No Name Restaurants (Cesare) Pty Ltd v No Name Restuarants Pty Limited

[1996] ATMO 63

TRADE MARKS ACT 1955

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

Re:      Opposition by NO NAME RESTAURANTS PTY LIMITED to the    registration of trade mark application number 659047 in the name of
           NO NAME RESTAURANTS (CESARE) PTY LTD

As set down by the transitional provisions of Part 22 of the Trade Marks Act 1995, the provisions of the Trade Marks Act 1955 continue to govern this opposition.  Accordingly, unless otherwise specified, the authority I refer to is the Trade Marks Act 1955.

Background
Application number 659047 was lodged on 20th April 1995 in the name of NO NAME RESTAURANTS (CESARE) PTY LTD (the applicant). The application was for registration of the mark NO NAMES for a statement of services subsequently amended to read, “Restaurant services”, in class 42. The mark was accepted under the provisions of sub-section 24(2) and sub-section 34(1) of the Act with a condition that registration of the mark was limited to the State of New South Wales. Acceptance of the mark was advertised in the Official Journal of Trade Marks of 11th January 1996.

Notice of opposition to the mark’s registration was lodged on 11th April 1996 by NO NAME RESTAURANTS PTY LIMITED (the opponent).

Grounds of opposition:

(a)   We are the proprietors of the earlier conflicting application number 561568      dated 13 August 1991 for registration of the trade mark No Names and we      would be aggrieved by the registration of No Names as a trade mark by the            applicant.

(b)   The applicant has an invalid claim to proprietorship of the trade mark No         Names.

(c)   The use of the trade mark No Names by the applicant would be an infraction    of the rights acquired by us pursuant to our use of the trade mark No Names     and would enable the applicant to pass off its services as ours.

(d)   Registration of No Names as a trade mark by the applicant would be    contrary to law and public interest.

(e)   The use by the applicant of the trade mark No Names would be likely to          deceive.

(f)    The use by the applicant of the trade mark No Names would be likely to          cause confusion.

(g)   The trade mark No Names is not distinctive of the applicant’s services.

(h)   The applicant has not used the trade mark No Names in such a way as to        enable it to acquire distinctiveness in relation to the applicant’s services.

1. Registration of the trade mark No Names should be refused to the applicant      as it is not clear that deception and/or confusion will not arise and the onus to show this is on the applicant and has not been discharged.

(j)    Registration of the trade mark No Names should be refused to the applicant      as it is not clear that there has been honest concurrent use or other special circumstances and the onus to show this is on the applicant and has not been           discharged.

(k)   The applicant’s conduct and actions in relation to the trade mark No Names     have disentitled them to any rights in the trade mark No Names. 

(l)    By reason of the matters set forth in any one or more of the foregoing    paragraphs the Registrar in the exercise of his discretion ought to refuse the             application for registration.

(m)  By reason of the matters set forth in any one or more of the foregoing    paragraphs the Registrar in the exercise of his discretion ought if the Registrar sees fit to allow the application to proceed to registration make          the application subject to such conditions and limitations as the Registrar           sees fit including a territorial restriction to the applicant’s present business       location and that the applicant’s name appears in conjunction with the mark.

(n)   Such other grounds as the Registrar of Trade Marks or a Court, on appeal,      may see fit to allow.

The evidence
The service and lodgement of the evidence in support, evidence in answer, and evidence in reply in the matter were completed by 5th September 1996.  The evidence comprises:
Evidence in support

Statutory declaration by Lisa Scandiuzzo, dated 8th July 1996, with the following copies of exhibits:

Affidavit by Cesare Masci, dated 25th January 1996
Affidavit by James Patrick Pope, dated 12th February 1996
Affidavit by Carlo Colangioli, dated 15th November 1995
Affidavit by Michele Scandiuzzo, dated 15th November 1995
Affidavit by Guiseppe Pellegrino, dated 28th October 1995
Affidavit by Mario Mura, dated 14th November 1995
Affidavit by Cesare Masci, dated 19th October 1995
Affidavit by Cesare Masci, dated 18th September 1995
Affidavit by Francesco Masci, dated 18th May 1995
Unsworn document titled “Respondent’s Contentions”, dated 16th October 1995
Unsworn document titled “Applicant’s Contentions”, dated 13th October 1995
Document titled “Notice of Motion”, dated 8th August 1995
Document titled “Not for General Distribution”, being a five page summary of Justice Burchett’s reasons for Judgement in proceedings No G267 of 1995
Document titled “Notice of Motion”, dated 30th May 1995
Document titled “Notice of Motion”, dated 23rd May 1995
Document titled “Notice of Appeal”, dated 24th April 1995.     

Evidence in Answer

Copies of:

Affidavit by Cesare Masci, dated 25th January 1996
Affidavit by James Patrick Pope, dated 12th February, 1996
Affidavit by Carlo Colangioli, dated 15th November, 1995
Affidavit by Michele Scandiuzzo, dated 15th November, 1995
Affidavit by Lisa Scandiuzzo, dated 15th November, 1995
Affidavit by Giuseppe Pellegrino, dated 28th October, 1995
Affidavit by Mario Mura, dated 14th November, 1995
Affidavit by Cesare Masci, dated 19th October, 1995
Affidavit by Cesare Masci, dated 18th September, 1995
Document titled “Notice of Motion”, dated 8th August 1995
Document titled “Not for General Distribution”, being five page summary of Justice Burchett’s reasons for Judgement in proceedings No G267 of 1995
Document titled “Notice of Motion”, dated 30th May 1995
Document titled “Notice of Motion”, dated 23rd May 1995
Affidavit by Francesco Masci, dated 18th May 1995
Document titled “Notice of Appeal, dated 24th April 1995.

Evidence in Reply

Copy of:

Statutory declaration by Frank Masci with exhibits A-F, dated 14th December, 1993.

Lisa Scandiuzzo, who is a director of the opponent company and whose declaration with the attached exhibits constitutes the evidence in support, states in her declaration that she is relying on the documents filed in the proceedings in the Federal Court of Australia, number G267 of 1995.  Those proceedings are an appeal from the decision by a delegate of the Registrar of Trade Marks, dated 3rd April 1995, to allow trade mark application number 561568 to proceed to registration in the name of the opponent.  The copies of those documents have not been marked by the declarant in consecutive order, therefore I will refer to the copies by the name of the deponents of the affidavits and the titles of the document as indicated above.

The applicant has also lodged copies of documents filed in the same court proceedings as its evidence in answer.

The matter was set down before me, as the Registrar’s delegate, for hearing in Sydney on 18th October 1996.  The opponent was represented at the hearing by Mr Edward Mura, solicitor, of Hillman Mura & Consultants Solicitors.  Appearing for the applicant was Ms Julia Baird, of Counsel, instructed by Mr Michael Kirov, solicitor, of Spruson & Feguson, patent and trade mark attorneys. 

Submissions
In opening his submissions, Mr Mura said that registration of the applicant’s mark should be refused on the basis that the applicant had no entitlement to the mark and further, the applicant had not traded under the subject mark.  Having briefly discussed the circumstances surrounding the opponent’s application 561568, which is currently before the Federal Court, on appeal from the decision of the Registrar, Mr Mura contended that the applicant had now shifted its ground in relation to its evidence and therefore the credibility of the applicant’s evidence had to be put into question, i.e. the applicant had taken a different point of view in relation to the facts surrounding the transfer of the business.  The opponent submits, he said, that in 1988, the whole business, then a partnership with assets, including the subject trade mark, was sold to the company No Name Restaurants Pty Ltd, (the current opponent), but the legal entity of the company was the successor in title to the original partnership and all rights passed to the company.  In 1989, as a result of certain directors leaving the company, only limited rights went across to the applicant.  There was no continuity of the former members of the partnership trading under the name between the years 1988 and 1989.  The continuity was only through the company which was the only entity trading during that period.  Mr Mura maintained that the evidence in fact did not support that any former members had any capacity to trade during the period 1988 and 1989, and that in 1989 the only rights given to the applicant were limited rights to trading in the mark, subject to variation, addition or qualification in relation to the mark.  That was a limited right given to the applicant from the entity which had acquired all rights in the mark.  In support, Mr Mura referred to Mr Frank Masci’s statutory declaration of 11th December 1993 and the minutes of the meeting of the directors of No Names (sic) Restaurants Pty Limited of 20th November 1989.

A change in the applicant’s position from that in the previous proceedings becomes evident, Mr Mura continued, in the statements by Mr Cesare Masci in the affidavit of 18th September 1995 which differ from the statements of Frank Masci in the declaration of 14th December 1993.  Having referred to Mr Mario Mura’s affidavit and the figures in the copies of the attached partnership tax returns, Mr Mura argued that the final return for the year ending 30th June 1989 clearly indicated that there was cessation of business of the partnership five months in the year 1989.  Contrary to the applicant’s implications as to continuity of the partnership, the opponent ran the whole of the business and had all of the goodwill from 1st December 1988 to November 1989, as demonstrated by the tax returns, he said.  The lack of continuity in the partnership, according to Mr Mura, was further illustrated by the statements in Mr Pellegrino’s affidavit, who states he had clear recollection of the directors’ meeting of 20th November 1989 when Mr Cesare Masci had said words to the effect: “After we separate, I will use the name Cesare’s No Name” and had been asked by Mr Cesare Masci to make a sign for the Glebe restaurant reflecting his decision so that it would be known as Cesare’s No Name restaurant.  In relation to this matter Mr Mura produced at the hearing a photograph of the alleged sign and also referred to the exhibits A and B annexed to Mr Colangioli’s affidavit of 15th November, 1995, i.e. a copy of an advertisement and copies of White Pages of 1994 and 1995 Telephone Directories.  

Turning to Mr Cesare Masci’s affidavits of 18th September 1995 and 25th January 1996, Mr Mura directed my attention to Mr Masci’s version of his words said at the directors’ meeting of 20th November, 1989.  Those words, he said, do not correspond to the words uttered by Mr Cesare Masci, as recollected by Messrs Pellegrino, Scandiuzzo and Colangioli, according to their affidavits and the instructions given to the accountant, Mr Mario Mura, namely, that the new company was to include the name “Cesare”, and that he wanted to be completely independent of the opponent’s continuing business.  Mr Mura stressed that the partnership did not retain any rights and secondly, if Mr Cesare Masci purported to rely on the meeting of 20th November 1989, then he was giving inconsistent evidence as to his rights.  Mr Mura also pointed out that Mr Cesare Masci refers to the sale of the business as between himself and Mr Carlo Colangioli, ignoring the fact that the partnership consisted of eight persons of whom at least five, as well as an independent accountant, claim to have retained rights in the mark. 

In support of his contention in relation to the applicant’s intention to use the mark “Cesare’s No Names”, Mr Mura cited four applications for registration of marks which include the words “Cesare’s” and “No Names”, or comprise the words “Cesare’s No Names”. 

Ms Baird first observed that Mr Mura had not addressed each of the grounds in the notice of opposition, therefore she intended to concentrate of what she understood to be the grounds upon which the opponent’s submissions had been made. She then noted that the evidence in the present opposition comprised, in the main, affidavits filed in an appeal from a decision of a delegate of the Registrar. She reminded me that, while the issues concerning the appeal before the Federal Court were intertwined in many respects, as the present application had been accepted under the provisions of sub-section 34(1) of the Trade Marks Act 1955, there were also other separate matters to be considered in the current proceedings.  Given that the documents in support of the opposition appeared to have been photocopied from the material filed to the Federal Court, Ms Baird objected to the material which was not on affidavits and asked that it be given no probative weight.  She explained that, in the evidence in answer, the applicant had relied only on the affidavits which it had filed in the Federal Court. 

In relation to the argument about the opponent being a successor in title, Ms Baird responded that the applicant was not disputing that the opponent was, in fact, a successor in title to some of the goodwill and to some of the business that had been carried on by the partnership.  The applicant contended, however, that it also was a successor in title, having a line of proprietorship going back to the common law mark and continuing use through to the present.  Whether one looked at the assertions of the applicant or those of the opponent, Ms Baird submitted, it was clear that originally the business was brought into existence by Mr Cesare Masci and certain partners.  Mr Masci had been the chef, and one of the original partners, from 1955, of the business that became known as NO NAMES.  In May 1985, the partners opened a second NO NAMES restaurant in Glebe where Mr Masci continued his work as a chef.  The licensee of the Friend in Hand Hotel, where the restaurant was located, was responsible for the advertising and promotion of the restaurant.  In this regard, Ms Baird referred to the promotional material annexed as exhibit F to Mr Cesare Masci’s affidavit of 19th October 1995, commenting that the words “No Names” appear as an “identifier” of what was at that stage a common law mark.  Of the photographs annexed to Mr Pope’s declaration, which show internal and external boards and signage, only one of those photographs bears the word “Cesare”.  In that photograph, the mark NO NAMES, she said, appears within the Italian flag and separately from the word “Cesare” so as to identify the name of the chef.  Consistent with the agreement on the separation of the parties, the business had continued to operate under the name previously owned and promoted by the partnership.  It was important to note, she said, that since 1989 neither the applicant nor the opponent controlled each other, but the mark was used by the applicant as well as the opponent. 

Consistent with the concurrent user, Ms Baird continued, there had been no complaints in the opponent’s evidence about the applicant’s use of the mark.  She cited the words of Lord Diplock in “GE” Trade Mark [1973] RPC 297 at p 326 as encapsulating the present situation of the two parties, emphasizing that they were both successors to a business formerly carried on in relation to both premises. Under the agreement of 20th November 1989, the businesses and the goodwill in those businesses were divided, resulting in a continuation of separate rights to use the name NO NAMES, as indicated in the the minutes of the meeting, where there is no mention of a restriction. Those minutes, Ms Baird stressed, were the only independent document.

Discussing the extent and duration of use of the mark, which is one of the factors required for establishing a case in terms of sub-section 34(1), Ms Baird stated that the volume of trade over the period of time had been substantial, as demonstrated in the annexures A-F of Mr Cesare Masci’s affidavit of 19th October, 1995, consequently, a business of significant and commercial value had been built up. That business was identified by the trade mark NO NAMES. In addition, she said, Mr Frank Masci in his declaration of 14th December 1993 describes what use has been made of the trade mark.

On the relative inconvenience, Ms Baird submitted that the applicant had established considerable reputation and goodwill in the trade mark.  It had used the mark in a bona fide way further to the arrangements reached upon the division of the business in 1989, and the applicant and opponent had co-existed independently since 1989.  The opponent had not established any serious disadvantage if the applicant’s mark were to the registered, whilst the applicant, on the other hand, would be seriously disadvantaged by not being able to obtain the registration.

Ms Baird further noted that no instances of confusion had been raised by the opponent, nor had any likelihood of confusion been asserted in the opponent’s evidence. In this regard, she stressed that sub-section 34(1) was not limited to instances where there was only marginal likelihood of confusion but also to marks which were substantially identical or deceptively similar (Alex Pirie and Sons Ltd’s Appn [1932] 49 RPC 195; [1933] 50 RPC 147 and Canon Kabushiki Kaisha v Brook and Another [t/a Cannon Watch Company] 30 IPR 525).

In relation to “other special circumstances”, Ms Baird submitted that the meeting of 20th November 1989, the acquiescence on the division of the business and the continuation of the business in the two premises were matters which comprised such circumstances within sub-section 34(1). Noting that the opponent had relied on s 33 as one of the grounds of opposition, she pointed out that the very basis of sub-section 34(1) was to override objections of that nature.

Moving on to the grounds of opposition in terms of s 28, Ms Baird said that, although these grounds had not been addressed separately by Mr Mura, the applicant contended that, in the circumstances described previously, there could be no suggestion that the applicant had engaged in blameworthy conduct (Titan Manufacturing Co v John Terrence Coyne 22 IPR 613). To the extent to which the opponent based its case on any allegations of passing off and s 52 of the Trade Practices Act, these were matters for the Courts rather than for the Registrar’s determination.  

Considering the issue of proprietorship, Ms Baird said that her submissions had been incorporated in what she had already stated in relation to the sub-section 34(1) matter, namely, that the applicant was a clear successor in title and in business to the partnership. Even accepting Mr Mura’s assertions that the business rolled into the opponent company, it was obvious that the two businesses were later separated with the change of shareholdings. According to the minutes of the 20th November 1989 meeting, the business of the restaurant in Glebe and all that went with it were transferred back to the company to be formed by the applicant company’s directors as they were the promoters or incorporators. From the transfer of the shares and the resolution at the meeting it was clear that the No Name restaurants would be operated separately. The tax records show, she said, that there has been goodwill for the value of the business and reputation built up with its turnover.

Ms Baird further commented on the matters of acquiescence and estoppel. By the opponent’s conduct in 1989 and since that date, it had acquiesced in the applicant’s continued use of the trade mark, as evidenced by the photographs and articles over a period of time, which meant that the opponent was not in a position to turn around and to oppose in a bona fide way the present application accepted under the provisions of sub-section 34(1). The opponent, she continued, having induced the promoters of the applicant to assume that the applicant could independently operate what is now the applicant’s business and use the trade mark as it wished, knowing or intending that the applicant so act on that assumption, and thereby inducing the transfers of shares and other financial consequences, was, as a matter of fact and law, estopped from now disputing the applicant’s entitlement to the mark in the terms on which it had been accepted for registration.

The applicant sought costs in the usual manner.

Discussion
The opponent and the applicant concentrated primarily on the grounds of opposition based on s 33, that the applicant’s mark was in conflict with a mark of the opponent’s earlier application; on s 34, that the applicant had failed to show honest concurrent use or special circumstances; on s 28, that use of the mark of the present application would be likely to cause deception and confusion, that its use would be contrary to law, and that the mark would not be entitled to protection in a court of justice, namely: paragraphs (a), (b) and (d), respectively; and on s 40, that the applicant was not the proprietor of the mark.  I propose to discuss these grounds in turn.

Sections 33 and 34
There is no question that, in terms of s 33 of the Act, the opponent’s mark NO NAMES of application number 561568, in respect of “restaurant services, none providing take away food or drink”, which was advertised accepted for registration in the Official Journal of Trade Marks of 17th December 1992, and which is now subject to an appeal in the Federal Court, is identical with the subject mark and covers the same services as those of the present application.  Both applications have been accepted on condition that the registration of the marks is to be limited to the State of New South Wales.

Sub-section 34(1) of the Act provides that:

34.(1)         In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, the Registrar may permit the registration of trade marks which are substantially identical or deceptively similar, or, but for the honest concurrent use or other special circumstances would be deceptively similar, for the same goods or services or other goods or services, by more that 1 proprietor subject to such conditions and limitations (if any) as the Registrar imposes.

The criteria for establishing a case in terms of sub-s 34(1), based on the decision of the House of Lords in Alex Pirie & Sons Ltd’s Appn, supra, have been summarised in John Fitton & Co Ltd’s Appn, (1949) 66 RPC 110, at p 112, as:

1. the quantum of concurrent user shown by the applicant having regard to   the duration, area, and volume of trade and to the goods concerned,

1. the degree of confusion likely to ensue from the resemblance of the       applicant’s and opponent’s marks, which is to a large extent indicative of        the measure of public inconvenience,

1. the honesty of the concurrent user,

(4) whether any instances of confusion have in fact been proved and

1. the relative inconvenience which would be caused to the parties if the    applicant’s mark should be registered.

Before considering the first of the above criteria, it will be necessary to set out briefly the events that took place before the meeting of 20th November 1989 which involved the present opponent and the applicant. 

According to Mr Cesare Masci’s affidavit of 18th September 1995, Mr Masci who, with two other persons, had commenced operating a restaurant business on 22nd April 1955 at 2 Chapel Street, East Sydney, opened and, with the assistance of two family members, managed another restaurant at the Friend in Hand Hotel, 58 Cowper Street, Glebe, from May 1985, while the East Sydney restaurant was continued to be operated by Mr Masci’s partner, Mr Carlo Colangioli, with members of Mr Colangioli’s family.

Between 1984 and 1986 the Masci/Colangioli partnership was expanded to include the partners’ spouses, children and the children’s spouses.  Partnership returns for the business continued to be prepared until the year ending 30th June 1989 and copies of the returns are annexed to Mr Cesare Masci’s said affidavit.

Mr Mario Mura, the partnership’s accountant, deposes that in 1988 he had been instructed to purchase a shelf company for the purposes of purchasing the whole of the business from the partnership. This occurred in late 1988.  The representatives of the Masci and Colangioli families were appointed as directors of the company, and the company’s name was changed to No Name Restaurant Pty Limited.  On 3rd November 1989, the applicant was incorporated under the name Zamosign Pty Ltd and subsequently changed its name to No Name Restaurants (Cesare) Pty Limited, the directors being Cesare Masci, Luciana Masci and Guiseppe Pellegrino (until 14th April 1994), as evidenced by the annexures to Mr Francesco Masci’s affidavit of 18th May 1995.  The applicant maintains that, since it commenced to operate its restaurant at Glebe, it has continuous use of the trade mark NO NAMES.

Following the meeting of 20th November 1989, it was decided that the businesses carried out at Chapel Street and Glebe were to be operated separately and independently.  I will return to the minutes of the meeting in my discussion in relation to honesty of the concurrent user.

I now turn to discussing the five factors to be considered in relation to honest concurrent user set out in John Fitton, supra.

(1) For the extent and volume of use of the mark NO NAMES the applicant has relied on Mr Cesare Masci’s affidavits of 18th September and 19th October 1995.  Exhibits attached to Mr Masci’s latter affidavit, as evidence of promotional material which was organized by the licensee of the Friend in Hand Hotel, contain copies of photographs showing the words NO NAMES displayed on the back of a delivery van.  These words, in conjunction with “Spaghetti Glebe” exhibited on what I understand to be a tricolour flag device, also appear on the sides of the van.  In the photographs of the signs outside the hotel and on a blackboard menu, the words NO NAMES are displayed separately or together with other matter on the background of a device resembling a flag.  In the sign in dispute, purported to have been made by Mr Pellegrino, the words NO NAMES - which again are displayed on the device of a flag with the word “Glebe” placed underneath the device - are located separately on the right of the sign, whereas the words “Welcome to Cesare”, in a different typeface, occupy the left side of the sign. 

The advertisement relied upon by the opponent in relation to the applicant’s use of the mark depicts the words NO NAMES in striking, bold upper case letters with a different typeface description, “The World Famous Friend in Hand Pub Home of ... Caesars”, placed above those words. 

After some contemplation, I cannot but agree with the applicant’s contention that neither the sign nor the advertisement would be perceived as representing use of the mark “Cesare’s No Names”, given the location, the different size of the letters, and the context of the words “Cesare” and “Caesars”, respectively. 

Six other newspaper advertisements or articles attached to Mr Cesare Masci’s affidavit refer to the Glebe restaurant as NO NAMES, but only one, which describes the restaurant as “The No Names”, is clearly dated as 2nd May 1990.  However, while the article from ‘The Good Life’ does not bear a date, the words “Founder of the original No Names at Darlinghurst 37 years ago, Cesare Masci has been running the kitchen at the Friend in Hand for seven years” would indicate the article as dating back to 1992.  This article identifies the restaurant as NO NAMES. 

Since early 1989, Mr Masci states, the restaurant has served in excess of five hundred customers per week.  During the late 1980’s, the owner of the hotel had removed a section of the bar to expand the restaurant and glassed in a courtyard so that the restaurant could serve in excess of seventy patrons at over twenty-five tables.  It was open six days a week for lunch and dinner, and for dinner only on Sundays. The applicant’s tax returns over the years 1990 to 1994 reflect the popularity of the business, the turnover being $1,786,216.95, therefore the applicant’s restaurant services over that period have attained considerable commercial value, given that it operated its business only in one restaurant near Sydney. 

In my estimation then, the mark NO NAMES has enjoyed quite extensive reputation in respect of restaurant services while being used concurrently with the opponent’s mark.   

(2) In view of both marks under consideration being identical and the applications seeking registration of the marks for the same services, as already indicated, the degree of confusion to ensue from use of these marks is extremely high.  However, in relation to s 21 of the Trade Marks Acts 1905 and 1919 of United Kingdom, which equates with sub-section 34(1) of the Trade Marks Act 1955 in Australia, Lord Hanworth stated in Pirie’s Application, supra, at p 213:

“I find that Section 21 is a Section which does not carry with it a limitation as to there being a slight possibility of deception, for its words indicate that the Registrar may permit the registration of the same trade mark, or of nearly identical trade marks, for the same goods by more than one proprietor.  It seems to indicate that the powers of the Court can be exercised even when there is likely to be confusion between the marks.”

And in “Buler” Trade Mark [1975] RPC 275, Graham J expressed the view, at p 289:

“In my judgment, however, as seems clear from Pirie’s case and other cases, the degree of likely confusion is relatively unimportant under section 12(2) provided the honesty of the applicant is established and it is otherwise just in all the circumstances that his mark should be registered.”

The opponent did not press the issue of the likelihood of confusion, but, having regard to the principles expressed by their Honours and the applicant’s sufficiently impressive use of the mark NO NAMES, I do not regard this issue as critical. 

(3) While, from the annexures of Mr Cesare Masci’s affidavit of 19th October 1995, I note the inclusion of $50,000 goodwill under the item “assets”, which appears in every applicant’s balance sheet for the years from 1989 to the end of June 1994, i.e. since the applicant severed its business ties with the opponent after the 20th November 1989 resolution, in the absence of any concrete evidence, I am unable to determine whether that goodwill includes the mark NO NAMES. 

The meeting of 20th November 1989 was conducted in Italian.  The record of the minutes of the directors of No Name Restaurant Pty Limited has been produced in English, a copy of which is annexed to several affidavits or statutory declarations in the opponent’s and applicant’s evidence.  The minutes state that it was decided to transfer the shares of Cesare and Luciana Masci and Guiseppe and Ornella Pellegrino, all of whom were to resign as directors from the close of the meeting, to Carlo and Maria Colangioli and Michele and Lisa Scandiuzzo.  It was resolved that the two businesses were to be operated completely independently, namely, the restaurant at Chapel Street, East Sydney, under No Name Restaurant Pty Limited, and the restaurant at Glebe to be run by a company to be formed by the retiring directors.  It was further resolved that consent be given under the company’s seal that the retiring directors were “at liberty to use the name No Name Restaurant Pty Limited as they wish”.  No mention is made in the minutes of the trade mark NO NAMES. 

While it is true that Mr Cesare Masci has created inconsistencies in the statements of his affidavits by first saying that he will use the name “No Names” however he wished (affidavit of 18th September 1995), which, in his latter affidavit of 25th January 1996, was changed to the effect that, after the separation of the business, he will use the name “Cesare’s No Names” if the other party uses “Carlo’s No Names”, a statement which contradicts the recollection of the meeting of 20th November 1989 by Messrs Colangioli, Scandiuzzo and Pellegrino, that Mr Masci had actually said words to the effect: “After we separate I will use the name Cesare’s No Name”, no conclusive evidence has been produced by the opponent to substantiate the allegation that the applicant did, in fact, carry on business under the name “Cesare’s No Names”.  As evidence of Mr Pellegrino’s recollection of Mr Masci’s words, the opponent relies on a sign he had been asked to make for the Glebe restaurant to which I have already referred.  From the photographs which were produced at the hearing by both Mr Mura and Ms Baird, it is not possible to draw a conclusion that the name of the restaurant had been changed to “Cesare’s No Names” for the reasons I have outlined earlier.     

Messrs Colangioli and Scandiuzzo claim in their affidavits that, as far as they are aware, the business at Glebe became known as “Cesare No Name” as “various clients of the respondent [opponent] said they had been to Cesare No Name at Glebe”, but the only evidence to support their allegations appears to be an advertisement identical to that which is attached to Mr Cesare Masci’s affidavit of 19th October 1995 where, as I see it, the mark is featured as NO NAMES rather than “Cesare’s No Names”, as discussed under item (1) above.  They also refer to copies of the entries in the White Pages Telephone Directories of 1994 and 1995 affixed to their affidavits, where the Chapel Street restaurant is listed under “No Name Restaurant” and the restaurant in Glebe appears under the entry “No Names (Cesares The Original)”.  These entries, I believe, illustrate and conform with Mr Cesare Masci’s desire to clearly distinguish the two restaurants, as expressed by Mr Pellegrino in para 8 of his affidavit: “I know from previous discussions with Cesare Masci that he wanted to be completely independent of the respondent’s [opponent’s] continuing business and wanted to ensure that customers of the respondent [opponent] could distinguish between the respondent’s [opponent’s] remaining restaurant and his restaurant”.  Similarly, Mr Mario Mura relates in his affidavit, para 11, that Mr Cesare Masci had expressed a wish for his name “Cesare” to be included in the name of the new company to be formed after the separation of the parties in 1989.  The entries in the telephone directories do not demonstrate trade mark use. 

None of the four now lapsed applications numbers 581755, 583989, 583990 and 595402, which were utilized by the opponent in its argument on the applicant’s use or intended use the mark “Cesare’s No Names”, was lodged in the name of the present applicant, hence I give no weight to those applications. 

Whilst conceding the inconsistencies of Mr Cesare Masci’s own statements in his affidavits and the contradictory recollection of his words said at the crucial meeting of 20th November 1989 by those present, I have concluded that, on the material before me, concurrent use of the mark NO NAMES by the applicant has been honest.  Had there been a clear decision at the meeting that the restaurant at Glebe was to assume the name “Cesar’s No Names”, such a significant resolution would have been included in the minutes of that meeting.  In my opinion, the conflict which has arisen in relation to use of the mark could be explained by a confusion of the applicant company’s name with the name of the trade mark.

(4) As the opponent did not raise any instances of confusion of the marks, I do not propose to make any comments on this issue.

(5) The opponent’s and the applicant’s restaurants have operated concurrently and independently under the marks NO NAMES since 1989.  The mark, which has been associated with the applicant well before 1989 through its continued use, has achieved reputation and goodwill, as demonstrated by the applicant’s evidence.  While no serious disadvantage has been established by the opponent, should the subject mark be allowed to proceed to registration, in the event of the applicant being denied registration of its mark, it would, inevitably, face serious inconvenience by losing the valuable accumulated goodwill and the necessity to adopt another trade mark.  Consequently, the factor of relative inconvenience weighs in favour of the applicant.

Section 28 - deception and confusion
The provisions of this section of the Act read:

A mark -
(a) the use of which would be likely to deceive or cause confusion;
(b) the use of which would be contrary to law;
(c) which comprises or contains scandalous matter; or
(d) which would otherwise be not entitled to protection in a court of justice,
shall not be registered as a trade mark.

In Australian Law of Trade Marks and Passing Off, 2nd edition, by D R Shanahan, the author explains, at p 201:

“... it has generally been assumed that s. 34(1) must override s. 28, if not by the application of Lord Diplock’s reasoning in “GE” [(1973) RPC 297], then simply on the basis that s. 28 must be read in its statutory context and should therefore be regarded as subject to the exception provided by s. 34(1).”

The Registrar’s practice set out in the Official Journal of Trade Marks of 12th September 1991, that para 28(a) is limited by the requirement of “blameworthy” conduct on the part of the proprietor of the mark, has recently been endorsed by Tamberlin J of the Federal Court in an unpublished decision Cannon Kabushiki Kaisha v Robert James Brook and Rachel Brook trading as The Cannon Watch Company.  On this point, it will be clear from my conclusions in relation to honest concurrent use of the mark, that I do not find any improper conduct for which the applicant could be said to be responsible before or after the meeting of November 1989.

Proprietorship - section 40
In Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 1987 10 IPR 402, McGarvie J explained the concept of proprietorship, at p 413:

“The basic common law principle is that the first person who uses a trade mark of an appropriate type within a country becomes the proprietor of the mark there: Re Registered Trade Mark “Yanx”; Ex parte Amalgamated Tobacco Corp Ltd (1951) 82 CLR 199 at 203: Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 at 603; Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 59 ALJR 77 at 83. A person who becomes proprietor of a trade mark in this way is entitled at common law to restrain a person who later commences to use the trade mark .”
...
In considering who, within s 40(1) of the Act, was at the time of Settef’s application for registration the proprietor of the trade mark, one considers who at common law was the proprietor in Australia: The Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 at 625 and 627. Settef claims to be the first person to have used the trade mark in Australia and therefore to have been proprietor at common law in Australia.”

In order to determine proprietorship in a mark (except in cases where there has not been any use of the mark), a person must therefore demonstrate first use in Australia.  The use of the mark must be shown to be for the purpose of indicating, or so as to indicate, a connection in the course of trade between the services specified in the application and the persons concerned (see s 6 of the Act and W D & H O Wills (Australia) Pty Ltd v Rothmans Ltd [1956] 94 CLR 182 and Estex Clothing Manufacturing Pty Ltd v Ellis & Goldstein Ltd [1967] 116 CLR 254).

Mr Cesare Masci deposes in his affidavit of 18th September 1995 that, from the early 1960’s, non-Italian speaking customers referred to the restaurant in East Sydney, which then was operated by himself and Natale Robibaro, as “No Names”.  “Eventually through the years the Restaurant was referred to as No Names by practically everyone”.  In about 1964, Mr Cesare Masci says, Mr Robibaro’s half share was bought by Mr Carlo Colangioli, who then operated the business with Mr Masci.  The name of the restaurant was not changed.

Mr Masci has continued using the name in the Glebe restaurant from May 1985 while in partnership, as a director of the company No Name Restaurants Pty Limited up to November 1989 and, according to the material available and assessed by me previously, he has continued its use since that time.  These statements are supported by the Francesco Masci’s affidavits of 14th December 1993 and 18th May 1995 and have not been disputed by the opponent. 

Taking the evidence as a whole, I have concluded that the applicant is either the proprietor or is entitled to be registered as honest concurrent user.   

Concerning acquiescence and estoppel submitted by the applicant at the hearing, as such matters are outside the Registrar’s competence, I am not in a position to decide the issue. 

Conclusion
Having considered the relevant criteria in relation to sub-section 34(1) of the Act, I am satisfied that the applicant’s trade mark qualifies for registration under those provisions, subject to the geographical limitation entered on the application. I do not find there is any reason for imposing further limitations or restrictions, as a condition of registration of the mark. Similarly, the opponent has not succeeded in making out a case based on the other grounds in the notice of opposition. Consequently, I dismiss the opposition. I award costs to the trade mark applicant.

Vija Zars
Hearing Officer
16 December 1996