Friends of The Paragon Inc v Carabella Holdings Pty Ltd as trustee for The Carabella Trust
[2024] ATMO 10
•18 January 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Friends of The Paragon Inc to registration of trade mark application number 1909328 (class 30) – The Paragon Katoomba (figurative) - in the name of Carabella Holdings Pty Ltd as trustee for The Carabella Trust
Delegate: | Anne Makrigiorgos |
Representation: | Opponent: Robert Angyal of Counsel instructed by John Spence & Associates Applicant: Sonia Stewart of Counsel instructed by FB Rice Pty Ltd |
Decision: | 2024 ATMO 10 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 43, 58, 60 and 62A considered – none established – trade mark to proceed to registration |
Background
The Paragon is a building which consists of four shopfronts (63, 65, 67 & 69 Katoomba Street) located in the heart of Katoomba, New South Wales, since 1909 (‘Building’). The Building has been listed by the National Trust, placed on the Register of National Estates and included in the New South Wales State Heritage Register.
Zacharias Simos (‘Simos’) was a Greek immigrant who founded a café and restaurant business called Paragon Café and Restaurant in 1916 in Katoomba. In 1921 Simos moved the café and restaurant to 65 Katoomba Street and in 1924 he purchased 65 and 67 Katoomba Street. In or around 1925, the café and restaurant business expanded by offering ice cream and chocolate goods made on site. The business was then that of a café and chocolatier (‘Business’) run by Simos and his brothers George and Peter. In 1930 Simos’ wife Mary joined the running of the Business and in that same year, Mary bought 69 Katoomba Street.[1]
[1] While the Building includes 63 Katoomba Street, the evidence regarding the ownership and transfer of 63 Katoomba Street is incomplete.
Where the Business has operated from at various times is inconsistently referred to and includes 63 – 65 Katoomba Street (‘63 – 65’), 63 – 67 Katoomba Street, 65 – 69 Katoomba Street (‘65 – 69’) and 63 – 69 Katoomba Street (together ‘Premises’). The Business has operated under various names all of which included the word Paragon until 2018. Throughout the years, the Business was referred to by a number of names including The Paragon Café, The Paragon Restaurant or The Paragon.
The Business was run by Simos and his wife until Simos’ death in 1976. Simos’ wife then ran the Business until 2000. In or after 1985, at least 65 – 69 was transferred to Paragon Properties Pty Limited (‘Paragon Properties’).[2]
[2] A company owned by one or more members of the Simos family.
Paragon (Katoomba) Pty Ltd[3] (‘PK’) was the owner of the following former Australian trade mark registrations, which are former as they were removed for non renewal:
[3] Ibid.
| Mark | Goods and Services |
| Trade mark number: 49735 Filed 1928 - Removed 2009 | Class 30: Home made cakes, candies and chocolates |
| Trade mark number: 714083 THE PARAGON Filed 1996 - Removed 2007 | Class 30: Cakes, pastries, confectionery, chocolates, candy, biscuits being goods included in class 30 Class 42: Restaurant, café and tea room services; retailing services in respect of food and drinks being prepared meals, drinks, confectionery, chocolates, cakes, candy, biscuits and pastries being services in class 42 |
| Trade mark number: 716383 Filed 1996 - Removed 2007 | Class 30: Cakes, pastries, confectionery, chocolates, candy, biscuits Class 42: Restaurant, café and tea room services; retailing services in respect of food and drinks being prepared meals, drinks, confectionery, chocolates, cakes, candy, biscuits and pastries |
(together ‘Removed Marks’)
The current owner of the Building is Conset Investments Pty Ltd (‘Conset’). The owner of the Business and any trade marks containing the word PARAGON, including the trade mark which is the subject of this dispute.
The Application
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[4] by Friends of The Paragon Inc (‘Opponent’) to registration of the following trade mark:
Trade mark number 1909328 (‘Application’)
Trade mark: (‘Trade Mark’)
Applicant:Carabella Holdings Pty Ltd as trustee for The Carabella Trust (‘Applicant’)
Filing Date: 23 February 2018 (‘Relevant Date’)
Specification: Class 30: Foods with a chocolate base; Foods with a cocoa base; Foodstuffs made of sugar for making a dessert (‘Applicant’s Goods’)
[4] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined and advertised as accepted for possible registration on 21 April 2021.
On 3 June 2021, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 30 June 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 21 September 2021. The Applicant filed a Notice of Intention to Defend the Opposition on 27 September 2021.
The Opponent filed Evidence in Support (‘EIS’) on 22 February 2022. The Applicant filed Evidence in Answer (‘EIA’) on 1 November 2022. The Opponent filed Evidence in Reply (‘EIR’) on 28 December 2022.
The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. I heard the opposition in my capacity as a delegate of the Registrar of Trade Marks on 8 December 2023. Providing submissions for the Applicant was Sonia Stewart of Counsel, instructed by FB Rice Pty Ltd. The Opponent’s submissions were made by Robert Angyal of Counsel, instructed by John Spence of John Spence & Associates.
Grounds and onus
The SGP nominates grounds of opposition under ss 41, 43, 58, 60 and 62A.
The Opponent carries the burden of establishing one or more of the nominated grounds of opposition[5] on the balance of probabilities.[6] The rights of the parties are assessed as at the Relevant Date.[7]
[5] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32] (Keane CJ, Stone and Jagot JJ).
[6] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133] (Besanko, Jagot and Edelman JJ).
[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Preliminary Matter – late filed evidence
At the hearing, the Opponent’s representative attempted to introduce two additional documents which were not filed during the evidence periods. These documents are a Blue Mountain City Council Planning Approval and a Heritage Impact Statement (together ‘Additional Documents’). At the hearing, the Opponent’s representative claimed that the Additional Documents should be allowed as the “[opposition] matter only recently came to him”. The Applicant has objected to the inclusion of these documents and submits that I should not have regard to them on the bases that there was no reason provided why this material could not have been put on as part of the EIS or EIR and the lack of probative value of these documents.
Notwithstanding the lateness of the attempt to file the Additional Documents, in certain circumstances it may be appropriate for a delegate to take into account material that is filed out of time.
Under reg 21.15(4), the ‘Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. In the words of Lord Denning MR:
[a] tribunal of this kind is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law.[8]
[8] TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91, 93.
I am not, as a matter of law, compelled to exclude evidence which is filed out of time. Hence, where evidence is filed out of time, objections are typically based on its probative value rather than its ‘admissibility’ in the sense often entertained in courts (and other bodies subject to rules of evidence). In Malibu Boats West Inc v Catanese, Finkelstein J stated:
It should be borne in mind, however, that the proceeding before the registrar was not a curial proceeding and many of the rules that are applicable to courts have no application. That proceeding was an administrative proceeding before a person exercising a statutory function. The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision maker to ignore relevant material while discharging his or her statutory duty. As a result, when the registrar is required to decide whether a mark qualifies for registration, the registrar is not entitled to disregard evidence which bears upon that question.[9]
[9] [2000] FCA 1141, [24].
Further under reg 21.19, I may take into account information available to me that is relevant subject to the parties having been provided with this information and having a reasonable opportunity to make representations.
The party who has filed the out of time material must make a compelling case in favour of it being considered. In this matter I am not satisfied that a compelling case has been made and I decline to consider the Additional Documents. In particular, I note that the Additional Documents, had they been admitted, would have had no impact on my ultimate decision in this matter as their probative value is negligible.
I have therefore decided this matter based on the particulars set out in the SGP, the properly filed evidence, and the written and oral submissions of the parties.
Evidence
The following evidence was filed:
EIS
Declaration of Robert Frederick Strange, President of the Opponent made on 21 February 2022 with Annexures A to P.
- Declaration of Linsi Braith, Curator of Archives of the Opponent made on 21 February 2022 with Annexures A and B (‘Braith Declaration’).
- Declaration of Carlene Teresa Martin, Secretary of the Opponent made on 21 February 2022 with Annexures A to C (‘Martin Declaration’).
EIA
Declaration by Robyn Parker, director of the Applicant made on 31 October 2022 with Annexures RP-1 to RP-6.
EIR
Second Declaration of Robert Frederick Strange made on 22 December 2022 with Annexures RFS-1 to RFS-6 (‘Second Strange Declaration’).
- Second Declaration of Linsi Braith made on 22 December 2022 with Annexures LB-1 and LB-2.
- Second Declaration of Carlene Teresa Martin made on 22 December 2022, with Annexures CM-1 to CM-3.
EIS
Strange describes the Opponent as a not-for-profit organisation formed to preserve the ‘Paragon Café and Restaurant’ (‘Paragon Café’).
Strange provides a detailed history of the Paragon Café and the following timeline:
· 2000 - the Business and 65 – 69 were sold to Bruce Gavin and Joanna Castle (‘Gavin & Castle’).
· 2003 - Gavin & Castle granted a lease of the Business and 65 – 69 to Barbara Allatt (‘Allatt').
· 2006 - Gavin & Castle sold 65 – 69 to Conset.
· 2011 – Conset leases 65 – 69 to the Applicant, which expired in May 2018.
· 2018 - since May 2018, the Paragon Café has remained closed.
Strange claims that the Paragon Café has an extensive residual reputation. He also claims that the ‘PARAGON’ name and trade mark have not been abandoned and ‘PARAGON’ signage continues to be on prominent display at 63 – 65. Strange provides images obtained from Google® searches which show this signage.
Strange refers to a previous decision of the Registrar in Carabella Holdings Pty Limited v Conset Investments Pty Limited[10] (‘Conset Opposition’), where I note trade mark application number 1908288 for THE PARAGON in Class 30 was successfully opposed by Carabella Holdings Pty Ltd.
[10] [2021] ATMO 12.
The Braith Declaration and Martin Declaration provide some information and pictures relating to the history and restoration of the Building and the Paragon Café. Both Braith, Martin and others[11] refer to the premises where the Paragon Café was located as 63 - 65 while others refer to the Building.[12]
[11] Martin Declaration, Annexure A
[12] Martin Declaration, Annexure B.
EIA
Parker refers to the Applicant’s ownership in Australia of two registrations for trade marks containing the words ‘The Paragon’ in respect of a wide variety of chocolate goods (‘Opponent’s Registrations’). Details of the Opponent’s Registrations are provided at Attachment A.
Parker claims the Opponent is well aware that the Building and the Business are separately owned and have been for a number of years. In support of this claim Parker provides extracts from the Opponent’s Facebook page dated 17 December 2018 and 15 July 2020 and copies of replies to posts on these pages.
Parker annexes a copy of her declarations filed in the Conset Opposition as EIS (‘Prior EIS’) and EIR (‘Prior EIR’). While Parker claims confidentiality in the entire Prior EIS, in the Conset Opposition there were only confidentiality claims to sales figures and advertising and promotion expenditure identified in specific paragraphs and annexures. Further the Prior EIS includes publicly available information such as the use of a range of trade marks containing the word PARAGON and annexed documents, which are also annexed to the Prior EIR, which is not under any claim to confidentiality.
A blanket claim to confidentiality in respect of all information contained within the Prior EIS is unhelpful, especially as there is information which is already in the public domain and in the Prior EIR and the original claim to confidentiality in the Prior EIS was only in respect of certain paragraphs and annexures.
In this decision, I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[13]
[13] [2008] ATMO 17, [5]–[6].
I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity. If in my summary of the evidence, I have disclosed information that is sensitive, then that disclosure has arisen by that party not specifically identifying that information as sensitive.
In the Prior EIS:
Parker claims that the Applicant bought the Business from Allatt on 11 March 2011 and annexes the front page of a Contract of Sale, which I note is headed “Contract for the sale of business - 2004 edition” and is between Allatt as vendor and the Applicant as purchaser and refers to the registered business name “The Paragon” under registration number C2556933 (‘Business Name’). The premises are described as the ground and first floors of 65 Katoomba Street. The type of business is described as ‘Restaurant, Manufacturing and Retail of Candies and Cakes’ and there is an asset and price apportionment for goodwill and equipment with the goodwill being over 85% of the sale price.
Parker annexes a copy of a Deed of Assignment dated 23 May 2011 between Allatt and the Applicant assigning Allatt’s interest in the Removed Marks. Recital C in the Deed of Assignment states “By agreement dated 11 March 2011 [the Contract of Sale], the Assignor contracted to sell and the Assignee contracted to purchase the business conducted by the Assignor within the State of New South Wales (“the Territory”), particulars of which are set out in the Schedule to this Deed ….”. The Schedule states “A business of a restaurant, manufacturer and retailer of candies and cakes conducted from premises at 65 Katoomba Street, Katoomba in the State of New South Wales”.
Parker provides annual sales figures for the Business from 2011-2018 which for a regional area are significant. Parker also provides a breakdown of the sales figures into the categories ‘chocolate, confectionery, chocolate beverages/syrups, cakes and desserts and food and beverage services” for the first 2011/2012 year. I note that the chocolate and confectionery categories accounted for approximately 36% of sales.
Parker provides examples of the use by the Applicant of marks containing the word PARAGON including the Trade Mark in connection with ‘chocolate, confectionery and condiments’ and the operation of a cafe, restaurant and takeaway food and beverage business from March 2011 including examples of various modes of advertising and promotion including print media, TV and radio.
Parker also provides advertising and promotional expenditure from 2011 to February 2017.
In the Prior EIR:
Parker annexes a copy of the entire Contract of Sale between Allatt and the Applicant dated 11 March 2011 (the front page of which is annexed in the Prior EIS). I note that that Clause 46 of the Contract of Sale provides for the assignment of Allatt’s interest in the ‘common law trade marks’ which are stated to be included in the sale and for the execution of a Deed of Assignment of the ‘common law trade marks’ to the Applicant. The ‘common law trade marks’ are the Removed Marks and a further trade mark not pertinent to this matter. A copy of the Liquor Licence for The Paragon restaurant is annexed to the Contract of Sale which shows that Allatt held the licence from 24 May 2004.
Parker annexes a copy of the front page of a Contract for the Sale of Land dated 16 June 2000 between Paragon Properties as vendor and Gavin Enterprises Pty Limited (‘Gavin Enterprises’) as purchaser for the sale of 63 – 67.
Parker also annexes a copy of the front page of an Agreement for the Sale of Business dated 16 June 2000 between PK as vendor and Gavin & Castle as purchasers for the “The Paragon Café” business. I note that the contract provides the address of the business as 65 Katoomba Street, a description of the type of business as ‘Restaurant & retail chocolate & cake shop’, refers to the Business Name and provides an apportionment of price for goodwill and plant, fittings and chattels, with the goodwill being over 70% of the sale price.
Parker claims that Gavin & Castle sold the Business to Liam Barlow (‘Barlow’) and Allatt in 2003, while Gavin Enterprises retained ownership of the Premises. Parker states that the Opponent has been unable to obtain a copy of the agreement/contract for the sale of the business to Barlow and Allatt.
Parker claims that the Business has most recently been operated from one of the three premises at 63 – 67.
Parker asserts that the Applicant leased 63 - 67 from Conset until 1 June 2018.
Parker annexes a copy of an extract from the Australian Securities & Investments Commission (‘ASIC’) showing the current and historical details of the Business. I note that the principal place of business is stated as 65 Katoomba St and the extract shows the following ownership timeline:
oPK until 28 June 2000.[14]
oGavin & Castle from 28 June 2000 to 2 June 2003.
oBarlow from 2 June 2003 to 10 November 2003.
oAllatt from 2 June 2003 to 5 September 2011.
oCarabella Holdings Pty Ltd from 5 September 2011.
[14] The ASIC record shows a commencement date of 1 January 1753, which of course is doubtful given that New South Wales had not yet been established.
Parker declares it is commonplace for historical landmark buildings bearing historical signage to be sold and repurposed while still retaining that historic signage and, at the same time, the original trade mark owners to retain rights to registered and common law trade marks. Parker annexes a copy of the publication “New Uses for Heritage Places: Guidelines for the Adaptation of Historic Buildings and Sites” published by the Heritage Council of New South Wales and The Royal Institute of Architects and a series of articles obtained from a Google® search conducted on 31 July 2019, which refer to the 5 repurposed historical buildings.
Parker attests that in June 2019, the Applicant commenced trading at new premises in Katoomba and provides a copy of an article from The Blue Mountains Gazette (‘Gazette’) dated 14 June 2019, a screenshot from the Gazette’s Facebook page posted on 16 June 2019 which shares the article, a copy of an advertisement by the Applicant in Review Magazine, which is a monthly supplement in the Gazette dated 14 June 2019 (although the date is not legible) and an undated photograph of the new premises.
EIR
In reply, Strange claims the Conset Opposition is not relevant. Strange then provides comments on the findings in the Conset Opposition and comments on the Prior EIS and Prior EIR. I consider much of the Second Strange Declaration to be opinion rather than evidence. There are only a few items of new evidence provided in the EIR as follows:
Searches of the New South Wales Land Titles Office have provided:
o A copy of a lease between Gavin Enterprises as lessor and Allatt and Barlow as tenants/lessees. The lease states a commencement date of 2 June 2003 for a five year period expiring on 1 June 2008. I note there was an option to renew for two further five year periods. I also note the following:
Ø Property leased is defined as inter alia, “The Paragon” Restaurant, Ground and First Floors, 65 Katoomba Street, Katoomba.
Ø Permitted Use states “Restaurant, manufacturer and retail of candies and cakes”.
Ø Additional leased property includes the landlord’s equipment which is stated to be part of the premises and includes old chocolate moulds and equipment.
Ø There is no mention of any trade marks or goodwill.
o A copy of a lease between Conset as lessor and Allatt as lessee for the premises identified as “The Paragon” Restaurant, Ground and First Floors, 65 Katoomba Street, Katoomba”. The lease states a commencement date of 2 June 2008 for a five year period expiring on 1 June 2013. I note there was an option to renew for a further five year period. I also note the following:
Ø Building is defined as the building on the land at 63 – 67 Katoomba Street.
Ø Premises is defined as “The Paragon” Restaurant, Ground and First Floors, 65 Katoomba Street and any fittings, fixtures, plant machinery and equipment installed and owned by the lessor.
Ø Use states “Restaurant, manufacturing and retail of candies and cakes”.
Ø There is no mention of any trade marks or goodwill.
o A copy of a Transfer of Lease document between Allatt and Carabella Holdings Pty Ltd dated 23 May 2011.
o An abstract summarising the transactions and dealings affecting 63 – 65 from September 1989 to July 2021.
Martin and Braith provide comments and opinions on the EIA which I need not summarise as they have no probative value concerning any of the grounds of opposition and therefore have no bearing on my decision.
Discussion and Reasons
Section 58
Section 58 provides:
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.
My understanding of the Opponent’s particulars in the SGP is as follows:
Trade mark number 716383 was registered by PK but the mark THE PARAGON and the stylised version as registered were used in various formats by PK in connection with its confectionery manufacture business from the 1920’s. The Applicant acquired a lease to the Building from Conset in 2008. Conset did not own the trade mark THE PARAGON or other forms of THE PARAGON and was therefore not entitled to sell or assign any trade marks to the Applicant. The Applicant is not the owner of the trade marks.
The Act provides for registration of ownership and not ownership by registration.[15] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[16] Once ownership in a trade mark is established, it becomes personal property that may be sold, transmitted or lost in accordance with the general law.[17]
[15]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[16] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
[17] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA [1988] FCA 344, [8] (Bowen CJ).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[18] which in this case is 23 February 2018.
[18] Pham Global (n 16) [14].
This ground of opposition will be established if it is found the Applicant is not the owner of the Trade Mark in respect of the Applicant’s Goods. In this case, the Applicant contends that it is the owner of the Trade Mark by virtue of being at the end of the chain of title of the Business and trade marks containing the word PARAGON including the Trade Mark.
The most substantial and relevant evidence as to whether the Applicant is owner of the Trade Mark is the following:
Contracts for sale of real property namely:
o Contract for the Sale of 63 - 67 dated 16 June 2000 between Paragon Properties and Gavin Enterprises.[19]
[19] Prior EIR, Annexure RP2‐1.
Contracts for sale of a business including:
o Agreement for the Sale of Business dated 16 June 2000 between PK and Gavin & Castle for the “The Paragon Café” business which also refers to the Business Name.[20]
[20] Prior EIR, Annexure RP2‐2.
o Contract of Sale dated 11 March 2011 from Allatt to the Applicant which refers to the Business Name.[21]
[21] Prior EIR, Annexure RP2‐4.
Deed of Assignment dated 23 May 2011 between Allatt and the Applicant assigning Allatt’s interest in the Removed Marks (‘Assignment’).[22]
[22] Prior EIS, Annexure RP-4.
Leases for the Premises under the Real Property Act 1900 (NSW) including:
oGavin Enterprises to Allatt and Barlow dated 2 June 2003 expiring on 1 June 2008 (‘Lease 1’).[23]
oConset to Allatt dated of 2 June 2008 expiring on 1 June 2013 (‘Lease 2’).[24]
oTransfer of Lease from Allatt to the Applicant dated 23 May 2011 (‘Lease 3’).[25]
Business registration extract of THE PARAGON.[26]
Liquor license for The Paragon restaurant which began in 1972 and has been held by Allatt since 24 May 2004.[27]
Opponent’s Registrations.
[23] Second Strange Declaration, Annexure RFS-2.
[24] Second Strange Declaration, Annexure RFS-3.
[25] Second Strange Declaration, Annexure RFS-4.
[26] Prior EIR, Annexure RP2‐3.
[27] Prior EIR, Annexure RP2‐4.
In respect of the transfer of the Premises and Business from Paragon Properties and PK, the Opponent’s submissions are confusing. The submissions state that the Business (including the name PARAGON and the PARAGON trade marks) was assigned to Gavin Enterprises but they go on to state that ownership of the PARAGON name and trade marks was transferred to Gavin & Castle. The Opponent’s submissions also state that the Business was transferred to Gavin & Castle and the Premises was sold to Gavin Enterprises. The Opponent’s submissions then state that the “PARAGON” name and business together with the relevant trade marks had in fact passed from Gavin & Castle to Conset.
In my opinion, it is clear on the basis of the Contract for the Sale of Land of 63 - 67 dated 16 June 2000 between Paragon Properties and Gavin Enterprises that the sale was not to Gavin & Castle.[28]
[28] Prior EIR, Annexure RP2-1.
The Opponent further submits as follows:
there is no evidence of any sale or transfer to Allatt of the Business and PARAGON trade marks. Therefore, Allatt did not have any title or ownership to transfer to the Applicant. Rather all Allatt had was rights as a lessee authorised to conduct business under licence from and with the permission and consent of Conset.
the Applicant’s rights are those of a lessee of the Business and a licensee and permitted user of the PARAGON name and trade marks. When the lease expired, the right to continue using the PARAGON name and trade marks expired.
the Applicant is not the author or the first user of the Trade Mark and therefore is not the owner of the Trade Mark. Rather the Opponent claims that Conset is the owner.
the Assignment does not constitute a proper or enforceable chain of title and does not include the Trade Mark in its scope or ambit.
while the Contract of Sale from Allatt to the Applicant recognises the issue of goodwill, there is no specific mention made in relation to the goodwill of any trade marks containing the word PARAGON.
in relation to the element of authorship of the Trade Mark, the Opponent argues that the Trade Mark is an artistic work in which copyright subsist, and therefore the Applicant cannot validly claim to be the author or the owner of that artistic work. In this regard, I note that there are no particulars in the SGP which raise the issue of copyright and the Opponent’s evidence is completely silent on this issue.
The Applicant submits as follows:
it is not necessary that the Applicant be the original “author” of the mark where it has inherited a chain of title from the author.
since at least 2000 there has been a clear separation of ownership of the Building and the Business. When Conset bought the Premises in 2006, it acquired only a chain of title to the Premises, because at that time the separate Business was already owned by a third party. When the Applicant acquired the Business in 2011, it inherited the separate chain of title to the Business and in so doing, acquired the goodwill in the Business and also any common law trade marks including the Removed Marks.
as the owner and operator of the Business and associated goodwill, the Applicant is the owner of the common law PARAGON trade mark and related marks including the Trade Mark. That Applicant relies on Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8)[29] (‘Kraft’) that a common law trade mark cannot be assigned except with the goodwill of the business.
Conset was simply the Applicant’s commercial landlord under a standard commercial lease and as the Applicant was owner of the common law PARAGON marks and associated goodwill through a separate chain of title, the Applicant did not need a licence to use the Applicant’s PARAGON marks from Conset and nor did Conset play any role in the operation of the Business or in the use or control of the Trade Mark.
there is nothing in the evidence to suggest that the ownership of the Business passed to Conset or that there was ever a reunification of the ownership of the Business with the Premises.
there is no merit to the Opponent’s claim that ownership pursuant to ss 27 and 58 is synonymous with authorship pursuant to copyright law and, as no such particulars have been raised in the SGP, it is not in contention. Further, there is no evidence of any ownership of copyright from the Opponent.
[29] [2020] FCAFC 65, [128] (Foster, Moshinsky and O'Bryan JJ) (‘Kraft’).
The Opponent’s oral submissions concentrated almost entirely on certain provisions of Lease 1 and Lease 2 which, among other things, the Opponent argues gave control over common law trade marks to the lessor by, for example, the inclusion of clauses relating to signs such as “the Lessee will not …paint or affix ..any advertisement sign …on any part of the interior or exterior of the premises or of the building …without …the Lessor’s consent …” and “the Lessee shall not use …the carpark …for the display or advertisement of any goods or services except with the consent …of the Lessor…”. The Opponent submitted that the use of signs means trade marks and these clauses show control over use of trade marks by the lessor.
In reply, the Applicant submitted that the terms of tenancy, including those relating to signs and the carpark were consistent with the lease of a historic building and the term relating to signs and the carpark are not part of a regime to regulate the use of trade marks.
In my opinion, nothing in any of the clauses in Lease 1 or Lease 2 indicate that the Business was being leased out with the Premises. Each of these lease documents only concern the letting of commercial real estate, and nothing more.
The onus is on the Opponent to satisfy me on the balance of probabilities that another has a superior title to the Trade Mark. I am not so satisfied. What I am satisfied of however is that the Applicant is the owner of the Trade Mark being at the end of the chain of title of the Business and trade marks containing the word PARAGON including the Trade Mark.
I agree with the Applicant that there was a split of ownership of the Premises and the Business. This split was the result of the sale of the Premises from Paragon Properties to Gavin Enterprises[30] and the sale of the Business from PK to Gavin & Castle, which included goodwill and given the price of the goodwill, more likely than not included the Removed Marks, which were still registered at that time[31] and any other marks containing the word PARAGON. The split in ownership continued with the sale of the Business to Allatt and Barlow. While there is no sale document in evidence, the following documents satisfy me that it is more likely than not that the sale of the Business to Allatt and Barlow occurred with such sale more likely than not including goodwill of the Business, the Removed Marks, which were still registered at that time and any other marks containing the word PARAGON:
· Lease 1.[32]
· ASIC record of a transfer of the Business Name from Gavin & Castle to Allatt and Barlow on 2 June 2003. I am aware that to transfer a business name requires positive action by the transferor so, absent fraudulent activities by Allatt and Barlow, of which there is no evidence, Gavin & Castle must have facilitated the transfer to Allatt and Barlow. It is highly unlikely that Gavin & Castle would have assisted Allatt and Barlow without there being a sale of the Business.
[30] Prior EIR, Annexure RP2-1.
[31] Prior EIR, Annexure RP2‐2.
[32] Second Strange Declaration, Annexure RFS-2.
I am cognisant that there was never a recordal of Gavin & Castle or Allatt and Barlow as subsequent owners of the Removed Marks but it does not follow from this fact alone that the Removed Marks were, firstly not transferred and, secondly were not transferred together with the goodwill of the Business. While an assignment of a registered trade mark may be with or without the goodwill of the business concerned,[33] given the goodwill paid by Gavin & Castle to purchase the Business, it is more likely than not that when Gavin & Castle sold the Business, they would recoup that cost. There is clearly a pattern of sale of the Business with goodwill and the price of the goodwill has in each case been significant. Further given the amount paid for goodwill, and the fact that none of the sale of business agreements mention any liability to pay out trade mark license fees, this is consistent with the owner of the Business also owning the Business’ trade marks.
[33] s 106(3).
I am also satisfied that the chain of title of the Business and the Business’ trade marks including the Removed Marks, other marks containing the word PARAGON and the Trade Mark continued as follows:
Barlow to Allatt in 2003.
Allatt to the Applicant in 2011.
By the time the chain of title of the Business and the Business’ trade marks to the Applicant occurred, the Removed Marks were no longer in force and therefore were common law trade marks. As the goodwill of the Business was transferred to the Applicant, this included all common law marks of the Business including the Removed Marks and any other marks containing the word PARAGON. These marks did not need to be specifically mentioned in the Contract of Sale. As submitted by the Applicant, in Kraft, even though the contracting party did not intend to assign the unregistered common law trade marks, those unregistered marks were held to be inalienable from the goodwill of the business and were automatically transferred with the goodwill. Therefore, common law trade marks do not need to be specifically mentioned where there is a sale with the goodwill of a business. Further, also in 2011, Allatt assigned her lease of the Premises to the Applicant.[34]
[34] Second Strange Declaration, Annexure, RFS-2 (Lease 3).
I agree with the Applicant’s submissions that only the Applicant (by itself or its predecessors in title) has:
operated the Business under the common law PARAGON trade mark and trade marks containing the word PARAGON including the Trade Mark.
used and exercised the necessary control over the common law PARAGON trade mark and trade marks containing the word PARAGON including the Trade Mark.
It is important to note that the Applicant’s Goods are chocolate and confectionery goods. I am satisfied that the evidence does not show that either of the owners of the Premises, Gavin Enterprises or Conset, operated the Business or used and exercised the necessary control over the common law PARAGON trade mark and trade marks containing the word PARAGON including the Trade Mark in respect of the Applicant’s Goods. I am also satisfied that there is no evidence that Gavin Enterprises or Conset ever licensed the use of any trade marks containing the word PARAGON including the Trade Mark in respect of the Applicant’s Goods.
The evidence also indicates that the Business has been continually operated by the Applicant and Allatt since 2011 until 2018 in the Premises and in 2019, from other premises. The Applicant has provided sales and advertising figures and examples of advertising and promotional materials for the Business between 2011 and 2018.[35]
[35] Prior EIS, Annexures RP-5 to RP-8.
The Opponent argues that the PARAGON name and trade marks are inextricably associated and interwoven with the Premises, which continue to bear the name PARAGON and the use of PARAGON by a different trader in relation to different premises would result in confusion or deception.
The Applicant argues that the Opponent fails to recognise the legal status of the Applicant as the owner of the Business and of the associated common law trade marks in respect of, inter alia, the Applicant’s Goods. The Applicant also argues that legally there is a difference between owning a building and owning a business.
In my opinion, where the title to a building and the title to a business are separate, the purchaser of the building (here firstly Gavin Enterprises and then Conset) does not automatically acquire the business owned by another entity operating from the building (here firstly Gavin & Castle, then Allatt & Barlow, then Allatt and finally the Applicant) regardless of whether the name of the building and the trade marks used by the business are the same or have common elements.
The fact that the Premises where the Applicant’s Goods have for the most part been sold shares its name or part of its name with the trade marks containing the word PARAGON under which the Applicant’s Goods have been sold, (including the Removed Marks and the Trade Mark) is not significant. As the Applicant’s evidence shows that it is common for historical buildings to be repurposed, with examples from New South Wales.[36] Certainly in my own experience, this is also the case in Victoria with repurposed historic buildings such as the Bryant & May Factory, Rosella Factory, Skipping Girl Building and the Pelaco Building to name a few.
[36] Prior EIR, Annexures RP2‐5 to RP2-7.
I agree with the Applicant’s submissions that the public are not likely to be confused as they are used to seeing historic buildings repurposed and for businesses to move to new premises. Further, it is the Applicant that has the title to the Business and therefore the title to the Trade Mark for the Applicant’s Goods. Therefore, the fact that the Building still bears the historical signage, is not likely to cause confusion or deception in respect of use of the Trade Mark on the Applicant’s Goods.
Finally on the Opponent’s claim that ownership pursuant to ss 27 and 58 is synonymous with authorship pursuant to copyright law, firstly no such particulars have been raised in the SGP and secondly no evidence on ownership of copyright has been provided by the Opponent. Therefore, I agree with the Applicant that this is not in contention.
In conclusion, I consider the Opponent has not established on the balance of probabilities that the Applicant is not the owner of the Trade Mark at the Relevant Date. It follows that this ground of opposition is not established.
Section 41
The relevant provisions of s 41 provide:
Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
The Opponent has particularised this ground of opposition in the SGP as follows:
The opposed trade mark is not capable of distinguishing the applicant’s goods and services from the similar goods and services of all other traders in the field, which field is trading on the good will and heritage recognition of the name “The Paragon Katoomba”, a name associated since 1916 with a particular heritage registered building at 65 Katoomba Street, Katoomba and with chocolates and confectionery made at and sold from those premises. The opposed trade mark cannot be distinguished from similar combinations of those words such as the business name “the Paragon Katoomba” registered to Conset Investments Pty Ltd until 20 February 2024 and “The Paragon Orphan Rock”, a trade mark under examination for Conset Investments Pty Ltd, Orphan Rock being a renowned landmark in the Blue Mountains visible from Katoomba.
Determining the merits of the ground of opposition under s 41 requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods and services. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks this is assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[37]
[37] [1964] HCA 55, [5].
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella’)[38] explained that the test for inherent distinctiveness under s 41 involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods.[39] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.[40]
[38] [2014] HCA 48, [71].
[39] Ibid.
[40] Ibid.
What is crucial is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. Furthermore, in assessing inherent adaptation, consideration is given to the trade mark as a whole,[41] that is, whether the combination of elements in the manner in which they are arranged, is capable of distinguishing the relevant goods or services.
[41] Re Hudson’s Trade Marks (1886) 3 RPC 155.
The Opponent submits that the Trade Mark is not distinctive or capable of distinguishing the Applicant’s Goods because it has a prior history and a long established association with other parties and the Applicant is not the owner of the Trade Mark.
The Applicant submits that the Opponent has conflated the issue of ownership of the Trade Mark with the question of inherent distinctiveness and it does not appreciate the test imposed in Cantarella.
A trade mark consisting of a combination of a geographical name and a word that is descriptive in relation to the relevant goods, is unlikely to be sufficiently inherently adapted to distinguish.[42]
[42] Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 (Allsop CJ, Perram, and Markovic JJ); Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367 (Middleton J).
The Trade Mark comprises 3 words. The words THE PARAGON in a stylised script font above the smaller sized word KATOOMBA in block letter font. While the word KATOOMBA is geographical, the words THE PARAGON are not. Further, the words THE PARAGON are not descriptive or even allusive of chocolate or confectionery. The combination of elements of the Trade Mark and the manner in which they are arranged is distinctive. The Trade Mark, as a whole, says nothing specific about the character, quality, intended purpose or some other characteristic of the Applicant’s Goods and nor does it make any allusive reference. Further, the issue of ownership of the Trade Mark is not a relevant consideration in respect of s 41. Therefore, in my opinion, the Trade Mark is prima facie distinctive of the Applicant’s Goods.
There is nothing in the Opponent’s evidence or submissions to change my opinion regarding the ordinary signification of the Trade Mark. As such, it is unnecessary to proceed to the second step outlined in Cantarella.
Consequently, the Opponent has not established the ground of opposition under s 41.
Section 43
Section 43 provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
The Opponent has particularised this ground of opposition in the SGP as follows:
The Application is likely, and is intended, to deceive and cause confusion. The Paragon closed in May 2018 and is undergoing significant heritage restoration. Later that year the Applicant opened a small coffee shop at 16 Katoomba St., calling it "the paragon" so as to trade on the good name and reputation of The Paragon Restaurant and Cafe. The Applicant's actions deceived the public and caused confusion. The business at 16 Katoomba St has now closed. The name "The Paragon Katoomba" and trade marks connected therewith can only describe the historic, heritage listed premises at 65 Katoomba St Katoomba.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J commented in Pfizer Products Inc v Karam:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question.[43]
[43] [2006] FCA 1663, [53].
In Winton Shire Council v Lomas, Spender J noted:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [44]
[44] [2002] FCA 288, [19].
The connotation must be a clear secondary meaning that emanates from the mark itself, something inherent in the mark, such that its use would be likely to deceive or cause confusion.
The Opponent submits that that use of the Trade Mark would be likely to deceive or cause confusion as it is likely to lead to the public making an inference that the Applicant enjoys a continuing and ongoing connection with the “PARAGON” business and trade marks when such is no longer the situation.
In response, the Applicant submits that the Opponent has conflated the s 43 test with that of s 60 and the Opponent asserts no basis for a connotation inherent in the Trade Mark other than reputation. Further any reputation in the Trade Mark and the Business belongs to the Applicant and therefore any connotation based on reputation would be accurate and is therefore not likely to deceive or cause confusion.
In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of any reputation that the Opponent may be able to demonstrate in another’s mark. Although s 43 is not generally directed to deception or confusion caused by a reputation in Australia of some other trade mark, there are instances where a sign may be so well known that its registration by someone not associated with its prior use (whether as a trade mark or otherwise) would be confusing by inferring some sort of endorsement or relationship.[45] These circumstances are rare and limited to situations where the sign in question is so well known that it is clearly associated only with a particular organisation or person such that use of it as a trade mark by anyone else would necessarily imply a relationship with that organisation or person.
[45] Amalgamated Television Services Pty Ltd v Clissold (2000) 52 IPR 207 (Hearing Officer Forno).
In the present case, I agree with the Applicant that any reputation in the Trade Mark is that of the Applicant and therefore there is no connotation in the Trade Mark which would cause confusion or deception.
I am not satisfied that the Trade Mark is likely to deceive or cause confusion because of any connotation in the Trade Mark. The ground of opposition under s 43 is not established.
Section 60
Section 60 provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
The Opponent has particularised this ground of opposition in the SGP as follows:
The business name and trade mark ‘The Paragon Katoomba’ has long been identified with the premise known as The Paragon operating from 65 Katoomba St Katoomba. The reputation of The Paragon, its goods and services is known around Australia and internationally. From the 1920’s The Paragon produced high quality confectionery sold under various trade marks [the Removed Marks]. The Paragon and these trade marks have great historical and cultural heritage significance long established before the priority date of the Application.
To succeed on this ground, I must first decide whether another trade mark had a reputation in Australia at the Relevant Date and if so, whether as a result of that reputation, use of the Trade Mark is likely to deceive of cause confusion.
For the purposes of s 60, reputation must be established as a matter of fact by the Opponent[46] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers,[47] although this is tempered by the nature of the relevant market.
[46] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[47] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people have been exposed to a trade mark,[48] or inferred from a high volume of sales,[49] advertising expenditure or other promotion.[50]
[48] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
[49] McCormick & Co Inc v McCormick [2000] FCA 1335, [86] (Kenny J).
[50] Ibid.
The Opponent submits as follows:
it relies on the reputation in the name and trade mark PARAGON built up and acquired by parties other than the Applicant and therefore use of the Trade Mark would lead to a number of members of the public assuming a connection between such use and the “PARAGON” business when no such connection exists.
granting a registration of the Trade Mark would preclude Conset as the rightful owner (or indeed any other party) from reviving the “PARAGON” business and from trading under that name.
The Applicant submits that it has the relevant reputation and goodwill in respect of the Trade Mark and the Business and therefore there can be no deception or confusion.
In light of my conclusion above on ownership of the Business and goodwill in trade marks containing the word PARAGON including the Trade Mark, I agree with the Applicant that any reputation and goodwill clearly resides with the Applicant. The Applicant has the reputation in the trade marks containing the word PARAGON including the Trade Mark and therefore there is no possibility of deception or confusion if the Applicant uses the Trade Mark.
The ground of opposition under s 60 is not established.
Section 62A
Section 62A provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[51]
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
... The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[52]
[51] [2004] EWCA Civ 1028.
[52] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[53]
[53] Ibid [165]-[166].
100. In Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd, the hearing officer stated:
The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. I note comments from a variety of jurisdictions in support of both propositions.[54]
[54] [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
101. The Opponent has particularised this ground of opposition in the SGP as follows:
Prior to May 2018 the Applicant was lessee of The Paragon Restaurant and Cafe at 65 Katoomba St but had announced in the media intention to close the business. The Application was therefore made in bad faith because the trade marks sought to be registered were clearly designed to prevent any other business subsequently operating from The Paragon premises from using trade marks historically associated with those premises and would damage the significant cultural heritage of The Paragon Katoomba.
102. The Opponent submits that:
· the Applicant knew of the history and background to the “PARAGON” business and the “PARAGON” name and trade marks.
· the Applicant ought reasonably to have known that the artwork of the Trade Mark did not belong to it but rather it was artwork that had been designed, developed and used by another party.
· as a former tenant, lessee and licensee of the Business, the Applicant was in a fiduciary relationship with, and owed an ongoing fiduciary duty to Conset to act in good faith.
· lodging an application for a conflicting trade mark without giving any indication or notice to the existing owner and landlord was calculated in anticipation of future intentions and events.
· the Application indicates the address of the Applicant as “65 Katoomba Street, Katoomba”, that is, the address of the “PARAGON” premises. It is accepted that as at the Relevant Date, this address was correct. However, since June 2018 that address is incorrect and therefore a false statement.
· the Applicant has at all times acted knowingly, deliberately and in a calculated manner by seeking to register the Trade Mark and thereby securing for itself the benefit and advantage of ownership in respect of same.
· the Applicant’s conduct is a ‘filching’ exercise to appropriate the residual and ongoing reputation and renown in the Business and ‘PARAGON” name and trade marks.
103. The Applicant submits:
the evidence establishes that the common law PARAGON trade marks are the property of the Applicant and not Conset or any other party.
the Opponent’s submission that the Applicant is a former tenant, lessee and licensee of the Business is a legally and factually incorrect description of Applicant’s legal relationship with Conset.
the Opponent’s submission regarding filching is scandalous and should be withdrawn.
104. Based on the evidence before me, and my conclusion above on ownership of the Business and goodwill in trade marks containing the word PARAGON including the Trade Mark vesting in the Applicant, there is not a sufficient basis for a finding of bad faith. I am not satisfied that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision made in bad faith.
105. Therefore, the s 62A ground of opposition is not established.
Decision
106. Section 55 relevantly provides:
Decision
(1)Unless subsection (3) applies to the proceedings, 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.
Note:For limitations see section 6.
107. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 1909328 may proceed to registration not less than one month from the date of this decision. If the Registrar is 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
108. 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 s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
18 January 2024
Attachment A
| Number | Mark | Class and Goods |
| 1909334 | Class 30: Chocolate; Chocolate bars; Chocolate based products; Chocolate beverages; Chocolate biscuits; Chocolate cake; Chocolate candy with fillings; Chocolate caramel wafers; Chocolate coated biscuits; Chocolate coated fruits; Chocolate coated macadamia nuts; Chocolate coated nuts; Chocolate coating; Chocolate coffee; Chocolate confectionery; Chocolate covered cakes; Chocolate covered wafer biscuits; Chocolate creams; Chocolate decorations for Christmas trees; Chocolate decorations for cakes; Chocolate drink preparations; Chocolate eggs; Chocolate essences for the preparation of beverages; Chocolate extracts; Chocolate fillings for bakery products; Chocolate flavoured beverages; Chocolate flavoured coatings; Chocolate flavoured confectionery; Chocolate flavourings; Chocolate fondue; Chocolate fudge; Chocolate marzipan; Chocolate mousses; Chocolate pastries; Chocolate sauce; Chocolate shells; Chocolate souffles; Chocolate spreads containing nuts; Chocolate spreads for use on bread; Chocolate substitutes; Chocolate sweets; Chocolate syrups for the preparation of chocolate based beverages; Chocolate truffles; Chocolate vermicelli; Chocolate wafers; Chocolate waffles; Chocolate-based beverages; Chocolate-based dips; Chocolate-based spreads; Chocolate-based spreads also containing nuts; Chocolate-coated nuts; Chocolates; Confectionery chocolate products; Dairy chocolate; Drinking chocolate; Drinks based on chocolate; Drinks prepared from chocolate; Filled chocolate; Foods with a chocolate base; Hot chocolate; Ice beverages with a chocolate base; Liqueur chocolates; Marshmallow filled chocolates; Milk chocolate; Milk chocolate bars; Milk chocolate teacakes; Milk chocolates; Non-medicated chocolate; Non-medicated chocolate confectionery; Preparations containing chocolate for making into beverages; Preparations for making chocolate based beverages; Preparations for making chocolate beverages; Prepared desserts (chocolate based); Sandwich spread made from chocolate and nuts; Snack bars consisting of chocolate; Turkish delight coated in chocolate | |
| 1909344 | Class 30: Chocolate; Chocolate bars; Chocolate eggs; Chocolate fudge; Chocolate marzipan; Chocolate sweets; Chocolates; Dairy chocolate; Drinking chocolate; Filled chocolate; Foods with a chocolate base; Liqueur chocolates; Marshmallow filled chocolates; Milk chocolate; Milk chocolate bars; Milk chocolates; Preparations containing chocolate for making into beverages; Preparations for making chocolate based beverages; Preparations for making chocolate beverages; Snack bars consisting of chocolate; Turkish delight coated in chocolate |
0
21
0