Joe Dib and John El-Chah v Robert Charles Minto

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.