of the Delegate (as a delegate of the Registrar), involving the exercise of the original jurisdiction of the Court: Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; (2019) 367 ALR 393; (2019) 142 IPR 1 per Greenwood J at [2]. The Court is to determine judicially whether the application should succeed on its merits, not whether the Registrar has lawfully discharged her duties: Jafferjee v Scarlett [1937] ALR 404; (1937) 57 CLR 115 at 126; Apple Inc v Registrar of Trade Marks [2014] FCA 1304; (2014) 227 FCR 511; (2014) 109 IPR 187, per Yates J at [22].
The Court approaches the matter “afresh and without undue concern as to the ratio decidendi of the registrar”. That said, weight should be given to the Registrar’s opinion as “a skilled and experienced person”: see discussion in Apple Inc at [23]-[25]. In Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 367 ALR 393; (1999) 93 FCR 365; 45 IPR 411, at [33], in the context of judicial consideration on appeal under s.35 of the Act whether a ground of rejection existed under s.44 of the Act in respect of a particular application, French J observed:
… weight can be given to the Registrar’s opinion without compromising the duty of the Court to construe the relevant legal criteria. When the proper principles are applied to the manner in which a judgment is to be made about an issue such as “deceptive similarity” there is room for a degree of deference to the evaluative judgment actually made by the Registrar. That does not mean that the Court is bound to accept the Registrar’s factual judgment. Rather it can be treated as a factor relevant to the Court’s own evaluation.
See also Telstra Corporation Ltd v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156; 237 FCR 388, (2015) 116 IPR 207, at [181].
On an appeal under s.56 of the Act from a decision of the Registrar under s.55 made on an opposition, the Court decides whether or not the accepted mark should proceed to registration having regard to the extent (if any) to which any ground of opposition, raised in the proceeding has been established by the opponent, and, I observe, any responsive matters raised in any notice of contention by the trade mark applicant: see generally, s.55 and s.197. In this proceeding, the identified grounds of opposition are under ss.58 and 58A of the Act.
Onus and standard of proof
The opponent to registration bears the onus of establishing a ground of opposition: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9; (2010) 86 IPR 437, at [32], [48]. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities: Phone Directories, at [133]. In cases of doubt, the benefit is afforded the applicant for registration (compare the position under the Trade Marks Act 1955 (Cth)).
The date at which the rights of the parties are to be determined is 10 September 2015, the filing date of the application for the Mark: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) CLR 592, 595; see Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; (2017) 251 FCR 379; (2017) 141 IPR 1, at [14] – [33], [41]. As I have noted at [2] above, pursuant to s.72(1), the filing date is the date from which the registration of a trade mark is taken to have had effect.
In this proceeding Di Lorenzo, as the opponent to registration of the Mark, must establish at least one of the grounds of opposition on which they rely. That is, pursuant to s.58, they must establish that Denversian is not the owner of the Mark, but that a trade mark identical, or substantially identical with the Mark was first used (relevantly as particularised in the amended notice of appeal and statement of claim, the DL Mark by Di Lorenzo) in the course of trade for the “same kind of thing”. The Full Court in Food Channel at [48], said in relation to the s.58 ground, if the evidence is not sufficiently clear to enable a finding of fact to be made about ownership of the mark at the time of registration (that is, the filing date), then the opponent fails on that issues: it bears the onus of proof.
The ground of opposition under s.58A is only available where the opposed trade mark has been accepted for registration because of sub‑s.44(4) of the Act. An anterior issue for the Court to determine in this proceeding is whether this ground of opposition is available to Di Lorenzo to assert, given that the Mark was accepted by the Registrar in the Opposition proceeding on the application of sub‑s.44(3) of the Act.
Assuming for the purposes of this overview that the relevant acceptance by the Registrar is at initial examination under s.33, and thus that the Mark was accepted for registration under s.44(4) in the face of the citation of the DL Mark already on the Register, Di Lorenzo (as owner of the DL Mark) must establish that they first used the DL Mark in respect of similar services or closely related goods before Denversian first used the Mark, and that Di Lorenzo have continuously used the DL Mark since that first use. That is, Di Lorenzo must establish absolute first use. Even if Di Lorenzo establishes absolute first use, Denversian contends that the Mark should be registered on the application of sub‑s.44(3), as the Delegate decided.
These two grounds of opposition thus concern the trade marks that are claimed to have been used by each of the parties, and whether those claimed trade marks are substantially identical, or deceptively similar marks, from when and what that use of the respective trade marks has been (if any), and whether that earlier claimed use has been continuous.
Overview of the parties’ evidence
Di Lorenzo
Di Lorenzo filed in this proceeding, and relies on the following affidavits/witness statements: an affidavit “sworn/affirmed” by the “Chris & Dora Di Lorenzo Partnership” dated 4 September 2018, to which both individuals’ signatures are affixed and witnessed, a second affidavit dated 21 September 2018 similarly sworn/affirmed, signed and witnessed, which is substantially directed to the application for extension of time, and a witness statement dated 14 November 2018 signed by Mr Chris Di Lorenzo and duly witnessed, with 5 exhibits attached (2 further copies of the statement were filed in the Court’s registry on 21 November 2018). Di Lorenzo also filed an affidavit dated 14 August 2018 in support of the first notice of appeal (see above at [14]), which content is repeated variously in the statement of claim, in the later affidavits, and in the witness statement. A written submission dated 16 January 2019 completes the material relied upon by Di Lorenzo in the proceeding.
Denversian
Denversian filed in this proceeding, and relies on a witness statement made by Ms Sian Bressolles sworn and duly witnessed on 21 November 2018, which attaches and incorporates Ms Bressolles’ statutory declaration dated 6 April 2017 and the evidence lodged in the Opposition proceeding, and a signed statement of Nicole MacDonald of 4U Accountants signed and witnessed on 20 November 2018. A written submission affirmed by Ms Bressolles on 11 December 2018, and written submission in reply affirmed 29 January 2019 completes the material relied upon by Denversian in the proceeding.
Di Lorenzo’s claim to use
Di Lorenzo claim to be a partnership comprising Chris and Dora Di Lorenzo. Di Lorenzo claim to have first used the trade mark “BLACK SHEEP” in September 2011.
In none of the affidavits or witness statements filed in the proceeding do the Di Lorenzos attest to what was that claimed first trade. Di Lorenzo rely on the registration of the DL Mark.
As their evidence of use in the period before the Relevant Date, Di Lorenzo rely on a bank statement opening balance, 9 third party supplier invoices and corresponding payment details, artwork proofs for vehicle signage and business cards, a single page captured by the Internet Archive Wayback Machine in April 2013 of a webpage at the domain (bsmcafe AU domain) and claimed to have been posted in October 2011, the purchase of a number of domains and mobile numbers in June 2015 and a trade mark application filed in August 2015 for the word BLACK, and a letter from their accountant. In addition, in his witness statement dated 14 November 2018 Mr Di Lorenzo relies on an undated screenshot of a recent website. I consider each of these claimed uses below.
Bank statement opening balance
The bank statement Di Lorenzo relies on is a Westpac Business One bank statement opening balance dated 18 August 2011 for an account ending in –814, styled “Mrs Dora Di Lorenzo & Mr Chris Di Lorenzo T/A Black Sheep Mobile Cafe” with a single opening deposit of $2000 (814 Account). No further bank statements relating to this account are in evidence.
Supplier invoices
Di Lorenzo relies on a total of 9 third party supplier invoices issued for food and beverage supplies addressed to “Black Sheep Mobile Cafe” or “blacksheep mobile cafe”, at Mr and Mrs Di Lorenzo’s residential address in Kogarah, Sydney New South Wales, in the period November 2011 to March 2015, and corresponding online banking withdrawal details of payment from the 814 account. In each case the payment withdrawal details are named “Mrs Dora Di Lorenzo”. The dates, products and amounts stated in the third party invoices are follows:
2011
(i)supplier invoice dated 12 November 2011 for supply of 20 pies and 20 sausage rolls, total price $60.00;
(ii)supplier invoice dated 16 November 2011 for supply of 16 x 1kg coffee beans, 1 x 2kg drinking chocolate, and 1 x 700ml “monin sirop hazelnut”, total price $376.50;
(iii)supplier invoice dated 25 November 2011 for supply of 18 muffins and 1 banana bread (loaf), total price $51.92;
2012
(iv)supplier invoice dated 17 February 2012 for supply of 30 individual quiche, total price $74.25;
(v)supplier invoice dated 31 August 2012 for supply of 2000 cup lids, 160 4oz plain hot cups, and 100 each sandwich containers, plastic containers and lids, total price $166.09;
2013
(vi)supplier invoice dated 5 July 2013 for supply of 25 muffins and 1 banana bread (loaf), total price $62.48;
2014
(vii)supplier invoice dated 15 April 2014 for supply of a total of 50 sausage rolls, plain pies, and spinach and feta pasties, total price $82.50;
(viii)supplier invoice dated 29 September 2014 for supply of a total 17kg of (I infer) coffee bean blends and 2kg of drinking chocolate, for a total price $443.00; and
2015
(ix)supplier invoice dated 20 February 2015 for supply of 24 muffins, a pear and raspberry bread and a banana bread (loaf), total price $88.88.
These invoices and payment evidence supply to the Di Lorenzo home address. They show intermittent, small purchases. They do not evidence any sales or supplies in the course of trade by any person under the DL Mark, or the phrase “black sheep mobile café”. Self‑evidently, the invoices emanate from the supplier, not Di Lorenzo, the recipient party is not identified as “black sheep”, nor by the DL Mark, and Mrs Dora Di Lorenzo, not Di Lorenzo, is identified as the payer. These intermittent purchases suggest, at most, some preparatory investigations, or, equally, could constitute purchases for familial or personal consumption, or free distribution.
Di Lorenzo also rely on two invoices and payment details for the purchase of coffee beans in June 2018, described by Di Lorenzo as being for green Kenyan coffee beans for roasting, and other coffee beans used for blending with own roasted beans. As these invoices evidence purchases after the Relevant Date, on no basis can they evidence relevant first use. In addition, they suffer from the same deficiencies as the above.
Van signage and business cards
Mr Di Lorenzo deposes that a professional sign writing business placed the DL Mark that Di Lorenzo had created on the sides of their van and on business cards in July 2011. They rely on colour artwork proofs dated 28 June 2011 of vinyl graphics transfers to be applied to a black VW van, and artwork proof for a proposed business card using the same logo. Those proofs do not show any image of the DL Mark by itself. The proofs show a mock-up of a transfer superimposed on the side of a motor vehicle that comprises a composite logo or device incorporating the DL Mark with the stylised words ‘mobile’ and ‘cafe’, on a black background, and with white and text and device, the element ‘cafe’ in a vertical orange rectangle as follows (DL mobile café logo):
The artwork proof also depicts a domain name in orange lettering along the sides and back of the vehicle. There is no evidence that any such domain was ever registered or used.
Mr Di Lorenzo attached copy invoices appearing to relate to the vinyl vehicle transfers and business cards dated July 2011 addressed to “Black Sheep Mobile Cafe”, and debit card payment for corresponding amounts. There is no indication of who made the payments.
Beneficially construed, these artwork items support a claim that Di Lorenzo took some preliminary steps preparatory to some trading activity. However, the material contains troubling and inconsistent details.
The artwork proofs for the vehicle transfers prominently display one domain name (blacksheepmcafe.com), whilst the artwork for the business card depicts a different domain name, the bsmcafe AU domain, together with a made up mobile number: 0400 000 000. Separately, an undated photocopy of a business card, or artwork for a business card, (it is not possible to determine which) depicts a mobile number ending in ‑377.
Domain name
Di Lorenzo claims they hosted the bsmcafe AU domain from 28 June 2011, and posted on the website corresponding to that domain on 29 October 2011. Whilst Mr Di Lorenzo exhibited a DNS hosting pending set up notice from Crazy Domains dated 28 June 2011 addressed to a gmail account (CdsyXX.@) for the bsmcafe AU domain, there is no documentation evidencing when that domain was registered, in whose name, nor whether it was operated as a website promoting any trading activities under or by reference to the DL Mark (or any other sign).
April 2013 webpage
Di Lorenzo rely on a web.archive.org capture of a single webpage of the bsmcafe AU domain captured 23 April 2013 (April 2013 webpage), which depicts on the page a calendar for April 2013. The page in evidence is in colour, it has an all black background, and bears the DL mobile café logo prominently at the top of the page, and two photographic images of a black van, and text under the headings “Coffee Trivia” and “About us”. One photographic image is of the side profile of a parked van on which the DL mobile café logo (substantially as appeared in the artwork proofs) is displayed, but with the address of the bsmcafe AU domain, and the other photographic image is a close-up of the open rear doors of a van showing a coffee machine set up in the vehicle. Text under the heading ‘Coffee Trivia’ tells a tale of discovery of coffee by a sheep herder. Text under the heading “About us” states “Our love of coffee and years of experience working in cafes has led us to create our own mobile café. On our menu you will find most cafe beverages and some yummy snacks.” Towards the bottom of the page is the statement “Sydney coffee lovers, we are here and ready to roll. Whatever the occasion we look forward to hearing from you”. Contact details are displayed as [email protected] (not the bsmcafe AU domain) and, a mobile number ending in ‑377. Viewed beneficially, at most this statement shows that Di Lorenzo were inviting expressions of interest regarding any possible trading opportunities. It does not evidence any then existing trade channel.
Within the page, above the “Coffee Trivia” text is the statement “posted on Uncategorized on October 29, 2011 by blacksheepadmin”. There is no corroborating documentation supporting that statement.
June 2015 domains and mobile numbers and trade mark BLACK
Documentation shows that in June 2015, after the priority date of the DL Mark, Di Lorenzo purchased the domains “black‑sheep.com.au” and “black‑sheep.net.au”, purchased 3 mobile word numbers 04XX BLACK1 (252 251), bid on a smartnumber 1300 BLACK1 (252 251), and in 5 August 2015, filed for registration of what they describe as “smartnumber word BLACK1” Australian trade mark registration no. 1712217 in classes 30 and 43 of the Register.
The purchase of domain names of themselves does not evidence their use in the course of trade at any time, nor use in connexion with any goods or services. There is no evidence that either of the domains has been used by Di Lorenzo as a medium to conduct or promote any trading activities, whether or not within the specification of the DL Mark, or at all.
The word BLACK, by itself, or with additional numerals, is irrelevant to establishing use for the present proceeding. None of the purchase of the mobile word numbers, bidding on a smart number or the obtaining of Australian trade mark number 1712217 assists Di Lorenzo in establishing or supporting any claim to use of the DL Mark or phrases “black sheep” or “black sheep mobile café”.
Recent webpage “screenshot”
In his witness statement dated 14 November 2018, Mr Di Lorenzo deposes he attaches images of “new business cards and screenshot of recent website and what we have done to protect and strengthen our trading name “BLACK SHEEP” ”. The attached page is undated, and does not contain any identifiers of the website on which it purports to be posted. The image depicts a variant of the DL Mark, with the words “coffee” and “traders” under the word components of the DL Mark, and partially updates the photographs, text and contact details from the April 2013 webpage.
The screenshot page prominently states “NEW WEBSITE COMING SOON” in two places, depicts contact details of the 2015 purchased domain “black‑sheep.com.au”, and the smart number 1300 BLACK1 (252 251), bid for in mid 2015. It contains the same Coffee Trivia text as appeared on the April 2013 webpage. Replacement text under the heading “About blackSheep” announces that the authors have created their own coffee blend, are excited about what is around the corner and “are hoping you will join us on our journey.” The page has the same statement as appeared on the April 2013 webpage: “posted in Uncategorized on October 29, 2011 by blacksheepadmin”.
Viewed beneficially, at most, this “screenshot” is a holding page posted on a domain in anticipation of, or planning for, some future trading opportunity, which may or may not eventuate. There is nothing to show that the page was ever published on any website. Given the paucity of the evidence, I am not persuaded that the recent “screenshot” was ever published, posted, or uploaded to any domain. Accepting what Mr Di Lorenzo says in his witness statement when describing this page, I accept that it was created for the intended purposes of bolstering their claim to the DL Mark. In November 2018, Mr Di Lorenzo describes it as being a “recent website”. I infer that the document was created during the course of the present proceeding, or, during the Opposition proceeding.
Conclusion on webpages
This “screenshot” page contains an inaccurate statement of posting in October 2011, whilst self‑evidently it is of much more recent origin (as I have said above, the domain name and the smart number respectively were purchased and bid for in mid 2015). In the face of this contrary evidence, the statement on each of the recent page and on the April 2013 webpage that content was posted in 2011 is unreliable, and cannot be accepted. I find that the April 2013 webpage does not establish any depiction of the DL mobile café logo or the DL Mark in or from October 2011.
Further, I find that the April 2013 webpage does not evidence any commitment by Di Lorenzo to the use of the DL mobile café logo or the DL Mark (or any other sign) in the course of trade as at April 2013. At best, it may support some preparatory steps being taken at around that time to investigate whether it may be feasible to operate some form of mobile coffee van under the DL mobile café logo, sometime in the future, if sufficient enquiries to operate such a van are forthcoming.
Accountant’s letter
Di Lorenzo rely upon a letter “to whom it may concern” dated 2 May 2016, from an Adel Gendi. Adel Gendi states that they have been the accountant of “Chris Di Lorenzo and Dora Di Lorenzo Partnership trading as BLACK SHEEP since their business was established in 2001.” The accountant states that “since 2011, their business has been continuously operating, and is the main source of income for Chris Di Lorenzo and Dora Di Lorenzo”. The accountant does not give any detail what that income may be. The accountant also asserts “Since 2011, their business has been serving typical café drinks and food. Since 2014, their business has also been selling their own blend of coffee.” The accountant claims that “In our regular conversations about their business plans for the future, they have talked about how they are preparing their business, so that their goods and services could be sold nationwide.”
No supporting material is exhibited to support the unsworn claims of the accountant. In particular, no financial statements, accounting records, taxation returns or any bank statements are provided to support any of these claims. The accountant does not claim to have sighted any use by Di Lorenzo of the DL Mark (or any other sign), or any trade under or by reference to the phrase “black sheep”. The claims made by the accountant do not constitute, or substitute for, objective proof of trading activity. In the absence of such objective proof, I give no weight to the letter.
Explanation for lack of trading activity
To answer a criticism made by the Delegate, Mr Di Lorenzo claims that in the period mid-2015 to late 2017 Di Lorenzo was only able to focus on the day to day running of business and not on growth. The lack of growth is stated to be most significantly for the reason that Mr Di Lorenzo’s mother was not well, no longer able to care for herself, and came to live with them, and because of the work and preparation required for this opposition, and earlier for an opposition to registration of the DL Mark. Accepting that Mr Di Lorenzo’s mother died on 9 September 2017, and may have been living with Mr and Mrs Di Lorenzo, this explanation does not account for the lack of activity in the period before mid‑2015. In relation to the period mid‑2015 to mid-2017, this explanation does not establish that Di Lorenzo undertook any “day to day running of the business, even if no activities indicative of growth were undertaken” as he claims.
Use as a trade mark in the course of trade – relevant legal principles
Before turning to my conclusions on Di Lorenzo’s claimed use, it is necessary to refer to the legal principles concerning use as a trade mark and use in the course of trade, both concepts inherent in s.17 of the Act, and relevant to Di Lorenzo’s grounds of opposition in this proceeding.
Use as a trade mark
Use as a trade mark is use of the sign (mark) as a ‘badge of origin’ in the sense that it indicates a connexion in the course of trade between goods/services and the person who applies the mark to the goods/services: see Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107; (1999) 47 IPR 481 at [19], approved in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144; (2010) 86 IPR 224 at [43].
Use in the course of trade
The sign must be used “in the course of trade”. Although this does not require an actual sale, it does require that there be a commercial dealing in the goods or services under or by reference to the sign. Of itself, mere registration of a business name, a company name or a domain name will not satisfy the requirement of use of the sign as a badge of origin in the course of trade.
A distinction is drawn in the authorities between use and mere preliminary discussions preceding use. Where there is no actual trade or offer to trade in the relevant goods (or services) bearing the mark, or any existing intention to offer or supply such goods or services in trade, there is no use: see Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414; (1984) 56 ALR 194; (1984) 3 IPR 545. Use of the mark in preliminary discussions, such as the forwarding of samples and brochures to ascertain whether there is a market sufficient for it to be worthwhile to export to Australia, was held not to be a use in the course of trade in Settef Spa v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (McGarvie J).
In Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166; (2001) 51 IPR 149 at [40], his Honour Justice Drummond observed that subjective intention that a mark be used in trade, bona fide though it was in that case, was not sufficient. His Honour explained:
…Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intentions to use the mark into effect.
Conclusion on Di Lorenzo claimed use
The material relied on by Di Lorenzo is an admixture of submission, claim, and assertion. There are substantial evidentiary gaps and serious deficiencies in the material relied on by Di Lorenzo.
Di Lorenzo do not provide any documentation demonstrating any supply or offer to supply by them of any of the goods or services in respect of which the DL Mark is registered under or by reference to any of the DL Mark, the DL mobile café logo, or the phrase “black sheep”. In respect of the whole phrase ‘black sheep mobile cafe’, Di Lorenzo have not provided a single instance of use emanating from Di Lorenzo before the Relevant Date.
Whilst Di Lorenzo assert that they operate a café style business based in New South Wales, there is no evidence before me that they have operated such a business from any particular location, or as a café operation, or that they have ever done so. At most they depose to a subjective intention to do so.
Di Lorenzo claim to have commenced offering for sale their own blend of coffee under the name “black sheep” and the DL Mark in 2014, however, there is no material evidencing this claim.
If there had been any trading activity by Di Lorenzo in the course of trade in any of the goods and services encompassed in the specification of the DL Mark over the several years since 2011 (under any trading name or sign), it would not have been a difficult matter to tender in evidence substantiating business documentation brought into existence in the ordinary course of trade. However, there are no receipts, no sales documentation, no evidence of any menu or offering of goods or services, no evidence of any goods or services being offered to members of the public by reference to the DL Mark, or the DL mobile café logo, or the phrase “black sheep”, or the phrase “black sheep mobile café”. There is no evidence of any geographical locations at which Di Lorenzo plied their claimed trade or operated a mobile coffee van, no photographs of the van (a mock-up of which is depicted in the artwork proof) operating at an actual geographical location as a coffee van, no vehicle registration, or café or other trading licence. In short, there is no evidence of any conduct of any trading operations of a coffee bar or coffee house (being the services specified in the class 43 services for the DL Mark), nor in any of the specified goods.
Further, there are no financial documents evidencing any trade, no management accounts, balance sheets, profit and loss statements, general ledgers, or other accounting or taxation records.
Lastly, if any of the domains or or, after mid 2015, either of the domains then purchased had been actively operated as the website of a business thereby promoted, the number and dates of visitors to the website, customer enquiries, future customer enquiries, and bookings could have been documented and could have been put into evidence.
Instead, Di Lorenzo’s evidence of use amounts to a bare assertion of use, supported by a single webpage – the April 2013 webpage (which has the deficiencies I have discussed above), some intermittent purchases by Mrs Dora Di Lorenzo of a few food and coffee products a few times a year, none of which were around the date of the April 2013 webpage, a bank statement evidencing the opening of a bank account, and some artwork proofs.
On the evidence before me I cannot be satisfied that Di Lorenzo has used the phrase “black sheep” in the course of trade at any time prior to the Relevant Date. I am not satisfied that Di Lorenzo has used the DL Mark at any time prior to the Relevant Date. There is no objective proof of an intention to commit goods or services within the specification of goods and services of the DL Mark to actual trade in Australia under any sign.
At most, the material in evidence shows that prior to the Relevant Date Di Lorenzo were investigating whether to operate a mobile coffee van, and took some preliminary, preparatory steps to use the phrase “black sheep mobile cafe” or the DL mobile café logo in connection with the operation of a mobile coffee van, at some yet to be decided time.
I conclude that whilst it may be that Di Lorenzo in the period August 2011 to April 2013, had a subjective intention to operate a mobile coffee van under or by reference to the DL mobile café logo, or the sign “black sheep mobile café”, that subjective intention did not, on the evidence, realise itself into any use of either of those signs as a trade mark in the course of trade.
I am not satisfied that Di Lorenzo has established that they had an objectively ascertainable commitment to offering to supply any of the services or the goods within the specification of the DL Mark under or by reference to any of the DL Mark, the DL mobile café logo, the phrase “black sheep” or “black sheep mobile café” at any time prior to the Relevant Date.
Denversian’s evidence of use
In her witness statement Ms Bressolles describes herself as “Chef/Owner”. She is the owner and sole director of Denversian. Denversian operates a bistro restaurant under the name “Black Sheep Bistro” on the Gold Coast, in Queensland. Ms Bressolles deposes that Denversian has used the Mark in respect of the services since on or about August 2013.
Preparatory to commencement of trade, on 6 August 2013, via its accountant, Denversian lodged with the Australian Securities and Investments Commission (ASIC) its application for registration of the business name “Black Sheep Bistro”.
Denversian’s accountant, Nicole MacDonald of 4U Accountants, in her statement states that Denversian ATF Denversian Family Trust trading as Black Sheep Bistro has met all their Australian Taxation obligations, including lodgement of Business Activity Statements and Trust Tax returns since 16 December 2013.
The Facebook posts for the Black Sheep Bistro in evidence show that it has been operating as a bistro restaurant and serving meals and drinks under that name and promoting itself by that name since 16 December 2013. Ms Bressolles deposes that (as at 6 April 2017) the Facebook page has had over 2,000 visits to the page and likes. Screenshots of the newsfeed from Denversian’s Facebook page in evidence substantiate Ms Bressolles’ statements, with over 400 pages exhibited.
Ms Bressolles describes Denversian’s restaurant as a medium-sized bistro restaurant serving fresh home style meals for breakfast, lunch and dinner, open to trade 6 days a week. It can seat 44 people at any one time, and on averages serves 40 to 60 people during the week and between 70 and 120 people per day on a weekend. She deposes that since it has been established the restaurant has quickly become a highly recommended and well‑known restaurant in South‑East Queensland, with its turnover increasing every year. Ms Bressolles deposes that total annual turnover has increased annually from approximately $140,430 in 2013-2014, to $398,706 in 2014-2015, and to $520,290 in 2015-2016. The profit and loss statement for 2017-2018 (after the Relevant Date) for Black Sheep Bistro in evidence before me shows a gross income of $451,006.
Ms Bressolles deposes that Denversian employs 10 staff, and was looking to expand to another 5 employees by the end of 2019. She submits in chief that it is a locally supported business with design to expand within the community (of the Gold Coast), and that it is looking at 2 additional properties in Pimpama, and a pre prepared meal business.
Ms Bressolles deposes that the majority of Denversian’s marketing of the restaurant is done through online listings, and reviews on well‑known websites. It has also used the Mark (the evidence shows use of the name Black Sheep Bistro) to promote the restaurant in large signage on the outside of the restaurant premises, visible from the highway passing in front of the building, on signage, kerbside chalk board advertising of specials, on menus and flyers used in the restaurant and distributed locally through mail box drops. Examples of each form of promotion are exhibited.
Denversian has listed the restaurant under the name Black Sheep Bistro on online directories since November 2013. Ms Bressolles exhibits screenshots of listings on White Pages, TripAdvisor, Four Square, AGFG Australian Good Food and Travel Guide, True Local, LocalSearch, Destinations Australia, Australian.Photos, BEST Restaurants of Australia, Zomato (previously Urbanspoon), and Hey Cafes domains, variously from November 2013, January and March 2014, since 2014 (generally) and February 2015.
In addition, the Black Sheep Bistro, and Ms Bressolles as the chef/owner, have been favourably reviewed in articles in the Gold Coast Bulletin, in print and on their website (7 articles published in the period 2014 – January 2016 are exhibited), including as one of the best 5 places for breakfast on the Gold Coast, and one of the top 10 BYOs, Restaurants, and Best Raw Food places on the Gold Coast. Reviews published in 2014, November 2014, October and December 2015, and in January and December 2016 are exhibited. The evidence exhibited to Ms Bressolles’ statutory declaration also includes positive reviews naming the restaurant published in 2014 and 2015 on the websites for Good Food Gold Coast, BlankGC, The Urban List, The Legit Chef, and The Weekend Edition, and customer reviews on TripAdvisor, and Google Reviews.
Those online listings, reviews, and posts, and the building and premises signage, advertising boards, menus and flyers depict consistent uses of the name Black Sheep Bistro as the name of Denversian’s restaurant, variously describe and depict dishes offered and served, pricing, hours of operation and contact details from December 2013 up to and continuing after the Relevant Date.
As to the honesty of Denversian’s use, Ms Bressolles deposes that she came up with the idea for the trade mark because she is the “black sheep” in her family, and taking into consideration the growing New Zealand population on the Gold Coast, that she is from New Zealand, and believing that Denversian would be “blazing new trails” in the area of bistro dining.
Ms Bressolles deposes that she chose the name Black Sheep Bistro for the restaurant, that Denversian honestly adopted the Mark with the belief that Denversian was the only one using the Mark in relation to the specified services, and that Denversian continued to use and promote the Mark without any knowledge or confusion with the DL Mark. She deposes that at the time of selecting the Mark, Denversian was not aware of Di Lorenzo or of the DL Mark. Denversian only became aware of the DL Mark in mid 2015 when a search was conducted on the Register. To Denversian’s knowledge, there has never been any confusion between the Mark and the DL Mark by customers, other traders or suppliers, or between the Mark and Denversian with the DL Mark or Di Lorenzo.
Ms Bressolles submits that Denversian has worked continuously under the one identity of Black Sheep Bistro since 2013, and has shown stability, growth and a large digital footprint. Ms Bressolles says the businesses are substantially different and that in the 6 years of trading at the same time (assuming that Di Lorenzo have been trading), they have never been mistaken for one another.
Conclusion as to Denversian’s evidence of use
I find that the material in evidence before me establishes continuous, and consistent, use in the course of trade from 2013 by Denversian in restaurant services, and café and bistro services under and by reference to the trading name Black Sheep Bistro.
Further, I am satisfied by the trading revenues generated by the restaurant, and the evidence of the reviews, articles and promotional activities that Denversian, trading as the restaurant Black Sheep Bistro, has established and maintains a good reputation in at least the Gold Coast area as at the Relevant Date.
I accept Ms Bressolles’ evidence as to the honesty of Denversian’s use of Black Sheep Bistro. I am persuaded that Denversian has demonstrated honesty of use of the Mark in the relevant sense.
Section 7(1)
Section 7(1) of the Act provides that if the Registrar or a prescribed court “having regard to the circumstances of a particular case, thinks fit, the … court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark”.
Registration of the Mark has been sought in block capitals, in a plain font, without stylisation. Accordingly, the form in which the Mark may be used is not limited to any particular representation, or style: Morny Ltd’s Trade Mark (1951) 68 RPC 55; 68 RPC 131 (CA UK), at 149-150.
The evidence demonstrates that Denversian has used Black Sheep Bistro as the name and trading style of its bistro restaurant, and promoted its restaurant services, café and bistro services under and by reference to that name. It does not appear to have used the Mark, simpliciter, but rather, used the Mark together with the word “bistro”.
“Bistro” is a common and ordinary English word, directly describing the very place at which restaurant services, bistro services and café services are provided, and the character or quality of those services. In normal English usage, the words Black Sheep, being first occurring, are most important in the overall phrase “Black Sheep Bistro” for the purpose of distinction as the name of Denversian’s restaurant and specified services (see e.g, London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279). Where the terminating word is directly descriptive of the services, as in the present case, it does not substantially affect the identity of the trade mark “Black Sheep” used in respect of the services. I consider that distinctive identity resides in the sign “Black Sheep” when the phrase “Black Sheep Bistro” is used, and that it is that sign that is memorable, and distinctive.
Having regard to the circumstances of its use in respect of the services for which registration is sought I find that Denversian has established that it has used the Mark - BLACK SHEEP - with additions or alterations that do not substantially affect the identity of the trade mark. Applying s.7(1) of the Act, the word “bistro” is an addition that does not substantially affect the identity of the Mark. I conclude that by its use of Black Sheep Bistro since December 2013 Denversian has used the Mark as a trade mark for the specified services for which it seeks registration (see [1] above).
Section 58 ground of opposition
Di Lorenzo opposes registration of the Mark under s.58 of the Act.
Section 58 provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
In order to succeed on the ground of opposition under s.58 of the Act Di Lorenzo must establish:
(a)the Mark is identical or substantially identical with a trade mark they have used, relevantly, they contend, the DL Mark, or, I infer, the phrase “black sheep”: Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 58; (1994) 120 ALR 495; (1994) 31 IPR 375;
(b)that Di Lorenzo’s trade mark (that is, having satisfied (a)) has been used in respect of goods or services as “the same kind of thing” as the Mark: Re Hicks’ Trade Mark (1897) 22 VLR 636 at 640; and
(c)Di Lorenzo has the earlier claim to ownership based on their use of that trade mark before the Relevant Date (the filing date of the trade mark application for the Mark), or any earlier use of the Mark by Denversian: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.
See generally, Pham Global at [50].
Substantially Identical
I have already found that Di Lorenzo have not established that they have ever used in the course of trade the phrase “black sheep”, or the DL Mark.
In respect of a mark that has not been used prior to the application for registration, the basis of a claim to ownership has been found in the combined effect of authorship of the mark, the intention to use it in connection with the services (in the present case), and the application for registration: see Food Channel at [52], Pham Global at [18] and [19]. Thus, pursuant to s.27, arising from the fact of lodging the application for registration of the DL Mark, Di Lorenzo may rely on the presumption of intention to use that mark as at 10 March 2015.
In determining whether two trade marks are identical, or substantially identical, the well accepted test is as expressed by Windeyer J in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, (1963) 109 CLR 407 at 414 (omitting citations):
“In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends” it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”. Whether there is substantial identity is a question of fact. Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are substantially identical”.
There is no room in a s.58 ground of opposition for the consideration of questions of deceptive similarity.
The Mark is the phrase “BLACK SHEEP”.
The DL Mark comprises stylised text in white (or other light colour) on a contrasting dark background with a device element linking two word elements. Accepting that the text is not specified as limited to white on a black background, visually, the appearance of the DL Mark that strikes the eye is that it is depicted in a light font contrasting with a very dark background, bringing into prominence the two word elements and the linking device element. The device element is not a separate and distinguishable part of the trade mark. Part of the device element suggests a part of the letter K in the word “black”, and similarly another part of the device element forms the letter S in the word “sheep”. The device element is not divisible or discountable from the word elements, or the overall trade mark, but forms an integral and necessary, essential part of it.
Further, the device element is not an immediately recognisable image. It is not an obvious illustration, or purely descriptive, of the word elements “black sheep” within the DL Mark. If considered separately, apart from the overall combination of words and device, it is unlikely to be identifiable as a black sheep – or a sheep: c.f., the footprint image with which the High Court was concerned in E & J Gallo. The device is not a mere descriptor but a distinguishing feature: see Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 74 IPR 246.
The device element within the DL Mark substantially informs and affects the trade mark’s identity. Although aurally the word elements of the DL Mark may be recollected, as being a not-uncommon, colloquial expression, I do not consider that the device element can be excised from recollection of the DL Mark. It is an essential element, and a dominant cognitive cue.
I find that the essential features of the DL Mark are the words “black” and “sheep” together with the linking device forming the K of black and the S of sheep. The device element and the words are essential features. The device element strikes the eye. It gives the trade mark distinctive character and visual impact.
The side by side comparison of the competing trade marks is to be carried out cognisant of the essential elements of the mark: Pham Global at [52].
In a side by side comparison of the Mark and the DL Mark, as I have said, the essential features that strike the eye in the case of the DL Mark are the linking K and S device, with the words “black” and “sheep”. The device element is an essential feature wholly absent from the Mark. Further, although a secondary visual cue, the representation of the words and device elements as a whole against a strongly contrasting background create an overall visual impression wholly absent the Mark. Accepting that the Mark may encompass any font and style, the importance of the device element and its linking function in the DL Mark is a striking difference between it and the Mark. The total impression that emerges is one of dissimilarity. The commonality of the word elements is insufficient to convey an overall substantial identity. I find that the Mark is not substantially identical with the DL Mark.
In the result, my conclusion differs from that arrived at by the Delegate. As I have observed at [21] – [23], whilst affording respect to the decision of the Delegate, it is for this Court to decide substantial identity on the evidence before it: see also Pham Global at [53].
It follows that Di Lorenzo has failed to establish the first limb of the test under s.58, and the ground of opposition must fail.
It is thus unnecessary for me to consider the remaining limbs of s.58, but for completeness I do so.
“the same kind of thing” and prior use of the trade mark
The services of the competing trade marks must be for the same kind of thing. I consider that “café services” within the specification of services for the Mark, and “coffee shop services” within the specification of services for the DL Mark are the same kind of thing. I do not consider that restaurants, restaurant services, and bistro services are true equivalents to the services of the DL Mark: see Colorado at [89].
I have found that Denversian first used the Mark in respect of the services of its specification in December 2013, before the priority date of the DL Mark.
I have further found that Di Lorenzo has not established any use in the course of trade in any of the services of the Mark, whether by reference to the DL Mark, the DL mobile café logo, or the phrases “black sheep”, or “black sheep mobile café”.
It follows, and I find, that Di Lorenzo has not established either the second limb or third limb of the test under s.58, even apart from the first limb (see above at [98]).
Di Lorenzo has not established their opposition under s.58 of the Act.
Section 58A Ground of Opposition
Di Lorenzo opposes registration of the Mark under s.58A of the Act.
Section 58A provides a ground of opposition based on first and continuing use – what I refer to as absolute first use – by an opponent of their trade mark which has priority on the Register where the opposed trade mark has been accepted for registration pursuant to s.44(4) of the Act.
Section 58A provides:
58AOpponent’s earlier use of similar trade mark
(1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a)subsection 44(4); or
(b)a similar provision of the regulations made for the purposes of Part 17A.
Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a)first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b)has continuously used the similar trade mark in respect of those goods or services since that first use.
Note: For predecessor in title see section 6.
On its face, s.58A applies only to the situation where the opposed trade mark is (in the words of s.58A(1)) “a trade mark (section 44 trade mark) the application for registration of which has been accepted because of (a) subsection 44(4)”. Unless the threshold requirement of s.58A(1) is satisfied - the opposed trade mark must have been accepted “because of subsection 44(4)” - the ground of opposition under s.58A(2) is not available. Opposition under s.58A must fail.
Subject to issues of construction, which I consider below, if the opposed trade mark (that is, the Mark) has been accepted under sub‑s.44(4), the ground requires that Di Lorenzo establish:
(a)it first used the DL Mark (the “similar mark”, in the prefatory words of s.58A(2)) in respect of similar services or closely related goods before Denversian first used the Mark, and
(b)that Di Lorenzo has continuously used the DL Mark in respect of those goods or services since that first use.
As I have concluded above, Di Lorenzo have not established first use of the DL Mark, or any other sign (relevantly, they have not established first use before Denversian of any of the DL Mark, the DL mobile café logo, the phrase “black sheep” or the phrase “black sheep mobile café” ). It follows, that whether the similar mark is understood as the DL Mark, or any of those other signs, for the same reasons as I have already found, Di Lorenzo have not established the grounds of opposition under s.58A. Thus, whether or not the relevant acceptance of the Mark is that initial acceptance under examination because of s.44(4), or, as I consider the ground allows, the acceptance by the Delegate under s.44(3), Di Lorenzo’s opposition under s.58A fails.
Given my conclusions, the following observations are made for completeness.
At issue in this proceeding is the scope and operation of s.58A, and at least the following matters of interpretation.
First, the preliminary matter of the accepted trade mark application to which s.58A(1) is directed. That is, whether the application for the trade mark referred to in s.58A is the form of the application for registration as a trade mark accepted pursuant to s.33 on examination of the application for registration, or, where, as in the present case, the accepted trade mark application has been opposed under s.52 of the Act, the application for the trade mark accepted is the form of the application accepted in the Opposition proceeding as decided by the Registrar pursuant to s.55 of the Act.
Secondly, whether under the s.58A ground of opposition there is a threshold question whether the applied for trade mark is substantially identical with, or deceptively similar to, a trade mark having earlier priority on the Register. That is, before turning to consider and decide the factual issues of absolute first and continuous use, whether the Court must examine the applied for trade mark under the provisions of s.44, and not decide the ground under s.58A on the basis of the trade mark application accepted. In the decision of Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022, (2012) 97 IPR 183, Jacobson J described this as the “threshold question”.
Thirdly, under s.58A(2), what are the trade marks that the parties may rely on to establish their competing first and continuous uses. Specifically, whether the similar trade mark referred to in the section is the trade mark that was the other trade mark successfully cited against the applied for trade mark under ss. 44(1) or (2), and in the face of which trade mark’s earlier priority on the Register, the applied for trade mark was accepted because of sub‑s.44(4) of the Act, or whether an opponent for the purposes of s.58A can rely on first use of another trade mark, not being the cited trade mark.
Some principles of construction
The method to be applied in construing a statue to ascertain the intended meaning of the words used is well settled. Recently, in The Queen v A2 [2019] HCA 35; (2019) 373 ALR 214, construing a provision in a penal statute, the High Court of Australia reiterated that construing a provision commences with a consideration of the words of the provision itself, but it does not end there.
At [32]-[37], their Honours Kiefel CJ and Keane J explained:
[32]“… A literal approach to construction, which requires the courts to obey the ordinary meaning or usage of the words of a provision even if the result is improbable, has long been eschewed by [the High Court]. It is now accepted that even words having an apparently clear ordinary or grammatical meaning may be ascribed a different legal meaning after the process of construction is complete. This is because consideration of the context for the provision may point to factors that tend against the ordinary usage of the words of the provision.
[33]Consideration of the context for the provision is undertaken at the first stage of the process of construction. Context is to be understood in its widest sense. It includes surrounding statutory provisions, what may be drawn from other aspects of the statute and the statute as a whole. It extends to the mischief which it may be seen that the statute is intended to remedy. Mischief … may be understood to refer to a state of affairs which to date the law has not addressed. It is in that sense a defect in the law which is now sought to be remedied. The mischief may point most clearly to what it is that the statute seeks to achieve.
[34]This is not to suggest that … the words of the provision should be lost sight of in the process of construction. …
[36]These cases serve to remind that the text of a statute is important, for it contains the words being construed, and that a very general purpose may not detract from the meaning of those words. As always with statutory construction, much depends upon the terms of the particular statute and what may be drawn from the context for and purpose of the provision.
[37]… when a literal meaning of words in a statute does not conform to the evident purpose or policy of the particular provision, it is entirely appropriate for the courts to depart from the literal meaning. A construction which promotes the purpose of a statute is to be preferred.”
At [40] their Honours confirmed that “a modern approach to statutory construction may take account of headings. Whilst headings of a provision are not always reliable and do not form part of a statute, and so may not govern what follows in the provision, headings may be used in a similar way to extrinsic materials. They may point the way towards and be used to identify the mischief to which the provision is directed and its purpose. …”
Bell and Gageler JJ at [124] in A2 summarised the task of the Court as follows:
“… In assigning legal meaning to the words of a provision, the court starts with consideration of the ordinary and grammatical meaning of the words taking into account both context and legislative purpose. Consideration of context in its widest sense and the purpose of the statute informs the interpretative task throughout. That consideration, and the consequences of giving a provision its literal, grammatical meaning, may lead the court to adopt a construction that departs from the ordinary meaning of the words. …”
His Honour Justice Edelman then put the matter succinctly in at [163] when he said:
“… in any instance of interpretation of intended meaning, the process ‘must begin with a consideration of the text itself’ but, since the intended meaning of words can never be acontextual, the process must also ‘begin by examining the context’.”
The context in which s.58A operates
I have set out the text of the section above.
Section 58A is located in Division 2 of Part 5 of the Act – Grounds for opposing registration. It follows immediately upon s.58, the first ground of opposition raised in this proceeding.
Preceding s.58, in turn s.57, the first provision in Part 5, Division 2, provides, relevantly, that “the registration of a trade mark may be opposed on any of the grounds on which an application for the registration of a trade mark may be rejected under this Act …”.
As I have observed above at [23], s.55 delimits the task of the Registrar (an on appeal, the Court) at the end of opposition proceedings. Section 55 of the Act requires that at the end of the opposition proceeding the Registrar or Court must decide the fate of the trade mark application before them, and whether to register the trade mark having regard to the extent (if any) to which any ground on which the application was opposed has been established. Regard must also be had to s.55(2).
Section 44 provides a ground of rejection under the Act, and, pursuant to s.57, a ground of opposition.
The pre-condition to acceptance of a trade mark application under sub‑s.44(4) is that the Registrar has decided that a ground for rejection of the application exists under sub‑s.44(1) or (2) of the Act. For convenience I set out the provisions of s.44 of the Act at Attachment B to these reasons.
The mischief to which s.58A is directed
Section 58A was introduced into the Act by the Trade Marks Amendment Act 2006 (Cth). There was an apparent inconsistency between the provisions of s.44(4) of the Act, and the narrow ground of prior ownership in s.58, which s.58A was introduced to address.
Whilst an opponent could succeed under s.58 based on first use by a person other than the trade mark applicant or their predecessor in title, whether by use of the same trade mark (or a substantially identical mark), and whether the earlier trade mark was registered, or rights to the trade mark had accrued at common law, it was unclear what the position was where the applied for trade mark had been accepted for registration under sub‑s.44(4), and how competing claims to first use under sub‑s.44(4) and under s.58 could be reconciled.
Further, where the comparison undertaken by the examiner for s.44(1) and (2) purposes was based on deceptive similarity to a cited trade mark with earlier priority on the Register, rather than substantial identity, acceptance under sub‑s.44(4) could not be challenged in an opposition proceeding based on a claim of ownership under s.58 because of the limitation of the s.58 ground of opposition to first use of the same (or a substantially identical) trade mark. So too, there was a perceived gap where the owner of the cited trade mark could establish a prior first use to that of the trade mark accepted under sub‑s.44(4), but the first use was for similar goods or similar services, and not for the same kind of thing.
The Explanatory Memorandum circulated with the Bill introducing s.58A explained at [4.9]:
4.9OPPONENT’S EARLIER USE OF SIMILAR TRADE MARK
Section 58A
1.A person may obtain acceptance and registration for a trade mark under section 44(4) even though an earlier similar trade mark has been registered for similar goods and services. The person must be able to show that they have used the trade mark before the filing date of the earlier trade mark on those particular goods or services.
2.However the owner of the earlier trade mark may have used their trade mark before applying for trade mark registration and accrued common law rights. As it stands the owner of the earlier registered mark has no basis on which to oppose registration of a trade mark accepted under subsection 44(4), even where their use pre-dates that of the accepted application.
3.The new section will provide a basis for the Registrar to give consideration to these issues in opposition proceedings.
Accepting that the statutory regime of trade mark protection permits similar trade marks to co‑exist on the Register: see Campomar Sociedad, Limitada v Nike International Ltd [2000] HCA 12; (2000) 202 CLR 45; (2000) 46 IPR 481, the mischief to which s.58A is directed is to allow determination whether a mark should obtain registration in circumstances where there appears to be a conflict between parties claiming use-based and registration-based rights, and recognising that under s.44(4) of the Act a trade mark applicant need only demonstrate that its use of its mark pre-dated the priority date for the registration of the conflicting mark, and does not require, or allow, either party to demonstrate earliest use of their mark in the marketplace.
So understood, s.58A is a ground of opposition directed to that apparent gap in the operation of s.44(4). With the context, and purpose in mind, I turn to the three matters I have identified at [126] – [128].
The first or preliminary issue
Having regard to the context of the section in the Act, and its purpose, as apparent on its face, and with the benefit of the Explanatory Memorandum, I construe the section as requiring the pre-condition of s.58A(1) to be met in order for the ground to be available for an opponent on opposition, or appeal from that opposition.
In the present case, the Mark was initially accepted on examination on the application of sub‑s.44(4) of the Act. Subsequently during the Opposition proceeding, and at Denversian’s request, registration has been limited to the State of Queensland.
As I have recounted above at [9] – [11], at the conclusion of Di Lorenzo’s opposition under s.44 the Delegate decided that the application for the Mark should be accepted under the provisions of sub‑s.44(3) of the Act (at [30] of the Delegate’s decision). In relation to the ground of opposition under s.58A, the Delegate then found that the ground was not established, the requirements of sub‑s.58A(1) not being met.
As I have stated above, whilst an appeal to this Court is conducted as a hearing de novo, the ambit of the proceeding is defined by the grounds raised by the parties: see also FCRules r.34.26. In this proceeding, the grounds of opposition are limited to ss.58 and 58A of the Act, and it is against those grounds of opposition that Denversian defends its right that the accepted Mark proceeds to registration. To put the matter plainly, in this Court, Di Lorenzo does not appeal the Delegate’s decision on the ground of opposition available under s.44 of the Act.
The Court has not been tasked by Di Lorenzo with determining a ground of opposition under s.44 of the Act. To the extent, if at all, that any issue under s.44 arises for determination by the Court, it arises under sub‑s.44(3) in answer to Di Lorenzo’s s.58A ground of opposition if they establish absolute first use, by Denversian’s answering reliance on the acceptance of the Mark by the Delegate under the provisions of sub‑s.44(3).
Conclusion on the preliminary issue
The subject trade mark at issue before me on appeal under s.56 of the Act – the Mark – is a trade mark application that has been accepted for registration under the provisions of s.44(3), and subject to the geographical limitation to the State of Queensland. It follows that Di Lorenzo does not satisfy the requirements of s.58A(1) of the Act, and (even apart from their lack of use) that Di Lorenzo’s ground of opposition under s.58A fails. To put it another way, as Di Lorenzo does not satisfy s.58A(1), the ground of opposition under s.58A(2) is not available to Di Lorenzo.
Given my conclusion on the form of the accepted trade mark before me, it is not strictly necessary for me to consider whether Di Lorenzo would have established the requirements of s.58A(2). If I am wrong, however, in the above analysis of the accepted subject mark for the purposes of an appeal to the Court under s.56, and notwithstanding that Di Lorenzo did not raise any s.44 ground of opposition in this Court, for completeness I address Di Lorenzo’s ground of opposition under s.58A(2) on the basis that the accepted trade mark application to which sub‑s.58A(1) refers is that trade mark as initially accepted under s.33 of the Act on the examination of the trade mark application under s.31 of the Act. That is, the Mark as initially accepted by the examiner on the application of s.44(4) of the Act.
This, then, gives rise to the second and third issues I have identified above.
The second and third construction issues
I am guided by the terms of the statutory provision, within Division 2 – Grounds for opposing registration, in Part 5 of the Act. Sub‑section 58A(1) provides that the section is available as a ground of opposition when the opposed trade mark application has been accepted under sub‑s.44(4). This is the starting point for consideration of the availability of the ground of opposition in s.58A(2). Unlike the ground of opposition under s.44(1) and (2), there is nothing in the text of s.58A, or the scope and purpose of that ground of opposition as revealed by the text, and having regard to the context, purpose, and structure of Part 5, Division 2, in the broader context of the Act, and to the provisions of ss.55, 56, and 197 of the Act, that requires that under s.58A the criteria decided under sub‑s.44(1) or (2) be decided anew, or acceptance under s.44(4) be re-agitated. A rehearing under s.56 of the Act on the ground of opposition under s.58A does not so require.
A construction of s.58A that requires as a threshold matter the determination whether trade marks are substantially identical or deceptively similar should be rejected. To impose such a threshold determination is to incorporate into the s.58A ground the substance of the test in ss.44(1) and (2) but without the qualification provided by ss.44(3) and (4). Section 44 exists as an independent ground of opposition. To incorporate the threshold question from s.44 is to rob the plain words of s.58A(1) of any role to perform, and to deny the prefatory words of s.58A(2) of any meaning. Such a construction is contrary to the text of the section, the context in which the section appears, as a ground of opposition following s.57 (which allows for opposition under inter alia s.44), and s.58, and to the mischief to which the remedy provided by the section is directed, as explained by the Explanatory Memorandum.
That a trade mark is accepted under sub‑s.44(4) pre-supposes that the criteria of sub‑s.44(1) or (2) have been made out – the applied for trade mark has been found to be substantially identical with, or deceptively similar to, a trade mark registered or whose registration is sought in respect of similar goods/ closely related services, or similar services / closely related goods having an earlier priority date on the Register, which trade mark is termed the other trade mark in s.44.
In s.58A(2) the other trade mark cited against the section 44 trade mark is identified with the definite article as “the substantially identical or deceptively similar trade mark”, and defined for the purposes of the enquiry as to the first use as the “similar trade mark”. The words of the sub-section, construed in the context of the acceptance of the applied for trade mark because of sub-s.44(4), clearly direct the enquiry under s.58A(2) to the first use of that cited prior trade mark in respect of the relevant goods or services, and whether that use has been continuous. That is, the similar trade mark for the purposes of s.58A(2) is that mark that was cited against the applicant’s trade mark under sub‑s.44(1) or (2), as the case may be.
Further, the issue of similarity having already been determined by the Registrar (in the person of the examiner under s.33, and on reconsideration by the Delegate under s.55), applying the criteria under sub‑s.44(2)(a) and (b), by the conclusion that the applicant’s trade mark should be accepted under sub‑s.44(4) (and subsequently under sub‑s.44(3) by the Delegate) – I do not consider that the ground of opposition under s.58A envisages that a different trade mark, not being the earlier trade mark on the Register successfully cited under s.44(1) or (2) against the applicant’s trade mark application, may be relied upon by an opponent to establish an absolute first use under s.58A(2).
As mandated by the text of the provision, in the context of the Act, and the mischief to which s.58A is directed to address, I consider that the proper approach to s.58A is to first determine whether the precondition of s.58A(1) is satisfied (namely whether the applied for mark was accepted because of s.44(4)), and if so, then to turn to decide whether the requirements of both s.58A(2)(a) and (b) are established by the opponent. If those requirements are satisfied, as Robertson J observed in Caesarstone Ltd v Ceramiche Caesar SpA (No 2) [2018] FCA 1096; (2018) 133 IPR 417 at [737], then in turn, an applicant may seek to establish that the trade mark application should be registered under s.44(3) of the Act.
Where an opponent raises as a ground of opposition s.44, in addition to s.58A, it may be that the court, deciding the s.44 ground afresh, comes to a conclusion different to that the examiner had come to on acceptance or the Delegate on the opposition. This different conclusion may be because the court concludes that the applied for trade mark is not substantially identical with or deceptively similar to the cited mark – the other trade mark - and therefore, no question of the application of s.44(3) or (4) arises or because the court (standing in the shoes of the Registrar/ examiner), decides that the applied for trade mark should be accepted under the provisions of s.44(3), not under s.44(4), and therefore no question for the determination of s.58A arises (as was the case in Community First Credit Union Ltd v Bendigo and Adelaide Bank Ltd [2019] FCA 1553; (2019) 146 IPR 185).
Application of s.58A to the present case, on the assumption the Mark was accepted because of s.44(4)
The other trade mark / the similar trade mark
The other trade mark that was cited in examination against the application for registration of the Mark is the DL Mark. This is revealed by the examiner’s picklist of their search of the Register printed 15 October 2015, and by correspondence from the Trade Marks Office to the parties on the occasion of the acceptance of the Mark (Notice of Acceptance letter to Denversian dated 3 May 2016, and section 44 letter to Di Lorenzo dated 3 May 2016), contained in the Registrar’s file on the Opposition proceeding filed with the Court. The DL Mark is also the other trade mark raised against the Mark in the Opposition proceeding.
That the Registrar after examination of the Mark (pursuant to ss.31 and 33), initially accepted the Mark on the application of sub‑s.44(4) pre‑supposes that the Registrar (by her delegate, the examiner):
(a)first decided, under sub‑s.44(2), that the DL Mark is substantially identical with, or deceptively similar to, the Mark, and that the services for which Denversian seeks registration of the Mark are similar services/closely related goods to those claimed in the specification in respect of the DL Mark; and
(b)was satisfied, applying sub‑s.44(4), that Denversian, or its predecessor (noting that no predecessor in title was relied upon by Denversian), had established it had used the Mark in respect of services within its specification from a time before the DL Mark’s priority date of 16 March 2015, and continuing up to the Relevant Date.
In the Opposition proceeding the Registrar (by the Delegate) accepted that the DL Mark was deceptively similar to the Mark, and that the services were similar services to those specified in respect of the DL Mark (Delegate’s decision at [26], [28]).
Assuming for this analysis that the starting point for my consideration of the ground under s.58A in the present case is the acceptance by the Registrar of the Mark under s.44(4) (and not acceptance by the Delegate under s.44(3)), for the purposes of s.58A(2) I accept that the DL Mark is first, substantially identical with, or deceptively similar to the Mark, and secondly, that the scope of the specification of goods and services of the DL Mark encompasses within the concepts of similar services/ closely related goods services in respect of which the Mark is sought to be registered. To put it another way, for the purposes of deciding the ground of opposition under s.58A, on the basis that the Mark was initially accepted under sub‑s.44(4), and that is the relevant acceptance to which s.58A(1) is directed, I have proceeded on the assumption that the requirements of sub‑s.44(2)(a) are satisfied.
In the absence of a concomitant s.44 ground of opposition (which may result in a s.44(3) or (4) acceptance by the Registrar being reconsidered), I do not construe s.58A as requiring that, as a threshold issue, an opponent must first establish that the opposed trade mark is substantially identical with, or deceptively similar to, the cited mark. The plain words of s.58A direct otherwise.
Notwithstanding that I so approach the ground Di Lorenzo’s opposition under this ground fails. I set out the reasons for my conclusion below.
First, s.58A(2) requires that the use established is use of the other mark cited under s.44(2), in the present case, the DL Mark.
Di Lorenzo has failed to satisfy the first limb of sub-paragraph (a) of s.58A(2): that it used the DL Mark (or, as may be accepted under s.7(1), the DL Mark with additions or alterations that do not substantially affect the identity of the trade mark). To state the matter plainly, the DL Mark is that mark I have set out at [2] above. The sole instance of that mark relied upon by Di Lorenzo is the fact of applying for, and subsequent registration of, the DL Mark. Section 7(1) does not assist Di Lorenzo in this regard, because I have already found that Di Lorenzo has not established that it used any trade mark before the Relevant Date. Simply put, Di Lorenzo has not established any use.
Whilst, by operation of s.27 of the Act, the claim to be owner and to use or intend to use the DL Mark made by Di Lorenzo by its application for registration of the DL Mark may be accepted, this does not satisfy the requirements of use under s.58A, because that presumption does not establish any use earlier than the filing date of the DL Mark in March 2015, and I have found Denversian has established use continuously of the Mark for the services and since at least 16 December 2013.
Secondly, inherent in the term “used” in s.58A(2)(a), is that the use of the DL Mark is use in the course of trade. I have discussed this concept above in the course of my consideration and determination of Di Lorenzo’s evidence, and in the context of s.58. Relevantly, for the ground under s.58A, and for the same reasons as I have set out in respect of s.58, Di Lorenzo has not shown that it has used in the course of trade the DL Mark (or any other sign as a trade mark).
Thirdly, in any event, Di Lorenzo’s claimed use prior to filing the DL Mark was not a claimed use of the DL Mark, but of the DL mobile café logo, or, possibly a claim to use the whole phrase “black sheep mobile café”, however, Di Lorenzo has not established that it used either logo or the phrase. Di Lorenzo has not discharged its onus to prove that it has used the, or a, similar trade mark to the DL Mark prior to 10 March 2015, or any earlier time.
Fourthly, s.58A(2)(b) requires that the owner establish that it has continuously used their similar trade mark for the relevant services/goods since the first date of use. That continuous use must be established at least up to the date on which the application for the Mark was made (the Relevant Date).
For the same reasons that I have set out in relation to Di Lorenzo’s failure to satisfy the first aspect of the first limb of s.58A(2)(a), the evidence relied on by Di Lorenzo does not establish that it has continuously used the DL Mark or any sign as a trade mark since any claimed first use.
From the preparatory establishment of the bank account in the name ‘Chris and Dora Di Lorenzo Partnership t/as Black Sheep Mobile Café’, through the various domain name reservations, and registrations, and 2015 purchases of mobile numbers and smartnumber (BLACK), to the filing for registration of the DL Mark, Di Lorenzo has changed the sign they investigated or planned to use, and also changed the proposed goods/services. A clear example of the changing intentions revealed in the preparatory materials is demonstrated by comparing the April 2013 webpage, and the representation of the DL Mark lodged in March 2015.
It follows that for each of the above reasons, Di Lorenzo has failed to establish the ground of opposition under s.58A.
There is a further matter. The Mark has been accepted for registration, with the limitation to the State of Queensland. Section 58A provides the owner of the earlier registered mark with the opportunity to establish their absolute first use. The section allows for the cited mark’s rights arising from registration to prevail over sub‑s.44(4) acceptance when earlier prior use is established. That use will only be competing prior use when it has occurred in the course of trade in the same geographical area as the rights afforded the accepted Mark, in this case, in Queensland. Even put at their highest, Di Lorenzo’s claims of purported past use have been limited to a local area of Sydney, New South Wales. For this reason, additionally, Di Lorenzo cannot succeed under s.58A.
Conclusion
Di Lorenzo has not demonstrated any use, nor any continuous use of the DL Mark, the DL mobile café logo or any use of the phrase “black sheep”, or “black sheep mobile café”. Di Lorenzo has failed to substantiate any of its claims to use in the course of trade or ownership of a trade mark substantially identical with, or deceptively similar to, the Mark, for similar services or closely related goods.
Di Lorenzo has failed to establish either of the grounds of opposition they asserted. It follows their appeal must be dismissed.
Further, I am satisfied that there has been honest use of the Mark for the specified services in the State of Queensland, concurrent with the appearance on the Register of the DL Mark, and with any use (or conduct preparatory to use) of any of the trade marks asserted by Di Lorenzo. I have concluded that there is no likelihood of confusion between the businesses, and that Denversian will be inconvenienced it is unable to protect and control the use of the Mark in its local region. I am satisfied that Denversian operates a restaurant business with some local reputation under the Mark (applying s.7(1)). I have had regard to the endorsement that the registration of the Mark is limited to the State of Queensland, and that Di Lorenzo is both located in a southern suburb of Sydney, New South Wales, and as at the Relevant Date had not appeared to trade in Queensland (as opposed to claimed to have some inchoate plans to operate some sort of business nationally at some indefinite time in the future).
The Mark may proceed to registration with the present endorsements.
As I have said, the parties are self-represented in this Court. Costs follow the event. Denversian should have its legal costs and disbursements, if any. I will make orders accordingly.
I certify that the preceding one hundred and eighty-one (181) paragraphs are a true copy of the reasons for judgment of Judge Baird
Associate:
Date: 30 June 2020
Attachment A
Specification of trade mark registration no. 1681212
Class 30:
Aerated beverages (with coffee, cocoa or chocolate base); Aerated drinks (with coffee, cocoa or chocolate base); Artificial coffee; Beverages consisting principally of coffee; Beverages made from coffee; Beverages with coffee base; Chicory (coffee substitute); Chocolate coffee; Coffee; Coffee beans; Coffee beverages; Coffee beverages with milk; Coffee concentrates; Coffee drinks; Coffee essences; Coffee extracts; Coffee flavorings (flavourings); Coffee mixtures; Coffee oils; Coffee products; Coffee substitutes; Coffee-based beverages; Decaffeinated coffee; Extracts of coffee for use as flavours in beverages; Extracts of coffee for use as flavours in foodstuffs; Flavoured coffee; Freeze-dried coffee; Ground coffee; Ice beverages with a coffee base; Iced coffee (coffee based beverages); Instant coffee; Malt coffee; Malt coffee extracts; Mixtures of chicory for use as coffee substitutes; Mixtures of coffee; Mixtures of coffee and chicory; Mixtures of coffee and malt; Mixtures of coffee essences and coffee extracts; Preparations for making beverages (coffee based); Preparations of chicory for use as a substitute for coffee; Preparations with a coffee and tea base; Unroasted coffee; Vegetable based coffee substitutes; Vegetal preparations for use as coffee substitutes
Class 43:
Coffee bar and coffee house services (provision of food and drink); Coffee shop services
Attachment B
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
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