Opposition by HIJOS DE RIVERA, S.A. to registration of trade mark application number 2247131 (class 32) –

[2025] ATMO 185

TRADE MARKS ACT 1995

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

Re:Opposition by HIJOS DE RIVERA, S.A. to registration of trade mark application number 2247131 (class 32) – ESTRELLA DAMM (composite) - in the name of Sociedad Anónima Damm

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Shauna Ross of Counsel instructed by IP Solved

Applicant: Andrew Sykes of Counsel instructed by Flinders Lane IP

Decision:

2025 ATMO 185

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 43, 44, 58, 60, 62A and reg 4.15A of the Trade Marks Regulations (Cth) – deceptively similar earlier registered trade mark in respect of similar goods – ss 44(4) and 44(3) not applicable – s 44 established – trade mark refused

Background

1.     On 5 February 2022 (‘Relevant Date’), Sociedad Anónima Damm (‘Applicant’) filed an application to register trade mark 2247131 under the Trade Marks Act 1995 (Cth) (‘Act’),[1] details of which I extract below:

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade mark:

(‘Trade Mark’)

Trade mark number: 2247131

Priority date: 5 February 2022

Specification: Class 32: beer (‘Applicant’s Goods’)

Endorsement: The applicant has advised that the English translation of the transliterated Spanish; Castilian word/phrase Mediterranean beer; malt and rice; star appearing in the trade mark is Mediterranean beer; malt and rice; star. The applicant has advised that the English transliteration of the Spanish; Castilian word/phrase Cerveza Mediterránea; de malta y arroz; estrella appearing in the trade mark is Mediterranean beer; malt and rice; star.

2.     The Trade Mark was examined under s 31 and acceptance was advertised on 6 July 2022. On 6 September 2022, HIJOS DE RIVERA, S.A. (‘Opponent’) filed its Notice of Intention to Oppose registration of the trade mark and its Statement of Grounds and Particulars (‘SGP’) followed on 30 September 2022. On 11 October 2022, the Applicant filed its Notice of Intention to Defend.

3.     On 25 January 2023, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Loreto Garcia-Garabal Sanchez-Harguindey, Corporate Legal Director of the Opponent, dated 19 January 2023 (‘Sanchez-Harguindey’) including Exhibits 1 to 23.

4.     On 29 April 2023, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Ignacio Costa Garcia, Director of the Legal Department at the Opponent, dated 24 April 2023 (‘Garcia’) with Exhibits ICG-1 to ICG-11, including Confidential Exhibits. I note that Exhibit ICG-8B, whilst referenced does not appear in the bundle submitted with the EIA.

5.     On 3 July 2023, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a declaration of Loreto Garcia-Garabal Sanchez-Harguindey, dated 29 June 2023, with Exhibits 1 to 11.

6.     The periods for evidence ended and the parties requested to be heard. On 14 May 2025, the Applicant filed Confidential Exhibit ICG-8B and written submissions regarding whether I should give the material weight. I informed the parties that I would reserve my decision on the matter until I heard submissions from the parties, including at the oral hearing.

7.     On 10 June 2025, I heard the matter by teleconference. Shauna Ross of Counsel, instructed by Brian Shortt from IP Solved appeared on behalf of the Opponent. Andrew Sykes of Counsel, instructed by Andrew Butler of Flinders Lane IP appeared on behalf of the Applicant. I am to decide this matter as a delegate of the Registrar of Trade Marks (‘Registrar’).

Onus and grounds

8.     The Opponent has the onus of establishing one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

9.     The SGP pursued grounds of opposition under ss 42(b), 43, 44, 58, 60, 62A and reg 4.15A.

Evidence

Preliminary issues

10.    I should first address the matter of whether I should give weight to Exhibit ICG-8B to Garcia. This material should have been filed as EIA and the Applicant concedes that material has been filed out of the required time. However, the Applicant requests that I consider Exhibit ICG-8B pursuant to regs 21.15(4) and 21.19. There are several considerations that can be relevant to the exercise of this discretion. However, it has not been necessary for me to forensically weigh all of them. The material in question would not assist the Opponent and this weighs heavily against me giving it weight.[4] The evidence at Exhibit ICG-8B has similar issues to those concerning other evidence, which I discuss below. Therefore, that evidence will not impact the outcome of these proceedings. Accordingly, I give no weight to Exhibit ICG-8B.

[4] Trade Marks Manual of Practice and Procedure Part 51.2.5. See also, Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [38] (Hearing Officer Richards).

11.    I should also mention that at paragraph [9] to Garcia, the declarant invites me to visit external links where voluminous information about the Applicant can be accessed. I decline to do so. The Applicant, especially in case of external weblinks containing potentially voluminous information should specify and provide this material in the proceedings so the parties and the Registrar can understand the material on which it seeks to rely. If the material is of such great weight in the matter, then it should have been enclosed as an exhibit to Garcia. I decline to give any weight to this material mentioned at paragraph [9] of Garcia.   

EIS

12.    The Opponent has been operating in Spain since 1906. Sanchez-Harguindey refers me to four registered trade marks held by the Opponent which contain the words ‘Estrella Galicia’ (‘Opponent’s Trade Marks’). I reproduce these at Schedule 1 to these written reasons.[5] Sanchez-Harguindey declares that the Opponent’s brands also include ‘Estrella Garcia, Estrella Galicia Especial, Estrella Galicia Light, Estrella Galicia 0,0, La Estrella de Galicia, Estrella de Navidad, 1906 Red Vintage, 1906 Reserva Especial and 1906 Black Coupage’.

[5] Sanchez-Harguindey, [31]-[32] and Exhibit 8.

13.    Sanchez-Harguindey notes a number of awards received by the Opponent’s beers. Sanchez-Harguindey also notes use of its trade marks internationally, including in Australia. Confidential Exhibit 4 provides annual revenue generated from sale of beer products. Sanchez-Harguindey otherwise provides evidence of the use of the Opponent’s Trade Marks in respect of beer and as appearing in advertising materials and activities.

14.    I otherwise refer to the EIS where relevant throughout these written reasons.

EIA

15.    The EIA shows that the business of the Applicant is large and its operations span across almost 100 countries. The annual report for the Applicant appears at Exhibit ICG-1 (‘Annual Report’) with some information about the history of the Applicant at ICG-2.  The Applicant was established in 1876 in Barcelona, Spain. Garcia declares that beers with labelling containing a star, the surname of the founder, the words ‘Damm’ and ‘Barcelona’ have been sold since the founding of the business. Garcia declares that the word ‘Estrella’ was added to the bottles of beer of the Applicant in 1921 and has been present on packaging since then.

16.    The following image of the early packaging at the foundation of the Applicant is reproduced below:[6]

[6] Garcia, [15].

17.    Various versions of the Applicant’s trade marks have been used over time since the foundation of the Applicant including the following noted at paragraph [19] of Garcia:

18.    Garcia declares that new labelling was designed and introduced to the global markets in 2014 and 2016. Garcia appears to suggest that the two bottles that are pictured on the far left side of the images above, were used before the new labelling. Garcia states that the new packaging was introduced to the global markets in 2016.

19.    The evidence contains a multitude of varied combinations of a star, the word ‘Estrella’, the number 1876 and the words ‘Damm’ as well as ‘Barcelona’. This includes on metal beer kegs, tap badges, six-bottle carry packs and slab boxes of beer. I note that many of these images are not properly dated in terms of their use.

20.    Garcia also refers to the Applicant’s many registrations in overseas jurisdictions at Exhibit ICG-3.[7]

[7] See also, Garcia, [26]-[29].

21.    Advertising, promotion and sponsorships and other partnerships by the Applicant are also mentioned in Garcia.[8] Confidential Exhibit ICG-6 in particular contains a variety of instances of potential use in Australia of different signs which contain the word ‘ESTRELLA’, including those signs shown at paragraph [17] of these written reasons. Included in Confidential Exhibit ICG-6 are media clippings dated in 2009 and 2010 which contain signs which include the word ‘Estrella’ in relation to beer. Sponsorship and promotional events occurring from 2010 onwards in Australia are also mentioned. Images which suggest the presence of the Applicant’s beer at various restaurants and bars in Australia are also extracted, many of these are undated. I need not further summarise every instance of potential use of signs in the material.

[8] Garcia, [30]-[42].

22.    Referencing the labels of bottles shown at paragraph [17] of these written reasons, Garcia declares that:

Trade marks containing the fundamental distinguishing elements of ESTRELLA DAMM beer products as described in paragraph [19] were first used in Australia in relation to beer at least as early as 2004, and use has been continuous….[9]

[9] Garcia, [45].

23.    At Confidential Exhibits ICG-8A to ICG-8H are invoices declared to be, ‘issued to Australian importers and distributors of ESTRELLA DAMM beer products for each of the years spanning a continuous period from 2004 to 2022’.[10] The descriptions of the goods in the invoices contain the text ‘ESTRELLA DAMM’.[11] Other descriptions include the leading words ‘DAMM EXPORT CORRIENTE’, ‘AK DAMM 1’, ‘ESTRELLA DAMM INEDIT’, ‘ESTRELLA DAMM DAURA’.[12] Exhibit ICG-8C contains descriptions on invoices such as ‘ESTRELLA DAMM BCN’, ‘INEDIT DAMM’. Exhibits ICG-8D, ICG-8F and ICG-8G includes again ‘ESTRELLA DAMM BCN’. At Exhibit ICG-8F the invoices also show ‘INEDIT DAMM’. Exhibit ICG-8H shows the words ‘ESTRELLA DAMM’ in the description.

[10] Garcia, [47].

[11] Garcia, Exhibit ICG-8A.

[12] Garcia, Exhibit 8A.

24.    Garcia also mentions that from 2004 there have been a number of confidentially declared distributors. Garcia makes several statements about how ‘ESTRELLA DAMM beer products are distributed and offered’ in Australia. This includes at Dan Murphy, First Choice Liquor, Liquorland and Vintage Cellars. Examples dated in 2023 are attached at Exhibit ICG-9. Venues which have ‘ESTRELLA DAMM beer products’ are also listed, often without evidence around when this has occurred and not specifying the exact trade mark that has been used.

25.    I otherwise refer to the EIA where relevant in these written reasons.

EIR

26.    The EIR contains additional information about the Opponent, its beer goods, packaging and distributors of the beer goods in Australia. It is unnecessary for me to otherwise summarise the EIR in these reasons.

Consideration

Section 44

27.    The Opponent relies on s 44. I extract relevant parts of this section below:

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.

…

(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.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

28.    For its s 44 ground of opposition, the Opponent relies on the Opponent’s Trade Marks, all of which are in the name of the Opponent and each have a priority date which is earlier than that of the Trade Mark. I proceed with particular interest in 1019902, which has the earliest priority date of the Opponent’s Trade Marks. The claim for ‘beer’ in 1019902 is also obviously the same as the Applicant’s Goods.

29.    The test for deciding whether two trade marks are substantially identical is expounded in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[13]

[13] [1963] HCA 66, [12] (Windeyer J).

30.    I reproduce the trade marks below side by side:

31.    There are clear differences in at least the words and their combination forming each of the trade marks. These result in a total impression of dissimilarity on a side by side comparison of the Trade Mark and the 1019902. I am not satisfied that the Trade Mark is substantially identical with any of the Opponent’s Trade Marks.

32.    I also must decide whether the Trade Mark is deceptively similar to any of the Opponent’s Trade Marks. Section 10 provides that a trade mark is deceptively similar to another trade mark if it ‘so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I should compare the respective trade marks as wholes,[14] with regard to essential or distinguishing features,[15] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[16] Also of importance is the effect and meaning of the trade marks,[17] especially their effect or impression produced on the mind of ordinary consumers.[18] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can in the right circumstances relevantly differentiate one remembered mark from another in the minds of those consumers.[19] Ultimately, what is required is a real tangible danger of confusion.[20] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[21]

[14] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[15] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[16] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

[17] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[18] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[19] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

[20] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) (‘Campomar’).

[21] Woolworths ibid [50](ii); Southern Cross (n 20) 594-595 (Kitto J). See also, Australian Woollen Mills (n 18) 658.

33.    Whilst there are differences between the trade marks in terms of the additional words such as ‘DAMM’ in the Trade Mark and ‘Galicia’ in the Opponent’s Trade Marks, all of the trade marks are likely to be imperfectly recalled by the word ‘ESTELLA’. There also a number of other visual differences which do not disturb that likely impression. I consider it likely that a person would be caused to wonder whether goods sold under the Trade Mark come from the same trade source as those sold under the Opponent’s Trade Marks. I consider the Trade Mark to be deceptively similar to at least 1019902.

Section 44(3)(a)

34.    There is also a crucial question I must answer in these proceedings about whether s 44(3)(a) is applicable even if there is a registered earlier deceptively similar trade mark.

35.    The onus for establishing honest concurrent use and the applicability of s 44(3)(a) is with the Applicant.[22] The Applicant should generally rely on circumstances before the Relevant Date to establish the applicability of s 44(3)(a).[23] The factors considered relevant to the question include the honesty of adoption and use; the extent of use in terms of time, geographical area, and sales volume and value; the degree of likely confusion; the manner of use; the relative inconvenience caused by allowing or denying the registration of the Trade Mark; and any instances of actual confusion.[24] An applicant’s knowledge of an earlier trade mark is not itself always necessarily fatal for the applicability of the provision.[25]

[22] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) (‘Trident’); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [147] (Lander J) (‘Hills Industries’); Telstra (n 3) [238].

[23] Hills Industries ibid [177] (Lander J); Trident ibid [186] (Gleeson J).

[24] Alex Pirie & Sons Ltd’s Application (1933) 50 RPC 147, 159-160 (Lord Tomlin); Re Fitton’s Application (1949) 66 RPC 110, 112 (UK Reg) which have been widely adopted and applied in Australia.

[25] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer J).

36.    The first point I must address is the honesty of adoption of the Trade Mark. I note that it is the adoption of a trade mark as applied for which is of the most interest in determining the applicability of s 44(3)(a).

37.    The Applicant provides a basic account of its business and the history of the adoption of other signs and the constituent elements of the Trade Marks overseas. Regarding the first use of the Trade Mark on or in relation to goods in Australia, Garcia declares that:

Trade Marks containing the fundamental distinguishing elements of ESTRELLA DAMM beer products as described at paragraph 19 [of Garcia] were first used in Australia in relation to beer at least as early as 2004, and use has been continuous in Australia since that time.[26]

[26] Garcia, [45].

38.    Nothing is said in the EIA about any checks conducted by the Applicant before the distribution of goods in Australia, though I do note that the status of the earlier trade mark may not have been clear on the Register at that point in time. I note that there are several trade marks on the Register which contain the word ‘ESTRELLA’, especially the Opponent’s Trade Marks. The Applicant’s evidence, importantly, says nothing about when exactly the Applicant became aware of the Opponent’s Trade Marks. Other than stating that they believe the trade marks are different and there is awareness of the ESTRELLA DAMM beer products, Garcia does not provide a statement that they have never encountered any persons which have been confused. The statement on honesty of adoption is bare. Importantly, any checks conducted or awareness specifically at the time of adoption of the Trade Mark in as early as 2016 is also not addressed.

39.    The Applicant also does not otherwise directly answer Exhibit 23 to Sanchez-Harguindey which exhibits information about two trade mark applications filed in the name of the Applicant, one filed in 2006 and the other in 2012, both in respect of beers and which now have the status of ‘lapsed not accepted’. The Opponent invites me to draw an inference from Exhibit 23 that the Applicant was likely aware of the Opponent’s Trade Marks by at latest 2006. This information weighs heavily against there being a finding of honesty in adoption and use of the Trade Mark. Regardless, I have also canvassed the other considerations for the application of s 44(3)(a) from here.

40.    I should note that much of the material in the EIA demonstrates use after the Relevant Date and which is not clearly targeted at Australia. This material does not assist the Applicant in demonstrating honest concurrent use.[27]

[27] For example, Exhibits ICG-4 and ICG-5.

41.    The Applicant alleges approximately 20 years of use of the Trade Mark by the Applicant in Australia. I note that this is a lengthy period of time. I also note that the earlier evidenced use in these proceedings by the Opponent is a date to which the Applicant’s alleged first use is close. The Applicant mentions the names of large retailers of alcoholic beverages as distributing ‘ESTRELLA DAMM beer products’. This statement does not indicate use specifically of the Trade Mark, nor does the evidence provide specific dates for these activities. Exhibit ICG-9 to Garcia shows screen captures of various distributor’s websites. These include some reviews from 2022. At their highest, I view them as not evidencing the level of longstanding use in Australia alleged by the Applicant. Exhibit ICG-10 is also dated later. Exhibit ICG-11 contains promotional activity examples dated from 2009 to 2020 in Australia. This material has at various points, similar issues described in this paragraph and below.

42.    The problem with the general statement in Garcia which purportedly links the Trade Mark with those goods referenced throughout various invoices is that it is vague about the specific trade mark which has been used. Paragraph [45] of Garcia references paragraph [19], which itself only produces images of various bottles of beers some with different signs to that of the Trade Mark. What paragraph [19] refers to is, in Garcia’s own words, ‘Trade Marks containing the fundamental distinguishing elements of ESTRELLA DAMM’. What is required is evidence of the use of the Trade Mark or a substantially identical trade mark, not individual use here and there of some of its fundamental distinguishing elements in some other re-arranged and potentially different and composite form as described in the evidence.

43.    There is also a cloud over the specific sign which has in fact been used when considering the evidence, especially the material in the invoices at Exhibits ICG-8A to ICG-8H and at certain points in Confidential Exhibit ICG-6. Whilst the invoices list goods with descriptions such as ‘ESTRELLA DAMM BCN’ and ‘ESTRELLA DAMM’, even in combination with other material they do not make clear to which, if any, of the beers they relate and/or which labels were applied. The statements made in Garcia also suggest that the Trade Mark was not in use until after 2016. I am not satisfied that the dealings, including those which occurred before 2016 and which are evidenced by the invoices, necessarily show use of a substantially identical trade mark. Whilst the words ‘ESTRELLA DAMM’ are at certain points mentioned, this is not sufficient of itself to amount to use of a substantially identical trade mark.

44.    Even if I assume that the invoices dated before 2016 in the EIA are for the first two labels shown at paragraph [17] of these reasons, to be useful I must consider those labels to contain signs which are substantially identical with the Trade Mark. The Trade Mark has some semblance to wax seal and bears a higher level of complexity by arrangement of different design features and additional words surrounding the words ‘ESTRELLA’ and ‘DAMM’. One example would be the words ‘AUGUST KUENTZMANN’ in the Trade Mark. Whilst the trade marks do share some elements, the added total complexity and individual elements in the Trade Mark is of significance. I am not satisfied that a total impression of resemblance emerges from a side by side comparison of the trade marks. Comparing the Trade Mark with those first two trade marks side by side, I do not consider these to be substantially identical.

45.    For the same reasons, I also am not satisfied that the inclusions of words such as ‘ESTRELLA DAMM’ and ‘ESTRELLA DAMM BCN’ or otherwise mentioned in the invoices across Exhibits ICG-8A to ICG-8H to Garcia amount to use of a trade mark which is substantially identical. These findings also mean that much of the material, including that at Confidential Exhibit ICG-6, which sometimes may show the first two trade marks shown at paragraph [17] of these reasons, does not assist even if dated prior to the Relevant Date.

46.    Many of the values of the invoices and their total value each partially result from the sale of beverages which appear to have been labelled with other signs, such as ‘inedit’ and ‘daura’, which I also do not consider to be substantially identical and by reference extract below:

(‘inedit’ in the Annual Report)[28]    (‘daura’ in the Annual Report)[29]

[28] Annual Report, 13.

[29] Annual Report, 16.

47.    I note that there are no specific or total sales figures provided for Australia for goods sold under the Trade Mark or other signs. However, Exhibits ICG-8A to H to Garcia are said to be representative of the revenue generated in the period of 2004 to 2022. The sales that are reflected in the invoices are each moderately sizeable as single transactions. However, as a proportion of the overall size of the industry for the Applicant’s Goods as listed in the invoices, the figures are not substantial. Further, the statement for these figures is for ‘ESTRELLA DAMM beer products’ which is not specific about the trade mark used. I here recall the statements made in Garcia that the Trade Mark only came about in 2014-2016 and was likely launched in Australia at some point after. Because the use reflected in sales by the invoices in the EIA are spread across a number of different trade marks, the potential period of concurrent use for these purposes is far less than the 20 year period suggested by the Applicant.

48.    I do assume that the word ‘ESTRELLA’ appearing on the invoices is a proxy for use of the Trade Mark or a substantially identical trade mark without more. Regardless, the volume of trade shown, the differences between the signs that may have been used, such as the first two reproduced at paragraph [17] of these written reasons, and the vagueness about which signs specifically were used in relation to beer at any particular time weigh against the exercise of this discretion, even if I assume that the Applicant’s adoption of the Trade Mark in Australia was honest. For these reasons, I find that s 44(3)(a) is not applicable in these circumstances.

Section 44(4)

49.    The Applicant submits that even if I consider there to be an earlier deceptively similar trade mark, the Trade Mark should also be registered because of s 44(4). The earliest of the Opponent’s Trade Marks is 1019902, with a priority date of 10 September 2004. For s 44(4) to be applicable the evidence must show that there had been use of a trade mark which is substantially identical to the Trade Mark since before the priority date of 1019902 continuously until the Relevant Date.

50.    The closest invoice to the priority date of 1019902 appears to be that at Confidential Exhibit ICG-8A which is dated 18 October 2004. This was issued by SA Damm which I consider to be the abbreviated equivalent of the Applicant’s name. This date is later than the priority date of 1019902. The other invoices at Exhibits ICG-8A To ICG-8H all also appear to be dated later.

51.    The Applicant’s written submissions also appear to rely on Garcia at paragraph [43] and Confidential Exhibit ICG-6 to Garcia. Much of this material is undated and it is not clear what specific trade mark has been used. Much of the material at Confidential Exhibit ICG-6 is also dated well after the priority date of 1019902. I recall the issues regarding the use of various trade marks across time in Australia, I also note that what is shown by the evidence is at its highest disparate use of different trade marks which I would not consider to demonstrate continuous use leading up to the Relevant Date.

52.    For these reasons the activities shown in evidence do not establish use of a substantially identical trade mark which has been both prior to the priority date of 1019902 and continuous until the Relevant Date. Accordingly, I find that s 44(4) is not applicable in these circumstances.

Section 44(3)(b)

53.    Section 44(3)(b) provides the Registrar with the discretion to accept the Trade Mark if because of ‘other circumstances’ it is proper to do so.  This discretion should be exercised with regard to the circumstances as at the time the discretion is exercised, rather than at the priority date of an application.[30]

[30] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83] (Reeves, Jagot and Rangiah JJ)

54.    At the hearing Mr Sykes pressed for an interpretation of the words ‘other circumstances’ such that I should take account of the alleged use of various elements contained in the Trade Mark across a lengthy period of time in Australia and overseas, even if not satisfied that the use has always been use of a trade mark which is substantially identical with the Trade Mark. I was taken to Singtel Optus Pty Limited v Optum Inc (‘Singtel’) where the Court applied s 44(3)(b) in part because of the prejudice that would be suffered by the applicant, should it be unable to use its trade marks in Australia.[31] The Opponent also took me to the fact of there being alleged registrations and coexistence overseas.[32] I emphasise that even on a wide interpretation of what the words ‘other circumstances’ may include, the circumstances on the evidence must regardless be so as to justify the application of the provision.

[31] [2018] FCA 575, [190]-[194] (Davies J).

[32] See the comments made in Campomar (n 20) [80]-[81].

55.    Firstly, I do not consider the volume of trade and use that is shown, even after the Relevant Date, to be persuasive. Many of the weaknesses in the evidence as to honest concurrent use already discussed would also impact the evidence when I consider whether s 44(3)(b) should apply. These weaknesses impact the assessment of the relevant commercial realities such as an alleged absence or low likelihood of confusion, which might have weighed in favour of registration being proper. I also consider that the trade marks and circumstances before me to have a comparatively higher likelihood of confusion by the shared prominent and important word element ‘Estrella’, which sets these circumstances apart from those in, for example, Singtel. I am satisfied that there would also be prejudice to the interests of the Opponent by registration of the Trade Mark.

56.    The registration of trade marks in another jurisdiction under different trade mark legislation and potentially because of unknown circumstances, is not necessarily a reason for its registrability in Australia. I otherwise also note that only some of the circumstances relied on tend to be circumstances apart from those that would support a finding of honest concurrent use. In Ceramiche Caesar S.p.A v Caesarstone Ltd the Full Court of the Federal Court referred to the decision of the primary judge stating:

Although his Honour does not say so in terms, it is apparent that, having upheld Caesarstone’s case based on honest concurrent use, he considered that it was not open to him, on the basis of what were essentially the same circumstances as were relied upon by Caesarstone for the purposes of that case, to permit the application to proceed to registration “… because of other circumstances”. This is consistent with the language and structure of s 44(3) which requires there be other circumstances (apart from those that would support a finding of honest concurrent use) in order to justify registration under s 44(3)(b). Given his Honour’s finding in relation to honest concurrent use, the decision not to find for Caesarstone on the basis of s 44(3)(b) is understandable.[33]

[33] [2020] FCAFC 124, [80] (Nicholas, Burley and Thawley JJ).

57.    Overall, I am not satisfied that the alleged other circumstances demonstrate that the registration of the Trade Mark is proper. Accordingly, I find that s 44(3)(b) is not applicable in these circumstances.

Decision and costs

58.    Section 55 relevantly provides:

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.

59.    The Opponent has established a ground of opposition under s 44. Accordingly, I refuse registration of trade mark 2247131.

60. The Opponent has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations.

Benjamin Goldsworthy

Hearing Officer

Delegate of the Registrar of Trade Marks

9 September 2025

Schedule 1

Trade mark number: 1019902

Priority date: 10 September 2004

Trade mark: 

(‘1019902’)

Specification: Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Endorsements: The applicant has advised that the ENGLISH translation of the SPANISH word ESTRELLA appearing in the trade mark is STAR

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Trade mark number: 1955039

International registration number: 1422447

Priority dated: 10 May 2018

Trade mark: 

Specification: Class 32: Beer; aerated waters; non-alcoholic beverages; mineral waters [beverages]; fruit beverages and fruit juices; preparations for making beverages; syrups for making beverages Class 41: Entertainment services; sporting and cultural activities

Endorsements: Colour Claimed: BLUE, WHITE, SILVER GRAY, BLACK, RED and AMBER; Parts Colour Claimed: BLUE background; WHITE letters; cover and background of label in SILVER GRAY; BLACK, RED, BLUE logo; AMBER bottle. The applicant has advised that the English translation of the words appearing in the trade mark is STAR GALICIA 0% JUST FOR BEER LOVERS.

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Trade mark number: 2060543

International registration number: 1166479

Priority date: 18 December 2019

Trade mark: 

Specification: Class 32: beer

Endorsements: White, black, red and gold.;White: "ESTRELLA GALICIA" and oval and circular lines. Black: background, oval and circular lines, star tips. Red: circle background where the star is depicted and bottom part under the designation"ESTRELLA GALICIA". Gold: star tips, oval-shaped line around the design. White, black, red and gold. White: "ESTRELLA GALICIA" and oval and circular lines. Black: background, oval and circular lines, star tips. Red: circle background where the star is depicted and bottom part under the designation"ESTRELLA GALICIA". Gold: star tips, oval-shaped line around the design.

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Trade mark number: 2205424

International registration number: 1609045

Priority date: 13 July 2021

Trade mark: 

Specification: Class 32: Beers with alcohol; alcohol-free beers; beers; non-alcoholic beverages.

Endorsements: Star Galicia

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