Notaras v Barcelona Pty Limited
[2019] FCA 4
•10 January 2019
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: 30 July - 31 July 2018 Registry: New South Wales Division: General Division National Practice Area: Intellectual Property Sub-area: Trade Marks Category: Catchwords Number of paragraphs: 358 Counsel for the Appellant: Mr C Burgess with Mr G Tsang Solicitor for the Appellant: Moulis Legal Counsel for the Respondent: Ms JM Beaumont Solicitor for the Respondent: Bird & Bird ORDERS
NSD 215 of 2018 BETWEEN: IRENE NOTARAS
Appellant
AND: BARCELONA PTY LIMITED
Respondent
JUDGE:
ROBERTSON J
DATE OF ORDER:
10 January 2019
THE COURT ORDERS THAT:
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.
REASONS FOR JUDGMENT
ROBERTSON J:
Introduction
This appeal is from the decision of a delegate of the Registrar of Trade Marks dated 1 February 2018. The proceeding before the delegate was an opposition brought by Ms Irene Notaras, the present appellant, to the registration of Trade Mark Application No. 1686087 by Barcelona Pty Limited (Barcelona), the present respondent.
The delegate’s decision was that Ms Notaras had failed to establish any of the grounds of opposition nominated in her Statement of Grounds and Particulars and that Trade Mark Application No. 1686087 could proceed to registration.
The application, having a priority date of 8 April 2015, was as follows:
Application Number: 1686087 Filing Date: 8 April 2015 Goods and Services: Class 16: Bags of plastics for packaging food; bags of plastics for wrapping foodstuffs; packaging materials made of card or paper for use with food articles; paperboard trays for packaging food
Class 21: Coffee cups; cups of paper or plastic; cardboard cups; heat insulated containers for beverages; containers for beverages; containers for food; heat retaining containers for food; isothermic bags for keeping foodstuffs cool
Class 29: Prepared meals containing poultry, seafood, game or meat; prepared meals containing tofu or vegetables; prepared meals containing fruit; frozen meals containing poultry, seafood, game or meat; frozen meals containing tofu or vegetables; cooked meals containing poultry, seafood, game or meat; cooked meals containing tofu or vegetables; chilled meals containing poultry, seafood, game or meat; chilled meals consisting of tofu or vegetables; chilled meals containing fruit
Class 30: Coffee; coffee beans; ground coffee; coffee products; preparations for making beverages (coffee based); flavoured coffee; instant coffee; unroasted coffee; decaffeinated coffee; mixtures of coffee; coffee substitutes; extracts of coffee for use as flavours in beverages; coffee-based beverages; prepared pasta meals; prepared meals containing rice; prepared meals containing noodles; prepared pizza meals; frozen pasta meals; frozen meals containing rice; frozen pizza meals; frozen meals containing noodlesClass 35: Retailing of food and drinks; retailing and wholesaling of coffee and coffee based products (by any means); retailing and wholesaling of prepared meals, frozen meals, cooked meals and chilled meals (by any means)
Class 40: Coffee grinding; coffee roasting
Class 43: Cafes; cafe services; take away food and drink services; coffee bar and coffee house services (provision of food and drink); coffee shop services; mobile food and beverage services; provision of food and drink; restaurants; restaurant services; catering servicesTrade Mark: ATOMIC (‘Trade Mark’) Endorsements: Registration of this trade mark is limited to the state of Western Australia.* Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied.* Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.* Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.*
Ms Notaras is the owner of the trade marks listed in the table below.
Number Trade Mark Priority Date Goods 791650 ATOMIC (‘Word Mark’) 20 Apr 2002 Class 21: Non electric coffee percolators, espresso makers, coffee machines, and non electric cappuccino makers 1281511 (‘Device Mark’)
16 Jan 2009 Class 21: Stove top coffee maker
Barcelona is a company based in Western Australia. It registered the business name “ATOMIC ESPRESSO” on 27 April 2004.
The statutory provisions
The relevant provisions of the Trade Marks Act 1995 (Cth) are as follows.
7 Use of trade mark
…
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
…
10 Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
…
14 Definition of similar goods and similar services
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
…
17 What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note: For sign see section 6.
…
44 Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
…
55 Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
…
58 Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.
…
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, 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: For priority date see section 12.
The decision of the delegate
The delegate said, at [16], for the purposes of the s 44 ground of opposition he need only consider the Word Mark since if the s 44 ground of opposition failed with respect to the Word Mark it would also fail with respect to the Device Mark. This was said to be because the Device Mark was “less similar” to the proposed trade mark than the Word Mark.
The delegate set out s 14, the definitions of “similar goods” and “similar services” and relevant principles from McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [17].
At [21], the delegate set out from Braintree Communications Pty Ltdv Paypal, Inc [2017] ATMO 90; 128 IPR 497 at [28]-[29] a summary of the legal principles applicable when determining whether the services for which a trade mark was sought to be registered were closely related to the goods for which a word mark was registered.
The delegate then broke down Barcelona’s goods and services to make a number of separate comparisons, as follows.
a) Are Barcelona’s goods in Class 21 similar to Ms Notaras’ goods?
The delegate noted that Ms Notaras’ goods were limited to machines used to make coffee, and in particular espresso. He said such products were generally specialist machines sold from either specialist retailers or general whitegood stores. In comparison, Barcelona’s goods in class 21 were goods for holding coffee (and other food and beverages) and keeping it at a consistent temperature. This included coffee cups, thermoses and other insulated mugs. Such products were of a different nature, used for a different purpose and generally sold through different trade channels such as directly through coffee retailers. The goods may be complementary but were not similar.
b) Are Barcelona’s goods in Class 30, in particular coffee and coffee beans, similar to Ms Notaras’ goods?
The delegate said a subset of Barcelona’s class 30 goods and Ms Notaras’ goods were related since Ms Notaras’ goods used coffee beans to produce coffee. However this did not necessarily imply that the goods were similar. The products were of a different nature – one being a consumable and one being a whitegood. The delegate referred to the decision in Cantarella Bros Pty Ltd v Sunbeam Corp Ltd [2007] ATMO 3 in which the Registrar concluded that ice cream and gelato making machines were not similar goods to ice cream and gelato. The delegate considered that similar reasoning applied in this case. The trade channels of the goods were quite different, with Barcelona’s goods in class 30 being sold through a coffee shop or supermarket retailer, while Ms Notaras’ goods were sold through a whitegoods retailer or a specialist store. The manner in which they were purchased was quite different, with Barcelona’s goods in class 30 being regularly purchased like any other consumable while Ms Notaras’ goods were a significant, one-off purchase. In Cantarella Bros the delegate stated “I can not expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two.” The delegate considered the same logic applied here and found that Ms Notaras’ goods and Barcelona’s class 30 goods were not similar.
c) Are Barcelona’s services in Classes 35, 40 and 43 closely related to Ms Notaras’ goods?
With respect to the third question, the delegate said Barcelona’s services in classes 35, 40 and 43 were services normally provided by a coffee shop, restaurant or similar commercial operation. In the “Sizzler” case (Sabra International Pty Ltd v Sizzler Restaurants International Inc (1991) AIPC 90-746) the Registrar found that restaurant services were not services that were closely related to class 30 food items. While the comparison was different in the present case, with Ms Notaras’ goods being coffee machines in class 21, the logic remained the same. It was highly unlikely, the delegate said, that a coffee shop or restaurant would be involved in the manufacture and/or retail of a machine for making coffee and consumers would not perceive it to be the case. At best Ms Notaras’ goods were products used by restaurants and coffee shops to supply their services, but merely being an input into the supply of a service did not render a good closely related to that service. The delegate did not find Ms Notaras’ goods to be closely related to Barcelona’s services.
The delegate said he failed to identify any of Barcelona’s goods and services that were similar or closely related to the goods for which the Word Mark was registered. The delegate found that Ms Notaras had failed to establish the ground of opposition under s 44 of the Trade Marks Act. It was therefore not necessary to consider the question of honest concurrent use under s 44(3)(a).
d) Are Barcelona’s Goods in Classes 16 and 29, similar to Ms Notaras’ Goods?
The delegate said this question could be answered easily: No.
The delegate next considered s 58A and, at [30], found it did not apply.
The delegate then considered s 43. He said, at [35]-[36], that the requisite confusion or deception must arise from a connotation within Barcelona’s proposed trade mark itself rather than as a result of the reputation Ms Notaras may be able to demonstrate in her trade mark or confusion between Barcelona’s proposed trade mark and Ms Notaras’ trade marks.
As a consequence, the delegate was not satisfied that if Barcelona’s proposed trade mark was used in relation to its goods and services, there was an apparent connotation within it which was likely to result in deception or confusion. The delegate found that the ground of opposition under s 43 had not been established.
The delegate then considered s 58, whether Barcelona was the owner of its proposed trade mark.
At [38], the delegate said it was now well established that in order to succeed under this ground of opposition an opponent must establish three factors. These were:
Ÿthat the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’): Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495;
Ÿthat the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was (sic) used (‘the second factor’): Re Hicks’ Trade Mark (1897) 22 VLR 636; and
Ÿthat a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’): Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
At [40], the delegate found that Ms Notaras had used the trade mark as a trade mark from 1965 in respect of coffee machines. The first and third factors were satisfied. However, in order for Ms Notaras to succeed under this ground it was necessary to show that the second factor was satisfied, namely that Barcelona’s goods and services were the “same kind of thing” as the goods Ms Notaras used the trade mark for. The delegate referred to the discussion in respect of the s 44 ground of opposition in which he found that Ms Notaras’ goods were not goods of the same description or closely related services to any of Barcelona’s goods and services. As the test for “the same kind of thing” was a narrower test than the test required under s 44 of the Trade Marks Act, the delegate found that Barcelona’s goods and services were not the “same kind of thing” as the goods for which the trade mark(s) relied upon by Ms Notaras were used. The delegate held that Ms Notaras had failed to establish the ground of opposition under s 58.
In relation to s 60, the delegate said, at [50], he was satisfied by reason of Ms Notaras’ use of the Word Mark for over 50 years and the significant evidence of historical advertising and free media undertaken during that time that the trade mark was likely to have acquired some limited reputation in relation to coffee machines and concentrated on the Eastern states of Australia. However, the delegate said, it was not sufficient that Ms Notaras merely established that her trade mark had a reputation. The delegate said he must also be satisfied that because of that reputation, use of Barcelona’s proposed trade mark would be likely to deceive or cause confusion. At [56], the delegate said that while the Word Mark and Barcelona’s proposed trade mark were identical, Barcelona’s goods and services were different to the coffee machines which Ms Notaras had established a reputation in. He referred to his conclusions in respect of the s 44 ground of opposition. Furthermore he noted that Barcelona’s proposed trade mark was limited geographically to Western Australia. Ms Notaras was based in Sydney and it was apparent that most of the sales and advertising of Atomic coffee machines had taken place along the Eastern Seaboard. There was no evidence that Ms Notaras had made any sales in Western Australia prior to the priority date. Given the limited reputation Ms Notaras had in the ATOMIC mark, the fact that the reputation was concentrated in the Eastern Seaboard, the absence of any evidence of sales, advertising or general reputation in Western Australia at the priority date, and the difference in the respective goods and services, the delegate considered it unlikely that because of the reputation of the Word Mark, the use of Barcelona’s proposed trade mark for its goods and services would be likely to deceive or cause confusion. The delegate found that Ms Notaras had failed to establish the ground of opposition under s 60.
The delegate concluded that Ms Notaras had failed to establish any of the grounds of opposition she nominated in her Statement of Grounds and Particulars. The delegate decided that Trade Mark Application No. 1686087 may proceed to registration.
The appeal
The grounds relied on by the appellant, as amended, were as follows:
Prior reputation (section 60)
1.Registration of the Trade Mark Application should be refused under s 60 of the Trade Marks Act 1995 (Cth)(Act) because:
(a)another trade mark had, before the priority date of the Trade Mark Application, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the ATOMIC trade mark that is the subject of the Trade Mark Application would be likely to deceive or cause confusion.
Particulars
(A)The Appellant has, since 1964, extensively imported, promoted, sold and serviced coffee machines (including, in many cases, by supplying coffee for use in those machines) by reference to the ATOMIC trade marks that are referred to in paragraph 2 below.
(B)As a result of the activity referred to in sub-paragraph (A) above, the Appellant’s ATOMIC trade marks had, by the priority date of the Trade Mark Application, acquired a reputation in Australia.
(C)The Respondent well-knew of the reputation in the Appellant’s ATOMIC trade marks at the time it adopted for use, and applied to register, the ATOMIC trade mark that is the subject of the Trade Mark Application. The clear and strong inference is that the Respondent adopted the ATOMIC trade mark for purposes that included appropriating a benefit from that reputation.
(D)Because of the reputation in the Appellant’s ATOMIC trade marks, the use of the ATOMIC trade mark that is the subject of the Trade Mark Application would be likely to deceive or cause confusion.
Prior registered trade marks (s 44)
2.Registration of the Trade Mark Application should be refused under s 44 of the Act because:
(a)the ATOMIC trade mark that is the subject of the Trade Mark Application is substantially identical with, or deceptively similar to, the Appellant’s prior trade mark registrations for ATOMIC; and
(b) the Trade Mark Application seeks registration for:
(i) goods that are similar goods; and/or
(ii) services that are closely related to,
the goods that are covered by the Appellant’s prior trade mark registrations for ATOMIC.
Particulars
(A)The Appellant relies upon its prior registered trade mark nos. 791650 for ATOMIC and 1281511 for ATOMIC (Device), and refers to the goods specified in class 21 thereof.
3. …
Respondent not trade mark owner (s 58)
4.Registration of the Trade Mark Application should be refused, on the ground that the Respondent is not the owner of the trade mark.
Particulars
(A)The Appellant first used the ATOMIC trade mark in Australia in respect of:
(i) coffee machines;
(ii) coffee grind samples supplied together with coffee machines;
(iii) ground coffee supplied in cans; and
(iv) fresh made cups of coffee,
before the priority date of the Trade Mark Application and before the Respondent first commenced using the ATOMIC trade mark for coffee and coffee related goods and services. See further the affidavit of Irene Notaras sworn on 23 May 2018 at paragraphs [25]-[37] and [45]-[46].
No geographic limitation to Western Australia appropriate
5.It would not be appropriate to permit registration of the Trade Mark Application subject to a geographical limitation restricting the Respondent’s rights to Western Australia. Registration should be refused outright.
Particulars
(A)The Appellant’s ATOMIC trade mark enjoys a reputation in the whole of Australia, including in Western Australia.
(B)The Appellant has used, and intends to continue to use, her ATOMIC trade mark in Western Australia.
(C)There is frequent travel between Western Australia and other states and territories in which the Appellant’s ATOMIC trade mark has a reputation.
There was also an amended notice of contention, as follows:
The Respondent contends that the decision of the Delegate of the Registrar of Trade Marks (the Delegate) in Irene Notaras v Barcelona Pty Limited [2018] ATMO 12 given on 1 February 2018, to allow the registration (sic) Australian trade mark application no. 1686087 “ATOMIC” in Classes 16, 21, 29, 30, 35, 40 and 43 (Trade Mark) should be affirmed on grounds other than those relied on by the Delegate.
The Respondent does not seek to cross-appeal from the Decision.
Grounds relied on
1.If, contrary to the Delegate’s reasoning and the Respondent’s contentions, the Court finds that the goods and services in respect of which the Trade Mark is sought to be registered, are:
a. similar goods; or
b. closely related services,
to the goods covered by the Appellant’s registered trade mark nos. 791650 “ATOMIC” and/or 1281511 (Device), then the Respondent contends that the decision of the Delegate should be affirmed, and the Trade Mark should proceed to registration, on the ground of honest concurrent use pursuant to s 44(3)(a) and/or because of other circumstances pursuant to s 44(3)(b) of the Trade Marks Act 1995 (Cth).
Particulars
i)The Respondent commenced using the Trade Mark in relation to at least café services, coffee and paninis in about May 2004.
ii)The Respondent has been using the Trade Mark in relation to cafés, restaurants and related services, including the retailing of food and drinks, and in relation to goods including coffee beverages and coffee cups since at least July 2005.
iii)The Respondent has been using the Trade Mark in relation to ground coffee, coffee beans and other coffee products since at least 2011.
iv)The application for the Trade Mark is subject to the endorsement that registration is limited to the state of Western Australia.
2.If, contrary to the Delegate’s reasoning and the Respondent’s contentions, the Court finds that the Respondent is not the owner of the Trade Mark in relation to any good or service, then the Respondent contends that the decision of the Delegate should be affirmed, and the Trade Mark should proceed to registration, on the ground of honest concurrent use.
Particulars
i. The particulars to paragraph 1 are repeated.
The parties provided a list of issues as follows:
A Section 58 ground (ownership)
1.Has Ms Notaras established use of the word ATOMIC as a trade mark in Australia in relation to ground coffee supplied in ½ pound cans before 8 April 2015, the priority date of the Barcelona application (priority date)?
2.Has Ms Notaras established use of the word ATOMIC in Australia as a trade mark in relation to ground coffee samples before the priority date?
3.If Ms Notaras establishes prior use in relation to ground coffee, are any other class 30 goods designated in the Barcelona application “the same kind of thing” as ground coffee?
4.If the only prior use established is the use referred to in paragraph 1 above, did Ms Notaras abandon the ATOMIC mark in relation to ground coffee, before the priority date?
…
7.If first use for the purpose of s 58 is established by Ms Notaras in relation to any good or service, is s 58 subject to the doctrine of “honest concurrent use”, such as to permit registration of the Barcelona mark with the geographical limitation to Western Australia?
B Section 44 ground (prior registered mark)
8.Has Ms Notaras established that any of the opposed Barcelona goods are the same or of the “same description” as the class 21 coffee machine goods that are designated in Ms Notaras’ prior registration for the ATOMIC word mark?
9.Has Ms Notaras establish that any of the opposed Barcelona services are “closely related” services to the class 21 coffee machine goods that are designated in Ms Notaras’ prior registration for the ATOMIC word mark?
10.If the answer to question 8 or 9 above is ‘yes’ in relation to any good or service, has Barcelona established “honest concurrent use” within the meaning of s 44(3)(a)?
11.If the answer to question 8 or 9 above is ‘yes’ in relation to any good or service, has Barcelona established that “other circumstances” make registration proper within the meaning of s 44(3)(b)?
C Section 60 (prior reputation)
12.Has Ms Notaras established that the ATOMIC mark had acquired a reputation in Australia amongst a significant section of the relevant public as at the priority date?
13.Has Ms Notaras established that because of any reputation referred to in paragraph 12, the use of the Barcelona mark for any designated good or service, would be likely to deceive or cause confusion?
…
E Discretion and Geographical limitation
15. Question not agreed:
a.Appellant’s question: Should the Court allow registration of the Barcelona application having regard to the extent (if any) to which any ground of opposition has been established and subject to imposing a geographical limitation to Western Australia?
b.Respondent’s question: Should the Court allow registration of the mark the subject of the Barcelona application in respect of all or any goods and services, having regard to the extent (if any) to which any ground of opposition has been established and subject to the geographical limitation to Western Australia?
The evidence
The evidence for Ms Notaras
Ms Irene Notaras affirmed three affidavits, dated 23 May 2018, 27 July 2018 and 29 July 2018. She was cross-examined.
In her first affidavit, Ms Notaras deposed that she operated the business Bon Trading Company (Bon Trading). Bon Trading had imported, promoted and sold coffee machines under the ATOMIC marks in Australia since approximately May 1964. Bon Trading had also:
(a)sold spare parts and provided repairs and servicing for the Atomic machines; and
(b)promoted, sold and supplied coffee and accessories (for example, t-shirts) under the Word Mark and/or the Device Mark.
She was, and had always been, the person who managed and conducted Bon Trading’s business. Initially, she operated Bon Trading as a sole trader. She currently operated the business through the legal structure of a small company, Liflo Pty Ltd (Liflo). She was the sole director and secretary of Liflo and controlled all of Liflo’s activities, including its use of the ATOMIC marks.
Ms Notaras deposed to the history of Atomic machines in Australia, as follows.
The Atomic machines were originally produced by an Italian designer and inventor, Mr Giordano Robbiati, together with persons and/or companies associated with him. Mr Robbiati’s professional office was in Italy and called Brevetti Robbiati (Robbiati). Robbiati developed and commercialised the Atomic machines from the late 1940s onwards.
Bon Trading was appointed by Robbiati as the exclusive distributor of the Atomic machines in Australia in 1965. Ms Notaras annexed to her affidavit a copy of a letter from Mr Robbiati dated 15 September 1965 confirming the appointment.
After the appointment, Ms Notaras regularly visited Mr Robbiati in Italy (typically annually) and they discussed business and related matters. Ms Notaras was regularly a guest at Mr Robbiati’s home, and she considered herself his friend and colleague. Between 1965 and 1972, Ms Notaras worked with Robbiati to develop and improve the Atomic machines, including the milk frothing steam wand and its operation.
In the late 1960s, Ms Notaras designed and drafted a two-page instruction sheet for the Atomic machines. The instruction sheet was provided with the Atomic machines that Ms Notaras sold in Australia in the late 1960s.
Ms Notaras also designed and drafted an instruction booklet for the Atomic machines. I refer to this further at [51]-[52] below.
By about the mid-1970s, Ms Notaras deposed, she became Robbiati’s biggest customer, to the point where she was being shipped almost all Robbiati’s production of the Atomic machines each year. About that time, Mr Robbiati told her that sales in other parts of the world were small and insignificant. She recalled that he said words to the effect of:
Irene, I am not selling many machines anywhere else in the world, it is you and your Australian business that are keeping me going.
She annexed to her affidavit an undated letter that Mr Robbiati sent to her sometime around June 1972. The letter stated: “All Atomic machines which we are manufacturing now are for you.”
From the mid-1970s onwards, Ms Notaras deposed, she had an open order to Robbiati to send her all the Atomic machines that Robbiati produced. She annexed a copy of a bill of lading dated 14 February 1986, recording one of the many shipments of Atomic machines that Robbiati sent her. At that time, a carton of machines contained 20 Atomic machines, and she deposed that that particular shipment was for 540 machines.
By the late 1980s, Ms Notaras deposed, Mr Robbiati was elderly. It was apparent that he could not continue to operate his business in Italy for much longer. Ms Notaras deposed he said to her words to the effect of:
Keep the Atomic alive, keep it selling; carry it on. I want you to continue the business.
In approximately the late 1980s to early 1990s, Ms Notaras deposed, she purchased the original moulds required to manufacture the Atomic machines, together with other technical materials and supplier lists and customer lists from the Robbiati family.
In each year from that time until today, Ms Notaras deposed, she had caused the Atomic machines and parts for the machines to be manufactured in Italy. The Atomic machines were, and had been, manufactured for Bon Trading to her specifications by former employees or contractors of Robbiati, and persons trained by such former employees or contractors. She had then imported the Atomic machines and sold them in Australia. See, however, Ms Notaras’ evidence as to local assembly, at [90] below.
Currently, Ms Notaras deposed, Bon Trading sold the Atomic machines and spare parts directly to customers from a retail shop she operated in Woollahra, Sydney. Bon Trading had sold the Atomic machines and spare parts from her Woollahra store since she opened the store, in approximately 1968. In the past, Bon Trading had also sold the Atomic machines through major department stores and other retail outlets, including coffee roasting shops.
Bon Trading, Ms Notaras deposed, also sold the Atomic machines and spare parts directly to customers by mail or telephone order and online, through its website at and on eBay. Bon Trading had sold the Atomic machines and spare parts online since August 2007. Bon Trading also provided servicing and repair of the Atomic machines, and had done so since at least the late 1960s.
Ms Notaras then turned to the sale and distribution of the Atomic machines in Australia.
She deposed that Bon Trading had sold the Atomic machines in Australia in every year since 1964. She had not retained business records that enabled her to identify the exact number of Atomic machines sold.
However, Ms Notaras deposed, she knew from her work conducting Bon Trading’s business that:
(a)throughout the 1970s and 1980s, Bon Trading sold approximately 2,000 to 3,000 Atomic machines per annum;
(b)Bon Trading sold fewer Atomic machines in the years before then, and through the 1990s and 2000s.
In the absence of the relevant records of the business, I admitted this material subject to weight.
Apart from current stock, Ms Notaras deposed, Bon Trading had sold every Atomic machine that it had imported from Italy since 1964.
During the period from the late 1960s/early 1970s to the late 1980s, Ms Notaras deposed, she engaged a Perth based distributor (Mr George Samios) to sell the Atomic machines in Western Australia. She recalled supplying Mr Samios with the Atomic machines during this period, for him to on-sell in Western Australia. Ms Notaras was unable to locate any business records that documented the distributorship relationship with Mr Samios, or how many Atomic machines Bon Trading supplied to Mr Samios. The distributorship arrangement ceased in around the late 1980s, when Mr Samios passed away.
Ms Notaras deposed that throughout the same period, and continuing to the present, Bon Trading had also sold the Atomic machines and spare parts directly to customers in Western Australia. This had been done by phone and mail orders and (from 2007 onwards) online. She annexed a small sample of copies of orders and/or sales receipts for Atomic machines or spare parts that Bon Trading had sold directly to customers in Western Australia.
Ms Notaras’ affidavit then turned to the supply of coffee under the ATOMIC trade mark.
She deposed that for at least the past four decades, Bon Trading had provided each person who had purchased an Atomic machine with an instruction booklet. She herself had inserted, and caused her staff working under her supervision to insert, the instruction booklet inside the box packaging in which each Atomic machine had been supplied over that period. She had not changed the instruction booklet over time, because she considered its “vintage” style complemented the long-standing history of the Atomic machine.
Since the instruction booklet was first printed, Ms Notaras deposed, it had always been her practice to include in each instruction booklet a small sample bag of finely ground coffee. She had personally stapled, and caused her staff to staple the sample bag to the page numbered 2 of each instruction booklet. She had always included the coffee sample bag in the instruction booklet, because it was important that purchasers of the Atomic machine used coffee of the same (fine dimension) grind as the sample for the best results. The relevant page of the instruction booklet stated: “The GRIND of COFFEE to be used must be IDENTICAL to that contained in sample” and underneath the small clear plastic bag, which contained a teaspoon or less of ground coffee, was stated: “Sample of grind”.
At [28] of her first affidavit as qualified by her second affidavit, Ms Notaras deposed that she, and staff working under her supervision, had prepared the coffee sample bags by purchasing coffee beans of various roasts, grinding them down to the correct size at the Woollahra shop and placing the ground coffee into small plastic sample bags. To clarify that statement, Ms Notaras deposed that sometimes the coffee that she and her staff had ground down and placed into the sample bags had been given to her by coffee roasters.
Ms Notaras deposed that during the period between the mid-1960s and the 1970s, Bon Trading also sold ground coffee in small (½ pound net) cans. Bon Trading sold the ½ pound coffee cans direct to customers. In addition, every customer who bought an Atomic machine direct from Bon Trading was given one of the coffee cans free. There was little in the way of vacuum packaged coffee then, she deposed, unlike today.
She did not now remember the exact year that Bon Trading first sold the ½ pound coffee cans. She annexed a copy of an order form that Bon Trading received for 12 of these coffee cans on 27 May 1972. She also annexed a copy of a bundle of mail orders that Bon Trading received for the coffee cans in the period between 1968 and 1972. During the 1960s and 1970s she remembered supplying ½ pound cans of coffee under orders like those. She was operating Bon Trading as a sole trader during that period. She had not retained business records documenting all such sales.
The coffee she supplied in the ½ pound cans was roasted and ground by a company called Andronicus. She personally chose to sell Andronicus coffee, because she liked its taste. She supplied Andronicus with Atomic machines (which Andronicus on-sold) and Andronicus supplied coffee that was finely ground to the size appropriate for use in the Atomic machines. She regarded Andronicus as the leading coffee roaster at that time.
Ms Notaras deposed that the ½ pound coffee cans that Andronicus supplied to her were blank (unmarked) on their surface. She printed paper labels, which she cut into strips and wrapped around the cans and glued to the cans. She annexed to her affidavit a black and white copy of the label that she recalled cutting into strips and wrapping around the ½ pound cans. It bore the Word Mark in lower case. She had been unable to locate in her records any of the actual coffee cans or original labels themselves. She exhibited to her affidavit an original coffee can label misprint that she had been able to locate in her records. She also exhibited a photograph of the coffee can, taken for promotional purposes sometime in the 1970s or 1980s.
At some stage (to the best of her recollection, it was the mid to late 1980s) Andronicus was bought out by another business, and ceased supplying coffee, including to Bon Trading. For a short period before Andronicus was bought out, Andronicus supplied Bon Trading with larger coffee cans (with a heavier weight of one pound) that bore its own label. When Andronicus was bought out, Ms Notaras deposed, she was unable to find a suitable alternative supplier.
Since Andronicus was bought out, Ms Notaras deposed, it had always been her intention to resume selling ground coffee under the Word Mark. In her opinion, coffee machines and coffee went together “hand in hand”. She had always thought it desirable, from a business perspective, for Bon Trading’s business in the Atomic machines to be complemented by ATOMIC branded ground coffee.
In May 2005, Ms Notaras registered the business name ATOMIC COFFEE in Liflo’s name. She annexed to her affidavit a copy of that business name registration. She deposed that her intention when she registered the business name was to resume selling ATOMIC branded ground coffee traded through Liflo, using that business name and the Word Mark. She deposed that this remained her intention today.
Ms Notaras deposed that in addition to registering the ATOMIC COFFEE business name, before and after 2005, she had investigated various different coffee blends, coffee roasters and coffee suppliers with the objective of resuming the sale of ATOMIC branded coffee. For example, in 2011, 2015 and 2017, she attended the Host Exhibition in Milan, Italy. She regarded the Host Exhibition to be the leading Italian coffee exhibition. While she was at each Host Exhibition, she sampled many different coffee types and investigated potential coffee suppliers. She annexed to her affidavit a copy of some emails between her and a supplier whom she met, and identified as a potential supplier, at the Host Exhibition in 2011: see further [105] below.
Ms Notaras deposed that in around the early 1990s, she also bought her own coffee roaster. However, she was distracted by caring for her elderly mother, who was unwell in that period, and she never got around to getting the roaster operating. She no longer had that roaster. She deposed that she had not yet decided whether she would buy another roaster, or source roasted coffee from Italy, when she resumed selling coffee under the Word Mark. She deposed that she aimed to resume selling coffee in the next six months.
Ms Notaras deposed that from no business to begin with, she considered that she had built up a unique, niche market for the Atomic machine with the ATOMIC brand, based substantially on promotion, teaching and service. She deposed that she was aware from her work operating the Bon Trading business that in providing a personalised service in what was essentially a niche market business, it was essential that she made a personal appearance in the media to not only promote the equipment, but most importantly, to educate customers as to this unique and distinctive method of making rich, aromatic coffee.
She deposed that since 1965 she had promoted the Atomic machines on television, via interviews, at various shows and exhibitions, in the press, via in store demonstrations and the like as well as magazines, newspapers and other periodicals. She gave details and examples of such promotion.
Initially, she established her business in Balmain in Sydney. In about 1968 she relocated to her present Woollahra address. From those premises, she had been selling the Atomic machines and spare parts up until the present time, as well as providing servicing facilities. The Atomic machines were also sold in each outlet of the major department stores across Australia in the 1970s until the late 1980s, being David Jones, Grace Brothers, Farmers and Myers, as well as other large retailers and major coffee roasting shops.
In order to promote the Atomic machines in the Australian market, Ms Notaras deposed, she initially advertised in newspapers and also did home demonstrations. She, together with staff, also demonstrated the product at the Royal Easter Show in Sydney for many years and other exhibition venues.
Ms Notaras listed some of the larger outlets to which, she deposed, Bon Trading had supplied the Atomic machines over the years, in addition to department stores:
(a) Andronicus Coffee;
(b) Harris Coffee;
(c) ASCO Coffee;
(d) Coffex Coffee;
(e) Cremorne Coffee and Tea;
(f) J & C Coffee Centre;
(g) Grinders Hotel and Cafe Supplies;
(h) Grinders Coffee;
(i) Hotel and Cafe Supplies in Perth and South Australia;
(j) Lucia’s Pizza Bar;
(k) Nock & Kirby’s;
(l) Renoir’s Coffee Shops;
(m) Renita Espresso Equipment;
(n) Charles Vella;
(o) Coffee Plus;
(p) Chatterbox; and
(q) Electro Centre.
During Thursday through to Saturday in the 1970s and 1980s, Ms Notaras deposed, she and demonstrators hired by her attended the kitchenware departments of Farmers and Grace Brothers retail stores in the city of Sydney and other major shopping centres to promote the Atomic machines and the ATOMIC brand. She personally attended in the order of hundreds of demonstrations during that period.
She deposed that it was the usual practice during those demonstrations to make free cups of coffee with the Atomic machine for customers and potential customers to sample. She herself made and handed out cups of coffee to customers. She exhibited to her affidavit an original point of sale promotional stand from that period. The Atomic machine was displayed in that stand at the department and shopping store demonstrations. She deposed that it was also displayed in that stand in the window of the Woollahra shop up until the previous week.
Ms Notaras deposed to the sale packaging in which Atomic machines had been sold since 1964. She annexed a copy of a photograph of the packaging. She deposed that all Atomic machines sold in Australia had displayed the Word Mark and the Device Mark on the machine itself.
Ms Notaras deposed that in the 1970s and 1980s she was asked by various television people to be interviewed with the Atomic machine and gave special interviews on Sydney television, as well as in Canberra, Melbourne, Wollongong, Brisbane, Adelaide and other various centres. It was very much a one to one type of marketing and selling activity during that period.
She also produced a television advertisement that was broadcast nationally, including to Western Australia, on channels 7, 9 and 10. She annexed to her affidavit a copy of a photograph taken of the spine of the commercial tape that recorded the television advertisement. The television commercial was broadcast in the 1980s and 1990s. A video of the television commercial had been available on YouTube’s website at since 9 August 2013.
She deposed that in 1982 she produced a demonstration video recording of how to make coffee using the Atomic machine. This video had been available on YouTube’s website at since July 2011.
She annexed to her affidavit a printout that recorded the current YouTube entry for the television commercial and for the video.
Ms Notaras deposed that it had been her practice to provide a copy of a business card to potential customers interested in purchasing the Atomic machines since at least the 1970s. She annexed a copy of her current business card, which she had used since at least the 1990s.
She deposed that the Atomic machines had been promoted in many different print advertisements and print feature articles over the years. She set out and annexed some examples of this, dating from May 1964 to 2014.
She also annexed to her affidavit letters she had received, and continued to receive, from satisfied customers, together with some example responses from Bon Trading.
She annexed a copy of an example customer invoice for the Atomic machine, dated 6 July 1999. She deposed that the present retail price of the Atomic machines was $575.00.
Ms Notaras deposed that from approximately 1999 to the present, she had not carried out much advertising and promotional work. Ms Notaras’ thinking was that she had not done so because it had been her assessment that the reputation of the ATOMIC brand in the marketplace was sufficiently strong that she was able to carry on selling and servicing the Atomic machines, without the need for engaging in any promotional activity. In addition, owners of Atomic machines in Australia were now her “demonstrators”. They made coffee using the Atomic machines for their family and friends. This led to sales by reference and word of mouth.
From time to time, she deposed, Bon Trading received requests from various media outlets to loan an Atomic machine for publications, television and other publicity. She annexed a bundle of copies of some examples of these requests. She lent the Atomic machine as requested in each of those examples.
Ms Notaras deposed that she caused the Atomic website to be set up in 2013. Before then, she promoted the Atomic machines, parts and accessories using the website She annexed to her affidavit some printouts that illustrated current website content. She also annexed some printouts from the Wayback Machine’s “web archive” of the Atomic website, as it appeared on 21 May 2013 and 14 April 2013. She deposed that she recognised these pages as displaying content that appeared on the website at that time.
She annexed a printout of Bon Trading’s eBay information on eBay’s website The entry recorded that Bon Trading became an eBay member in August 2007.
Ms Notaras deposed that since 2005 she had sold Atomic branded merchandise in her shop in Sydney by mail or phone order and online throughout Australia, including to Western Australia. She annexed to her affidavit a printout from the Atomic website that illustrated the merchandise she currently sold. She also annexed a printout dated 4 September 2012 of the old website at The printout illustrated Atomic merchandise that she was selling in 2012.
Ms Notaras deposed that she first became aware of the respondent and its business in or around July 2016, when she saw the respondent’s trade mark application advertised by IP Australia. She decided to oppose the application.
She deposed that she was very concerned that:
(a)The respondent had adopted, and now sought to register, the ATOMIC trade mark for the purpose of appropriating, and benefiting from, the reputation and goodwill that she had developed in the ATOMIC brand through decades of hard work and investment.
(b)The respondent’s use of the ATOMIC trade mark the subject of the Application for coffee and coffee related goods or services would cause consumers to be confused, misled or deceived into believing the respondent’s coffee and coffee related goods or services were provided by, or licensed by, or somehow associated with, her business and/or the Atomic machines.
(c)The reputation and goodwill of her business and the Atomic machines would be damaged by the respondent’s use of the ATOMIC trade mark for coffee and coffee related goods or services.
(d) If the Respondent obtained registration of the Application, the respondent could rely on that registration to try and prevent Bon Trading from supplying coffee samples with the Atomic machines and/or selling or supplying ATOMIC branded coffee.
I admitted this material as limited to Ms Notaras’ thinking and state of mind, and subject to relevance.
Ms Notaras deposed she was aware of registered Australian Trade Mark No. 1040677, owned by Suntory Coffee Australia Limited (Suntory) for the trade mark ATOMIC in relation to goods including coffee. She deposed she had decided to file an application to the Registrar of Trade Marks for that registration to be removed from the Register for non-use. To her knowledge, no ATOMIC branded coffee had ever been sold by Suntory in Australia.
Ms Notaras’ second affidavit, affirmed 27 July 2018, concerned certain financial statements and other documents for the period between 2008 and 2015 the subject of a notice to produce.
In the parts of that affidavit which were read or tendered, Ms Notaras deposed that in the 2013-14 and 2014-15 financial years, she operated the Bon Trading business through Liflo. It was not possible for her to identify the exact proportion of Liflo’s income in those years that was attributable to the sale of the Atomic machines by Liflo, because she had never kept a separate account or ledger of the number of ATOMIC machines that Liflo sold. However, she was the sole director of Liflo, and she worked in the Bon Trading Woollahra shop on a full time basis. She was aware from this work that over half of the income that Liflo generated in these years was derived from the sale of Atomic machines. She said this because the Atomic machines were the highest price goods that Bon Trading sold, and she had been personally involved in their sale.
She exhibited to this affidavit examples of shipping invoices. One such document was a copy of a receipt that recorded a shipment of goods to Bon Trading dated sometime in 2011 (it was, she said, difficult to read the month stamped in the bottom right hand corner). She recognised the goods the subject of the shipment to be 590 kilograms of original parts for the Atomic machines (the machines were presently finally assembled in Australia). Each machine weighed 2.03 kg. This shipment therefore enabled the assembly of about 290 Atomic machines. The original parts the subject of the shipment were assembled into Atomic machines and sold.
A second document was a copy of a further receipt of goods shipped to Bon Trading dated 5 October 2011. She deposed that she recognised the goods the subject of the shipment to be 274 original parts for the Atomic machines (identified in the shipping receipt as “Atomic coffee machine and jugs”). Again, Ms Notaras deposed, the original parts the subject of the shipment were assembled into Atomic machines and sold.
Ms Notaras deposed that she operated Bon Trading as a sole trader during the 1970s and the 1980s, and she was personally involved in the sale of the Atomic machines. That is, she and assistants working under her supervision wrote tax receipts into the books that were shown in the photographs annexed to her affidavit, accepted payments from customers, and handed customers the Atomic machines, or sent them to customers by mail. While it was impossible for her to remember the exact number of Atomic machines that she sold in each year during that period, it was her recollection that she sold at least 2,000 to 3,000 Atomic machines each year during that period. I admitted this evidence as to the number of Atomic machines sold each year but subject to weight.
Ms Notaras deposed that Bon Trading had sold the Atomic machine to consumers in all States and Territories of Australia. She annexed a copy of at least one sales invoice for the supply of an Atomic machine or part to each of, she deposed: Victoria, New South Wales, South Australia, Queensland, and the Australian Capital Territory. There was also an additional invoice in the bundle from Western Australia before April 2015. She had not been able to locate invoices for the Northern Territory or Tasmania. However, over the years, she deposed, she could recall personally causing Atomic machines to be sent to both the Northern Territory and Tasmania. In the absence of more comprehensive records of the business, I admitted this material subject to weight.
Ms Notaras annexed to her second affidavit email communications by her to her former accountant on 25 July 2018 concerning the production of records in answer to a notice to produce, and her former accountant’s reply to her solicitors, dated 27 July 2018, stating in part, with reference to Ms Notaras: “This lady is a liar and a thief.” The former accountant was Ms Notaras’ accountant for 15 to 20 years up to 2013. I refer to this material further at [289] below.
Ms Notaras’ third affidavit, affirmed 29 July 2018, annexed income tax returns and financial statements for Liflo and need not be further considered.
Ms Notaras accepted in cross-examination that from about the 1980s Australians had become increasingly interested in coffee. Since that time Sydney and Melbourne had been known for the availability of good coffee. One such good coffee brand that was well known in about the 1970s and the early 1980s was Andronicus.
She accepted that over the last 10 or 15 years the domestic coffee machine market had become much more competitive than it was when she first started business. She was asked whether since about 2005 there had been many more coffee machines for a domestic consumer to choose from than there were. Ms Notaras’ answer was that there were many electric coffee machines, but they came and went, and there were not many stovetop machines available on the market. In the main they were ATOMIC and Bialetti.
Ms Notaras agreed that over the last five years Bon Trading had increased its sales of Bialetti coffee makers and the price ranged from $35 to about $77 retail. She also agreed that Bon Trading had sold Zacconi machines over the last six or seven years and that its retail price on special was $950. Its ordinary price was about $1100.
Ms Notaras agreed that the Zacconi machine was more expensive than the Atomic machine and ultimately accepted that, contrary to her affidavit, the Atomic machines were not the highest priced goods that Bon Trading sold.
She agreed that since about the 1980s, good coffee beans and ground coffee had been available at least in Sydney and Melbourne.
She was not aware that Genovese was a highly regarded coffee roaster which made available in Australia coffee beans and ground coffee since before the 1970s.
She agreed that Grinders was a highly regarded roaster which supplied coffee and coffee beans in Australia since around 1962. She did business with Grinders, probably in the 1970s.
Ms Notaras agreed that the number of companies supplying coffee beans and ground coffee in Australia had increased since the 1970s.
It was put to her in cross-examination that if she had wanted to purchase coffee beans or ground coffee in the 1980s and 1990s she would have been able to find a supplier in Australia. She agreed. She also agreed she could have done that from suppliers in Australia or in Italy. It was put to her that it was not correct to say that she was unable to find a suitable alternative coffee supplier when Andronicus stopped supplying her. Her answer was that Andronicus was the only supplier with cans that were vacuum packed and she knew of nobody else that had that facility. She said there were suppliers, but she was posting out the coffee so it had to last. She said the Grinders coffee was not vacuum packed and there was no vacuum packed coffee available in the 1980s or 1990s which was suitable for the ATOMIC and which could be packed in the box with the machine.
It was put to Ms Notaras that if she had wanted to source coffee to sell to customers in the 1980s or the 1990s she could have done so. Her answer was it depended on the packaging because most of her customers were mail-order customers. She said that she knew of nobody that had suitable packaging. It was put to her that she did not spend any time trying to find somebody and her answer, as I understood it, was not responsive.
Ms Notaras was asked in cross-examination about email correspondence with an Italian company called Torrefazione. She agreed that in her view Torrefazione was a good brand of coffee and had a good reputation. It was put to her that there was no evidence that she had any correspondence with Torrefazione about selling their coffee under a brand other than their own brand. She answered that she had had a verbal conversation. She said she was looking at every aspect and had actually decided against importing coffee.
It was put to Ms Notaras that she had not given evidence about sourcing coffee anywhere else in Australia to resell to her customers, apart from this correspondence with Torrefazione. Her answer was that she had “spoken to a lot”.
It was put to her that she had no document, apart from the Torrefazione correspondence to show any discussion she had had. Ms Notaras agreed she did not have documents but said she had business cards.
It was put to her that it was difficult to remember, going back all those decades, as to exactly what she had sold and what she had not sold. She agreed it was difficult, but said the main part of the business was the ATOMIC and “they were just coming and going”.
She disagreed with the proposition that she had not reached any serious level in negotiations at any point for the supply of coffee to her. She disagreed that it had not progressed beyond a general discussion with any supplier of coffee at any point.
The cross-examination on this point ended as follows:
As at April 2015 you had no intention to supply coffee to consumers, ground coffee or other coffee?---Well, I did have every intention.
But that was 30, maybe 40 years after you dealt with Andronicus with their coffee and you hadn’t done it in that time, had you?---Had done - - -
You hadn’t supplied coffee in that time, had you?---Only samples.
She agreed that once she sold an Atomic machine to a customer, she aimed to have further transactions with that customer through the sale of spare parts and through servicing the machine. She agreed that the spare parts and servicing component was a minor but important part of her business, and had been since 2015.
Ms Notaras was taken in cross-examination to her response to a notice to produce.
She was taken to two documents which in her second affidavit she had identified as separate shipments. Ultimately she accepted that it was likely that the two documents referred to the same shipment of goods.
Ms Notaras accepted in cross-examination that some of the goods referred to in invoices she had annexed to establish sales were invoices in respect of non-ATOMIC goods, such as an induction plate and soda siphons.
She did not agree in cross-examination that there was a period of about nine years in the 1990s up to about 2001 when the Atomic machine was not available in Australia. The proposition derived from annexures to Ms Notaras’ affidavits. She maintained nevertheless that the contents were unreliable.
Ms Emily Jane Murphy, solicitor, affirmed an affidavit dated 18 May 2018. She was not required for cross-examination.
The first part of her affidavit concerned the sale of coffee machines and coffee through the same trade channels, illustrated by reference to the Nespresso coffee business. Ms Murphy said she had observed the Nespresso coffee business promoting and offering for sale coffee machines, coffee and accessories (such as coffee cups) under the Nespresso trade mark. She annexed a collection of screenshots from the Nespresso website. Nespresso branded coffee and coffee machines were sold at various locations in Australia, including a boutique store located at 188 Pitt Street, in Sydney. She annexed a fact sheet to her affidavit which showed that the Sydney Nespresso boutique store opened in 2010. The screenshots annexed to Ms Murphy’s affidavit showed locations where Nespresso branded coffee and/or coffee machines were sold in Sydney, there being some 16 locations.
Ms Murphy deposed that on 16 May 2018 she attended the Nespresso Boutique located at the Wintergarden Shopping Centre, Brisbane. She observed the coffee bar facility and that customers were able to receive a complimentary coffee, made by staff using the Nespresso branded coffee and coffee machines. She ordered a coffee from the menu and observed other customers doing the same. On the same date, Ms Murphy obtained a collection of screenshots of the Nespresso website dated 23 January 2014, 23 November 2013, 1 April 2014 and 14 January 2014 from the Wayback Machine archive. The screenshots illustrated the promotion and offer for sale of coffee machines, coffee and accessories (such as coffee cups) under the Nespresso trade mark online in January 2014.
Ms Murphy deposed that she had observed the online appliance retailer Kogan promote and offer for sale both coffee and coffee machines under the Lavazza and Nescafé trade marks, respectively. She annexed a screenshot from Kogan’s website on 14 May 2018 showing the promotion and offer for sale of a Lavazza branded coffee machine together with Lavazza branded coffee. A further screenshot from the same website showed the offer for sale of a Nescafé branded coffee machine together with Nescafé branded coffee.
Ms Murphy deposed to a visit on 14 May 2018 to the Coles supermarket at 700 Logan Road, Greenslopes, Queensland. She there observed coffee machines being offered for sale under the trade marks Espressotoria and Map in the same supermarket aisle and on the supermarket shelf located directly underneath the shelf where coffee was also sold under the Espressotoria and Map trade marks, respectively.
Ms Murphy deposed to visits she made on 16 May 2018 to two cafes. The first was “Bunker” in Milton, Queensland. She there observed coffee machines or makers such as the AeroPress and Hario V60 Dripper being offered for sale in the cafe where dine in and takeaway coffee were also being served. She annexed photographs. The second cafe was “Kin + Co” in Teneriffe, Queensland. Ms Murphy observed coffee machines or makers such as AeroPress, Hario V60 Dripper and Bialetti being sold in the cafe where dine in and take away coffee was also being sold. She annexed photographs.
Mr Marcello Nadile, director of Euroespresso Machine Co Pty Ltd (Euroespresso), affirmed an affidavit dated 18 May 2018.
His evidence was that he and his wife had operated Euroespresso as a family run business since 1986. Mr Nadile worked full-time in the business. The purpose of his affidavit was briefly to identify what goods and services Euroespresso provided.
Since 1986, he deposed, Euroespresso had:
(a)imported, sold and serviced espresso coffee machines, including commercial models (sold for use in cafes, restaurants etc), and domestic models (sold for use in households). The primary brand of coffee machine that Euroespresso imported and sold was the Italian brand La Pavoni. To his knowledge, his company was the only distributor of La Pavoni coffee machines in Australia;
(b)roasted and sold coffee to commercial and domestic customers, in a variety of forms e.g. beans, espresso grind, stove top percolator grind, et cetera. For example, the coffee blends that Euroespresso roasted and sold included the company’s Euroblend House Blend and Pavoni Blend;
(c)operated a cafe and retail store/showroom at an address on Parramatta Road, Annandale, New South Wales; and
(d)provided spare parts and servicing for the La Pavoni espresso coffee machines.
He annexed to his affidavit a printout of pages of Euroespresso’s website.
He also annexed some photographs of the Annandale cafe and retail store/showroom taken on 17 May 2018 and deposed that the in-store layout and arrangement, as shown in those photographs, had been the same for over a decade.
He identified what goods and services were provided at Euroespresso’s Annandale cafe and retail store/showroom, which was open to the general public. Since 1986, the public had been able to:
(a)buy La Pavoni coffee machines (commercial or domestic);
(b)sample and by the company’s house roasted coffee, for example the EUROBLEND and PAVONI BLEND coffee;
(c)purchase fresh made espresso coffee from the in store cafe (cappuccino, cafe latte, flat white, short black, long black, et cetera), including coffee made using the company’s own blends;
(d)access the company’s spare parts and coffee machine repair/servicing business.
Mr Nadile identified how and why the name PAVONI BLEND was chosen for that blend of coffee. The PAVONI BLEND was a medium to dark roast with a sharp spicy flavour. He and his wife chose to name the blend PAVONI BLEND, because they made the blend for use in the La Pavoni machines specifically.
Mr Nadile addressed the question whether he was aware of the manufacturer of the La Pavoni coffee machines, La Pavoni S.p.a., ever having sold coffee. He first became aware that that company sold coffee about 20 years ago, when he visited in Milan, Italy the roaster that supplied La Pavoni with the coffee that company sold. He annexed to his affidavit a copy of a printout from the website of La Pavoni S.p.A., illustrating the sale by that company on its website of PAVONI ESPRESSO brand coffee in 10 kilogram and 12.5 kilogram packets.
Mr Nadile said he was aware of the ATOMIC brand of coffee maker. His opinion was that ATOMIC was a very well-known Italian made domestic coffee maker. It had been on the market for decades. For a time, his company itself supplied the Atomic coffee maker.
Mr Nadile was cross-examined. He agreed that over the last 10 or 15 years the domestic coffee machine market in Australia had become much more competitive than when he first started in business. He agreed there were many more domestic coffee machines for a customer in Australia to choose from in the period from 2005 until the present than there were in the 1980s or the early 1990s when he first started in business.
Mr Nadile agreed that he had supplied Atomic coffee machines from 1986 for 10 or 12 years so that his last sale was, roughly, more than 15 years ago. Although he was not still selling the Atomic machine he displayed an Atomic machine on the shelf in his store. He agreed he also had on that shelf other caffettiera or coffee pots, as well as some old coffee grinders. He agreed that the purpose of displaying those old caffettiera and grinders was to create a bit of atmosphere in his store and to show that he and his business were serious about coffee making.
Mr Nadile agreed that his purpose in having the Atomic machine on a shelf was not to create an association in the minds of his customers between his business and the manufacturers of the Atomic machine. He did not put the Atomic pot there to create a connection between his business and Bon Trading nor with Ms Notaras.
The evidence for Barcelona
Mr Michele De Marte, cafe and restaurant owner, swore two affidavits, the first dated 29 June 2018 and the second 29 July 2018.
Mr De Marte was the sole director and company secretary of Barcelona.
He deposed that he had over 18 years’ experience as a cafe and restaurant owner.
He began his career in the cafe/restaurant business with a cafe called Cafe Bocca in the Perth CBD. He and his brother came up with the concept for this cafe which was opened by Modena Pty Limited (Modena) (of which he was a director) in 2000. He was responsible for the day to day running of this business until Cafe Bocca was sold in 2004.
In 2001, Modena opened an espresso bar with a coffee focus in Perth called Rosso Espresso. He was responsible for its design and concept, together with its day to day running. Modena sold the Rosso Espresso business in 2004.
In September 2005, Barcelona opened its cafe/restaurant concept in South Perth under the name “ATOMIC”.
In addition to these cafes, Mr De Marte had been responsible for the establishment of and the running of two restaurants owned by Bologna Pty Limited, of which he was the sole director and company secretary: an Italian restaurant which opened in Claremont in Perth in July 2013 called Nolita and an Italian restaurant in Nedlands which opened in 2010 called La Lola.
Mr De Marte annexed several newspaper articles about his cafe and restaurant businesses, including “ATOMIC”.
Mr De Marte deposed that in relation to the cafes and restaurant business owned by Barcelona, he was responsible for coming up with the concept and fit out (with the assistance of internal architects and designers) and for the launch of those concepts. Once launched, he had been responsible for the day to day running of those businesses, and for making all the key decisions for those businesses, including in relation to the ATOMIC cafe/restaurants.
In the operation of the Barcelona business, and over the course of the last 18 years, Mr De Marte frequently visited other cafes and restaurants, both in Perth (at least fortnightly), and less regularly around Australia and overseas (at least four times per year), to ensure that he was up to date with cafe/restaurant industry practice and activities. In visiting other cafes and restaurants, he had observed their practices, including their goods and services offerings. To keep up to date with industry trends, he also had subscriptions to magazines including GlobalCoffeeReport, Gourmet Traveller, Belle and Vogue Living. He read these magazines monthly to keep up to date with the cafe/restaurant industry and changes in that industry (as these magazines featured new cafes and restaurants). He also read a New Zealand magazine called Cuisine, as well as doing his own internet research on a cafe/restaurant concept that he had read about in these magazines or otherwise come across.
Mr De Marte had also purchased coffee machines for his cafes. In early 2017, he purchased two machines as well as four coffee grinders from Xtracted Espresso Solutions which dealt in commercial coffee machines.
Due to his own experience as a cafe and restaurant owner, and from the observations he had made during his visits of other cafes and restaurants, he deposed that he had a deep knowledge and understanding of the operation of cafes and restaurants, and the goods and services offered and provided in cafes and restaurants, particularly in Western Australia.
Mr De Marte deposed as follows in relation to the adoption of the ATOMIC mark by Barcelona.
Prior to opening the ATOMIC cafes, he had an interest in the Atomic age design era spanning the 1940s to 1960s and particularly in furniture and other design pieces of the 1940s. He annexed the page printed from He also annexed pages in relation to a design exhibition focussed on the Atomic age at >
Mr De Marte deposed that the espresso bar (Cafe Rosso) that he opened with his brother in 2001 was designed in the style of that era including original Eames DCM moulded plywood chairs (designed in 1945). He annexed to his affidavit an article that appeared in the magazine “indesign” in November 2003.
Mr De Marte deposed that to the best of his recollection, it was around that time that he became aware of the Atomic stove top coffee maker designed in Italy during the 1940s. He had a collection of vintage caffettiera some of which belonged to his parents or grandparents, such as an original Bialetti (aluminium stove top pot made in Italy) as well as an old Atomic stove top coffee maker. He recalled someone, he could not recall who, gave him the used Atomic coffee maker. He could not recall when that was but he believed it was around about 2005 after the opening of the ATOMIC cafe. He believed he was given it by a collector at the time who was a good customer in the early days. He put it on the back shelf behind the front bar at the ATOMIC cafe in South Perth and it acted as an ornament from then for the entire time the cafe was trading. His caffettiera collection had been on display at various of his cafes over the years.
Mr De Marte deposed that he carried through the 1940s Atomic design era concept from Cafe Rosso into the design of the first ATOMIC cafe in South Perth, the building work for which commenced in mid-2004. Atomic age design elements, including furniture, dressings (fabrics) and lighting from this period were used in the ATOMIC cafe/restaurants spaces.
For example, he deposed, the ATOMIC cafe/restaurants were, and had been since inception, fitted out with furniture and other items from the 1940s including George Nelson “ATOMIC” clocks (designed in 1947) and platform benches, Louis Poulsen pendant lighting (designed in the 1940s) and original Eames DCM moulded plywood chairs (designed in 1945), together with custom made corian table tops with tulip table bases. He annexed to his affidavit a bundle of photographs of some of these items. In the case of the ATOMIC cafe in South Perth, Mr De Marte deposed, for a number of years the used Atomic coffee maker, also designed in the 1940s, was displayed along with other caffettiera from his personal collection. He said that the George Nelson ATOMIC clock hung as a feature on the side wall of the ATOMIC cafe in South Perth from the time it opened in September 2005 until about 2008 when it was replaced with the George Nelson Star Clock. He annexed a photograph of the George Nelson ATOMIC clock which he said was identical to the ATOMIC clock that hung in the South Perth ATOMIC cafe/restaurant for those years.
The first task in relation to issue 8 is to identify the goods. In Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84, cited with approval in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606-607, Dixon J said, at 94:
What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.
Applying these principles, first in relation to goods, I do not accept Ms Notaras’ submission that the class 30 goods designated in Barcelona’s application and set out at [239(a)] above were “goods of the same description” as the goods over which the Word Mark was registered, being non electric coffee percolators, espresso makers, coffee machines and non electric cappuccino makers. I find that the nature of the goods is quite different. I also find that the uses of the goods are quite different notwithstanding that ground coffee is used in coffee machines and coffee as a beverage is produced by a coffee machine.
The respondent’s cafes do not sell coffee machines. It is not common for cafes to sell coffee machines retailing at many hundreds of dollars. Coffee machines are not commonly provided through the same trade channels as coffee, notwithstanding there are instances of cafes selling a relatively cheap device for making coffee, such as the AeroPress. I accept the evidence of Mr De Marte, set out at [169] above, that these small, plastic, portable plunger style devices are of a different nature to home use coffee machines, percolators and stove top coffee machines sold through retailers. I give no weight, as occupying a distinct niche, to the evidence of sellers of coffee pod machines and the coffee pods used in them. I also do not regard it as significant that in some instances those sellers provide coffee to their customers to drink to demonstrate to prospective purchasers the pod machines’ function. I accept Mr De Marte’s evidence that at these concept stores the serving of coffee was an incidental offering by way of promotion of the coffee pods sold for exclusive use in the coffee machines for sale in those stores and that the Nespresso concept was the tied sale of coffee machines and pods under the same brand.
Although there is some overlap in trade channels through which the goods are bought and sold, I find that that overlap does not amount to the goods commonly being sold in the same kinds of “shops or departments” and it is not sufficient to lead to the conclusion that the goods are of the same description as each other and thus similar goods within the meaning of s 14. I find that Barcelona’s goods in class 30 are not commonly sold through the same trade channels as coffee machines, although there are some instances where a coffee machine may be purchased at a cafe or at a retail store selling coffee beans or ground coffee. Similarly, I find that the sale by retail in certain instances of coffee pods together with pod coffee machines, with or without a free cup of coffee, does not establish that the class 30 goods are goods of the same description as the coffee machines.
I accept the evidence of Mr De Marte that he was not aware of any consumer ever enquiring to buy a coffee machine at any of his cafes or restaurants.
Continuing in relation to goods, for similar reasons I do not accept Ms Notaras’ submission that the class 21 goods designated in the Barcelona application and set out at [239(b)] above were “goods of the same description” as the goods over which the Word Mark was registered, being the non electric coffee percolators, espresso makers, coffee machines and non electric cappuccino makers.
I find that coffee cups, cups of paper or plastic, cardboard cups, heat insulated containers for beverages and containers for beverages have quite a different nature to coffee machines. I find that coffee cups are used with coffee machines in the sense that the beverage produced by the coffee machine is poured into a coffee cup but the goods remain different and it could not be said that one was substitutable for the other. I reach this conclusion notwithstanding also that some types of coffee machine include a part which may be described as a heat insulated container. I also find that the uses of the goods are quite different notwithstanding that that the coffee beverage which a coffee machine makes is drunk from a coffee cup.
Again, I find that although there is some overlap in trade channels through which these goods are bought and sold, that overlap is not sufficient to lead to the conclusion that these goods are of the same description as each other and thus similar goods within the meaning of s 14.
In respect of all of these goods, I take into account the reasoning in Polo Textile at 241 that it is relevant to consider the matter of the likelihood of confusion or deception when assessing whether or not goods are similar to other goods within the meaning of s 14.
Summary on s 44 in relation to Barcelona’s goods
In my opinion, Ms Notaras has not established that any of the opposed Barcelona goods in class 21 and class 30 are the same or of the “same description” as the class 21 coffee machines designated in Ms Notaras’ prior registration for the Word Mark. The minor overlapping of trade channels does not lead to a different conclusion.
Issue 9
Turning to services, in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 the Full Court considered the background to the amendments to the Trade Marks Act 1955 (Cth) by the Trade Marks Amendment Act 1978 (Cth) when the Act was extended to cover services. In that case, the Supreme Court of South Australia had granted an injunction restraining the appellants:—
(a)from infringing the trade mark “Caterpillar” registered in relation to, inter alia, rental and leasing services in respect of machinery and equipment (being services included in class 36) and in relation to, inter alia, rental and leasing services in respect of machinery and equipment including the hire of bulldozers and other earth moving machines being services included in class 37); and
(b)from carrying on business under the business name of “Willoughby’s Caterpillar Loader Hire Service” or under any name including the word “Caterpillar” calculated to induce the belief that the business of the defendants (appellants) is connected or associated or has any link with the plaintiff’s (respondent’s) business relating to the rental leasing and hiring out of machinery and equipment including earth moving machines.
In the Full Federal Court, Lockhart J said, at 522-523:
In the absence of a statutory definition of “services” in the Act it will fall to the courts to give meaning to the word. Some guidance may be obtained from the Mathys Committee’s recommendation (para 67) that any definition of “services” in the Trade Marks Act 1938 (UK) should be broad enough to include the following types of service:—
(i) consultancy and advisory services which involve no goods;
(ii) similar services which involve goods and can be provided either with or without the promotion, or sale, of goods; and
(iii) services which necessarily involve the use, or sale, of goods.
…
Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods. Parliament recognized this potentiality for confusion between marks for goods and services where they are closely related to each other by amending various sections of the Act including s 23 as to non-use of trade marks, s 33 as to prior registration of conflicting marks and s 36 relating to registration of associated trade marks.
The potentiality for confusion between trade marks lies behind the legislative purpose of refusing registration to marks the use of which would be likely to deceive or cause confusion (para 28(a)). This was the case with marks for goods and now extends to marks for services whether as between themselves or as between marks for goods and services.
The issue was also considered in Woolworths at 378 per French J:
The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … [I]t is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services …
In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 the relevant question was whether Touraust’s intended use of the name “Chifley” in connection with the operation or management of a number of hotels (hotel related services) was in relation to services in respect of which the mark “Chifley Tower” was registered: that is, services falling within the description “property management services, retail and office leasing services”.
The Full Court posed the question whether services to be provided by Touraust services were of the same description as that of services in respect of which the appellant’s mark was registered: s 120(2)(c).
The Full Court cited Southern Cross Refrigerating at 606 and Re J Lyons as cited by Burchett J in Polo Textile and, at 244, accepted that those principles, subject to any necessary modification, applied in relation to services. Their Honours continued:
For reasons that have already been given, the services involved in managing an hotel have different characteristics than property management services. If, as we have held, particular incidental services take their character from the whole, the position is not altered by the fact that managing an hotel may involve the performance of incidental services akin to those carried out by property managers.
This conclusion is reinforced if, as Southern Cross suggests, the proper approach is that attention should be directed to the “trade channels” through which the services are provided. It is not difficult to infer that hotel management is a specialised undertaking, ordinarily carried out by different entities than those involved in providing property management services, such as real estate agents or shopping centre managers. Partly for this reason, it is difficult to regard hotel managers as being engaged in the same trade or industry as those providing property management services…
These considerations were recently applied by Nicholas J in Dunlop Aircraft Tyres. At [305]-[306] his Honour was considering goods including aircraft tyres and services including re-treading of aircraft tyres. He found that aircraft re-treading services were typically provided by the same businesses that manufactured aircraft tyres. Further, the supply of new aircraft tyres and the re-treading of those tyres after use typically occurred as part of a maintenance operation in which the tyre supplier re-treaded and replaced used aircraft tyres for a fleet of aircraft in accordance with a maintenance program. His Honour concluded that there was no doubt that aircraft tyres and aircraft tyre re-treading services were closely related goods and services for the purposes of s 120(2). His Honour was satisfied that aircraft tyre re-treading services were closely related to at least some of the goods such as tyres and re-tread tyres. His Honour was also satisfied that aircraft tyres were also closely related to at least some of the registered services such as “re-treading of tyres” and/or “repair of damaged tyres”.
I do not accept Ms Notaras’ submission that the class 35 services set out at [239(c)] above are closely related to coffee machines. I have already found that the goods are not goods of the same description. It follows that the reasoning in Rowntree at 405, on which Ms Notaras strongly relied in this respect, is inapplicable. I also find that the services such as retailing and wholesaling of coffee do not have a sufficiently close function with respect to the coffee machines, as distinct from the function of the services with respect to coffee: see Woolworths at [38]. I accept that there is some overlap in trade channels in that some businesses that sell coffee machines also provide cafe services and some cafes sell coffee machines as well as coffee as a beverage but in this case that does not lead to the conclusion that the services are closely related. I agree with the view of the delegate that merely being an input into the supply of a service does not render goods closely related to that service.
Similarly, I do not accept Ms Notaras’ submission that the class 40 services set out at [239(d)] above are closely related to coffee machines. My reasoning is the same. Although coffee roasting and coffee grinding are prerequisites to the operation of the coffee machine, I find that coffee grinding and coffee roasting are not services which are closely related to coffee machines. Those services do not have a sufficiently close function with respect to the goods.
Lastly, I do not accept Ms Notaras’ submission that the class 43 services set out at [239(e)] above are closely related to coffee machines. It is not sufficient that cafe services or coffee bar services could not be provided without coffee machines. The cafe services do not perform a function in relation to the coffee machines. They do not feature the goods: see Rowntree at 405. I accept that the trade channels to some extent overlap in that some businesses which manufacture or sell coffee machines also provide cafe services but, in my opinion, that does not make the cafe services or coffee shop services closely related to the coffee machines.
Again, any minor overlapping of trade channels does not lead to a different conclusion.
I note the decision of Spender J in Winton Shire Council (appeal allowed: Lomas v Winton Shire Council [2002] FCAFC 413 but not on this point) at [55]-[56], as follows:
… The only services of relevance in this context are those relating to the conduct of outlets for the supply and provision of meals and refreshments. The registered goods are beverages, purchased for domestic or restaurant use. Outlets for the supply of meals and refreshments are a catering service where food is prepared and beverages are made available to be consumed on the premises of the outlet. Are beverages goods which are “closely related” to a catering service, where food and beverages are made available to be consumed on the premises? The goods and the relevant services have different trade channels.
The question is not without difficulty but, on balance, I am not satisfied that the operational outlets for the supply and provision of meals and refreshments should be considered as being “closely related” to the Registered Goods, namely beverages.
Issue 10
This issue does not arise in light of my answers to issues 8 and 9.
In case I am wrong in either respect, I find that Barcelona has established that there has been honest concurrent use of its proposed trade mark within the meaning of s 44(3)(a). I repeat here my findings in relation to the evidence of Mr De Marte at [296]-[297] and [300] above. I find that the concurrent use was honest and began in 2005 when Barcelona’s proposed trade mark was used extensively in and around Perth in relation to cafes and the supply there of food and beverages, including coffee. I find there was no confusion likely to ensue, with no instances of confusion being proved: see [351]-[353] below.
The honest concurrent use has been in relation to the goods and services supplied by Barcelona: that is, goods within class 21 and class 30 and services within class 35 and class 43. I accept Ms Notaras’ submission that the evidence does not establish that Barcelona used its proposed trade mark before the priority date for at least ground coffee; preparations for making beverages (coffee based); instant coffee; unroasted coffee; or coffee substitutes in class 30; wholesaling of coffee and coffee based products; wholesaling of drinks in class 35; heat insulated containers for beverages in class 21 or coffee grinding; coffee roasting in class 40.
I accept Mr De Marte’s evidence of the inconvenience and cost to Barcelona of any rebranding. I find that the use of its proposed trade mark by Barcelona in Western Australia has not caused inconvenience to Ms Notaras.
Issue 11
Again, this issue does not arise in light of my conclusions on issues 8 and 9. Section 44(3)(b), concerning whether there are circumstances other than honest concurrent use making it proper for the application for registration to be accepted, is an alternative to s 44(3)(a).
I do not accept the submissions on behalf of Barcelona that a geographical limitation is itself an ‘other circumstance’ or that an ‘other circumstance’ is that a third party, Suntory, owns a registration for the trademark ATOMIC for coffee, with a priority date of 7 February 2005.
The next two issues arise in relation to the basis of opposition to the registration of a trade mark in s 60, that another trade mark has a prior reputation.
Issue 12
In my view, there is sufficient contemporaneous documentary evidence of sales by the appellant under the Word Mark or Device Mark, including in Western Australia, to demonstrate the existence of a reputation for the ATOMIC mark amongst a significant section of the relevant public as at the priority date. The parties disagreed as to the breadth of what constituted the relevant public. The appellant submitted it constituted persons interested in the kinds of coffee machines including the Atomic machine. The respondent submitted that it constituted the customers and potential consumers of the goods and services in Barcelona’s application.
I prefer the appellant’s characterisation of the relevant public. I find that the Atomic coffee machine was a specialised product and that a significant number of persons interested in coffee machines knew the ATOMIC trade mark: see Le Cordon Bleu at [91]. But I find that that reputation did not extend beyond coffee machines.
In my view, the respondent’s broader characterisation of the relevant public is not apposite to the specialised nature of the goods supplied by the appellant. I note that, if I did accept that broader characterisation, the evidence would not be sufficient to demonstrate a significant reputation amongst that relevant public, and the appellant’s ground under s 60 would therefore fail at this point.
Issue 13
Reputation of itself is not sufficient, as counsel for Ms Notaras accepted: see [255] above. The question is whether, because of the reputation of the ATOMIC trade mark, the use of Barcelona’s proposed trade mark for any designated goods or services would be likely to deceive or cause confusion. As I have said, Ms Notaras has demonstrated a reputation for the ATOMIC trade mark amongst persons interested in coffee machines.
I have found that Barcelona’s goods and services are not similar to the goods the subject of Ms Notaras’ trade marks. I also find that the ground of opposition based on the use, including normal and fair use, of Barcelona’s proposed trade mark would not be likely to deceive or cause confusion. I do not infer that the relevant consumers will make the association between Barcelona’s goods and services and the Atomic coffee machine and the ATOMIC marks. Although the word “Atomic” is the same in each case, it is not used in respect of the same or similar goods and services. I find it is not likely that consumers will be deceived or confused. I note in this respect the present retail price of an Atomic coffee machine is high ($575) as against the much lower retail price of bags of coffee beans, cups of coffee and food. I also note that the geographical limitation of Barcelona’s proposed trade mark to Western Australia, where the evidence shows there is and has historically been a very limited number of sales of Atomic machines by Ms Notaras or Liflo, further decreases the likelihood that consumers will be deceived or confused.
Although Barcelona has been offering goods and services under its proposed trade mark for a substantial number of years there is no evidence of any confusion or indeed any association with Ms Notaras’ goods or Liflo’s. I refer to the evidence of Mr De Marte in this respect, which I accept. The absence of any evidence of confusion is telling.
Issue 15
The parties were not agreed on the point at which it was necessary to consider a geographical limitation to Western Australia.
In light of my findings nothing appears to turn on this. As claimed by Barcelona, I find that registration of Barcelona’s proposed trade mark should be limited to the state of Western Australia.
Residual discretion
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.
I certify that the preceding three hundred and fifty-eight (358) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson. Associate:
Dated: 10 January 2019
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