Opposition by Martin Richards to registration of trade mark application number 2057974 (Classes 16, 30, 43) – BLK STR figurative in the name of Black Star Pastry Pty Ltd.

[2022] ATMO 2

TRADE MARKS ACT 1995

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

Re:Opposition by Martin Richards to registration of trade mark application number 2057974 (Classes 16, 30, 43) – BLK STR figurative in the name of Black Star Pastry Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Dimitrios Eliades of counsel, instructed by Raven IP.   Applicant: Marcus Fleming of counsel, instructed by Maddocks.
Decision:	2022 ATMO 2 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1. This is a decision on the opposition by Martin Richards (‘Opponent’) to the registration of trade mark application number 2057974 (‘Application’) filed by Black Star Pastry Pty Ltd (‘Applicant’) on 17 December 2019 (‘Relevant Date’), for the trade mark and goods and services below:

   Trade Mark Number:    2057974

   Trade Mark:               

   (‘Trade Mark’)

   Goods/Services:          Class 16: Printed matter; photographs; recipes; recipe books

   Class 30: Bakery products; bread; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries; donuts; croissants; pastry; sandwiches; coffee; tea; chocolates

   Class 43: Bakery services; providing food and drink; restaurants; cafes; hospitality services; take away food services; catering services; cake baking, bar services

   Priority Date:              17 December 2019

2. The Application was examined and later accepted for possible registration and advertised for opposition on 27 May 2020. The Opponent filed notice of its intention to oppose the Application on 15 June 2020 and a statement of grounds and particulars (‘SGP’) on 30 June 2020. The Applicant filed a notice of its intention to defend the Application from opposition on 7 August 2020.

3. The parties were given the opportunity to file evidence in accordance with the timetable set out in the Trade Marks Regulations 1995 (Cth).[1] The Opponent filed Evidence in Support (‘EIS’) on 6 November 2020. The Applicant filed Evidence in Answer (‘EIA’) on 10 February 2021. The Opponent filed Evidence in Reply (‘EIR’) on 12 April 2021.

   [1] Trade Marks Regulations 1995 (Cth) reg 5.14. Unless stated otherwise, each reference to a section or regulation in these reasons is a reference to the Trade Marks Act 1995 (Cth) or Trade Marks Regulations 1995 (Cth).

4. The parties elected to be heard by video conference. The Opponent was represented by Mr Dimitrios Eliades of counsel and Mr Matthew Sulman, solicitor. The Applicant was represented by Mr Marcus Fleming of counsel, instructed by Ms Viviane Karoumbalis of Maddocks.

   Grounds and onus

5. The SGP nominates grounds of opposition under ss 42(b), 44, 58, and 60.

6. The Opponent applied at the hearing to amend the SGP to expand the s 44 ground to services in the Application that were not stated to be subject of the s 44 ground in the original SGP. There was also some uncertainty following the hearing as to the goods and services for which the Opponent was pressing the opposition under the ss 42(b), 58, and 60 grounds. However, due to my findings on similarity of the respective trade marks of the parties, I was not required to decide the issue of similarity of goods and services. As such, it is not necessary to determine whether the amendment to the SGP is allowable, or to make a finding on the goods and services for which the Opponent pressed the opposition under ss 42(b), 58, and 60.  

7. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. The following evidence was filed:

   EIS

   Declaration of Martin Richards, Opponent, made on 5 November 2020, with Exhibits 1 to 18. (‘Richards 1’)

   EIA

   Declaration of Christopher Thè, founder of Applicant, made on 9 February 2021, with Exhibits CT-01 to CT-03 (Thè 1).

   Declaration of Emily Makiv, CEO of JKLP Group, owner of Applicant, made on 10 February 2021, with Exhibits EM-1 to EM-49 (‘Makiv 1’).

   EIR

   Further declaration of Martin Richards, made on 12 April 2021, with Exhibits 19 to 23. (‘Richards 2’)

   EIS

9. The Opponent declares that he is the sole director of two companies, Blackstar Coffee Cafes Pty Ltd and Blackstar Coffee Roasters Pty Ltd. The Opponent states that he first selected the name ‘BLACKSTAR’ (‘Opponent’s Word Mark’) for his coffee business (‘Opponent’s Business’) on or around 1 September 2006. In addition to the Opponent’s Word Mark, the Opponent also developed a composite mark:

   (‘Opponent’s Composite Mark’)

10. The Opponent declares the Opponent’s Business was launched in July 2007 when the Opponent commenced roasting coffee beans and selling coffee, beans, and cold pressed coffee and food products from premises leased at Souths Leagues Club, in West End Brisbane. The Opponent operated his first coffee cart in Fortitude Valley, Brisbane selling the same products from October 2007. A second retail premises was also opened in West End, Brisbane in October 2008, and a third in Brisbane City in October 2013. A new dedicated roastery was opened in East Brisbane in May 2015. The West End retail premises was remodelled at the same time to include a full kitchen. An additional West End premises called ‘Blackstar Coffee – Small Axe’ also operated between October 2017 and June 2020. Additional sales also took place at market stalls in West End and New Farm Brisbane at various times between 2007 and 2020.

11. The Opponent states that the Opponent’s Business has been promoted since 2009 via social media channels including various Facebook pages with the titles /Blackstar coffee, /Contessablackstar, and /Blackstaroriginstore), Instagram (/Blackstarcoffeeroasters), and Twitter (/Blackstarcoffee).

12. The Opponent provides confidential revenue figures which indicate commercially significant annual turnover by the Opponent’s Business since 2007, although I note the figures are not broken down into turnover associated with the sale of goods (such as coffee) and services (provision of food and beverages). The Opponent also provides confidential marketing expenditure figures that indicate a modest marketing spend in most years since 2007.  

13. The Opponent annexes various samples of use of, or references to, the Opponent’s Word Mark and Opponent’s Composite Mark, and similar marks, including:

    (a)Internet Archive Wayback Machine Extracts for the website from 14 October 2007 which, in addition to use of the Opponent’s Word Mark in the domain name, also contains various other uses of BLACKSTAR (including the Opponent’s Composite Mark, and the word marks BLACKSTAR ESPRESSO and BLACKSTAR ROASTERY). Other similar extracts are provided from 2009 and 2010, in addition to ‘Coming Soon’ website holding pages on the same domain name from 2011-2012, and updated websites (again at the same domain) under the header BLACKSTAR COFFEE ROASTERS from 2012-2020.

    (b)Invoices or statements for coffee sold in 2007, 2010, 2012, and 2013. Each document shows either BLACKSTAR COFFEE ROASTERS or BLACKSTAR COFFEE.

    (c)A price list for Christmas Gift Packs with a ‘last modified date’ of 9 November 2007, which bears both the Opponent’s Word Mark and Opponent’s Composite Mark.   

    (d)Articles before the Relevant Date including those from the following sources (i) postkiwi.com dated 15 May 2008 titled “Blackstar Café Opening in West End”, (ii) beanstalker.com dated 23 December 2011 titled “The beanstalker.com’s Top 10 Brisbane Cafes for 2011” which mentions the Opponent’s Business as being rated no. 5, (iii) weekendnotes.com dated 23 January 2012 titled “Blackstar Coffee” which discusses the Opponent’s West End café and range of food and beverages, (iv) weekendedition.com.au dated 21 March 2013 titled “Blackstar delivers cold-pressed coffee to workplaces”,  (v) gourmandandgourmet.com.au dated 2 September 2014 titled “What your go to coffee spot says about you”, 2 January 2015 titled “Brisbane’s best cold press coffee”, and 24 October 2018 titled “Brisbane’s Roastery Cafes”, all of which mention the Opponent’s Business, (vi) Brisbane Visitor Guide November 2014-April 2015, which mentions the Opponent’s Business under the heading “Coffee Roasters”, (vii) urbanlist.com dated 19 November 2016 titled “7 Westside Cafes you Need to Try This Weekend”, which mentions the Opponent’s Business, (viii) silverchet.com.au, undated, titled “Blackstar Coffee… it’s not all about the beans”, (ix) thegoodguide.com.au dated 6 September 2017 titled “Blackstar Coffee – a Bean to be reckoned with”, and (x) broadsheet.com.au dated 12 September 2018 titled “Blackstar Coffee”.

    (e)A photo of a stall at a Brisbane market which the Opponent states was taken in 2008, and which displays the mark BLACKSTAR COFFEE and a logo.

    (f)Third party Facebook extracts from (i) the page ‘One Penny Black Espresso Bar’ dated 12 August 2012, and (ii) the page Riccochet Espresso, both of which show bags displaying the BLACKSTAR COFFEE ROASTERS mark.

    (g)Facebook extracts from the Opponent’s Blackstar Coffee Roasters page dated between 2010 - 2019 containing use of BLACKSTAR COFFEE ROASTERS in posts and on menu boards, product packaging, photographs of stalls, and staff clothing. The page summary indicates that it was created on 21 November 2010.

    (h)A YouTube video page screenshot for a video titled “A ‘Long Black’ at Blackstar Coffee in Brisbane” dated 2 October 2008.

    (i)An Instagram extract from the Opponent’s Blackstar Coffee Roasters page from October 2020 indicating that at that time, the page had 2,518 followers.

    (j)Photos of various bags of coffee and bottles of cold-pressed coffee bearing the Opponent’s Composite Mark.

14. The Opponent annexes a letter dated 7 August 2020 from the president of the Australian Speciality Coffee Association which indicates that the Opponent’s Business joined that association in 2012 and has since become a prominent member.

15. The Opponent declares that he is the owner of the following registered ‘BLACKSTAR’ trade marks (‘Opponent’s Registrations’):

    Trade Mark Number:    1172976

    Trade Mark:               BLACKSTAR

    Goods/Services:          Class 30: Beverages consisting principally of coffee; beverages made from coffee; beverages with coffee base; coffee; coffee (unroasted -); coffee beans; coffee beverages; coffee beverages with milk; coffee concentrates; coffee drinks; coffee products; coffee-based beverages; coffee-based beverages; decaffeinated coffee; ground coffee; ice beverages with a coffee base; preparations for making beverages (coffee based)

    Priority Date:            26 April 2007

    Trade Mark Number:    1288833

    Trade Mark:               

    Goods/Services:          Class 29: Milk based beverages (milk predominating); soya based dairy substitutes

    Class 30: Additives for coffee; coffee

    Class 33: Alcohol for drinking; alcoholic beverages

    Priority Date:            20 March 2009

    EIA

16. Mr Thè declares that the Black Star Pastry business (‘Applicant’s Business’) first opened in Newtown, Sydney, in October 2008. The business sold a wide variety of baked goods, including bread, croissants, pastries, cakes, and sandwiches, with coffee being an accompaniment. Mr Thè states that the Applicant’s website, was launched in 2010. The Applicant’s Business used both the word mark BLACK STAR PASTRY, and a composite mark below:

17. Mr Thè states that on 19 September 2011, the Applicant applied for, and was later granted registration (under trade mark number 1449202) for this composite mark for various goods and services in classes 16, 30, and 43.  

18. Mr Thè states that he operated the Applicant’s Business as a sole trader until the ‘business was incorporated’ (i.e. Mr Thè incorporated the Applicant and the Applicant subsequently continued to run the business) on 17 June 2011.

19. Mr Thè states that he opened a second bakery store in Roseberry, New South Wales, in January 2014, and a further store in the Sydney CBD in October 2015.

20. Mr Thè states that in 2018-2019, he sold all shares in the Applicant to JKLP BSP Pty Ltd, an entity within the JKLP Group.

21. Mr Thè states that he and subsequently the Applicant have continuously used the BLACK STAR PASTRY trade marks in connection with the Applicant’s Business since 2008, including on store signage, menus, packaging, price labels, product listings, baked goods, and on the Applicant’s website. Mr Thè states that the Applicant’s Business has been extensively promoted through various media including bakery outlets, written publications, social media, online blogs, and through the Applicant’s website, and that the Applicant has sold goods to retail customers through its retail stores and online, as well as at food festivals around Australia, since about 2015. The Applicant has also won several Inner West Small Business Awards in for about eight years in a row. The Applicant also won the Australia Small Business Champion Best Bakery award in 2016.

22. Ms Makiv states in Makiv 1 that she is the CEO of JKLP Group, the owner of the Applicant. Ms Makiv confirms information provided by Mr Thè regarding the history of the Applicant. Ms Makiv also mentions that the Applicant’s reputation and the iconic strawberry watermelon cake were reasons for the purchase of the Applicant by JKLP Group.

23. Ms Makiv states that the Applicant opened a fourth bakery store in November 2017 in Moore Park, Sydney, and a fifth store in St Kilda Melbourne in November 2019. Further, Ms Makiv states that the Applicant has operated pop up stores around Australia since 2015, including stalls at the Fairfax Night Noodle Markets (which runs for 12 days each year) including in Sydney (October 2015), Melbourne (November 2015, 2017, and 2018), Brisbane (July 2017), Perth (March 2016, 2017), and Canberra (March 2016, 2018).

24. Ms Makiv provides further details which indicate that the Applicant has developed a significant reputation in the BLACK STAR PASTRY marks. However, as that information is not particularly relevant to this decision, I will not provide a detailed summary.    

25. Ms Makiv states that “The updated branding “BLK STR” is a modern take of the Black Star Pastry brand that has been created as an extension of the existing brand. It is intended to be used predominately on merchandising to differentiate the Applicant’s merchandise from the cake and bakery business.”

    EIR

26. The Opponent in the EIR responds by providing his opinion on numerous statements made by Ms Makiv and Mr Thè. Many of the comments are in the way of criticisms of the EIA or legal submissions regarding the grounds of opposition. A particular focus of the Opponent is his criticism of the extent of due diligence undertaken by Mr Thè when first adopting the BLACK STAR PASTRY marks, and the difficulties the Opponent is now facing and expects to face due to the ongoing use and potential expansion of both the Applicant’s BLACK STAR PASTRY marks and the Trade Mark in the marketplace.

27. The Opponent questions the Applicant’s motives for applying to register the Trade Mark, noting the broad scope of goods and services for which registration is sought.  The Opponent also recalls discussions with Mr Thè and Ms Makiv at various times, his characterisation of the Applicant’s business in relation to its sale of coffee and its appearance as a café, and instances of confusion between the BLACK STAR PASTRY marks and the Opponent’s Word Mark. The Opponent annexes two declarations from members of the café industry who confirm that confusion has occurred between the respective brands of the parties.

28. The EIR is quite detailed and the Opponent’s declaration ran to 80 paragraphs.  However, much of the information is at most only of tangential relevance or relates to issues that I am not required to decide.  As such, I will not further summarise material that is not directly relevant to my decision.

    Discussion

29. This opposition was heard concurrently with oppositions by the Opponent to trade mark applications for BLACK STAR PASTRY figurative and BLACK STAR PASTRY word mark (trade mark number 1953011 and 1953012). Much of the evidence filed in this opposition was also filed in, and is more relevant to, those concurrent oppositions. Due to the differences in the marks being opposed and the priority dates of the applications, I have issued a separate decision in the concurrent oppositions (Richards v Black Star Pastry Pty Ltd [2022] ATMO 1) rather than a single decision covering all three applications.

    Section 58

30. Section 58 requires that the Opponent establish that the Applicant is not the proprietor of the Trade Mark. To establish this ground, the Opponent must show use in Australia by some person other than the Applicant of a trade mark that is substantially identical to the Trade Mark[4], with such use being in relation to goods or services that are identical or the ‘same kind of thing’ as the goods or services of the Application.[5] The use of the trade mark relied on by the Opponent must have occurred before the Relevant Date, or before the date of first use of the Trade Mark in Australia by the Applicant, whichever is earlier. Alternatively, it is also possible for the Opponent to demonstrate proprietorship, in the absence of any use of trade marks by either the Applicant or the Opponent for particular goods and services, by demonstrating that he was the first to apply for registration of a trade mark substantially identical to the Trade Mark, for goods or services that are identical or the same kind of thing, and that he held a genuine intention to use that trade mark at the time of filing.

    [4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

    [5] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

31. The Opponent relies on the Opponent’s Word Mark (being the plain word BLACKSTAR) as the basis for this ground. I must first determine whether the Trade Mark is substantially identical to the Opponent’s Word Mark. If the two marks are not substantially identical, the s 58 ground will fail.

32. The test for whether two marks are substantially identical requires that they be assessed as follows:

    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.[6]

    [6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

33. For ease of reference, the trade marks are compared below:

    BLACKSTAR

34. I am satisfied that the Trade Mark is not substantially identical to the Opponent’s Word Mark. The Opponent’s Word Mark consists of a compound of two known English words, BLACK and STAR. The Trade Mark consists of two sets of three consonants BLK and STR, one atop the other. The Trade Mark has no obvious meaning and is visually and aurally very different from the Opponent’s Word Mark. The total impression that emerges from a comparison of the two marks is one of dissimilarity.  

35. As the Opponent cannot show first use or registration of an earlier substantially identical trade mark, the s 58 ground is not established.

    Section 44

36. To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on at least one pending or registered trade mark with a priority date earlier than the priority dates of the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark of the Application, and must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.

1. The Opponent relies on its registrations for the Opponent’s Word Mark and Opponent’s Composite Mark as the basis for the section 44 ground, both of which have earlier priority dates than the Application.

2. I have already decided under s 58 that the Trade Mark is not substantially identical to the Opponent’s Word Mark. The Opponent also does not allege the Trade Mark is substantially identical to the Opponent’s Composite Mark.  A such, I must consider whether the Trade Mark is deceptively similar to the Opponent’s Word Mark and/or the Opponent’s Composite Mark.

3. The test for whether trade marks are deceptively similar is broader than the test for whether they are substantially identical and requires that one trade mark so nearly resemble another so that it is likely to deceive or cause confusion.[7] In determining deceptive similarity, I am guided by the following principles:

   -There must be a real, tangible danger of confusion, not just a mere possibility.[8] Likelihood of confusion can be established if a number of consumers would be caused to wonder whether the applicant’s goods or services come from some other source. It is enough if the ordinary person entertains a reasonable doubt.[9]

   -The impression of the respective marks as a whole must be considered, including the size and prominence of word and device elements and their relationship to each other.[10] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[11]

   -Consumers may retain an imperfect recollection of a mark or its essential features.[12]

   -It may be relevant that an element of the trade marks under consideration is descriptive. However, descriptiveness does not preclude a finding of deceptive similarity.[13]

   -The impression of the mark on ordinary consumers is relevant, not the impression on those who are particularly perceptive or cautious, or those who are exceptionally careless or stupid.[14]

   -It must be considered how the goods or services are ordinarily sold or provided.[15]

   [7] Trade Marks Act 1995 (Cth) s 10.

   [8] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).

   [9] Coca‑Cola Co v All‑Fect Distributors Ltd [1999] FCA 1721, [39] (Black CJ, Sundberg and Finkelstein JJ); Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   [10] Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [100] (Yates J); Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [91]-[103] (Moore, Sackville, and Emmett JJ).

   [11] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147, 174-5 (Viscount Maugham); De Cordova v Vick Chemical Co (1951) 68 RPC 103, 105-6 (Lord Radcliffe).

   [12] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).

   [13] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).

   [14] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).

   [15] Ibid.

4. The respective trade marks look very different, and if the Trade Mark were pronounced as two consecutive acronyms, they would also sound very different. The case for deceptive similarity therefore essentially rests on whether I consider it likely that a consumer would read ‘BLK STR’ as ‘BLACK STAR’. If a consumer were likely to do so, then I would conclude that there is a real, tangible danger of confusion sufficient to establish deceptive similarity. 

5. In assessing deceptive similarity, I must be cautious to treat the Trade Mark on its own merits, and not give undue weight to extraneous factors that may artificially influence how the Trade Mark would ordinarily be perceived. In Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd (‘Delfi’), Jessup J said:

   In addressing the question referred to in the authorities, I am not permitted to assume that the applicant’s mark will be used in any particular style, colour or get-up…  Much of the respondent’s case was concerned to demonstrate how confusing the applicant’s mark would be if used in the same lettering and font, in the same colour and against the same background colour, and in the same layout and style, including the same placement and angle with reference to the packaging being used, as the respondent’s mark commonly is. Considerations of these kinds would, of course, be central aspects of any passing off case brought by the respondent against the applicant, but they have no place in a proceeding in which the only issue is whether the applicant’s mark, a single word in upper case letters, should be registered.[16]

   [16] [2015] FCA 1065, [11] (citations omitted).

6. The comments of Jessup J in Delfi relate specifically to assumptions regarding getup or stylisation of the trade mark. These are not factors I am presently considering. However, the underlying principle in Delfi is the need to consider deceptive similarity based on the inherent qualities of the trade mark. Factors external to these natural attributes which may unduly influence the perception of the trade mark go beyond consideration of the look, sound, and idea of the mark and should be viewed with caution in determining deceptive similarity.

7. The use of an abbreviation can in some circumstances result in deceptive similarity with the word or phrase that the abbreviation represents. In the UK decision Conran v Mean Fiddler Holdings Ltd, Walker J held the abbreviation ‘Zn’ was sufficiently close to the word ZINC to constitute an infringement. His Honour said that ‘the idea of the mark ZINC seems to me to include the chemical symbol for Zinc’.[17] However, that case concerned a well-established dictionary abbreviation that would have been general knowledge amongst a significant number of people.

   [17] (1998) 39 IPR 253, 255.

8. Turning to the present case, I am mindful that when the Trade Mark is used near the Applicant’s BLACK STAR PASTRY mark, a consumer is more likely to conclude that BLK STR is an abbreviation of BLACK STAR. The situation is analogous to the use of acronyms. By their very nature, acronyms look and sound very different from the words that they represent. However, when an acronym is used in close proximity to the words it abbreviates, the reader is educated as to the meaning of the acronym and from that point on may perceive the acronym in a way that they previously would not have contemplated.

9. It is also not in dispute that the Trade Mark is derived from the Applicant’s BLACK STAR PASTRY trade mark. The Applicant claims, somewhat paradoxically, that the Trade Mark is both an extension of the BLACK STAR PASTRY brand and an attempt to differentiate different aspects of the business. A cogent argument was made by the Opponent that the Applicant would not have adopted the Trade Mark if it did not bring to mind the Applicant’s BLACK STAR PASTRY trade mark, and this implies a likelihood of confusion.

10. However, while the subjective intention of the Applicant is relevant, in the end the question of deceptive similarity must be decided objectively. On balance, I am not satisfied from the evidence that BLK would be read as ‘BLACK’, or that ‘STR’ would be read as STAR. While the mark may possibly be read as an abbreviation of two complete words, it is by no means certain that a consumer would instinctively insert the vowels necessary to form BLACK STAR. A consumer is only likely (as opposed to it being a mere possibility) to read the Trade Mark as ‘BLACK STAR’ if either previously educated to reach this conclusion or guided by immediately visible extraneous material (such as the close proximity of the Applicant’s BLACK STAR PASTRY brand). Without such assistance, interpreting the Trade Mark as ‘BLACK STAR’ is simply one possibility amongst many.

11. For these reasons, I do not consider that the Trade Mark is deceptively similar to either the Opponent’s Word Mark or Opponent’s Composite Mark. As such, the s 44 ground is not established. 

    Section 60

12. To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark subject of the Application is likely to deceive or cause confusion.

13. It is not necessary for the Opponent to establish that the trade mark relied on by the Opponent as the basis for this ground and the opposed Trade Mark are deceptively similar, or that the relevant goods or services of the parties are similar or closely related. However, the greater the similarities in the respective trade marks and goods or services, the more likely the existence of a reputation in the trade mark relied on by the Opponent is to give rise to a likelihood of confusion. 

14. In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

    It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.[18]

    [18] [2000] FCA 1335, [85]-[86].

15. In Rodney Jane Racing Pty Ltd v Monster Energy Company it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[19]

    [19] [2019] FCA 923, [83] (O’Bryan J).

16. The Opponent relies on reputation in the Opponent’s Word Mark and Opponent’s Composite Mark as the basis for this ground.  The Opponent’s evidence demonstrates use over a long period of time of both the Opponent’s Word Mark and Opponent’s Composite Mark. The use is in relation to coffee produced at the Opponent’s roastery, and café services which sell the Opponent’s coffee in ready to drink form. While the Opponent does not provide a breakdown of revenue figures between goods and services, the evidence otherwise indicates that the Opponent’s reputation is tied primarily to coffee. I am therefore satisfied there is some level of reputation in both the Opponent’s Word Mark and Opponent’s Composite Mark in relation to coffee, and to a lesser extent, café services, but only where such services are provided in South East Queensland.   

17. The existence of reputation does not necessarily mean that confusion resulting from use of the Trade Mark is likely to occur. There must be a nexus between the reputation in the Opponent’s Mark and the likelihood of confusion caused by use of the Trade Mark. In Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd, Hearing Officer Lyons said:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[20]

    [20] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd [2010] ATMO 5 [39].

18. I have already held under s 44 that the Trade Mark is not deceptively similar to either the Opponent’s Word Mark or the Opponent’s Composite Mark. A lack of deceptive similarity is not necessarily fatal to the Opponent’s case under s 60. However, after considering the Trade Mark on its own merits, I am not satisfied that the nature and extent of the Opponent’s reputation is sufficient to give rise to a likelihood of confusion when the marks are not by their nature deceptively similar. While there may be a possibility of confusion amongst some consumers who know of the Opponent’s brand and who may perceive the Trade Mark as an abbreviation of the words BLACK and STAR, I am not satisfied that there is a real, tangible, danger of confusion amongst a significant number of consumers.

19. In reaching this decision, I have considered the two supporting declarations provided by the Opponent. I give these declarations limited weight as they refer collectively to all of the Applicant’s marks, thereby immediately conflating the word mark BLACK STAR PASTRY with the mark BLK STR in the mind of the declarant. Further, the two different declarants have used very similar and relatively formal wording to express their opinion that there is a likelihood of confusion. This indicates that the declarations were prepared by the Opponent’s legal counsel rather than being an opinion of the declarants as expressed in their own words.

20. As the Opponent has not established a likelihood of confusion, the ground under s 60 is not established.

    Section 42(b)

21. The Opponent under s 42(b) alleges consumers would be misled or deceived by use of the Trade Mark based on the reputation in the Opponent’s Mark, and such use would therefore constitute a breach of s 18 of the Australian Consumer Law.

22. The Opponent in submissions conceded that s 42(b) could only be made out only insofar as s 60 could also be made out. Therefore, as I have decided that s 60 has not been established, there is no need to consider s 42(b).

    Decision and costs

23. The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision. If the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.

24. Both parties requested an award of costs. In determining whether costs should be awarded, I have considered that the matter was heard together with the opposition to trade mark numbers 1953011 (BLACK STAR PASTRY figurative) and 1953012 (BLACK STAR PASTRY), and all oppositions were based primarily on the same evidence. As both parties have had a measure of success across the three oppositions, I decline to award costs.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    4 January 2022