Jack Grieve v Irene Notaras T/A 'Bon Trading Co'

TRADE MARKS ACT 1995

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

Re:Opposition by Irene Notaras to registration of trade mark application 1222669(21) - LA SORRENTINA ATOMIC COFFEE MACHINE - filed in the name of Jack Grieve.

Delegate:

Alison Windsor

Representation:

Opponent: Irene Notaras appeared in person

Applicant: Jack Grieve appeared in person

Decision:

2010 ATMO 64

S52 opposition: consideration of section 25 and whether it is relevant to this opposition – no satisfaction that ATOMIC is the only description of goods formerly made under a patent – registration persists until such time as court orders removal or trade mark is otherwise removed from Register.

Section 44 – trade marks deceptively similar – examiner incorrect in withdrawing an objection based on submissions from the applicant as to generic nature of the trade mark – statutory rights in a trade mark override applicant’s opinion – application refused – costs awarded against applicant.

Background

The background to this opposition is long and complex. What follows is a summary only.[1]
[1] A more detailed description of the background can be found in a decision made by another delegate of the Registrar in January 2010 in respect of a proposal to revoke acceptance of this application: Re Trade Mark Application 1222669 – La Sorrentina Atomic Coffee Machine – 2010 ATMO 12.
Jack Grieve applied to register a trade mark, current details of which are:

Trade mark number: 1222669

Filing date: 13 February 2008

Goods and class: Class 21: Non-electric apparatus for making coffee; non-electric coffee brewers; non-electric coffee makers; non-electric coffee percolators; non-electric coffee pots

Trade mark: La Sorrentina Atomic Coffee Machine

The file shows that Mr Grieve applied for his trade mark via IP Australia’s “TM Headstart” service. This is a service which allows an applicant to pay for a registrability assessment prior to actually filing an application for registration. If the applicant is advised of issues affecting the chosen trade mark’s registrability, the applicant has various options open to him. One of the options, and the one that Mr Grieve chose, is to proceed with the original application and to deal with any grounds for rejection which are formally raised.
The examiner issued an official report, in which she formally notified Mr Grieve that grounds for rejection under the provisions of section 44 of the Trade Marks Act 1995 (“the Act”) applied to his trade mark because of an earlier dated trade mark registration, details of which are:

Trade mark number: 791650

Trade mark owner: Irene Notaras

Registered from: 20 April 1999

Goods and class: Class 21: Non electric coffee percolators, espresso makers, coffee machines, and non electric cappuccino makers

Trade mark: ATOMIC

During the Headstart process, after being advised that there was potential for the ground for rejection to be raised, Mr Grieve had sent an e-mail to the examiner advising her of his wish to proceed with the application. He also included submissions and arguments designed to convince the examiner that the section 44 ground for rejection should not be raised. At some stage after the issue of the adverse report, a decision was made within the examination section to take account of Mr Grieve’s submissions, to withdraw the objection raised under section 44, and to accept the application for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 12 June 2008.
On 9 September 2008, Irene Notaras filed a Notice of Opposition (“the notice”) to registration of the application and, after being granted an extension of time for the purpose, filed her evidence in support in March 2009. The next few months involved a considerable amount of correspondence, e-mails and telephone communications between a number of staff members within IP Australia and each of the parties. After a delegate of the Registrar had formally decided that it was more appropriate to continue with the opposition than it was to revoke the acceptance,[2] the evidence stages were finally completed in March 2010. Both parties then requested that a hearing be set down as soon as possible.
[2] Refer footnote 1
As a delegate of the Registrar of Trade Marks, I heard the parties in Canberra on 2 June 2010. Ms Notaras and Mr Grieve appeared in person and gave their own submissions.
There is clearly bad blood between the parties. This is obvious from the application file, but also became very obvious at the hearing. The Hearing was set down for 1pm, but the flight Ms Notaras was to catch to Canberra was cancelled without warning or explanation, and she did not arrive until after 3pm. Mr Grieve was obviously unhappy with the delay in starting the hearing as he had gone to some trouble to be at the venue on time.
In addition, despite having been advised several days prior to the hearing that I would not accept as evidence any material which was not already on the file, Mr Grieve brought with him several coffee makers which he displayed on the table prior to commencement of proceedings.[3] He was reluctant to put them away when asked to do so, though he finally did as requested. However, this did set the tone for the hearing – neither Mr Grieve nor Ms Notaras seemed comfortable sitting on opposite sides of a table in the same room and Mr Grieve was obviously very unhappy about having been taken to task about his coffee makers.
[3] See also Paragraph 31 of the earlier decision in respect of this trade mark – “the regulations governing the evidentiary stages will be strictly applied”.

Grounds of opposition and Onus

The Notice nominates grounds of opposition under the following sections of the Act: 41, 42, 43, 44, 58 and 60. Ms Notaras advised at the hearing that she relied particularly on the grounds relevant to sections 42, 44, 58 and 60 of the Act. The onus of establishing any of the grounds of opposition lies with the opponent and the ground need only be established on the balance of probabilities.[4]

Evidence

[4] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891, para 22-27

Evidence in support

The evidence in support consists of a statutory declaration made by Irene Notaras on 9 March 2009. There are over 150 pages of exhibits to the declaration and what follows is a very brief summary. I will deal with specific parts of the evidence later in this decision.
Ms Notaras states that in 1965 she was appointed the sole Australian agent to represent Mr Giordano Robbiati of Italy, the original designer and manufacturer of the coffee machine which he labeled with the word ATOMIC. Between 1965 and approximately 1986, her evidence demonstrates aspects of her business selling coffee machines made in Italy by Mr Robbiati and exported to Ms Notaras in Australia. From approximately 1968, Mr Robbiati provided labels which incorporated the name of Ms Notaras’ company – Bon Trading Company – under which name Ms Notaras was and is still trading.
There are no dated examples of any kind in Ms Notaras’ evidence between approximately 1986 and 1998. Apart from an example of an article in the CHOICE® magazine dated 1987 she has not provided any clearly dated evidence which covers that period. However, a small number of clearly dated examples of invoices and other materials are provided after 1998.
Ms Notaras also devotes a portion of her declaration to commenting on her contacts and interactions with Mr Grieve and the coffee maker which he has branded with the opposed trade mark. Also attached are examples of legal correspondence between the applicant’s legal representatives and the opponent.
At paragraph 57 of her declaration, Ms Notaras makes comments about Mr Grieve’s “La Sorrentina” coffee maker. She refers to an instruction leaflet included with the coffee maker which includes the following label on the back cover:
She says the following:
I am unaware that Giordano Robbiati, with whom I was acquainted personally and in business for nearly thirty years, had anything to do with the design of the device known as the La Sorrentina coffee machine being promoted by Ikon Exports.[5] Indeed Mr Robbiati passed away in the late 1980s, well over ten years before the appearance of the Imitation Coffee Machine in the Australian marketplace.
The Ikon Exports “La Sorrentina” coffee machine is not a genuine representation of Robbiati’s 1947 design. I have never authorised its reproduction.
[5] Ikon Exports is a business name with which Mr Grieve is connected.

Evidence in answer

The evidence in answer consists of the declaration of Jack Grieve made 10 August 2009. The declaration itself is 34 pages long and there are 136 pages of annexures. Again, I will only briefly summarise the main points raised.
Much of the material within the declaration consists of Mr Grieve’s opinions on various matters to do with the specific kind of coffee maker he is interested in, and a significant portion of the declaration is devoted to discussion of, and opinions on, various legal matters.
Another significant portion of Mr Grieve’s declaration consists of discussion of section 25 of the Act, and the effect Mr Grieve believes it should have on Ms Notaras’ trade mark registration. Paragraph 66 of the declaration consists of a specific request “that the Registrar consider the evidence I have provided here and address the question of s 25 as it relates to the ‘atomic’ term, the Robbiati Patents and ‘atomic’ coffee makers”.
Mr Grieve also gives his opinion on the strength (or otherwise) of the applicant’s evidence and stresses his opinion that the word “Atomic” is a descriptive term for a particular type of coffee maker which was previously made under a patent; that there is no other way in which these coffee makers may be described and that no one person should have a monopoly of the term.
Mr Grieve has also provided copies of various letters from solicitors, both his legal representative and that of Ms Notaras. He has also provided a copy of a letter dated November 2007 which he wrote to Ms Notaras’ solicitors in an attempt to correct what he considered to be factual inaccuracies in their earlier dated correspondence to him. This letter reveals that Mr Grieve was well aware that Ms Notaras had a registered trade mark as it says the following in one paragraph:
In return I asked to obtain a provisional license to use her registered trade mark (No 791650) on coffee machines marketed independently from her.

Evidence in Reply

Ms Notaras provided a second Statutory Declaration made 15 March 2010, which incorporates a number of annexures. One of the annexures is a declaration by Rita Storey made on the same date. Ms Storey is a long-term employee of Bon Trading Company.
Further details of the evidence and a discussion of the submissions given at the hearing are more appropriately included in my discussion and reasons to which I now move.

Discussion and Reasons

I will deal with two sections of the Act in my reasons – section 25 and section 44. Ms Notaras’ evidence and submissions go only to support the ground of opposition relevant to section 44.
Section 25 is not a ground for opposition, but it is the section to which Mr Grieve has largely directed both his evidence and his submissions. It was also referred to in the earlier decision made in relation to the revocation issue. Mr Grieve was insistent that section 25 is the matter which needs to be considered (and decided in his favour) in order to determine this opposition. While I do not agree with his submission, section 25 could be seen to have some relevance to this matter, and cannot be completely ignored.

Section 25 – trade mark relating to article etc. formerly manufactured under patent

Section 25 provides the following:
(1) This section applies if:
(a) a registered trade mark consists of, or contains, a sign that     describes or is the name of:
(i) an article or substance that was formerly exploited under   a patent; or
(ii) a service that was formerly provided as a patented   process; and
(b) it is at least 2 years since the patent has expired or ceased; and
(c) the sign is the only commonly known way to describe or identify         the article, substance or service.
Note: For registered trade mark and sign see section 6.
(2) If the trade mark consists of the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:
(i) the article or substance or other goods of the same   description; or
(ii) the service or other services of the same description; and
(b) is taken to have ceased to have those exclusive rights from the            end of the period of 2 years after the patent expired or ceased.
(3) If the trade mark contains the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:
(i) the article or substance or other goods of the same   description; or
(ii) the service or other services of the same description; and
(b) is taken to have ceased to have those exclusive rights from the            end of the period of 2 years after the patent expired or ceased.
As Mr Grieve has commented, this section of the Act has had little consideration by the courts. To my knowledge, this is the first time the Registrar has been required to consider it at all (apart from in the decision mentioned earlier), and there is only one case where it has been considered by the Federal Court.[6]
[6] See Mayne Industries Pty Ltd v Advanced Engineering Group Pty Ltd [2008] FCA 27
The intent of section 25 is to prevent the owner of a patent from extending the protection granted via the patent past the end of its statutory term through registration of a trade mark. Patent law is designed to allow an inventor a period of time in which to enjoy the fruits of his invention with statutory protection available to him. However, at the end of the protected period, the invention then enters the public domain. Registering as a trade mark the accepted or only commonly known name or description of the patented invention goes against the intention of the law.
There is no question that the original coffee makers which bore the ATOMIC label were made according to the specifications of patents owned by Mr Giordano Robbiati, and which were granted in the late 1940s and early 1950s in various countries in Europe as well as in the United Kingdom and the United States of America. Mr Robbiati did not use the word “Atomic” in the patent specifications but it appears, in upper case, on the labels of the earliest known examples of his coffee makers once they went onto the market and appeared on every coffee maker after that until he ceased production. It appears that Mr Robbiati licensed various people to sell his coffee makers in several countries around the world and that each coffee maker eventually carried a label identifying the retailer as well as the original source in Italy.
In her evidence, Ms Notaras attests to having had a personal and business relationship with Mr Robbiati beginning some time in the 1960s. She has provided copies of letters from Mr Robbiati from as early as 1965. As far as I can ascertain, Mr Robbiati did not register the word ATOMIC as a trade mark, but I note that in his letters he always refers to the coffee maker by the word “ATOMIC” and that it is always rendered in upper case. This is a recognised method of designating that a word is regarded as a trade mark rather than as a description. The question I need to consider is whether the word ATOMIC is the only commonly known way to describe the article which was covered by the original patents.
The evidence provided strongly suggests that the only coffee makers of this kind made between 1947 and 1986 were those made by Robbiati himself, and sold under his licence. I can only say ‘suggests’ because the evidence of both parties is full of supposition, opinion, incomplete and difficult to read photocopies and unexplained gaps. Neither party has provided sound evidence attesting to any other unrelated manufacturer having existed during that period except for a single Hungarian example of a coffee maker which also bore the word “Atomic” on its label.
Mr Grieve’s evidence provides information which points to there being a very strong “cult” market in the Robbiati coffee makers, which are now regarded as “vintage” machines. It does not appear that new coffee makers made by the Robbiati factory have been available, except on very rare occasions, since about 1986. It is not at all clear when or why production ceased. Robbiati-made coffee makers bearing the ATOMIC label which are sold at auctions or through sites such as eBay® sometimes command very high prices – I have seen one reference to a 1947 Robbiati coffee maker selling for $1200.
Mr Grieve describes himself as “an avid collector of ‘atomic’ coffee makers, and coffee makers in general”. He says “as part of my obsessive collecting, I have made contact with various experts around the world … I have shared information and theories on the history and production of this coffee maker with anyone interested in doing so …”. His evidence gives examples of internet sites, internet blogs, published articles from a book as well as newspapers and magazines and articles available on the internet, all on the subject of the Robbiati coffee makers bearing the ATOMIC label. All this goes towards cementing the “cult” status of the coffee makers in the current market.
From the information which has been put before me, I am satisfied that the word ATOMIC is loosely used, by the public and by collectors, as identifying the range of coffee makers made by, and sold under licence from, Mr Giordano Robbiati of Milan and which are now collector’s items. However, I am not satisfied that new machines made according to the Robbiati patents must be described using that sign. In support of this contention, I note that Mr Grieve has provided information in relation to a coffee maker made in China and newly on the market at the time he filed his evidence, which bears the name OTTO. This device is clearly based upon the Robbiati coffee makers and which has a very similar appearance but does not bear the sign ATOMIC.[7]
[7] This coffee maker is a registered design in Australia – Registration AU 306245 S – and the winner of several design excellence awards - Grieves declaration, Annexure 5
The Robbiati patents expired a long time ago. It is not at all clear to what extent the provisions of section 25 would be applicable to Ms Notaras’ registration even if it had been determined that the word ATOMIC was the only commonly known name or description of the originally patented coffee maker.
In any event, the Registrar has no mandate to cancel or amend a trade mark registration in the circumstances envisaged by section 25. If she were to become convinced that the provisions of section 25 applied to the trade mark, then the provisions of section 87 of the Act would be available. It is, however, unlikely that the Registrar would initiate a rectification action on her own behalf unless there was an extremely strong matter of the public interest involved. I do not believe such a matter exists here.
A registration may remain on the trade marks Register until such time as a prescribed court makes a decision under section 87 and advises of the date at which the registered owner’s statutory rights ceased or it is otherwise removed.[8] Therefore, at the time Mr Grieve applied for his trade mark, in the full knowledge that the registration existed, Ms Notaras’ trade mark was prima facie entitled to be on the Register. It is thus appropriate for me to move to a consideration of the ground of opposition based on section 44 of the Act.
[8] For example non-payment of renewal fees or removal for non-use.

Section 44 – identical etc trade marks

Section 44 as it applies to this opposition provides the following:
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. [9]
[9] Subsections 3 and 4 have no relevance here as Mr Grieve has not provided appropriate evidence which could be used for their consideration and application.
As the opponent in this matter, Ms Notaras has identified registration 791650, with an earlier priority date of 20 April 1999, and which is registered for “non electric coffee percolators, espresso makers, coffee machines, and non electric cappuccino makers” in class 21. These goods are the same and similar to those Mr Grieve is claiming. The matter remaining to be decided is the similarity of the trade marks.
According to the accepted tests,[10] the two trade marks – ATOMIC and LA SORRENTINA ATOMIC COFFEE MACHINE – on a side by side comparison are not substantially identical. There are significant differences between the trade marks when seen in this circumstance and they do not meet the requirements of the test.
[10] Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415
However, deceptive similarity involves a different consideration. Here the trade marks are not considered side by side, but on the basis of the person who knows only one trade mark and is faced with the other in a situation where a comparison is not possible.
In Australian Woollen Mills Ltd v FS Walton & Co Ltd[11], Dixon and McTiernan JJ said:
In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.
[11] (1937) 58 CLR 641
In Re Application by Ocean Spray Cranberries Inc (1999) 46 IPR 601, the Hearing Officer described the comparison between trade marks in a way most relevant to the case under consideration:
I consider that, in comparing these trade marks, one of the surrounding circumstances to which I should pay attention is the inherent distinctiveness of the shared element (the word [ATOMIC]) in relation to the similar goods. It is this shared element that has given rise to the ground of rejection relied on by the examiner. If the shared element has a high degree of inherent distinctiveness, it is more likely to be seen, and remembered, by the public as denoting a common trade source of the similar goods when considered in the light of the notional user test propounded in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101:
Assuming use by the opponent of any of its marks in a normal and fair manner for any of the goods covered by the registrations of those marks (and including particularly goods also covered by the proposed registration of the mark applied for), is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration also uses the mark applied for normally and fairly in respect of any goods covered by its proposed registration?
At face value, the word ATOMIC has no obvious connection with coffee pots or coffee makers and would appear to be inherently adapted to distinguish such goods. Despite Mr Grieve’s suppositions and suggestions about the likely reasons for Mr Robbiati having adopted the word to put on his coffee makers – the late 1940s and the 1950s sometimes being referred to (especially in the press) as “the Atomic Age” – the word has a degree of inherent adaptation to distinguish the goods which are claimed.
Given that the word ATOMIC has that degree of inherent adaptation to distinguish, and that it is a registered trade mark, the likelihood of confusion as to the trade source of goods which both bear the word in question is increased.
French J in the Woolworths Metro case[12] gave detailed consideration to the matter of deceptive similarity when he said the following:
[12] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 428
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594–5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 at 362 ; 1 ALR 443 at 450:
… the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.
Taking all this material into account, I am satisfied that there is a real tangible danger of deception or confusion existing between these two trade marks when they are in use within the marketplace. I am satisfied that the trade marks are deceptively similar. Ms Notaras has established the ground for opposition relevant to section 44.
The question now arises as to how the trade mark came to be accepted in the face of the ground for rejection. In most oppositions this is not something I would go into – having found the ground of opposition was established, I would leave it at that. However, the history of this particular case requires me to go further than would otherwise be necessary in explaining matters.

Withdrawal of the s 44 objection and acceptance of the application

This whole matter is to be considered as at the date on which the application was filed. The examiner, prior to the actual filing, had advised Mr Grieve that Ms Notaras’ registration would be raised as a ground for rejection under the provisions of section 44. Mr Grieve was aware that Ms Notaras owned the registration. Mr Grieve gave the examiner his opinion that the word ATOMIC was a generic name for coffee makers, and this was taken into account after the first official report had been issued, thereby allowing the ground for rejection to be withdrawn and the application to be accepted for possible registration. I do not consider the examiner was correct in taking Mr Grieve’s opinion as to the putative generic nature of the word ATOMIC into consideration in respect of a section 44 matter.
Part 3 of the Act deals with trade marks and trade mark rights. Section 17 defines what a trade mark is, and sections 18 and 19 deal with signs and trade marks which may or may not be used or registered. Section 20 defines the rights given by registration of a trade mark and relevantly provides the following:
(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) to authorise other persons to use the trade mark; in relation to the goods and/or services in respect of which the trade mark is registered.
(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.
(3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.
Section 24 specifically deals with the matter of a sign which has become a generic description of an article or substance or service and provides (with my emphasis):
(1) This section applies if a registered trade mark consists of, or contains, a sign that, after the date of registration of the trade mark, becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service.
(2) If the trade mark consists of the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other persons to use, the trade mark in relation to:
(i) the article or substance or other goods of the same   description; or
(ii) the service or other services of the same description; and
(b) is taken to have ceased to have those exclusive rights from and including the day determined by the court under      subsection (4).
(3) If the trade mark contains the sign, the registered owner:
(a) does not have any exclusive rights to use, or authorise other persons to use, the sign in relation to:
(i) the article or substance or other goods of the same   description; or
(ii) the service or other services of the same description; and
(b) is taken to have ceased to have those exclusive rights from the day determined by the court under subsection (4).
(4) For the purposes of subsections (2) and (3), a prescribed court may determine the day on which a sign first became generally accepted within the relevant trade as the sign that describes or is the name of the article, substance or service.
Unless and until Ms Notaras’ trade mark has been determined by a prescribed court to be subject to the provisions of section 24 and/or section 25 and the court has determined a date at which her rights should cease, she retains the rights of a registered owner of a trade mark. Mr Grieve may consider her trade mark to be a generic term, but his opinion is not what counts. As far as the legislation is concerned, Ms Notaras has a statutory prior right in a registered trade mark and that right overrides Mr Grieve’s opinion and stands in the way of acceptance of his deceptively similar trade mark. The examiner was incorrect in accepting the application on the basis of Mr Grieve’s untested submissions.

Extent of Ms Notaras’ rights in respect of her trade mark

This is again something I would not normally comment on, but because of the history of this matter there will be some benefit, I think, from brief comments.
It is clear from her evidence[13] and submissions that Ms Notaras considers she has rights in the shape and design of the coffee pot because of her past relationship with Mr Robbiati and his legacy to her which she refers to at paragraph 21 of her first declaration and which I quote:
In the late 1980s Mr Robbiati was elderly and said to me in words to the effect:
“Keep the Atomic alive, keep it selling, carry it on. I want you to continue the business.”
I was given invoices of various customers around the world to whom I could sell globally. I acquired the moulds which I still retain. … At that point I became the proprietor of the entire business worldwide.
[13] See paragraph 14 of this decision.
Nothing which has been put before me suggests that Ms Notaras has or had any specific rights in the design and appearance of the Robbiati coffee maker. The Robbiati patents which resulted in the original coffee maker function are now in the public domain and have been for many, many years. This means that anyone who wants to manufacture a coffee maker based on the method revealed in the patents should be able to do so. If the end result is something that looks similar to the original Robbiati coffee maker, nothing in the evidence suggests that Ms Notaras has any right to prevent either its manufacture or its sale. She may have the right in some circumstances to take action under the provisions of the Act in respect of the word ATOMIC when it is used on coffee makers. As far as I can see, this is the extent of her rights.

Decision

Ms Notaras has established a ground of opposition under the provisions of section 44. I refuse to register trade mark application 1222669.

Right of appeal

Again, this is something I would not usually go into except to advise in the letter which accompanies the decision that appeal rights do exist. The letter also gives information about the time frames applicable to the lodging of an appeal with the appropriate court. However, again there are issues peculiar to this matter which warrant specific comment and information.
I have decided that Mr Grieve’s application should not be registered. The Registrar has now completed her task – she is what is known as functus officio – she has discharged her duty in respect of this opposition.
There is now no basis for either Mr Grieve or Ms Notaras to continue to argue this matter with IP Australia. If Mr Grieve requires this matter to be reconsidered, he must lodge an appeal from this decision with the Federal Court. An appeal to the Federal Court is a hearing de novo and Mr Grieve will be able to provide whatever evidence and submissions he considers are relevant.

Costs

Ms Notaras has been successful in this opposition, and is entitled to her costs. These will, however, be taxed if necessary. To avoid any uncertainty I will indicate that Ms Notaras is not entitled to recover costs for the preparation of evidence or the preparation of the matter for hearing where those costs do not result from the involvement of a third party, for example a lawyer or trade mark attorney, acting on Ms Notaras’ behalf.
Section 221 provides the following:

(1) The Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her.

(2) A party desiring to obtain costs must apply to the Registrar in accordance with the regulations.

(3) If a party is ordered to pay the costs of another party, the costs may be recovered in a court of competent jurisdiction as a debt due by the first party to the other party.

I order costs against Jack Grieve to the extent allowed for by subregulation 21.13(2) and Schedule 8 of the Regulations. In the event of a dispute between the parties as to the exact extent of those costs, the bill of costs would be taxed by the Taxing Officer at the Trade Marks Office.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

25 July 2010

[2010] ATMO 64

25 July 2010

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