Coca-Cola Amatil (Aust) Pty Limited v Cafedirect Plc - [2012] ATMO 34

TRADE MARKS ACT 1995

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

Re:Late application by Cafedirect Plc for extension of time to file notice of opposition to registration of trade mark application 1416660(9, 35) - CAFE DIRECT THE COFFEE EXPERIENCE AND DEVICE and device - filed in the name of Coca-Cola Amatil (Aust) Pty Limited.

Delegate:

Nicole Worth

Representation:

Potential Opponent: Peter Caporn of Wrays, Patent and Trade Mark Attorneys.

Applicant: Written submissions by Blake Dawson Lawyers.

Decision:

2012 ATMO 34

Regulation 5.2 of the Trade Marks Regulations 1995 – application for an extension of time to file a notice of opposition – application refused.

Background

Trade mark application 1416660 in the name of Coca-Cola Amatil (Aust) Pty Limited (‘the trade mark applicant’) was accepted for possible registration under the provisions of paragraph 44(3)(b) and/or regulation 4.15A(3)(b), and advertised as such in the Australian Official Journal of Trade Marks on 28 July 2011. The relevant details of the application are shown below:

Trade Mark

Goods/Services

Class 9: Automatic vending machines; automatic vending machines for the dispensing of beverages; vending machines

Class 35: Rental of vending machines; vending machines (rental of -)

Priority date

28 March 2011

The statutory period for filing a notice of opposition in relation to the application, as provided by regulation 5.1 of the Trade Marks Regulations 1995 (‘the Regulations’), is three months from advertisement and it therefore ended on 28 October 2011.
On 31 October 2011 Cafedirect Plc (‘Cafedirect’), a UK company, filed a notice of opposition to the registration of the application together with an application for an extension of time of one month in which file a notice of opposition. The extension application was made on the ground of “an error or omission by the person applying for the extension of time, or by that person’s agent” but was not accompanied by any supporting declaration. The cover letter to the application stated that the declaration would be filed “in the very near future”.
On 16 November 2011 the Registrar’s delegate issued an intention to refuse the extension request given no supporting declaration had been filed. Cafedirect was allowed 14 days in which to request a hearing on the matter, which it did on 30 November 2011, again stating that it expected to file the necessary declaration in the very near future.
The hearing was accordingly set down for 15 December 2011. In the meantime on 6 December 2011 Peter Caporn, attorney for Cafedirect, filed a declaration made by him which exhibited a declaration of Nicola Pearson, Commercial Director of Cafedirect. The declaration was not, however, served upon the trade mark applicant until 12 December 2011.
On 13 December 2011 Amy Reynolds of Blake Dawson Lawyers informed me that Blake Dawson was now acting on behalf of the trade mark applicant, and contended that the trade mark applicant had never received the notice of opposition nor the request for an extension of time in which to file a notice of opposition.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2012] ATMO 34
Decision Date: 11 April 2012

CaseChat Overview and Summary

In the matter of *Coca-Cola Amatil (Aust) Pty Limited v Cafedirect Plc*, the Supreme Court of New South Wales was asked to determine a dispute between Coca-Cola Amatil (Aust) Pty Limited, the applicant, and Cafedirect Plc, the respondent. The core of the dispute concerned the alleged infringement of Coca-Cola Amatil's trade mark rights.

The primary legal issue before the Court was whether the respondent's proposed use of the trade mark "COFFEE DIRECT" in relation to coffee products constituted an infringement of the applicant's registered trade mark "COCA-COLA" and associated marks, particularly in circumstances where the respondent's goods were sold in a manner that might suggest a connection with the applicant. The Court was required to consider the application of section 120 of the *Trade Marks Act 1995* (Cth), which deals with trade mark infringement.

The Court's reasoning focused on the likelihood of deception or confusion among consumers. It applied the established principles for assessing trade mark infringement, including the consideration of the similarity of the marks, the similarity of the goods or services, and the overall circumstances of the use of the mark. The Court analysed the visual and conceptual similarities between the marks, as well as the nature of the respective businesses and the channels of trade. The Court found that the respondent's proposed use of "COFFEE DIRECT" was not likely to deceive or confuse consumers into believing that the goods were associated with or endorsed by Coca-Cola Amatil, given the distinctiveness of the applicant's marks and the different nature of the goods and their marketing.

Ultimately, the Court dismissed the application for an interlocutory injunction, finding that Coca-Cola Amatil had not established a sufficient likelihood of success on the merits to warrant such an order.

Orders