Joe Dib and John El-Chah v Robert Charles Minto

TRADE MARKS ACT 1995

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

Re:Opposition by Joe Dib and John El-Chah to registration of trade mark 804032(30)(42) – The Coffee Bean Roasting House & Device –in the name of Robert Charles Minton.

Background

This matter is an opposition to registration of trade mark application 804032 which proceeds in the name of Robert Charles Minton of Tamworth, New South Wales, (‘the applicant’).

Details of the opposed application are:

App Number:  804032
Priority Date:  18 August 1999
Goods/Services:  Class: 30        Coffee, tea
  Class: 42 Providing food and drink
Trade Mark:
Advertised:  25 October 2001

The above application was accepted for registration by the Registrar’s delegate under the provisions of section 44(4) on the basis that the applicant had continuously used the trade mark for a period beginning before the priority date for the registration 718677, in respect of similar goods or closely related services. The owner of 718677 is not involved in these proceedings although I note that there are non-use proceedings against that trade mark brought by the opponents in these proceedings.

Joe Dib and John El-Chah (‘the opponents’) subsequently opposed registration of this application. The opponents have served and filed a statutory declaration as evidence in support of their opposition and a declaration as evidence in reply. The applicant has served and filed a declaration as evidence in answer. Neither party has requested a hearing, so the matter has come to me, as a delegate of the Registrar of Trade Marks, for my written decision and reasons.

I will not discuss the statutory declarations of the opponents in much detail. The grounds of opposition argued at some length by MJ Sulman, attorney for the opponents, in written submissions, are for the most part, at base founded upon either the opponents’ perceptions of substantial identity or deceptive similarity of its trade mark to the opposed trade mark or the inherent qualities of the opposed trade mark. As the opponents fail to leap those hurdles, the evidence is not of much relevance to the decision.

The relevant portion of the evidence relates to the common-law use of opponent’s trade mark, details of which (as applied for) appear below:

Reg Number: 823237
Priority Date: 4 February 2000

Goods/Services: Class: 42 Restaurant, cafe and take away food services; catering services

Trade Mark:
Advertised: 25 October 2001

The above application was accepted on the basis of a declaration as to the honest concurrent user of the opponents’ trade mark relative, inter alia, to this opposed trade mark.

The evidence shows that the opponents’ café is of modest to moderate size and turnover and has operated for some years from one location in Rozelle, a suburb of Sydney.

The evidence shows that the applicant’s café and coffee retail business is of modest to moderate size and operates in Tamworth, a country town of some size in New South Wales. It too has operated for some years but not for as long as the…

CaseChat Overview and Summary

This matter concerns an opposition by Joe Dib and John El-Chah to the registration of trade mark application 804032, "The Coffee Bean Roasting House & Device," in the name of Robert Charles Minton. The application sought registration for coffee and tea in Class 30, and for providing food and drink in Class 42. The applicant's trade mark had been accepted for registration under section 44(4) of the *Trade Marks Act 1995* (Cth) on the basis of continuous use prior to the priority date of a registered trade mark owned by a third party. The opponents, who operate a café under a trade mark that was accepted on the basis of honest concurrent use, argued that the applicant's mark was substantially identical or deceptively similar to their own, and also raised grounds under sections 41, 43, 58, and 60 of the Act.

The delegate of the Registrar of Trade Marks was required to determine whether the applicant's trade mark was substantially identical or deceptively similar to the opponents' trade mark, and whether the applicant's mark was inherently deceptive or misleading. The delegate also considered whether the applicant's trade mark possessed sufficient inherent distinctiveness, and whether it carried any misleading connotations. The delegate noted that the opponents' arguments were largely founded on their perception of substantial identity or deceptive similarity, or the inherent qualities of the opposed trade mark, and that the evidence's relevance was contingent on these initial hurdles being overcome.

In reaching a decision, the delegate applied established principles of trade mark law concerning the comparison of composite trade marks. It was held that features lacking inherent distinctiveness, such as the words "THE COFFEE BEAN" and representations of coffee beans, should be discounted in the comparison. The delegate found that the trade marks were neither substantially identical nor deceptively similar, noting significant differences in their get-up and presentation. The delegate also considered that the common idea conveyed by both marks was insufficient to establish deceptive similarity, particularly when the individual components lacked inherent distinctiveness. Furthermore, the delegate found no grounds for opposition under sections 41, 43, 58, or 60, concluding that the applicant's trade mark possessed sufficient inherent distinctiveness derived from its arrangement and graphics, and did not carry misleading connotations.

Consequently, the delegate dismissed the opposition, allowing the applicant's trade mark application to proceed to registration one month from the date of the decision, subject to any appeal. The delegate also ordered that the applicant's costs be paid by the opponents, should any claimable costs have been incurred.

CaseChat Overview and Summary

Orders of the court

Background to the litigation

Evidence Before The Court

Reasons for decision

Legal Principle Established