Oppositions by Martin Richards to registration of trade mark application numbers 1953011 (Classes 16, 35, 43) – BLACK STAR PASTRY figurative, 1953012 (Classes 16, 30, 35, 43) BLACK STAR PASTRY in the name of Black...
[2022] ATMO 1
•4 January 2022
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Oppositions by Martin Richards to registration of trade mark application numbers 1953011 (Classes 16, 35, 43) – BLACK STAR PASTRY figurative, 1953012 (Classes 16, 30, 35, 43) BLACK STAR PASTRY 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 1
Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds of opposition under ss 42(b), 44, 58, and 60 considered – s 58 and 60 partially established – applications amended and trade marks to proceed to registration.Background
This is a decision on the oppositions by Martin Richards (‘Opponent’) to the registration of trade mark application numbers 1953011 and 1953012 (‘Applications’) filed by Black Star Pastry Pty Ltd (‘Applicant’) on 4 September 2018 (‘Relevant Date’), for the trade marks and goods and services below (‘Trade Marks’):
Trade Mark Number: 1953011
Trade Mark:
(‘Composite Mark’)
Goods/Services: Class 16: Absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging
Class 35: Retail services (by any means)
Class 43: Restaurants; hospitality services; take away food services
Priority Date: 4 September 2018
Trade Mark Number: 1953012
Trade Mark: BLACK STAR PASTRY
(‘Word Mark’)
Goods/Services: Class 16: Recipes (printed matter); photographs; absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging
Class 30: Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries
Class 35: Retail services (by any means)
Class 43: Bakery services; providing food; restaurants; hospitality services; take away food services
Priority Date: 4 September 2018
The Applications were examined, accepted for possible registration, and advertised for opposition on 29 November 2019. The Opponent filed notices of its intention to oppose the Applications on 27 January 2020 and statements of grounds and particulars (‘SGP’) on 17 February 2020. The Applicant filed notices of its intention to defend the Applications from opposition on 25 May 2020.
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 24 August 2020. The Applicant filed Evidence in Answer (‘EIA’) on 24 November 2020. The Opponent filed Evidence in Reply (‘EIR’) on 1 February 2021. Prior to the hearing, the Applicant also filed additional evidence which I will discuss below.
[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).
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
The SGPs are in essentially identical terms and nominate grounds of opposition under ss 42(b), 44, 58, and 60.
At the hearing (and subsequently confirmed by the Opponent in correspondence), the Opponent narrowed the scope of the oppositions to the following services:
Class 35: Retail services (by any means)
Class 43: Restaurants; hospitality services; take away food services
(‘Opposed Services’)
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
The following evidence was filed:
EIS
Declarations of Martin Richards, Opponent, made on 24 August 2020, with Exhibits 1 to 18 (‘Richards 1’).
EIA
Declaration of Christopher Thè, founder of Applicant, made on 20 November 2020, with Exhibits CT-01 to CT-03 (‘Thè 1’).
Declaration of Emily Makiv, CEO of JKLP Group, owner of Applicant, made on 23 November 2020, with Exhibits EM-1 to EM-50 (‘Makiv 1’).
EIR
Further declaration of Martin Richards, made on 1 February 2021, with Exhibits 19 to 22 (‘Richards 2’).
Additional evidence filed by Applicant (‘Additional Evidence’)
Further declaration of Christopher Thè, made on 1 April 2021 (‘Thè 2’).
Further declaration of Emily Makiv, made on 27 July 2021 (‘Makiv 2’).
EIS
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 also includes details of various other companies and trusts associated with him, including copies of lengthy trust deeds. As this material is not directly relevant to the grounds of opposition and was not the subject of any contention between the parties, I will not describe it in detail.
The Opponent declares that he first selected the name ‘BLACKSTAR’ (‘Opponent’s Word Mark’) for his coffee business (‘Opponent’s Business’) on or around 1 September 2006. The Opponent’s Word Mark was selected for a variety of reasons, including its allusion to an earlier business called the Star Milk Bar, the relationship of the colour black with coffee, its relationship to fair trade and trade justice for coffee farmers, and the presence of a black star on the flag of Ethiopia (one of Mr Richard’s favourite coffee growing regions). In addition to the Opponent’s Word Mark, the Opponent also developed the following composite mark:
(‘Opponent’s Composite Mark’)
The Opponent details the plans for launch of the Opponent’s Business in early 2007, which included the operation of a coffee roastery and coffee cart. The Opponent states 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.
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).
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.
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.
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.
The Opponent annexes a letter from Mr Gus Khcheiche, the managing director of a Sydney based business, Coco Bliss. Mr Khcheiche states that he had knowledge of the Word Mark and when he subsequently met the Opponent for the first time, he was surprised to learn that the parties were not the same.
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
Mr Thè in Thè 1 declares that he chose the name BLACK STAR based on a song by the band Radiohead. He engaged a graphic designer in mid-2008 to design a logo incorporating the words BLACK STAR PASTRY, which resulted in the Composite Mark. He subsequently registered the business name BLACK STAR PASTRY on 21 July 2008. Mr Thè states that at the time of searching and registering the business name, he wasn’t aware of and had never heard of the Opponent or seen the Opponent’s trade marks.
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.
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.
Mr Thè states that on 19 September 2011, the Applicant applied for, and was later granted registration of the following trade mark (‘Applicant’s Registration’):
Trade Mark Number: 1449202
Trade Mark:
Goods/Services: Class 16: Recipes (printed matter); photographs
Class 30: Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries
Class 43: Bakery services; providing food
Priority Date: 19 September 2011
I note that in order to register the Applicant’s Registration, the Applicant was required to delete the services ‘provision of drinks’ and ‘café services’ from Class 43, due to objections based on the Opponent’s Registrations.
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.
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.
Mr Thè states that he and subsequently the Applicant have continuously used the 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 for about eight years in a row. The Applicant also won the Australia Small Business Champion Best Bakery award in 2016.
Mr Thè states that prior to 2010, he did not use custom printed packaging, but instead affixed labels bearing the Composite Mark onto the Applicant’s products, including takeaway boxes, paper bags, tote bags, coffee cups, napkins etc. In addition, the Composite Mark appears on t-shirts and uniforms for staff members.
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.
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).
Ms Makiv states that goods sold under the Trade Marks are generally sold directly to the public, although the Opponent has some wholesale customers. Ms Makiv provides figures for the number of customers served, and cakes and baked goods sold, in 2018, 2019 and 2020. These figures confirm that the Applicant had a thriving business during this period.
Ms Makiv states that the Applicant uses its Trade Marks on its stores, menus, packaging, price labels, product listings, and advertising. Ms Makiv states that the Opponent also uses the Trade Marks on its website blackstarpastry.com.au (since 2010), and on social media. Ms Makiv states that as of 4 September 2018, the Applicant’s Instagram page had approximately 80,000 followers (with 95,000 as of 19 November 2020, and 2,589 posts), and the hashtag #blackstarpastry has approximately 53,000 uploads from customers showing their photographs of cakes. Ms Makiv states that as of 19 November 2020, the Applicant had 1,039 followers of its Twitter page @blackstarpastry, and had made 2,551 tweets, in addition to having 25,881 followers on its identically named Facebook page.
Ms Makiv states that the Applicant promotes its business under the Trade Marks using advertising materials, booklets, and product distribution in-store, at public events, trade shows, and on television and in various media. The Applicant has also collaborated with various partners, including Vogue Australia (in September 2017) and Virgin Australia.
Ms Makiv states that the Applicant has participated in approximately eighteen festivals and promotional events in Sydney and Melbourne between 2015 and 2018.
Ms Makiv states that the Trade Marks have been referred to in many articles, editorials, and blogs between 2008 and 2019. Some of the more notable articles are an eight-page spread in Vogue Australia in May/June 2014, a feature in the Sydney Morning Heald on 17 September 2015 regarding the opening of the Sydney CBD store, and an article on 26 July 2016 in the Daily Mail regarding the ‘Insta-famous’ Black Star strawberry watermelon cake.
Ms Makiv states that the Applicant has won numerous awards since 2010 for its goods and goes on to provide a list 26 various industry and media awards, which includes five separate awards for individual sweet and savoury products alone at the 2017 Royal Agricultural Society Awards, the Food Service Magazine Best Pie in Australia award in 2013, and the Best patisserie café award in the Sydney Morning Herald Good Café Guide in 2011.
Ms Makiv annexes various samples of use or references to the Trade Marks, including:
(a) A photograph of the original Newtown storefront which opened in late 2008 (photo appears in 2009 article):
(b) Photograph of the Moore Park store in 2017:
(c) Photographs of the Roseberry and Sydney CBD stores in 2018:
(d) Photos of pop-up stalls at various markets.
(e) Numerous articles before the Relevant Date including, as illustrative examples, those from the following sources (i) Lemonpi dated 12 November 2008 titled “Love in the shape of small things” about the Applicant’s Business, (ii) The unbearable lightness of being hungry dated 19 November 2018 titled “Black Star Pastry, Newtown” and dated 21 June 2019 titled “Black Star Pastry, Newtown (again)”, (iii) heneedsfood, undated (but with comments from approximately 2009) titled “Black Star Pastry”, (iv) Simon Food Favourites dated 1 August 2009, titled “Black Star Pastry: Cakes and Coffee, Newtown (1 August 2009)”, (v) A Food story dated 4 October 2014 titled “Black Star Pastry, Roseberry”, (vi) The Daily Telegraph dated 22 November 2017 titled “Black Star Pastry opens airy new headquarters at Moore Park”, (vii) The Daily Mail dated 1 September 2018 titled “Having your cake and eating to too: Chinese billionaire’s son buys iconic Aussie watermelon cake empire after becoming obsessed with the most Instagrammed dessert in the world” which mentions the Applicant’s business, (viii) The Sydney Morning Herald dated 1 September 2018 titled “Love at first bite as smitten hotelier buys a slice of Black Star Pastry”, (ix) Gourmet Traveller dated 11 January 2017 titled “Black Star Pastry to open in Melbourne”, (x) The baroness of Melbourne dated 19 February 2019 titled “Black Star Pastry” which commences with the quote “Of all the things I’ve ever told you this is possibly the most important: Black Star Pastry has arrived in Melbourne”, and (xi) Vogue Australia Entertaining & Travel dated May/June 2014 titled “The Poet Patissier”, which is referred to on the cover as “Sweet Enchantment – Black Star Pastry chef Christopher Thè’s classic mocha cake.”
(f) Social media posts, including Instagram and Facebook (which includes the homepage indicating the page was created on 17 March 2010), featuring a broad range of uses of the Trade Mark.
(g) Photographs of bags, napkins, boxes, awards won by the Applicant or Mr Thè.
In addition to use of the Trade Marks in Australia, I note that the Applicant provides evidence of the Applicant’s business expanding overseas. However, as it is not relevant to determination of the opposition, there is no need to elaborate on such use in these reasons.
The Applicant provides confidential revenue figures which indicate commercially significant annual turnover associated with the Trade Marks since 2012. The Applicant also provides promotional expenditure figures which are reasonable given the nature of the business and the fact that the Applicant likely relies on custom generated by word-of-mouth, heavy use of social media, and free publicity in media articles and reviews.
EIR
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. It is not necessary to repeat those opinions or comments here in this overview of the evidence but I note that a particular focus of the EIR was criticism of Mr Thè’s initial due diligence, which prompted the filing of the additional evidence by the Applicant. The Opponent annexes a copy of the examination report dated 7 February 2012 that issued against the Applicant’s Registration, which raised the Opponent’s Registrations as a ground for rejection and included a warning that use of the trade mark on goods or services which the Applicant might exclude from that trade mark (in order to overcome the objection based on the Opponent’s Registrations), could constitute trade mark infringement. The Opponent also includes a response by the Applicant to the examination report, in which Mr Thè indicates that he is aware of the Opponent’s Business (referring to it as a ‘café of the same name in Queensland’). The Opponent opines that this statement renders statements in the EIA as being untrue.
Otherwise, the EIR annexes a statement from an owner of a day spa in Melbourne regarding a conversation where he told the owner and another staff member that he owned a coffee company called BLACKSTAR. The staff member reacted with enthusiasm and advised she had spent time in Sydney and had been to one of the Black Star stores. The Opponent then advised the staff member that he did not have a store in Sydney, and the staff member was obviously confused.
The Opponent opines that it is now normal practice for bakeries and restaurants to manufacture and sell their own coffee beans, and that if the Applicant is granted a trade mark which relates to selling coffee related products, they almost certainly would commence manufacturing and selling their own coffee beans. The Opponent annexes screenshots of websites and reviews of other bakeries and cafes which sell their own coffee beans.
Additional evidence
Mr Thè in his additional declaration responds to allegations made by the Opponent regarding his evidence in Thè 1 as to when he became aware of the Opponent’s Business.
Ms Makiv in her additional declaration also responds to allegations made by the Opponent regarding the evidence in Makiv 1. She declares that the Applicant does in fact sell coffee as an ancillary service, that this coffee originates from the roaster St Ali, and that the coffee is sold in generic cups.
Overall, I do not consider the additional evidence to add anything of probative value that could not already be discerned from the evidence originally filed by the Applicant. Further, there is nothing in the evidence that affects the outcome of my decision, particularly as it has not been necessary for me to consider honest concurrent use under s 44. As such, I give the additional evidence little weight.
Discussion
On the evidence I find that the parties gave honest and credible reasons for the origin of their brands, and that there is no evidence of bad faith. Neither party copied the other or sought to take advantage of the other’s emerging reputation. On balance, the evidence points to two successful entrepreneurs who by unfortunate coincidence came up with very similar and distinctive brand names for their respective businesses at around the same time. For approximately a decade, both Mr Richards and Mr Thè (and later, the Applicant) grew their businesses and co-existed peacefully in their respective markets of Brisbane and Sydney. However, the expansion of the Applicant’s Business and the Applicant’s desire to increase the scope of its trade mark protection has led to this dispute. It is regrettable that the parties could not reach some accommodation for co-existence. However, it is now necessary to decide to what extent the Applicant is entitled to register the Trade Marks, after considering the grounds of opposition pursued by the Opponent, and the Opponent’s rights established through use and registration of its trade marks since 2007.
Section 58
Section 58 requires that the Opponent establish that the Applicant is not the proprietor of the Trade Marks. 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 Marks[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 respective Applications.[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 Marks, 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).
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 plain word BLACKSTAR is substantially identical to either or both of the Trade Marks. If the marks relied on by the Opponent are not substantially identical to the Trade Marks, then the s 58 ground will fail.
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).
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’), the court held that a comparison of marks for determining whether they are substantially identical is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements.[7] The court went on to find that the following two trade marks were substantially identical, based on the common presence of the word INSIGHT and a similar device, and notwithstanding differences in font, stylisation, and descriptive material:
[7] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).
The words BLACK STAR are the dominant essential element of both of the Trade Marks. The Applicant submits that the word PASTRY cannot be disregarded, except perhaps insofar as the mark relates to goods that are pastry. There is some force to this argument. However, even where the goods or services to which the Trade Marks are applied are not pastry, but are other food or beverage products, I still consider that the term ‘pastry’ would be viewed as descriptive material by consumers, indicating that the owner of the marks is also a provider of pastry products, in addition to providing whatever food or beverage goods or services are presently being considered for purchase. As such, I do not consider that the term PASTRY constitutes an essential element of the Trade Marks. I also do not consider that the stylisation in the Composite Mark and the subtle inclusion of a star device renders the Composite Mark particularly distinguishable from the Opponent’s Word Mark. Overall, having regard to the factors discussed in Pham, I consider that both of the Trade Marks are substantially identical to the Opponent’s Word Mark.
As I have determined that the Trade Marks are substantially identical to the Opponent’s Word Mark, it is necessary to decide from what date or dates the Opponent’s claim to proprietorship of the Opponent’s Word Mark commences in respect of particular goods and services. The Opponent’s claim to proprietorship arises either by first use, or, by any registration of the Opponent’s Word Mark that predates the first use for particular goods and services.
The registration for the Opponent’s Word Mark (trade mark number 1172976) was filed and deemed to be registered from 26 April 2007. As this predates the first use of the Opponent’s Word Mark, the registration forms the basis for the Opponent’s claim to proprietorship for the registered goods, which can be summarised as coffee, coffee beans, coffee preparations, and coffee-based beverages.
It is then necessary to consider the Opponent’s claim to proprietorship based on use of the Opponent’s Word Mark for other goods and services. The Opponent states that he first started selling coffee beans, cold-pressed coffee and takeaway coffee and food from premises leased at Southern Suburbs Rugby Leagues Club in West End in July 2007. The Opponent goes on to state that he opened his first ‘retail outlet’ being a coffee cart at the Brisbane City Council head office in Greensquare, Fortitude Valley, in October 2007. The Opponent goes on to say that a second ‘retail outlet’ opened at Thomas Street in West End in October 2018.
A photograph of the Fortitude Valley cart (dated 2009) is below:
A photograph of the Blackstar Roastery at Thomas Street (also dated 2009) is below:
There are some issues with the Opponent’s evidence. First, the evidence provided for use at the Southern Suburbs Rugby League Club as early as July 2007 is a letter dated 6 June 2007 titled ‘Request for lease of space’. There is no dated evidence verifying that the Trade Mark was used in July 2007. Secondly, there is no image provided of the coffee cart in its original location in Greensquare Fortitude Valley, nor of the Thomas Street Roastery at the time of its opening. The imagery of the cart provided is from after it was moved to Alfred Street Fortitude Valley in July 2008. Further, to the extent that the Opponent sold food products around this time, there is no detail as to what these food products were.
However, I am satisfied based on the totality of the evidence, including photographs of the Fortitude Valley coffee cart, correspondence with the Southern Suburbs Rugby Leagues and Brisbane City Council, dated Internet Archive Wayback Machine extracts, a ‘Supporters Club’ hand-out sheet, and news articles, that it is more likely than not that the Opponent used the Opponent’s Word Mark for provision of coffee and food by late 2007 and was well established by early 2008.
The Applicant’s evidence establishes that the inspiration for the Word Mark first came to Mr Thè in early 2008, and he engaged a graphic designer in around May 2008. This subsequently resulted in the development of the Composite Mark. Mr Thè states he commenced using the Composite Mark on a business card around June 2008, and the first bakery in Newtown opened in late October 2008.
I am satisfied based on the respective chronologies set out in the evidence of the parties that the registration of the Opponent’s Word Mark for coffee, coffee beans, coffee preparations, and coffee-based beverages, and first use of the Opponent’s Word Mark for services involving the provision of coffee and food, both predate the first use in the course of trade of the Word Mark and Composite Mark by the Applicant for bakery services. The first use of both the Word Mark and Composite Mark for bakery and other services occurred in mid-late 2008.
I must now consider whether the goods or services for which the Opponent has earlier use or registration under the Opponent’s Word Mark are the ‘same kind of thing’ as the Opposed Services.
The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[8] In the context of a trade mark opposition, the test highlights the significant limitation of ownership of ‘common law’ trade mark rights as compared to ownership of a registered trade mark.
[8] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).
In Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’), Allsop J said:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[9]
Class 43
[9] Ibid, [89].
As mentioned above, the Opponent chose only to press the opposition against services that were not registered under the Applicant’s Registration, namely, restaurants; hospitality services; take away food services.
The competing claims to proprietorship rest to a large extent on defining the Opponent’s services that were provided as of late 2007 and early 2008. The Opponent characterises its services as café services. As such, the question is whether they can be realistically described as café services, or whether they should be more narrowly categorised as coffee cart services. Both types of service involve the provision of takeaway coffee, but café services infers a more permanent and sophisticated operation. To put it another way and referring to the example cited in Colorado, is a coffee cart a ‘hatchet’ and a café an ‘axe’ (i.e. a larger version of essentially the same thing) or are there sufficient essential differences between the two so that they cannot realistically be considered the same kind of thing.
Food and beverage services are provided by a wide range of businesses, from luxury restaurants to food and beverage carts, vans, and stalls. The mere fact that two different types of business both provide food and beverages, or that both businesses provide coffee, is not necessarily sufficient to render their services the ‘same kind of the thing’. A coffee can be purchased from both a vehicle service station and a Michelin rated luxury restaurant. However, the fact that two different businesses may also be described using different terminology is also not a decisive factor.
Traditional definitions and distinctions between different types of food and beverage operations have become somewhat muddied over time. For instance, the term ‘restaurant’ not only includes establishments that offer formal dining but also pop-up restaurants that operate on a temporary basis.[10] Further, a brief Google search for the terms ‘café-restaurant’ and ‘café-bar’ reveals many Australian establishments that describe themselves in these dual fashions.
[10] See for example Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235
The evidence of both parties also indicates that there is often over a short period of time a natural progression of a food and beverage business from small-specialised operations to more generalised café or restaurant services. As a business becomes popular (for instance, in this case, on the basis of reputation respectively for coffee or cakes), there is a strong possibility that it will seek to increase its revenue and its customer base by increasing the range of foods and beverages that it offers. The Opponent in this case commenced business by first trading as a semi-permanent coffee focused operation, then evolved into a more traditional café. The Applicant started as a bakery in very small premises and as its reputation grew opened more premises including those offering more formal dining options. This to my mind illustrates the natural evolution of two food and beverage businesses, rather than some sort of distinct phase transition from one readily definable form of food and beverage business to another.
Having regard to the above, I do not think it is appropriate to characterise the Opponent’s business as merely being a coffee cart, and not a café in one relevant sense of that word. The Opponent prepared and provided hot drinks and food to customers, with a particular focus on its barista prepared specialty coffee. Over time, the business grew and its food and beverage offerings increased. Notwithstanding it’s humble beginnings, I am satisfied that the Opponent’s Business included café services from the time it commenced providing food and beverages from coffee carts, which was prior to first use of the Trade Marks.
I am also satisfied that these café services are the same kind of thing as the restaurants, hospitality services, and take away food services covered by Class 43 of the Opposed Services, on the basis that the Opponent’s café services would fall within the spectrum of these broad definitions, and there would be numerous subsets of restaurant, hospitality, and take away services that would be the same kind of thing as café services.
I note the Applicant’s longstanding use of the Trade Marks and acknowledge that if grounds of opposition had been made out under s 44 based on similar considerations, the Applicant would have cogent arguments that the Trade Marks should still be accepted for the Opposed Services in Class 43 (at least to some extent) on the basis of honest concurrent use. However, s 58 does not provide an exception from refusal based on honest concurrent use, and therefore the Applicant cannot rely on longstanding and extensive use of the Trade Marks to remedy its lack of proprietorship in relation to the Opposed Services in Class 43.
I therefore consider the ground of opposition is made out in relation to the Opposed Services in Class 43.
Class 35
Both Applications include broad claims for retail services (by any means) in Class 35. The Opponent’s case under s 58 in respect of retail services rests on the assertion that its sale of goods constitutes a retail service.
Generally, retail services relating to food and beverages would encompass the sale of packaged goods originating from several different trade sources. I am not satisfied that the evidence establishes that the Opponent engages in retail services, or services that are the same kind of thing. The Opponent operates a café and sells its own branded coffee products. I consider that the use of both the Opponent’s Word Mark and Opponent’s Composite Mark is in relation to a café as a service, and in relation to coffee as a good. Café services primarily involve the provision of food and beverages prepared by the cafe for immediate consumption. While there are some similarities between the café services and retail services, and some businesses will be both a café and retailer of goods (for instance, a café may sell items such as chewing gum, cigarettes, newspapers etc.), there are also notable differences, and the respective services cannot be considered as true equivalents. As such, I do not consider that retail services in class 35 are the ‘same kind of thing’ as the café services of the Opponent.
Conclusion on s 58
For the reasons given above, I am satisfied that the Opponent has established a ground of opposition in relation to the Opposed Services in class 43.
However, I am not satisfied that a ground of opposition exists under s 58 in relation to the Opposed Services in class 35. As such, I must consider the remaining grounds of opposition in relation to the Applicant’s retail services (by any means) in class 35.
Section 60
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 Marks subject of the Applications is likely to deceive or cause confusion.
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 Marks 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.
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.[11]
[11] [2000] FCA 1335, [85]-[86].
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.[12]
[12] [2019] FCA 923, [83] (O’Bryan J).
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.
Taking into account the extent of the Opponent’s reputation, I consider that there is unlikely to be confusion if the Trade Marks were used in relation to general retail services (i.e. retail of a broad range of food and beverage products). However, I consider that a likelihood of confusion would arise if the Trade Marks were used in relation to the services of a speciality coffee retailer (namely, a trader who specialises in coffee and related products such as teas). I am satisfied that a significant number of consumers who by virtue of the Opponent’s reputation are aware of the Opponent’s Word Mark and Opponent’s Composite Mark (particularly those located in or originating from South East Queensland) could not help but wonder whether a specialty coffee retailer operating under the Trade Marks was connected with the Opponent.
As the Opponent has established a likelihood of confusion based on reputation in the Opponent’s Mark, I consider that the ground under s 60 is established in relation to particular services falling within the scope of the class 35 services, namely speciality coffee retailing services.
Section 42(b)
The Opponent under s 42(b) alleges consumers would be misled or deceived by use of the Trade Marks 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.
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 been established to some extent, there is no need to consider s 42(b).
Section 44
I have decided that grounds for rejection have been made out in relation to all of the Opposed Services in class 43, and specialty coffee retailing services in class 35. As such, it is appropriate that I consider whether the Opponent can establish the grounds under s 44 in relation to retail services (by any means) aside from specialty coffee retailing services.
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 Applications, 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 Marks of the Applications, 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 Applications, (ii) services that are similar to the services of the Applications, (iii) goods that are closely related to the services of the Applications, or (iv) services that are closely related to the goods of the Applications.
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 Applications.
I have already decided under s 58 that both of the Trade Marks are substantially identical to the Opponent’s Word Mark. However, I must also consider s 44 based on the Opponent’s Composite Mark, as the Opponent’s Registrations do not cover identical goods and services.
The Opponent does not allege that the Trade Marks are substantially identical to the Opponent’s Composite Mark, merely that they are deceptively similar.
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.[13] 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.[14] 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.[15]
-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.[16] However, deceptive similarity can also be found where one mark uses an essential feature of the other.[17]
-Consumers may retain an imperfect recollection of a mark or its essential features.[18]
-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.[19]
-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.[20]
-It must be considered how the goods or services are ordinarily sold or provided.[21]
[13] Trade Marks Act 1995 (Cth) s 10.
[14] Southern Cross Refrigerating v Toowoomba Foundry (1954) 91 CLR 592, 595 (Kitto J).
[15] 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).
[16] 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).
[17] 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).
[18] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196, [79] (Moore, Sackville, and Emmett JJ).
[19] Lift Shop P/L v Easy Living Home Elevators P/L [2014] FCAFC 75, [64] (Besanko, Yates, and Mortimer JJ).
[20] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan J).
[21] Ibid.
I consider the Trade Marks are deceptively similar to the Opponent’s Composite Mark. The most memorable essential feature of the respective marks is the word elements BLACK STAR / BLACKSTAR. I consider there is a high likelihood that a person relying on imperfect recollection would be caused to wonder whether goods or services sold under the respective trade marks originate from the same source, considering their shared highly distinctive element BLACK STAR / BLACKSTAR.
I must now assess whether the Applicant’s ‘retail services (by any means), other than specialty coffee retailing services’ in class 35 are closely related to the goods of the Opponent’s Word Mark or Opponent’s Composite Mark, which are:
Opponent’s Word Mark:
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)
Opponent’s Composite Mark:
Class 29: Milk based beverages (milk predominating); soya based dairy substitutes
Class 30: Additives for coffee; coffee
Class 33: Alcohol for drinking; alcoholic beverages
(collectively, the ‘Opponent’s Registered Goods’)
The authorities for determining whether particular services are closely related to goods, or vice versa, were recently reviewed and stated succinctly by Hearing Officer Brown in Kicking Horse Coffee Co. Ltd, where she said:
The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:
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"… it is a term of wider import than “similar”…
In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:
It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.
In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[22]
[22] [2018] ATMO 193, [19]-[21] (citations omitted).
The Opponent’s Registered Goods are common beverage products and additives that are usually sold in retail outlets that sell a broad range of different products, such as supermarkets or convenience stores. Retailers of such goods generally do not provide any special assistance in the selection or purchase of such products, nor do consumers ordinarily expect that the retailer of the products would also be the ultimate trade source. As such, while the retail service is provided in relation to the particular goods (which is the nature of retail services generally), there is no other obvious nexus between the respective goods and services. For these reasons, I am not satisfied that there is a sufficiently close relationship between ‘retail services (by any means), other than specialty coffee retail services’ and the Opponent’s Registered Goods.
As the Opponent has not established that ‘retail services (by any means), other than specialty coffee retailing services’ and the Opponent’s Registered Goods are closely related, the s 44 ground is not established.
Resolution of opposition
In Apple Inc. v Registrar of Trade Marks, Yates J stated that:
My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[23]
[23] [2014] FCA 1304, [232].
In circumstances where an opposition has been established in respect of some, but not all, of the goods and services under consideration, the Registrar may proceed to reject an application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend an application to remove goods and services for which a ground of opposition has been established.
It is not appropriate that the Applications be refused for goods and services for which the oppositions were not pressed by the Opponent. Further, as I consider that the oppositions are established only in relation to a narrow and definable subset of class 35 services, I offered the Applicant the opportunity to amend Class 35 of both Applications to exclude specialty coffee retailing services. Taking into account the above, the proposed amended specifications were:
Applicant’s Composite Mark (trade mark number 1953011)
Class 16: Absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging
Class 35: Retail services (by any means), other than specialty coffee retailing services
Applicant’s Word Mark (trade mark number 1953012)
Class 16: Recipes (printed matter); photographs; absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging
Class 30: Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries
Class 35: Retail services (by any means), other than specialty coffee retailing services
Class 43: Bakery services; providing food
(collectively, the Remaining Goods and Services)
The Applicant agreed to the proposed amendments, which have now been made. On that basis I find that the oppositions have not been established for the Remaining Goods and Services of the Applications.
Decision and costs
I find that, subject to the amendments referred to above, the Opponent has not established the grounds of opposition it nominated in the SGP for the Remaining Goods and Services. The Trade Marks may proceed to registration not less than one month from the date of this decision for the Remaining Goods and Services as set out in paragraph 97.
If the Registrar is served with a notice of appeal in respect of either or both of the Applications, I direct that registration shall not occur until either the relevant appeal is withdrawn or discontinued. Otherwise, the disposition of the relevant application should be in accordance with the Court’s order or direction.
Both parties requested an award of costs. In determining whether costs should be awarded, I have considered that the matters were heard together with the opposition to trade mark number 2057974 (BLK STR), 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
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