Macame Pty Ltd v Primo Products Pty Ltd
[2009] ATMO 39
•5 June 2009
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Macame Pty Ltd to registration of trade mark applications 1115819(30, 35) - PRIMO CAFFE and device; 1133071 (30, 35) – PRIMO CAFFE – DO YOU REMEMBER YOUR 1ST? and 1133073 (30,35) – PRIMO COFFEE - filed in the name of Primo Products Pty Ltd
AND
Re:Opposition by Primo Products Pty Ltd to registration of trade mark application 1119671 (35. 43) – CAFFE PRIMO – filed in the name of Macame Pty Ltd
Delegate: | Alison Windsor |
Representation: | Primo Products Pty Ltd: Ken McInnes of Hodgkinson McInnes Patents Macame Pty Ltd: Franco Camatta of Camatta Lempens Pty Ltd, Lawyers |
Decision: | 2009 ATMO 39 S52 opposition: 1. 1119671 – grounds under 43, 44, 58, 59 and 60 not established. Application to proceed to registration. 2. 1115819, 1133071 and 1133073 – grounds under 58, 59 and 60 not established. Applications to proceed to registration. 3. Each party to bear its own costs. |
Background
This decision involves four trade mark applications in the names of two parties – Primo Products Pty Ltd (“Primo”) and Macame Pty Ltd (“Macame”). Primo has opposed the possible registration of Macame’s application 1119671 and Macame has opposed possible registration of three applications belonging to Primo – 1118819, 1133071 and 1133073. Current details of the applications are shown in the following table:
Application No and filing date | Trade Mark | Owner | Class and Goods/Services |
| 1119671 21/06/2006 | CAFFE PRIMO | Macame | 35: Franchising consultancy and business support services including business management, sales, recruitment, advertising, documentation, administration and business development 43: Consultancy services relating to the management and operation of restaurants and cafes |
| 1115819 29/05/2006 | Primo | 30: Coffee 35: Advertising | |
| 1133071 01/09/2006 | Primo | 30: Coffee | |
| 1133073 01/09/2006 | Primo Coffee | Primo | 30: Coffee |
Following advertisements of acceptance for the applications, the relevant opponents filed notices of opposition (“the notices”). Primo filed a notice of opposition in respect of 1119671, citing grounds of opposition under the following sections of the Trade Marks Act 1995 (“the Act”): 58, 59, 60, 41, 42, 43 and 44. Macame filed notices of opposition in respect of the three Primo applications and cited the previously mentioned grounds as well as those under sections 61, 62 and 39.
Once the evidence of both parties had been filed and served, Macame asked to be heard in respect of both Primo’s opposition to its application, and its oppositions to Primo’s applications. The parties agreed prior to the hearing that all four applications should be dealt with in a single hearing. The matters came before me in my capacity as a delegate of the Registrar of Trade Marks in Canberra on 29 April 2009. At the hearing, Macame was represented by Franco Camatta of Camatta Lempens Pty Ltd lawyers, of Adelaide who attended in person. Ken McInnes of Hodgkinson McInnes Patents of Sydney represented Primo via telephone conference.
Onus and grounds of opposition pursued
Both parties accept that the onus in an opposition rests with the opponent, who is required to establish one or more of the grounds of opposition. The accepted standard of proof required is “on the balance of probabilities”[1].
[1] Pfizer Products v Karam (2006) 70 IPR 599 per Gyles J.
Neither opponent pursued all the grounds of opposition nominated on the notices. In respect of Macame’s application, Primo pursued grounds under sections 43, 44, 58, 59 and 60. In respect of Primo’s three applications, Macame pressed grounds under sections 58, 59 and 60. For completeness, I decide here that the grounds not pursued in respect of each of the applications have not been established.
Evidence and submissions
Because this matter involves what may be termed “cross oppositions”, evidence in support for one application generally forms the evidence in answer for the others. The evidence provided by the parties consists of three declarations only. For Macame, Fiorendino Antonio Vettese, sole director of the company, has provided two declarations which are effectively identical. They are:
Vettese 1 (incorporating exhibits FV1 to FV8), made 15 May 2007 as evidence in support of Macame’s opposition to the Primo applications, and
Vettese 2 (incorporating exhibits FV1 to FV8), made 5 February 2008 as evidence in answer in respect of 1119671.
Primo has provided a single declaration serving as evidence in support for its opposition to Macame’s application and evidence in answer for Macame’s oppositions to its own applications. The declaration is that of Nicola di Stefano, a director of Primo, made on 27 November 2007 and incorporating Exhibits NSD-1 to NSD-36.
Macame’s evidence
Mr Vettese attests that Macame began trading as a café/restaurant under the name CAFFE PRIMO in Tea Tree Plaza, Modbury in South Australia in April 1998, and that the business has continued trading at that site up until the present.
In 2004 Mr Vettese commenced discussions with a number of parties who were interested in operating cafe/restaurants under the CAFFE PRIMO name. Macame entered into license agreements with four independently owned businesses in 2004, and by the end of July 2007 had increased the number of licensed users of the name to over 20.[2] All the café/restaurants operate in South Australia.
[2] Exhibit FV4 to Vettese 2
The businesses have been advertised through radio and print, point of sale hand-outs and television, as well as on billboards. Paragraph 14 of the Vettese declarations also mentions national coverage for the brand on Channel Nine’s “A Current Affair” program in 2006, and Channel Seven’s “Sunrise Australia” in 2006 and 2007.
Mr Vettese states that the annual turnover estimates for the businesses amount to millions of dollars. The success of the business and a claimed growing recognition interstate resulting from visitors to South Australia, has resulted in the business being interested in moving into other states and territories of Australia. Mr Vettese says that (at the time the declarations were made) negotiations had been taking place to establish CAFFE PRIMO restaurants in New South Wales and in Victoria.
Primo’s Evidence
Mr Di Stefano states that his family has conducted a business under the name PRIMO CAFFE from some time in 1987. Between 1987 and 1990 the business roasted coffee beans, packaged them, and sold them under the name to pizzerias, cafes and delicatessens within the Sydney metropolitan area.
Primo was incorporated in 1990, and between 1990 and 1994 it started to expand its sales into Wollongong and Newcastle as well as continuing with sales in Sydney. By the end of 2005, continuing growth of the business had resulted in an expansion in the number of premises, in the number of sales staff and in additional sales offices being set up in Queensland and Victoria. Sales of coffee amount to very significant annual amounts in the millions of dollars.
Advertisements provided as part of the evidence also refer to Primo selling espresso machines and coffee brewing equipment as well as offering advice on the machines and on commercial coffee making in general, though these do not form part of the claim for these trade marks.[3]
[3] Exhibits NSD-15; NSD-16; NSD-17
Primo has provided advertising figures for a period of seven years from 2000 which show sound and increasing advertising expenditure. The company has advertised its products via various means, but perhaps its most visible means is the provision to a number of its customers of promotional material featuring the trade marks. The trade marks appear on cups and saucers, umbrellas and traffic or seating barriers designed for coffee shops and restaurants. Primo also advertises its products via print media and the internet.
Submissions
Both Mr McInnes and Mr Camatta submitted that their relevant clients had established significant reputations over a period of years in relation to certain goods and services. Both representatives, however, disputed each others claims in this respect, at least in regard to services specified in class 35. In particular, Primo’s representative, Mr McInnes, went into considerable detail about the service specification claimed by Macame for application 1119671, and given that this argument formed the bulk of his submissions, and was referred to in his submissions in respect of each of the grounds he pursued, it is appropriate that I look at this matter in some detail.
Service specifications and classification matters - 1119671
Application 1119671 claims the following services in two classes:
Class 35: Franchising consultancy and business support services including business management, sales, recruitment, advertising, documentation, administration and business development
Class 43: Consultancy services relating to the management and operation of restaurants and cafes
Mr McInnes based his arguments around three main aspects of these specifications. He submitted that:
the services claimed in class 43 did not belong in that class but should be in class 35;
the service specifications were ambiguous and vague and did not clearly specify what Macame was claiming; and
Macame did not in fact offer any of the services claimed, (as far as their scope could be ascertained).
Services in Class 43
In respect of the first matter, Mr McInnes submitted that “all consultancy services relating directly to the management or administration of a commercial undertaking are in Class 35”, quoting from Part 14, paragraph 5.2.2, of the Trade Marks Office Manual of Practice and Procedure (“the Manual”). Therefore, he said, the services claimed in class 43 were wrongly classified in that class and should be transferred to class 35.
I agree with Mr McInnes that any consultancy services relating to business matters, as envisaged by business and administration services as classified in class 35, will also be in class 35. However, there is clearly the option for consultancy services in respect of matters to do with other aspects of the management of restaurants and coffee shops to fall into other classes.
Paragraph 5.5.2 of the Manual referred to earlier begins with the following:
In general, consultancy services belong to the same class as the service or field in relation to which they are being supplied. The fact that the advice or information obtained through the service may be used for commercial or business purposes is not a relevant factor, nor is the manner in which the advice or information is supplied, for example by way of a computer database, over the internet, or over the telephone.
Consultancy service about the technical, rather than business management, aspects of managing and operating restaurants and cafes will fall into a class or classes other than 35. The Registrar has considered this matter in the past, as evidenced by the following Office Determination in class 43, dated 01/07/05: “consultancy, advisory and information services in relation to the provisions of food and drink”. I am satisfied that the services in class 43 are perhaps not worded as well as they could have been, but they are not wrongly classified.
Ambiguity and vagueness of the specifications
In respect of the second matter, Mr McInnes submitted that the scope of the term “franchising consultancy” was difficult to ascertain. He defined the term “franchising” as referring to a type of business model that covers both product and services franchises, whereby “a franchisor grants third parties the right to distribute its products techniques and trade marks in exchange for payments”. This, he said, is a well recognised process by which franchisors are able to extend the distribution of their products through the activities of third parties. This is a reasonable definition.
Referring to the term “consultancy”, he specified that the term refers to “the practice of giving expert advice within a particular field” or alternatively refers to “individuals or groups of individuals with specialized knowledge and/or skills”. This meant, he said, that the expression “franchising consultancy” must refer to “a business that provides expert advice to others for a fee in connection with the field of franchising”. He specified that this would not mean services provided by the franchisor itself, but would mean services provided by specialist lawyers or large service corporations such as Ernst and Young.
The submissions contended that Macame was not offering a “franchising consultancy” service, because it was not an “expert” as defined in the previous paragraph, and it was only offering services to members of its own organization – that is, its own licensed franchisees – rather than offering such services to other parties as a whole. Mr McInnes also pointed to the fact that the item “franchising consultancy” was unsupported by either the Nice Classification or by any trade marks office outside Australia and, given there is a separate item on the IP Australia classification listing for “franchising services”, its exact nature is even more obscure.
Mr McInnes also regarded the term “business support services” as being vague, and the items included in the specification after that term as being unclear, and not supported by the Nice Classification or IP Australia’s own classification listings.
In his submissions, Mr McInnes has taken a rather narrow definition of the term “consultancy”, restricting it to specialist lawyers and service companies. The Macquarie Dictionary[4] broadens that definition somewhat, defining “consultancy” as
1. someone who consults.
2. someone who gives professional or expert advice
[4] Macquarie Dictionary On-line, Macmillan Publishers Australia 2009
This definition incorporates the sense of the word on which Mr McInnes concentrates, but it also extends the sense away from the strictly professional company area. While a commercial operation may choose a professional consultant in the field in which they are interested, there is nothing to prevent them from using any person who has the ability, on a more casual basis, to consult with them in the field of interest. This does broaden the field of persons who may claim to offer a consultancy service in respect of many fields.
As far as Macame’s claim in class 35 is concerned, the item “franchise consultancy and business support services” is an Office Determination in class 35, dated 18 July 2000. Because it appears on the office classification database, there is no reason for an examiner to query it at the time of examining an application and it is accepted as an appropriate classification. I refer here to section 32 of the Act, which is relevant to both the classes claimed in Macame’s application and which provides the following:
If a question arises as to the class in which goods or services are comprised:
(a) that question is to be decided by the Registrar; and
(b) the decision of the Registrar is not subject to appeal and may not be called into question in an appeal or other proceedings under this Act.
Macame’s specification in class 35 contains a term decided by the Registrar as appropriate for class 35. The specification contains that term, and then specifies it further by noting some of the items Macame considers are included within the broad term – “including business management, sales, recruitment, advertising, documentation, administration and business development”. All of Macame’s specification, then, must be considered as franchising consultancy and business support services – they do not spill outside that area. Items such as “advertising” and “sales” therefore only function within the claim for “franchising and business support” – they do not stand as separate items in the broader sense allowed for within class 35.
Again, I am of the opinion that while the wording within the class 35 claim may be somewhat open to interpretation, it is not wrongly classified.
Macame’s use of the claimed services
It is clear from its evidence that Macame runs a business which may have started as a single café, but now has spread out to encompass over 20 franchised outlets. Macame is the manager of this whole franchising operation. The documentation provided clearly demonstrates that Macame itself provides various kinds of assistance, support and advice to its franchisees, which is sufficient to satisfy me that it operates as a consultancy for its franchisees. The documentation also clearly refers to its responsibilities in respect of the non-business operation of the franchised cafes, thus demonstrating use in respect of services in class 43. I am satisfied that the use Macame has demonstrated does refer to services which fall within the descriptions used in the application.
Discussion and reasons
Prior to the Hearing, and following submissions from both parties on the matter, I decided that the hearing would proceed as follows: I would hear submissions from both parties in respect of application 1119671 (Primo v Macame), after which I would hear submissions from both in respect of applications 1115819, 1133071 and 1133073 (Macame v Primo). This seems to be a logical order to discuss the matters as well.
1119671 – Caffe Primo
At the hearing Primo briefly pursued grounds under section 43, 44, 58, 59 and 60, and it is convenient for me to look at them in that order.
Section 43 – trade mark likely to deceive or cause confusion
Primo’s arguments in respect of section 43 were based around the likelihood of deception or confusion resulting from Primo’s pre-existing trade marks. It is well established law that this is not how section 43 operates.
Section 43 looks to the inherent qualities of the trade mark for which registration is being sought for the purposes of identifying whether the use of the trade mark would be likely to deceive or cause confusion.[5] Arguments in respect of another trade mark therefore do not assist in establishing a ground under this section. This ground has not been made out.
[5] Big Country Developments Pty Ltd v TGI Friday’s Inc (2000) 48 IPR 513
Section 44 – identical etc trade marks
In order to establish this ground, Primo needs to point to trade marks owned by another person which meet all of the following criteria:
they are substantially identical or deceptively similar to the applicant’s trade mark
they have an earlier priority date and
they are claiming the same or similar goods and/or services
Primo specified three of its pre-existing trade marks, shown in the following table, as fulfilling the above criteria:
| Trade Mark No and status | Trade Mark | Filing date | Goods/Services |
| 1071346 Registered | Primo Products | 23/8/2005 | Class 30: Coffee Class 35: Advertising, promotional and business administration |
| 1071432 Registered | 23/8/20005 | Class 30: Coffee Class 35: Advertising and promotional | |
| 1115819 Pending | 29/5/2006 | Class 30: Coffee |
All three of these trade marks pre-date Macame’s application.
As far as the trade marks are concerned, I am not satisfied that any of Primo’s trade marks are either substantially identical with or deceptively similar to Macame’s trade mark. On the basis of the usual tests[6] I am satisfied that there is no real tangible danger of people confusing the trade marks, taking into account all the surrounding circumstances[7]. Despite the use of the word PRIMO in all the trade marks, and the word CAFFE in two of them, the overall similarities between the trade marks are not such that circumstances other than “exceptional carelessness or stupidity”[8] would be likely to result in significant confusion. Additional graphic components in two of Primo’s trade marks, as well as the change in emphasis of the components (PRIMO being very much emphasised) in 1071432 are significant changes away from similarity. These features are strong enough to remain in the viewer’s mind and to minimize the chances of confusion.
[6] Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd ((1963) 109 CLR 407 at 414-415
[7] Registrar Of Trade Marks v Woolworths Ltd (1999) 45 IPR 411
[8] Australian Woollen Mills Ltd v F S Walker & Co Ltd (1937) 58 CLR 641at 658 per Dixon and McTiernan JJ
The plain words PRIMO PRODUCTS forming the third nominated trade mark are not sufficiently similar to CAFFE PRIMO to be likely to cause any significant confusion.
The third leg of the section 44 requirement is somewhat more difficult to determine. Primo’s class 35 claim in respect of 1071432 is for “advertising and promotional”, a rather ambiguous claim at face value – I am uncertain what is meant by the word “promotional” which seems to be an incomplete term. However, the item “advertising”, at least, is an accepted term within the Nice classification system[9]. It is also a term used within Macame’s service specification in class 35. Given my previous comments, the question is whether the two references to “advertising” are references to the same or similar services.
[9] Item A00015 in Nice Classification Version 9
Looking closely at the two references, I am satisfied that Macame’s claimed services are at least similar to those claimed by Primo. Whilst Macame is only offering services that fall within the overarching description “franchising consultancy and business support”, any advertising services within that claim still fall foul of a broad and unspecified claim for “advertising” in general. In respect of advertising services at least, the service specifications are in conflict.
This is not, however, enough to make out Primo’s ground of opposition. Despite Primo’s trade marks having earlier priority dates and there being a degree of similarity between the service claims of both parties, since I have found none of the trade marks to be substantially identical or deceptively similar, the ground under section 44 cannot be established.
Section 58 – applicant not owner of trade mark
It is now well established in law that, in order to succeed under this ground of opposition, the opponent must establish three factors. These are:
that the respective trade marks of the applicant and opponent be either identical or substantially identical [10],
that the respective services of both parties be the ‘same kind of thing’ [11]
that the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant[12].
[10] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495
[11] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75
[12] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413
As I have found that none of the trade marks Primo is relying on meet the first requirement stated above, this ground cannot be established.
Section 59 – Applicant not intending to use trade mark
To establish the ground under the provisions of section 59, the opponent must be able to satisfy the Registrar that the applicant had no intention to use, or authorise someone else to use, its trade mark in Australia in respect of the services claimed.
As pointed out by Mr McInnes at the hearing, there is a presumption of an intention to use the trade mark inherent in the act of filing an application.[13] He also contended that Macame’s evidence clearly shows that there was not any genuine intention to use the trade mark on the services claimed either at the time of filing or at any time since. He said “Indeed, we vigorously contend that the evidence, based on our interpretation of the Class 35 services claimed, does not disclose any intention to use the trade mark in respect of any services correctly classified in Class 35.”
[13] See section 27 of the Act and Aston vHarlee Manufacturing Company [1960] 103 CLR 391
In Americana International Ltd v Suyen Corporation (2008) 75 IPR 596, Hearing Officer Lyons wrote:
So the presumption the applicant enjoys of an intention to use the trade mark deriving solely from the act of filing the application is a prima facie presumption, which can be rebutted by slight evidence.
There is nothing within Primo’s evidence that serves to rebut the presumption that Macame intended to use its trade mark in respect of the services it claimed, and nothing within the evidence would have put Macame on notice that it needed to defend its intention to use its mark. Neither are Mr McInnes’ words, quoted above, sufficient to determine the matter. It is, however, clear from both Macame’s evidence and its submissions that it believes that it had and has an intention to use the mark in respect of the services it has nominated.
The service claim in class 35 – “franchise consultancy and business support services” – has been determined by the Registrar as being appropriate for class 35, despite arguably being open to interpretation. The services claimed in class 43 are services that can come into the class. In filing its application, Macame has the prima facie presumption of an intention to use its trade mark in respect of those services. The evidence it has provided demonstrates use of services which can be said to fall within the specifications claimed. Primo’s interpretation of the services claimed is irrelevant for the purpose of this exercise and it has not provided information which goes to proving Macame’s lack of intention to use its trade mark in respect of either that interpretation or any other. Therefore, it has not established the ground under section 59.
Section 60 – Trade mark similar to a trade mark with a reputation in Australia
Section 60 of the Act (as it stood at the date Macame’s application was filed[14]) is reproduced below:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
[14] See Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 80
To make out this ground, Primo is required to point to a trade mark, whether registered, pending or in common law use, which:
is either substantially identical with, or deceptively similar to, the trade mark of the application
before the priority date, had acquired a reputation in Australia; such that
use of the applicant’s trade mark would lead to deception or confusion.
Here Primo fails at the threshold, as I have decided that its trade marks are neither substantially identical nor deceptively similar to Macame’s application. This ground has not been established.
1115819 – Primo Caffe and device; 1133071 – Primo Caffe – Do you remember your 1st?; 1133073 – Primo Coffee
At the hearing, Macame pursued grounds under sections 58, 59 and 60 of the Act.
Section 58 – applicant not owner of the trade mark
The requirements for this section were noted previously at paragraph 45. Unless the opponent points to trade marks which are at least substantially identical to the applicant’s trade marks, this ground cannot be made out. The three trade marks involved here effectively mirror those Primo relied upon in its opposition to Macame’s trade mark (see table at paragraph 38).
Despite previously having argued strenuously that Macame’s trade marks were not even deceptively similar to Primo’s applications and registrations, Macame argued here that they obviously were. With respect, Macame cannot have it both ways. It is not possible to have trade marks change faces with the change of opponent and applicant.
In any event, I am satisfied that the trade marks involved do not pass the threshold of deceptive similarity, let alone approach being substantially identical. This ground of opposition has not been established.
Section 59 – Applicant not intending to use trade mark
As noted previously, this ground of opposition sets the opponent the task of proving a negative or at least of providing sufficient information that the applicant is put on notice that it must defend its intentions. Again as noted previously in the opposite scenario, there is nothing in Macame’s evidence which would have put Primo on notice that it needed to be prepared to defend its bona fides regarding intention to use.
At the hearing Macame’s representative stated that there was nothing in the evidence Primo provided which shows any use at all of any of its trade marks in respect of services in class 35. He stated that any use was in respect of advertising and promotional activities undertaken on behalf of Primo itself. Based on the evidence Primo has provided, this does indeed appear to be the case.
The apparent lack of use at the time the declarations were sworn is not, however, definitive evidence of a lack of intent to use at the time of filing[15], at the time the opposition was mounted[16] or even at the time the evidence was filed for the opposition[17]. The following comments from the Hearing Officer in Torrag Pty Ltd v Pah Pty Ltd 70 IPR 349 are, I think, relevant to this case:
However, the applicant is under no onus to demonstrate such an intention unless and until Torrag brings in evidence to support the ground in the first place.
To quote Fullagar J, in Aston v Harlee:
There is nothing in the Act or the regulations which requires (an applicant) to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.
While it would be idle to pretend that the applicant has addressed this issue, there was no obligation on it to do so. Mr Davidson noted that Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 stressed the importance of proper identification of goods and services. I agree with him. However, the importance would only arise in the event that, at some future time, the trade mark was registered and the registered owner was called on to show use of the trade mark on goods for which it is registered. For the moment, taking the evidence as a whole, the best that can be said is that there is no evidence of a positive intent to use. However, and fatally for Torrag under this ground, this is not sufficient to support an inference of lack of intent.
[15] Aston v Harlee Manufacturing Co (1960) 103 CLR 391
[16] Sapient Australia Pty Ltd & Sapient Corporation v SAPAktiengesellschaft [2002] ATMO 31
[17] American International Limited v Suyen Corporation
Despite Primo not having demonstrated any obvious use on class 35 services within the evidence it provided, this does not make any reference to what its intent was at any of the stages mentioned above. This ground of opposition has not been established.
Section 60 – Trade mark similar to a trade mark with a reputation in Australia
As noted above, this ground will not be established unless the trade marks under consideration are at least deceptively similar. I have found that Primo’s three trade marks are neither substantially identical nor deceptively similar to Macame’s CAFFE PRIMO trade mark. The ground of opposition thus fails at the threshold.
Decision
it is my decision that none of the oppositions mounted in respect of the four trade marks subject of this matter have been established. Therefore, application 1119671 in the name of Macame Pty Ltd and applications 1115819, 1133071 and 1133073 in the name of Primo Products Pty Ltd may all proceed to registration 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 unless the appeal is discontinued or registration is otherwise ordered by the court.
Costs
Each party requested its costs in respect of the oppositions they pursued. However, as both parties have had a measure of success, despite neither making out their oppositions, I consider it appropriate that they each bear their own costs.
Alison Windsor
Hearings Officer
Trade Marks and Designs Hearings
5 June 2009
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Res Judicata
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