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Notaras v Barcelona Pty Limited

Notaras v Barcelona Pty Limited

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FEDERAL COURT OF AUSTRALIA
Notaras v Barcelona Pty Limited [2019] FCA 4

Appeal from: Irene Notaras v Barcelona Pty Limited [2018] ATMO 12

File number: NSD 215 of 2018

Judge: ROBERTSON J

Date of judgment: 10 January 2019

Catchwords: TRADE MARKS – appeal from decision of delegate of the Registrar of Trade Marks – delegate held that appellant had failed to establish any of her grounds of opposition and that the respondent’s trade mark application could proceed to registration – appellant’s registered ATOMIC Word Mark in respect of coffee machines – appellant’s registered ATOMIC Device Mark in respect of stove top coffee makers – respondent’s application for registration of ATOMIC in respect of goods, including coffee cups, coffee, coffee beans, ground coffee and in respect of services, including retailing and wholesaling of coffee, coffee grinding, coffee roasting and cafes – whether respondent not the owner of the trade mark for the purposes of s 58 of the Trade Marks Act 1995 (Cth) – whether appellant abandoned property in common law trade mark – whether respondent’s trade mark substantially identical with, or deceptively similar to, appellant’s trade mark in respect of similar goods, being goods of the same description for the purposes of s 44 – whether respondent’s trade mark in respect of services substantially identical with, or deceptively similar to, appellant’s trade mark in respect of closely related goods, being goods closely related to the respondent’s services for the purposes of s 44 – whether honest concurrent use for the purposes of s 44 – whether appellant’s mark had acquired a reputation in Australia such that use of respondent’s mark would be likely to deceive or cause confusion for the purposes of s 60 – whether Court should allow registration of respondent’s mark subject to a geographical limitation to Western Australia

Legislation: Trade Marks Act 1995 (Cth) ss 7, 10, 14, 17, 44, 55, 58, 60

Cases cited:
Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 351 ALR 436

Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511

Dunlop Aircraft Tyres Limited v The Goodyear Tire and Rubber Company [2018] FCA 1014; 134 IPR 220

Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR 1

McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102

MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236

Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84

Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365

Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569

Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398

Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Winton Shire Council v Lomas [2002] FCA 288; 119 FCR 416

Date of hearing:

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2019] FCA 4
Decision Date: 10 January 2019

CaseChat Overview and Summary

Notaras was the appellant and Barcelona Pty Limited was the respondent in this matter that was heard by the Full Court of the Federal Court of Australia. The dispute was centred around the registration of a trade mark by the respondent, ATOMIC, for goods and services related to coffee. The appellant opposed the registration of this trade mark, arguing it was too similar to her own registered trade marks, ATOMIC, for coffee machines and stove top coffee makers, and would cause confusion among consumers.

The court had to address several legal issues, including whether the respondent was the rightful owner of the trade mark, if the appellant had abandoned her common law trade mark, whether the respondent's trade mark was substantially identical or deceptively similar to the appellant's marks, and if the appellant's mark had acquired sufficient reputation to warrant protection under the Trade Marks Act 1995 (Cth). The court also considered whether the registration of the respondent's trade mark should be subject to a geographical limitation.

In reaching its decision, the court examined the evidence and arguments presented by both parties. The court found that the respondent was the owner of the trade mark and that the appellant had not abandoned her common law trade mark. The court concluded that the respondent's trade mark was not substantially identical or deceptively similar to the appellant's marks, and that the appellant's mark had not acquired sufficient reputation to warrant protection. The court also found that there was no basis for imposing a geographical limitation on the registration of the respondent's trade mark.

As a result of this decision, the appeal was dismissed, and the registration of the respondent's trade mark, ATOMIC, for the specified goods and services was allowed to proceed. The appellant was ordered to pay the respondent's costs, as agreed or assessed.

Orders

Orders of the court

1. The appeal is dismissed.

2. Trade Mark Application No. 1686087 proceed to registration.

3. The appellant pay the costs of the respondent, as agreed or assessed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

It is not necessary to consider the issue of any residual discretion under s 55 of the Trade Marks Act.Conclusion and orders The appeal should be dismissed and Trade Mark Application No. 1686087 proceed to registration. The appellant is to pay the costs of the respondent, as agreed or assessed.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Appeal from:	Irene Notaras v Barcelona Pty Limited [2018] ATMO 12
File number:	NSD 215 of 2018
Judge:	ROBERTSON J
Date of judgment:	10 January 2019
Catchwords:	TRADE MARKS – appeal from decision of delegate of the Registrar of Trade Marks – delegate held that appellant had failed to establish any of her grounds of opposition and that the respondent’s trade mark application could proceed to registration – appellant’s registered ATOMIC Word Mark in respect of coffee machines – appellant’s registered ATOMIC Device Mark in respect of stove top coffee makers – respondent’s application for registration of ATOMIC in respect of goods, including coffee cups, coffee, coffee beans, ground coffee and in respect of services, including retailing and wholesaling of coffee, coffee grinding, coffee roasting and cafes – whether respondent not the owner of the trade mark for the purposes of s 58 of the Trade Marks Act 1995 (Cth) – whether appellant abandoned property in common law trade mark – whether respondent’s trade mark substantially identical with, or deceptively similar to, appellant’s trade mark in respect of similar goods, being goods of the same description for the purposes of s 44 – whether respondent’s trade mark in respect of services substantially identical with, or deceptively similar to, appellant’s trade mark in respect of closely related goods, being goods closely related to the respondent’s services for the purposes of s 44 – whether honest concurrent use for the purposes of s 44 – whether appellant’s mark had acquired a reputation in Australia such that use of respondent’s mark would be likely to deceive or cause confusion for the purposes of s 60 – whether Court should allow registration of respondent’s mark subject to a geographical limitation to Western Australia
Legislation:	Trade Marks Act 1995 (Cth) ss 7, 10, 14, 17, 44, 55, 58, 60
Cases cited:	Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 351 ALR 436 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 Dunlop Aircraft Tyres Limited v The Goodyear Tire and Rubber Company [2018] FCA 1014; 134 IPR 220 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR 1 McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Winton Shire Council v Lomas [2002] FCA 288; 119 FCR 416
Date of hearing: