Chris Di Lorenzo & Dora Di Lorenzo v Denversian Pty Ltd

[2018] ATMO 105

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Chris Di Lorenzo & Dora Di Lorenzo to registration of trade mark application 1720917 (43) – BLACK SHEEP - in the name of Denversian Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 105

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42, 44, 58, and 58A considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Chris Di Lorenzo & Dora Di Lorenzo, a partnership (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Denversian Pty Ltd (‘Applicant’): 

Application Number:	1720917
Filing Date:	10 September 2015
Services:	Class 43: Restaurants; restaurant services; cafe and bistro services (‘Applicant’s Services’)
Trade Mark:	BLACK SHEEP	(‘Trade Mark’)
Endorsements	Provisions of subsection s44(4) and/or Reg 4.15A(5) applied. Registration of this trade mark is limited to the State of Queensland.

2.  Following the advertisement on 12 May 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 11 July 2016.  The Opponent then filed a Statement of Grounds and Particulars on 10 August 2016.  The Statement of Grounds and Particulars was assessed by this office as inadequate and a revised Statement of Grounds and Particulars (‘SGP’) was filed on 30 August 2016. The SGP raised grounds of opposition under ss 42, 44, 58 and 58A of the Act. The Applicant filed a Notice of Intention to Defend on 28 September 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 23 December 2016.  This evidence consists of a declaration jointly made on 23 December 2016 by Chris Di Lorenzo & Dora Di Lorenzo, the Opponent, with exhibits BS-1 to BS-3 (‘Di Lorenzo 1’).[1]

[1] For the purposes of this decision each of Di Lorenzo 1, Di Lorenzo 2 and Di Lorenzo 3 (which were all jointly made by Chris Di Lorenzo and Dora Di Lorenzo) will be treated as two identical declarations, one executed by Chris Di Lorenzo and one by Dora Di Lorenzo.

4.  The Applicant filed Evidence in Answer (‘EIA’) on 6 April 2017.  This evidence consists of a declaration made on 6 April 2017 by Sian Bressolles, the owner and founder of the Applicant, with Exhibits SB-1 to SB-17 (‘Bressolles Declaration’). 

5.  The Opponent filed Evidence in Reply (‘EIR’) on 13 June 2017.  This evidence consists of a declaration jointly made on 13 June 2017 by Chris Di Lorenzo & Dora Di Lorenzo (‘Di Lorenzo 2’).

6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 3 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  On 4 September 2017 the Opponent filed its submissions (‘Opponent’s Submissions’).  On 5 September 2017 the Applicant filed its submissions (‘Applicant’s Submissions’).  The Applicant’s submissions were accompanied by a further declaration of Sian Bressolles dated 4 September 2017, however no explanation has been provided for its provision and no regard has been had to it in the preparation of this decision.

7.  On 4 October 2017 the Opponent filed further evidence being a declaration jointly made on 4 October 2017 by Chris Di Lorenzo & Dora Di Lorenzo (‘Di Lorenzo 3’).  This declaration was submitted after the close of evidence in this matter.  On 3 November 2017 this office wrote to the parties, indicating that Di Lorenzo 3 was filed out of time and that if the Opponent wanted this evidence to be considered they should upload a letter on Objective Connect providing reasons to support their case.  On 15 November 2017 the Opponent filed a letter in support of the consideration of Di Lorenzo 3.

8. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

Admission of Late Filed Evidence

9.  Di Lorenzo 3 was filed after the closure of evidence.  The Opponent has sought that its additional evidence be considered by the Delegate under the provisions of Regulation 21.19 of the Trade Marks Regulations1995 (Cth).

1. Di Lorenzo 3 consists of three parts, each of which relates to a decision made by the Registrar in 2017 to dismiss the opposition filed by the Applicant to the registration of the Opponent’s Trade Mark (defined below) (‘Earlier Opposition’).  The first part is in the nature of submissions, in that it simply directs the Hearing Officer to consider a paragraph in the decision dismissing the Earlier Opposition.  The second part encloses an extract of the Applicant’s Submissions in the Earlier Opposition and submits that they conflict with the Applicant’s submissions in the present hearing.  The third part consists of further submissions and refers to the Earlier Opposition.  In essence Di Lorenzo 3 consists of submissions referring to an earlier decision of the Registrar and material submitted by the Applicant to the Registrar in that opposition. 

2. To the extent that Di Lorenzo 3 consists of submissions and references to an earlier decision of the Registrar, such material is submission and I accept it on that basis. To the extent Di Lorenzo 3 extracts submissions made by the Applicant to the Registrar in respect of the Earlier Opposition, I shall accept those submissions pursuant to Reg 21.15(4) of the Trade Marks Regulations 1995, which provides that the Registrar may be informed on any matter that is before the Registrar in any way that the Registrar believes to be appropriate.  In light of my ultimate finding in the Applicant’s favour, I do not consider the Applicant to be disadvantaged by my consideration of its submissions in the Earlier Opposition.

The Opponent

1. The Opponent is a partnership.  The Opponent asserts that it operates a café-style business based in New South Wales, but the EIS and EIA do not indicate that the business trades from a particular location. 

2. The Opponent is the registered owner of the trade marks set out below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Goods and Services
1681212	16 March 2015	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

1. Di Lorenzo 1 contains the following claims/statements:

   ·     The Opponent has, since 2011, operated a coffee business under the trading name ‘black sheep’.  The Opponent also uses the Opponent’s Trade Mark in the operation of its café.

   ·     In 2014 the Opponent commenced offering their own blend of coffee under the name ‘black sheep’ and the Opponent’s Trade Mark.

   ·     The Opponent operates a website from which contains a single blog post, dated December 29, 2011.

2. Di Lorenzo 1 also exhibits a declaration from the Opponent’s accountant to the effect that the Opponent has been trading under the name ‘Black Sheep’ since 2011, selling café drinks and food.

3. Di Lorenzo 2 contains the following claims/statements:

   ·     The Opponent’s website at went live on December 29, 2011.

   ·     The Applicant opposed the registration of the Opponent’s Trade Mark and argued, in that hearing, that the use of the Opponent’s Trade Mark would cause confusion with the Applicant.

4. The content of Di Lorenzo 3 is summarised in paragraphs 10 and 11 above.

The Applicant

1. The Applicant is a company that operates a bistro restaurant located in Oxenford Queensland.

2. The Bressolles Declaration contains the following claims/statements:

   ·     The Applicant has operated the restaurant under the Trade Mark since August 2013.  At the time of selecting the Trade Mark the Applicant was not aware of the Opponent or the Opponent’s Trade Mark.  The Applicant honestly adopted the Trade Mark with the belief that it was the only one using the Trade Mark in relation to the Applicant’s Services.  The Applicant only became aware of the Opponent when a search was conducted of the Register on 30 June 2015.

   ·     To the Deponent’s knowledge, there has never been any confusion between the Trade Mark and the Opponent’s Trade Mark by customers, other traders or suppliers.

   ·     The Applicant’s restaurant can seat 44 people at any time and its turnover has grown since 2013.  The Applicant has promoted its restaurant through signage, mail box drops, chalk board advertising and a Facebook page.  The Trade Mark has been referred to in numerous articles in the Gold Coast Bulletin and has received positive reviews.

   ·     The Applicant has conducted searches for the Opponent and considers that it only offers coffee services from a small mobile van located in New South Wales.  The Opponent’s Trade Mark has little use in the marketplace.  

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42, 44, 58 and 58A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 10 September 2015 (‘relevant date’), being the filing date of the application in Australia (except in circumstances not present here, in which a different priority date is provided for in the Act).[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

1. …

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.

1. 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.

2. 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.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar services, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark, which is registered for goods and services including ‘Coffee bar and coffee house services (provision of food and drink); Coffee shop services’.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  Furthermore I consider that coffee house services (provision of food and drink) are services of the same description as the Applicant’s Services, 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 first and third requirements are satisfied. 

Substantially identical or deceptively similar

1. It is not necessary to consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark: the marks are clearly deceptively similar.  The principal authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[5]

   [5] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 [13].

2. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[10]

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [10] [2012] FCA 1022, [38]-[46].

1. The only difference between the Trade Mark and the Opponent’s Trade Mark is that the Opponent’s Trade Mark contains the additional device and displays the words ‘black sheep’ in figurative form. The marks are aurally and conceptually identical. Allowing for imperfect recollection, I find that by reason of the presence of the words ‘black sheep’ and the limited capacity of the other elements in the Opponent’s Trade Mark to distinguish it from the Trade Mark, there is a real, tangible danger that a number of persons will be ‘caused to wonder’ whether the services offered by the Applicant under the Trade Mark and the Opponent under the Opponent’s Trade Mark come from the same source. The Opponent has established the ground of opposition pursuant to s 44(2). It is then necessary to consider whether the Registrar should accept the application on the basis of ss 44(3) or 44(4) of the Act.

Subsection 44(3): Honest Concurrent Use

1. In McCormick & Co Inc v McCormick[11] Kenny J stated:

   Section 44(3) gives the Registrar a discretion to accept an application that would otherwise be rejected under s 44(1) in the case of honest concurrent use or other circumstances making it proper to do so. The authorities establish that the principal criteria for determining whether registration should be permitted pursuant to s 44(3) include:

   (1) the honesty of the concurrent use;

   (2) the extent of the use in terms of time, geographic area and volume of sales;

   (3) the degree of confusion likely to ensue between the  marks  in question;

   (4) whether any instances of confusion have been proved; and

   (5) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   See In Re Alex Pirie & Sons Ltd’s Application (1932) 49 RPC 195; (1933) 50 RPC 147 at 159-160; In Re John Fitton & Co Ltd’s Application (1949) 66 RPC 110 at 112; and Stingray Surf Co Pty Ltd v Lister [1997] ATMO 3; (1997) 37 IPR 306 at 310-311. These factors are not necessarily exhaustive of the matters to be considered, but they are a useful guide: see In Re Electrix Ltd’s Application [1957] RPC 369 at 379.

   [11] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192, [30].

2. In the present case the Trade Mark had been in use for a number of years before the relevant date.  The Opponent asserts, but does not provide supporting evidence, that the Opponent’s Trade Mark had been in use before the relevant date.  I accept the Applicant’s evidence that the Applicant adopted the Trade Mark without any knowledge of the Opponent; indeed, taking the Opponent’s evidence at its highest, it appears that at the time of adoption any business operated by the Opponent (a mobile coffee van) was a substantially different business in a different state with a very limited reputation.  While the trade marks are deceptively similar, given that the Trade Mark is geographically restricted to a region (Queensland) that the Opponent does not appear to trade in (and there is no evidence, as opposed to assertion, of any reputation or concrete plans to expand into that region) I consider that the degree of likely confusion is not unreasonably high.  There is no evidence of any instances of actual confusion.  I also accept that the Applicant, which operates a restaurant with some local reputation under the Trade Mark, will be inconvenienced if it is unable to protect and control the use of the Trade Mark in its local region.

3. Considering the criteria set out in paragraph 28 above, I am satisfied that there has been honest concurrent use of the Trade Mark and Opponent’s Trade Marks pursuant to s 44(3)(a) of the Act and that in those circumstances the application should be accepted subject to the existing geographical limitation. I find that the Opponent has failed to establish the ground of opposition pursuant to s 44 of the Act.

Section 58A

1. Section 58A of the Act is reproduced below:

   (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.

   (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.

2. The ground of opposition pursuant to s 58A of the Act was particularised in the Revised SGP as follows:

Earlier trade mark number 1681212 – Description of goods and services Class 30 Coffee etc Class 43 Coffee bar and coffee house services (provision of food and drink); etc – Date of first use September 2011 and the use has been continous.       

1. In paragraph 30 above, I decided that application should be accepted under the provisions of s 44(3) of the Act. As this ground of opposition is only relevant in the event that the application is accepted under the provisions of s 44(4) of the Act (or related regulations not relevant in this particular case), this ground of opposition is not established.

Section 58 – Applicant not owner of trade mark

1. Section 58 of the Act is reproduced below:

   Section 58. Applicant 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.

2. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. [12]  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[13]

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[14] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[15]

   [12] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   [13] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   [14] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   [15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

3. The ground based on s 58 of the Act was particularised in the SGP as follows:

   Trade Mark first used in September 2011 for goods and services in classes 30 Coffee etc and 42 coffee bar and coffee house services (provision of food and drink) etc and first use was before the priority date of the opposed application.

4. The Opponent’s relevant evidence on this point consists of the following:

• A statement in Di Lorenzo 1 stating that they have been continuously using the words ‘Black Sheep’ to trade under since 2011.  This is supported by a similar declaration annexed by the Opponent’s accountant.  Both Di Lorenzo 1 and the accountant’s declaration state that the business has been serving café drinks and food.

• A single page on of the Opponent’s website, dated October 29, 2011.  This page bears the Opponent’s Trade Mark on the top of the page, a photo of a mobile coffee cart and some coffee machines, and a discussion about the Opponent’s plans to create a new coffee blend.  

1. The Opponent’s evidence does not contain any business documentation indicating that the Opponent has actively traded.  In particular there are no receipts, no evidence of the form of the Opponent’s business, where it is geographically located, the goods and services offered, whether the goods or services are sold by reference to the Trade Mark or communications with potential suppliers or customers.  Had the Opponent actively traded for the last 7 years under the Trade Mark such business records would not have been difficult to provide.  Instead the Opponent’s evidence of use amounts to a bare assertion of use, supported by a single webpage that at best evidences an intention to operate some form of coffee business.

2. As noted earlier in this decision, the onus of proof in an opposition rests upon the Opponent.[16]  On the evidence before me I cannot be satisfied that the Opponent has used the words ‘black sheep’ for an active trading enterprise at any point prior to the relevant date, nor am I satisfied that any subjective intention the Opponent may have had to use ‘Black Sheep’ as a trade mark is accompanied by objective proof of an intention to commit goods or services bearing the Trade Mark to actual trade in Australia.[17]

   [16] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [17] See the discussion of what is required to amount to use of a trade mark in the absence of actual dealing in Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [20].

3. As the Opponent has failed to established the third factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

Section 42

1. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[18]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[19]

   [18] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [19] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

3. The Opponent has particularised the ground of opposition in the SGP as follows 

   As the opponent is the true owner its use would be contrary to the Competition and Consumer Act 2010 (Cth).

4. The Opponent’s Submissions refer to the Applicant being in breach of ss 18 and 29 of the Australian Consumer Law[20].  I have already concluded that the Opponent has not met the onus of proof to show that the Applicant is not the owner of the Trade Mark, nor am I satisfied that the opponent is the ‘true owner’ of the Trade Mark.  Finally, given the lack of evidence that the Opponent has actively traded under the Trade Mark or the Opponent’s Trade Mark, I do not find that the Opponent has sufficient reputation in either of those marks such that use by the Applicant of the Trade Mark would amount to misleading or deceptive conduct or involve the making of false and misleading representations. 

   [20] The Opponent’s Submissions also state that the Applicant’s use of the Trade Mark would amount to passing off however this claim was not particularized in the SGP.

5. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1720917 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

2 July 2018