Richards v Black Star Pastry Pty Ltd
[2024] FedCFamC2G 146
•23 February 2024
FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Richards v Black Star Pastry Pty Ltd [2024] FedCFamC2G 146
File number(s): BRG 209 of 2023 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 23 February 2024 Catchwords: INTELLECTUAL PROPERTY – application for discovery of documents described in categories of documents formulated by applicant – whether categories describe documents relevant to issues arising on the pleadings – categories described in terms that call for documents not relevant to the issues arising on the pleadings – application dismissed with liberty to apply for discovery in relation to issues arising from matters affirmatively pleaded by respondent in its defence. Legislation: Federal Circuit and Family Court of Australia Act 2021 (Cth) ss 176(1), 176(2)
Judiciary Act 1903 (Cth) s 79
Trade Marks Act 1995 (Cth) ss 7(1), 8, 44, 58, 88(1), 120(2), 122(1)(e)
Cases cited: Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100
Hartnett Legal Services Pty Ltd v Ballantyne [2016] FCA 1116
Robson v Reb Engineering Pty Ltd [1997] 2 Qd R 102
Division: General Number of paragraphs: 40 Date of last submission/s: 22 December 2023 Date of hearing: Decided on the papers Solicitor for the Applicant: Matthew Sulman & Associates Solicitor for the Respondent: Maddocks Lawyers ORDERS
BRG 209 of 2023 FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA (DIVISION 2)
BETWEEN: MARTIN RICHARDS
Applicant
AND: BLACK STAR PASTRY PTY LTD
Respondent
ORDER MADE BY:
JUDGE MANOUSARIDIS
DATE OF ORDER:
23 FEBRUARY 2024
THE COURT ORDERS THAT:
1.The applicant’s application that the respondent discover documents falling within the categories of documents the applicant has formulated is dismissed.
2.The applicant have liberty to apply for a declaration pursuant to s 176(2) of the Federal Circuit and Family Court of Australia Act 2021 (Cth) that it is appropriate, in the interests of the administration of justice, to allow discovery by ordering that, at the time the respondent files its evidence in chief, the respondent give discovery of:
(a)all documents relevant to the matters pleaded in paragraphs 9 and 11 of its defence on which the respondent intends to rely; and
(b)all documents relevant to the matters pleaded in paragraphs 9 and 11 of its defence which are or may be adverse to the respondent’s case.
3.The parties otherwise have liberty to apply.
Note: The form of the order is subject to the entry in the Court’s records.
Note: The Court may vary or set aside a judgment or order to remedy minor typographical or grammatical errors (r 17.05(2)(g) Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth)), or to record a variation to the order pursuant to r 17.05 Federal Circuit and Family Court of Australia (Division 2) (General Federal Law) Rules 2021 (Cth).
REASONS FOR JUDGMENT
INTRODUCTION
On 9 May 2023 the applicant, Mr Richards, commenced a proceeding in this Court in which he makes two sets of claims against the respondent (BSP). The first is a claim pursuant to s 88(1)(a) of the Trade Marks Act 1995 (Cth) (TM Act) to rectify the Register of Trade Marks (Register) by cancelling four trade marks of which BSP is registered as owner (BSP trade marks). The second set are claims that BSP has infringed two trade marks of which Mr Richards is registered as the owner (Richards trade marks).
BSP resists Mr Richards’ application for the rectification of the Register; it denies it engaged in any conduct that constitutes the infringement of any of the Richards trade marks; and it has filed a cross claim for an order under s 88(1) of the TM Act that one of the Richards trade marks be cancelled.
On 23 November 2023 I ordered that the matter be listed for hearing on 20-24 May 2024, and I listed the matter for a directions hearing on 12 December 2023. By 11 December 2023 a dispute about discovery had crystallized between the parties; and on that day I made orders in chambers by consent for the filing of evidence and submissions in relation to Mr Richard’s application for discovery. The parties filed their submissions and evidence; and the parties have agreed that I determine the dispute on the papers.
In these reasons for judgment, I consider whether it is appropriate in the interests of the administration of justice that I should grant the discovery, or some of the discovery, Mr Richards seeks. To determine that question, it will be necessary, first, to identify the issues that arise on the pleadings and, second, refer to the correspondence between the parties that led to the crystallisation of the dispute about discovery.
STATEMENT OF CLAIM
Trade mark infringement
The allegations Mr Richards makes in support of his claims for trade mark infringement are as follows:
(a)Mr Richards is the registered proprietor of the trade mark “BLACKSTAR” (Richards 976 trade mark) and the trade mark “BLACKSTAR COFFEE” (Richards 833 trade mark trade mark).[1]
[1] Statement of Claim, [1(b), (c)]
(b)The Richards 976 trade mark was registered with effect from 26 April 2007 in class 30 for 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-base beverages; coffee-based beverages; decaffeinated coffee; ground coffee; ice beverages with a coffee base; and preparations for making beverages (coffee based).[2]
[2] Statement of Claim, [1(b)]
(c)The Richards 833 trade mark was registered in the joint names of Mr Richards and Ms Andrews on 20 March 2009, but, by an assignment made on or about 21 February 2019, Mr Richards became, and remains, the sole proprietor of the Richards 833 trade mark. It is registered in class 29 (milk based beverages, soya based dairy substitutes), 30 (additive for coffee; coffee); and class 33 (alcohol for drinking; alcoholic beverages).[3]
[3] Statement of Claim, [1(c)]
(d)From around 1 September 2006 Mr Richards and Ms Andrews intended to use the Richards trade marks, and, from 2 March 2007 until 1 April 2013, they did use the Richards trade marks in a business they conducted under the names “Blackstar Roastery” and “Blackstar Coffee Cart”.[4]
[4] Statement of Claim, [3], [4]
(e)Since 1 April 2013 Mr Richards has authorised three companies under his control to use the Richards trade marks; and, for the purposes of s 8 of the Trade Marks Act 1995 (Cth) (TM Act), those companies were authorised users of the Richards trade marks.[5]
[5] Statement of Claim, [5], [7]
(f)BSP is the registered proprietor of the BSP trade marks, these being the following:
(i)The trade mark comprising the name “Black Star Pastry” and the image of a star indented by the letter “S” (202 BSP trade mark). The 202 BSP trade mark was registered with effect from 19 September 2011 in classes 16 (recipes (printed matter); photographs), class 30 (bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries), and 43 (bakery services; providing food).[6]
[6] Statement of Claim, [8(c)(i)]
(ii)The trade mark comprising the name “Black Star Pastry” and the image of a star indented by the letter “S” (011 BSP trade mark). The 011 BSP trade mark was registered with effect from 4 September 2018 in 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); and class 35 (retail services (by any means), other than speciality coffee retailing services).[7]
(iii)The trade mark comprising the name “Black Star Pastry” and the image of a star indented by the letter “S” (012 BSP trade mark). The 012 BSP Mark that was registered with effect from 4 September 2018 in 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); and class 43 (bakery services; providing food).[8]
(iv)The trade mark comprising the letters “BLK STR” (974 BSP trade mark) which was registered with effect from 17 December 2019 in 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); and class 43 (bakery services; providing food and drink; restaurants).[9]
(g)From at least on or about 5 January 2019, without Mr Richards’ licence, BSP advertised, promoted, and offered for sale coffee, coffee-based products (with or without various milk or dairy substitute products) and provided cafe services and specialty coffee retailing services, under or by reference to one or more of the BSP trade marks. In particular:[10]
(i)from at least October 2008, from commercial premises in Newton, New South Wales (Newtown premises), BSP has been promoting, offering and selling coffee and coffee-based products under and by reference to the unregistered word trade mark BLACK STAR PASTRY (which later became the 012 BSP trade mark);
(ii)from around September 2011 BSP has been promoting, offering and selling coffee and coffee-based products under and by reference to the 202 BSP trade mark;
(iii)the conduct referred to in (i) and (ii) has been carried out, and continues to be carried out at the Newtown premises and other BSP locations in New South Wales, namely, Rosebery, Sydney city, and Moore Park; and in Victoria at Chadstone, St Kild.
Cancellation/rectification
[7] Statement of Claim, [8(c)(ii)]
[8] Statement of Claim, [8(c)(iii)]
[9] Statement of Claim, [8(c)(iv)]
[10] Statement of claim, [9]
BSP not owner of 202, 011, or 012 BSP trade marks
Mr Richards claims that BSP is not the owner of any of the 202, 011, or 012 BSP trade marks; and, given that under s 58 of the TM Act the registration of a trade mark may be opposed on the ground that the applicant for registration is not the owner of the trade mark, a registered trade mark may be cancelled under s 88(1) of the TM Act on the ground that the person who is registered as the owner of the trade mark was not the owner of the trade mark at the time of registration. Mr Richards relies on the following allegations:
(a)Mr Richards used the word “BLACKSTAR” in relation to 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; decaffeinated coffee; ground coffee; ice beverages with a coffee base; preparations for making beverages (coffee based) before BSP used any of the 202, 011, or 012 BSP trade marks, and before BSP used the words “BLACK STAR PASTRY”.[11]
(b)BSP was not the first user of any of the 202, 011, or 012 BSP trade marks in Australia in respect of the goods and services for which those trade marks are registered.[12]
(c)Sometime after 17 June 2011, when BSP was incorporated, BSP began to offer for sale and sell coffee products in Australia under the name “BLACK STAR PASTRY”.[13]
(d)Before 17 June 2011, the sole director of BSP, Mr Christopher Peter Thé, first used the words “BLACK STAR PASTRY”, or the same words as follows (BSP logo):
and, as from late October 2008, Mr Thé did so in relation to baked goods, including bread, croissants, pastries, cakes, sandwiches, and offering for sale and selling coffee from his business in Newtown (Thé business).[14]
(e)The sign in (d) is identical or substantially identical to one or more of the 202, 011, or 012 BSP trade marks;[15] and BSP has used the 202, 011, or 012 BSP trade marks in respect of the same goods and services, or the same kinds of goods and services as Mr Thé did in the Thé business.[16]
(f)By reason of the matters in (a)-(e), Mr Richards is an “aggrieved person” within the meaning of s 88(1) of the TM Act, BSP is not the first user of, and therefore, is not the owner of the 202, 011, or 012 BSP trade marks and, for that reason, the registration of the 202, 011, or 012 BSP trade marks should be cancelled.[17]
974 BSP trade mark is substantially identical with or deceptively similar to Richards trade marks – s 44 of the TM Act
[11] Statement of Claim, [17]
[12] Statement of Claim, [19]
[13] Statement of Claim, [20]
[14] Statement of Claim, [22]
[15] Statement of Claim, [23]
[16] Statement of Claim, [24]
[17] Statement of Claim, [25]
In this part of the statement of claim, Mr Richards alleges as follows:
(a)The 974 BSP trade mark is substantially identical with, or deceptively similar to:[18]
[18] Statement of claim, [26(a)]
(i)either or both of the Richards trade marks, being trade marks registered by Mr Richards in respect of:
(A)class 30 - the coffee products; and/or
(B)additives for coffee; coffee,
being similar goods or closely related services or similar services or closely related goods inspect of the:
(C)Class 30: coffee; tea;
(D)Class 43: provision of food and drink; restaurants; cafes; hospitality services; take away food services; catering services where those services provide the coffee products and or additives for coffee.
(b)The priority date for the registration of 974 BSP trade mark in respect of the BSP’s goods and services is not earlier than the priority date for the registration of the Richards 976 trade mark, or the Richards 833 mark in respect of the similar goods or closely related services.[19]
[19] Statement of claim, [26(b)]
974 BSP trade mark similar to acquired reputation of Richards 976 trade mark
In this part of the statement of claim Mr Richards alleges as follows:
(a)Mr Richards has used the Richards trade marks for many years, in particular before the first use of the BSP 974 trade mark, and has established a very substantial reputation in respect of the coffee products sold and supplied under or by reference to the Richards 976 trade mark.[20]
(b)As a consequence of Mr Richards’ reputation in respect of the Richards 976 trade mark, BSP’s use of the BSP 974 trade mark in respect of
(i)Class 30: coffee and tea;
(ii)Class 43: providing drink; restaurants; cafes; hospitality services; catering services; bar services, where those services involve the provision of the coffee products and/or additives for coffee,
is likely to deceive, or cause confusion amongst, a substantial number of members of the public.
[20] Statement of claim, [27]
BSP’S DEFENCE AND CROSS CLAIM
In its defence BSP admits it is the registered owner of the BSP trade marks, and that each of those trade marks had been registered at the times alleged in the statement of claim.[21] BSP also:[22]
[21] Defence, [8]
[22] Defence, [9]; [11(a)]
(a)admits that, in or about May or June 2008 BSP’s “predecessor in title”, Mr Thé, adopted, and commenced using the name “BLACK STAR PASTRY” and the BSP logo;
(b)admits that, since its incorporation on 17 June 2011, BSP has conducted a business (BSP business) under and by reference to the name “BLACK STAR PASTRY” and the BSP logo;
(c)admits that, since in or about December 2021, it has used the BSP 974 trade mark in connection with the BSP business;
(d)says further that, since in or about December 2021, as part of a rebrand, BSP ceased using the BSP logo and commenced using a new logo (new BSP logo), being the following:
(e)admits that since at least October 2008 Mr Thé and subsequently BSP have offered for sale and sold coffee beverages in the BSP business;
(f)says that:
(i)the BSP business is a speciality bakery business whose predominant goods are baked goods, including cakes, biscuits, and other pastries;
(ii)to the extent BSP has sold or served coffee beverages for immediate consumption, it has done so in the course of providing bakery services, as a product which is ancillary to its baked goods;
(iii)to the extent BSP has sold or served coffee beans or ground coffee, it has only sold third-party products which do not bear the name “BLACK STAR PASTRY”, the BSP logo, the new BSP logo, or the letters “BLK STR”;
(iv)denies that any of the BSP trade marks or the new BSP logo are substantially identical with, or deceptively similar to, either of the Richards trade marks; and
(v)denies that BSP provides, or that it has provided, speciality coffee retailing services, and says that neither of the Richards trade marks is registered in respect of any such services;
(g)further says that:
(i)if, contrary to BSP’s primary contention, it is found that BSP has used the name “BLACK STAR PASTRY”, the BSP logo, the new BSP logo, or the “BLK STR” mark in connection with goods of the same description as Mr Richards’ goods, or services that are closely related to Mr Richards’ goods, then, pursuant to s 120(2) of the TM Act, BSP’s use of those trade marks would not infringe the Richards trade marks because their use by BSP is not likely to deceive or cause confusion having regard to the manner in which BSP uses the BSP marks; and that is because:
(A)BSP operates a speciality bakery business, whose predominant goods are baked goods, including cakes, biscuits and other pastries;
(B)to the extent, therefore, BSP has sold or served coffee beverages for immediate consumption, it has done so in the course of providing bakery services, as a product which is ancillary to its baked goods;
(C)BSP is not, and has never been, a coffee roasting business or a speciality coffee business; and
(D)BSP has a substantial reputation in the “BLACK STAR PASTRY” brand which is associated with the BSP business;[23]
[23] Defence, [11(a)]
(ii)each of the 202, 011, and 012 BSP trade marks is registered in respect of, among other things, “bakery services” in class 43, the ordinary meaning of which includes the sale of coffee or other beverages as products ancillary to the provision of sale or bakery services; and, for these reasons, and pursuant to s 122(1)(e) of the TM Act, BSP’s use of the name “BLACK STAR PASTRY” or the BSP logo in connection with the goods and services for which the 202, 011, and 012 BSP trade marks are registered, and thus constitutes BSP’s exercise of rights given by the TM Act to use that 202, 011, and 012 BSP trade marks;[24]
(iii)what is said in (ii) also applies to the new BSP logo because the new BSP logo consists of the 011 BSP trade mark with additions or alterations that do not substantially affect the identity of the 001 BSP trade mark and, therefore, by operation of s 7(1) of the TM Act, s 122(1)(e) of the TM Act applies to BSP’s use of the new BSP logo;[25] and
(iv)the 974 BSP trade mark is registered, among other things, in respect of “coffee” in class 30 and “providing food and drink; restaurants; cafes; hospitality services; take away food services; catering services…bar services” in class 43; and, for this reason, any use by BSP of the “BLK STR” in connection with the goods or services for which the 974 BSP trade mark is registered constitutes, pursuant to s 122(1)(e) of the TM Act, the exercise by BSP of a right to use a trade mark given to BSP under the TM Act;[26]
(h)if, contrary to BSP’s contentions, either or both the name “BLACK STAR PASTRY” or the BSP logo is or are found to be substantially identical with or deceptively similar to the Richards 833 trade mark:
(i)BSP and its predecessor in title have continuously used those marks in connection with the BSP business from a time before the date of registration of the Richards 833 trade mark;[27] and
(ii)any claim for infringement in relation to BSP’s use of the name “BLACK STAR PASTRY” or the BSP logo on or before 9 May 2017 is statute barred pursuant to s 79 of the Judiciary Act 1903 (Cth) and s 10(1) of the Limitation of Actions Act 1974 (Qld) or s 14(1) of the Limitation Act 1969 (NSW).[28]
[24] Defence, [11(b)]
[25] Defence, [11(c)]
[26] Defence, [11(d)]
[27] Defence, [11(e)]
[28] Defence [11(f)]
In its cross claim BSP claims that Mr Richards was not the sole owner of the Richards 976 trade mark when, on 26 April 2007, Mr Richards applied in his name to register “BLACKSTAR” as a trade mark and, for that reason, Mr Richards was not entitled to apply in his own name for the registration of the Richards 976 trade mark. The basis of this claim is paragraph 3 of the statement of claim in which Mr Richards alleges that from on or about 1 September 2006 Mr Richards and Ms Andrews “intended to use and subsequently the Blackstar name for the development of coffee and coffee related products through the Blackstar Roastery and the Blackstar Coffee Cart businesses”.
MR RICHARDS’ DEFENCE TO CROSS CLAIM
In his defence to the cross claim Mr Richards says that he and Ms Andrews, his wife, authored the Richards 976 trade mark, but that, as he was entitled to, Mr Richards applied for the registration of that trade mark on his own behalf as owner of the trade mark, and on behalf of Ms Andrews, “his wife and business partner, the other owner of the Trade Mark, for whom [Mr Richards] held the Trade Mark subject to his legal relations between himself and [Ms] Andrews”.[29]
[29] Defence to cross claim, [3(d)(ii)]
ISSUES ARISING
The following issues arise on the pleadings.
(a)Whether the Richards 976 trade mark is liable to be cancelled because Mr Richards registered the trade mark in his sole name in circumstances where he and Ms Andrews owned the trade mark.
(b)However (a) is answered, whether any one or more of the BSP trade marks is or are substantially identical with, or deceptively similar to, either or both of the Richards trade marks.
(c)To the extent (b) is answered in the affirmative:
(i)whether the goods and services (if any) in relation to which BSP has used the BSP trade marks extend to coffee and coffee-based products;
(ii)to the extent (i) is answered in the affirmative, whether the goods and services in relation to which BSP has used the BSP trade marks are goods of the same description as that of goods in respect of which the Richards trade marks are registered; and
(iii)to the extent (ii) is answered in the affirmative whether, as BSP alleges:
(A)BSP has operated and continues to operate a speciality bakery business, whose predominant goods are baked goods, including cakes, biscuits and other pastries;
(B)given (A), to the extent BSP has sold or served coffee beverages for immediate consumption, it has done so in the course of providing bakery services, as a product which is ancillary to its baked goods;
(C)BSP is not, and has never been, a coffee roasting business or a speciality coffee business;
(D)BSP has a substantial reputation in the “BLACK STAR PASTRY” brand which is associated with the BSP business;
(E)Given (A)-(D), BSP’s use of the BSP trade marks is not likely to deceive or cause confusion.
(d)However (c) is answered:
(i)whether the ordinary meaning of “bakery services” in class 43 includes the sale of coffee or other beverages as products ancillary to the provision of sale or bakery services, in which case BSP’s use of the BSP trade marks in connection with the sale of coffee would the exercise by BSP of a right to use a trade mark given by the TM Act;
(ii)whether, given that the 974 BSP trade mark is registered, among other things, in respect of “coffee” in class 30 and “providing food and drink; restaurants; cafes; hospitality services; take away food services; catering services…bar services” in class 43; BSP’s use of the “BLK STR” in connection with the goods or services for which the 974 BSP trade mark is registered constitutes, pursuant to s 122(e) of the TM Act, the exercise by BSP of a right to use a trade mark given to BSP under the TM Act.
(e)Whether, as at the dates on which each of the 202, 011, and 012 BSP trade marks were registered or, at least, when BSP first began to use them, Mr Richards used the word “BLACKSTAR” in relation to coffee products, these being beverages consisting principally of coffee; beverages made from coffee; beverages with coffee base; coffee; coffee (unroasted); coffee beans; coffee beverages; coffee beverages and, for that reason, BSP was not the owner of any of the 202, 011, and 012 BSP trade marks.
(f)Whether as at the priority date for the registration of the 974 BSP trade mark, being no earlier than the priority date in respect of the priority date of the Richards trade marks, the 974 BSP trade mark was substantially identical with or deceptively similar to the Richards trade marks.
(g)Whether, before BSP’s first use of the 974 BSP trade marks, Mr Richards had gained a substantial reputation in respect of the coffee products it sold under or by reference to the Richards 976 trade mark.
CRYSTALLISATION OF DISCOVERY DISPUTE
As I have already noted, on 23 November 2023 I listed the matter for final hearing on 20-24 May 2024, and otherwise listed the matter for directions on 12 December 2023.
On 23 November 2023 Mr Sulman, the lawyer for Mr Richards, sent an email to BSP’s lawyers attaching the “Applicant’s requested disclosure documents”. That is a reference to a document titled “Applicant’s Categories of disclosure documents requested from respondent with comments regarding relevance” (Richards Disclosure Request). The Richards Disclosure Request is as follows:
Category Number Documents requested Relevance to issues at trial 1(a)
[Category 1]Documents including but not limited to leases, licences and/or permits in respect of the following locations (the BSP locations) where the respondent operates or has operated its business under the trade nomenclature “BLACK STAR PASTRY” whether as a word mark, as part of a composite mark with a device or in a stylised or unstylised form:
New South Wales
(a) 113 Dunning Ave, Rosebery Sydney New South Wales (BSP Rosebery).
(b) Shop 210, Entertainment Quarter, 122 Lang Road, Moore Park, Sydney, New South Wales (BSP Moore Park).
(c) The Galeries shopping center at Shop 26, Ground Floor, 500 George St, Sydney New South Wales 2000 (BSP Sydney CBD).
(d) 1/325 King St, Newtown, Sydney, New South Wales 2042 (BSP Newtown).
Victoria
(a) Chadstone Shopping Centre, 134 Dandenong Rd, Malvern East Melbourne, Victoria Kiosk 0105 Lower Ground (BSP Chadstone).
(b) 2C Acland St, St Kilda, Melbourne, Victoria 3182.
(c) Shop 4, 8 Driver’s Lane, Melbourne CBD, Victoria 3000.
Queensland
(a) South Bank Parklands, South Bank, Brisbane, Queensland
Leases, licenses and/or permits to operate business from premises within a local council and/or state based region typically include a stipulation as to the nature of the business being operated from the premises. These documents are relevant to determining the nature of the business that the Respondent is operating from each BSP location and goods and services provided therefrom.
Relevant to infringement within the Trade Marks Act s 120.
1(b)
[Category 2]Documents evidencing wholesale coffee purchased as beans or in ground form used by the respondent at the BSP locations, in particular, from St Ali Coffee Roasters and Little Marionette Coffee including but not limited to:
(a) Coffee supply tender process correspondence leading to supply contracts;
(b) Any and all coffee supply proposals;
(c) Any and all coffee supply contracts.
Relevant to the nature, scope and volume of sales and production of coffee and coffee related products and services by the respondent at each BSP location and globally. This is not from the perspective of damages or an account as this is a split trial. This is going to infringement within the Trade Marks Act s 120.
Relevant to infringement.
1(c)
[Category 3]Documents including correspondence evidencing the purchase, lease, licence and tender for the provision of the following equipment associated with coffee which is or has been used by the respondent at the BSP locations including but not limited to:
(a) Coffee machines.
(b) Grinders.
(c) Milk frothing machines.
(d) Disposable and non-disposable cups used in the purveying of coffee products.
(e) Associated plant, equipment and/or products whether disposable or non-disposable used in association with the sale of coffee and coffee related products.
Relevant to the nature, scope and volume of sales and production of coffee and coffee related products and services by the respondent at each BSP location and globally. Bakeries do not have high end coffee making equipment and associated products.
Relevant to infringement within the Trade Marks Act s 120.
1(d)
[Category 4]Documents evidencing any qualifications or participation of staff involved in making or selling coffee and coffee related products at the BSP locations including, in particular, but not limited to:
(a) Barista training and qualifications;
(b) Barista, coffee making or coffee art competitions;
(c) Directions, protocols and standards for baristas’ use of coffee machines including coffee recipes;
(d) Coffee blend development information and correspondence evidencing participation of BSP staff including but not limited to the creation of the STARDUST blend.
Relevant to infringement within the Trade Marks Act s 120.
Bakeries do not per se have highly qualified employees with barista training
1(e)
[Category 5]Documents evidencing original designs for fit-out of the BSP locations including but not limited to architectural or design plans, proposals, and/or submissions to and local government council or entity. Relevant to the manner in which the floor area of each BSP location has been allocated and is being utilised for its sales and its production of different goods and services provided by the respondent. Also relevant to particular trade mark use.
Relevant to infringement within the Trade Marks Act s 120.
BSP’s lawyer, Ms di Sipio, responded by email sent to Mr Sulman on 30 November 2023 attaching a document titled “Applicant’s proposed categories of discovery (with Respondent’s response)”. The document reproduces the information contained in the Richards Disclosure Request, but contains an additional column headed “Respondent’s response” which sets out the grounds on which BSP objects to discovering the categories of documents described in the Richards Disclosure Request. BSP contends that none of the categories of documents are relevant to the issues raised on the pleadings or, to the extent they are, the required disclosure is disproportionate or oppressive.
On 7 December 2023 Mr Sulman sent to Ms di Sipio a letter in which he advanced detailed submissions in support of the contention that the categories of documents described in the Richards Disclosure Request were relevant.
By letter dated 8 December 2023 Mr Sulman sought discovery of the following three additional categories of documents:
All documents relating to:
a.The sale of the business formerly conducted by Mr The (your client’s alleged predecessor in title) under the common law trade mark BLACK STAR PASTRY (with or without device) as alleged to the Respondent including but not limited to any sale of business contract. [Category 6]
b.assignment of all trade marks used by Mr The in the promotion and sale of goods and services under the name BLACK STAR PASTRY including but not limited to trade mark 1449202. [Category 7]
c.The following application - Trade Mark Application No. 1449202 including all correspondence to and from IP Australia and the applicant or their appointed agent in relation to the application. [Category 8]
Further correspondence followed, but it is unnecessary to identify the correspondence.
DICOVERY – PRINCIPLES
This Court has power under s 176(1) of the Federal Circuit and Family Court of Australia Act 2021 (Cth) to allow discovery; but s 176(2) of that Act provides the Court may not do so unless “the Court or a Judge declares that it is appropriate, in the interests of the administration of justice, to allow the interrogatories or discovery”. [30] Before the Court may make any such declaration it must at the very least be satisfied that the documents in relation to which discovery is sought are “directly relevant to the issues raised by the pleadings or in the affidavits”,[31] in the sense that the documents sought to be discovered will tend “to prove or disprove the allegation[s] in issue”.[32]
[30] I considered the principles relating to the granting of discovery in this Court in Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100, at [3]-[40].
[31] Hartnett Legal Services Pty Ltd v Ballantyne [2016] FCA 1116, at [34] (See Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100, at [17])
[32] Robson v Reb Engineering Pty Ltd [1997] 2 Qd R 102, at page 105 (See Australian Building & Construction Commissioner v CFMEU & Ors (No.5) [2018] FCCA 1100, at [23])
The principal question I must consider is whether any one or more of the eight categories of documents are directly relevant to an issue that arises on the pleadings, or whether the categories include documents that are not directly relevant.
PARTIES’ SUBMISSIONS
In his counsel’s written submissions, Mr Richards distinguishes between categories 1-5, categories 6 and 7, and category 8. As for categories 1-5, Mr Richards submits that the documents described by the categories “essentially go to what goods and services BSP actually offers and sells at its seven (7) outlets under the trade marks BLACK STAR PASTRY”.[33] As for categories 6 and 7, Mr Richards submits their relevance “arise[s] in relation to Richards’ application for cancellation of the” BSP 202 trade mark, noting that while BSP admits that Mr Thé was the first user of the 202 BSP trade mark, it was BSP who applied for the registration of that trade mark.[34] Mr Richards further submits that categories 6 and 7 “go to identify if and by what means, for the purpose of the Act s 58, BSP claims an entitlement to be the applicant for the ‘202 mark and not Mr Thé”.[35]
[33] Applicant’s Submissions on Discovery, [12]; see also [26]
[34] Applicant’s Submissions on Discovery, [66]
[35] Applicant’s Submissions on Discovery, [71]
As for the documents described in category 8, Mr Richards submits they are relevant to BSP’s defence based on s 122(1)(e) of the TM Act, because the documents:[36]
go to the specification BSP was ultimately permitted to register because:
a) BSP’s ‘202 application was objected to by the trade mark office examiner on the basis of Richards’ ‘976 and ‘833 marks.
b) BSP accepted the merits of the objection, accepting the deletion from its application of “cafes” and providing “drink”.
[36] Applicant’s Submissions on Discovery, [74]
In its counsel’s written submissions, BSP submits, for reasons it is unnecessary to set out, that the categories of documents are either irrelevant or are too broadly expressed. BSP nevertheless offer more confined categories of documents.
DETERMINATION
Categories 1-5
What goods and services BSP actually offers and sells at its 7 outlets under name of “BLACK STAR” is not an issue in this proceeding; the principal issue is whether, assuming any one or more of the BSP trade marks is or are substantially identical with, or deceptively similar to, either or both of the Richards trade marks, BSP has used any of the BSP trade marks in connection with goods or services that fall within the class or classes of goods or services in respect of which the Richards trade marks are registered. If, as Mr Richards submits, the intended relevance of the documents described in categories 1-5 is to identify the goods or services BSP has actually sold or offered to sell under the trade name “Black Star Pastry”, they would be too broad because they would include documents that relate to BSP’s sale of goods and services within the class of goods or services in respect of which the Richards trade marks are not registered.
In any event, it will be necessary to consider the descriptions of each categories of documents.
Category 1
Category 1 calls for the disclosure of leases, licences, and all other documents pursuant to which BSP occupies the 7 premises from which it conducts its business. This category is too broad. It is not limited to documents that identify the purpose or purposes for which BSP may use the particular premises. Moreover, category 1 does not limit the leases, licences, and other documents it requires BSP to disclose to leases, licences, or other documents that restrict BSP’s use of the premises to selling or offering to sell only goods or services in respect of which the Richards trade marks are registered. Thus, category 1 would include documents that permit BSP to use premises to sell goods and services that are not goods or services of the class or classes in respect of which the Richards trade marks are registered.
For these reasons, I am not satisfied that it would be appropriate, in the interests of the administration of justice, to require BSP to give discovery of documents falling within category 1.
Categories 2-4
Categories 2, 3, and 4 would require the disclosure of documents that relate to BSP’s wholesale purchases of coffee, the purchase or leasing of equipment used in making coffee for immediate consumption by customers, and documents relating to the training and participation of staff in making or selling coffee. Mr Richards submits these documents are relevant to the nature, scope, and volume of sales and production of coffee related products and services by BSP.
The nature, scope, and volume of sales and production of coffee related products and services by BSP is not an issue that arises on the pleadings. BSP admits that since 2008 Mr Thé, and subsequently BSP have offered for sale and sold coffee beverages in the BSP business; but it alleges that Mr Thé and BSP have done so in the course of providing bakery services, as a product which is ancillary to its baked goods; and Mr Thé and BSP have only sold third-party products which do not bear the name “BLACK STAR PASTRY”, the BSP logo, the new BSP logo or the letters “BLK STR”. Thus, categories 2, 3, 4 are likely to include documents that would tend to prove nothing more than what BSP already admits. For that reason, the categories are expressed too broadly.
For these reasons, I am not satisfied that it would be appropriate, in the interests of the administration of justice, to require BSP to give discovery of documents falling within categories 2, 3, and 4.
Category 5
Category 5 would require the disclosure of documents evidencing original designs for fit-out of the BSP locations. Mr Richards submits these documents are relevant to:[37]
the manner in which the floor area of each BSP location has been allocated and is being utilised for its sales and its production of different goods and services provided by the respondent. Also relevant to particular trade mark use.
[37] Richards Disclosure Request
The plans of the floor areas of the premises from which BSP conducts its business is not an issue in the proceeding; and it is difficult to imagine how such plans can be relevant to any of the issues arising on the pleadings. I am therefore not satisfied that it would be appropriate, in the interests of the administration of justice, to require BSP to give discovery of documents falling within the description of category 5.
Categories 6 and 7
Categories 6 and 7 would require the disclosure of documents Mr Richards submits are relevant to his claim for cancellation of the 202 BSP trade mark. The basis of that claim is that Mr Thé, not BSP, was the first user of the 202 BSP trade mark and, for that reason, BSP was not the owner of the BSP trade mark at the time it applied for its registration.[38] Mr Richard’s allegation that Mr Thé was the first user of the 202 BSP trade mark is supported by BSP’s admission in paragraph 9(a) of its defence that in or about May or June 2008 Mr Thé, BSP’s “predecessor in title”, adopted the name “BLACK STAR PASTRY” and the logo depicted in the 202 BSP and 012 BSP trade marks.
[38] Statement of Claim, [19]
Mr Richards submits that categories 6 and 7 are relevant to obtaining documents that are relevant to determining the basis on which, for the purpose of s 58 of the TM Act, BSP alleges that it, rather than Mr Thé, claims an entitlement to the 202 BSP trade mark. This submission proceeds on the assumption that BSP has not alleged facts or provided particulars on the basis of which BSP can claim to be entitled to the 202 BSP trade mark. Discovery, however, is not the means by which one party may seek to ascertain another party’s case. That should be done by way of a request for particulars or by inviting the party to amend the pleading.
I am therefore not satisfied it would be appropriate, in the interests of the administration of justice, to require BSP to give discovery of documents falling within the description of categories 6 and 7.
Category 8
Category 8 would require disclosure of all documents relating to “Trade Mark Application No. 1449202” which, I infer, is the application BSP made for the registration of the 202 BSP trade mark. Mr Richards says this is relevant to BSP’s defence based on s 122(1)(e) of the TM Act. I do not accept that the documents described in category 8 are relevant, or sufficiently relevant to lead me to be satisfied it would be appropriate, in the interests of the administration of justice, to require BSP to give discovery of documents falling within the description of category 8.
An order discovery in any event?
Although I am not satisfied it is appropriate in the interests of the administration of justice that I order BSP give discovery of documents that fall within any of the categories of documents Mr Richards has formulated, the categories nevertheless may include documents that are directly relevant to issues arising on the pleadings; and, moreover, they are documents which BSP, not Mr Richards, would be in a position to determine whether they exist and, if they do exist, to disclose them. The documents I have in mind are those that are directly relevant to the matters BSP alleges in paragraphs 9 and 11 of its defence.
As I have already noted, in those paragraphs BSP admits that it has offered for sale and has sold coffee beverages in the BSP business; but it says that is has done so in the course of providing bakery services, as a product which is ancillary to its baked goods; and it has only sold third-party products which do not bear the name “BLACK STAR PASTRY”, the BSP logo, the new BSP logo or the letters “BLK STR”. Further, BSP alleges it has established a reputation in its use of the name “Black Star Pastry” in connection with its business, as a consequence of which its use of the BSP trade marks is not likely to deceive or cause confusion (assuming the BSP trade marks are substantially identical with, or deceptively similar to, the Richards trade marks, and BSP has used them in connection with goods and services of the same description as goods and services in respect of which the Richards trade marks are registered).
It is probable that the truth (or otherwise) of these matters are liable to be ascertained largely by reference to documents that are in the power or control of BSP. It is therefore likely that BSP will rely on its documents to prove the matters it alleges in paragraphs 9 and 11 of its defence. In those circumstances, it might be open to conclude that it would be appropriate in the interests of the administration of justice to require BSP, at the time it files and serves its evidence, to give discovery of documents relevant to the matters pleaded in paragraphs 9 and 11 of its defence on which BSP intends to rely, and also to give discovery of all documents relevant to the matters pleaded in paragraphs 9 and 11 of its defence which would or may be adverse to BSP’s pleaded case.
DISPOSITION
The only orders I propose to make is to dismiss Mr Richards’ application for discovery of the documents described in his categories of documents; but grant Mr Richards liberty to apply for an order for discovery in the form outline in the previous paragraph. It might be that the parties may both see merit in consenting to my making such an order for discovery.
I certify that the preceding forty (40) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis. Associate:
Dated: 23 February 2024
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