FEDERAL CIRCUIT AND FAMILY COURT OF AUSTRALIA
(DIVISION 2)
Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226
File number(s): BRG 209 of 2023 Judgment of: JUDGE MANOUSARIDIS Date of judgment: 1 August 2025 Catchwords: INTELLECTUAL PROPERTY – Infringement of registered trade marks – where applicant secured registration of two trade marks (Blackstar trade marks) that comprised or included the word “Blackstar” effective from April 2007 with respect to (among other things) coffee beverages and coffee, and effective from March 2009 with respect to coffee – where after the applicant applied for the registration of the first of the two Blackstar trade marks the owner of a business subsequently acquired by the respondent established a business in relation to which he used the words “Black Star Pastry” (BSP Business) – where in September 2011 the respondent applied for the registration as a trade mark of a logo (BSP Logo) that includes the words “Black Star Pastry” with respect to (among other things) bakery services and “café services” and “providing drink services” – where adverse examiner’s report issued that the BSP Logo closely resembled the Blackstar trade marks but that the BSP Logo could be registered as a trade mark by removing “cafes” and “and drink” from the services with respect to which the BSP Logo would be registered as a trade mark – where BSP sought but failed to obtain the consent of the applicant to register the BSP Logo as a trade mark for “cafes” and “and drink” – where respondent registered the BSP Logo for services that excluded “café services” and “providing drink services” - where in September 2018 the respondent applied for the registration of two trade marks that included the words “Black Star Pastry” with respect to (among other things) bakery services “cafes” and “retail services (by any means)” – where the applicant opposed registration of the two trade marks – where a delegate of the Registrar of Trade Marks decided to permit the application for registration of the two trade marks to proceed on the basis of the removal from class 43 of “restaurant, café, hospitality services, [and] take away food services” and the exclusion from class 35 of “specialty coffee retailing services” – where the respondent proceeded to register the trade marks on this basis – whether the applicant was the owner of the first of the two Blackstar trade marks registered given that he and his former wife were joint owners of that trade mark but only the applicant applied for and was registered as the owner of the trade mark – not satisfied the applicant was not at the time he applied for its registration the owner of the trade mark within the meaning of s 58 of the Trade Marks Act 1995 (Cth) (TM Act) – whether the respondent used the words “Black Star Pastry” in relation to the sale of coffee beverages and coffee and if so whether the respondent…
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- Case
- [2025] FedCFamC2G 1226
- Decision Date
CaseChat Overview and Summary
The legal issues at the heart of this case include the ownership of the Blackstar trade marks, whether BSP used the words "Black Star Pastry" in relation to coffee beverages and coffee, and if such use amounted to an infringement of Mr Richards' registered trade marks. Additionally, the court had to consider whether BSP provided café services or specialty coffee retailing services, whether the words "Black Star Pastry" are substantially identical or deceptively similar to the Blackstar trade marks, and whether BSP's use of these words in connection with café services or specialty coffee retailing services caused confusion or deception. The court also needed to determine if "bakery services" includes the supply of coffee beverages or the sale of coffee, and if BSP exercised rights to use trade marks conferred by the Trade Marks Act 1995 (Cth). Finally, the court had to examine whether Mr Richards engaged in any conduct amounting to an agreement or acquiescence in BSP's use of the words "Black Star Pastry".
The court found that Mr Richards was the owner of the first Blackstar trade mark registered, despite being joint owners with his former wife. The court also determined that BSP used the words "Black Star Pastry" in relation to the sale of coffee beverages and coffee, and that this use infringed Mr Richards' registered trade marks. BSP was found to provide café services and specialty coffee retailing services, which are closely related to the sale of coffee beverages and coffee. The court concluded that the words "Black Star Pastry" are substantially identical or deceptively similar to the Blackstar trade marks, and that BSP's use of these words in connection with café services or specialty coffee retailing services was likely to deceive or cause confusion. The court further found that "bakery services" does not include the supply of coffee beverages or the sale of coffee, and that BSP's use of the words "Black Star Pastry" in relation to coffee beverages and coffee did not exercise rights to use trade marks conferred by the Trade Marks Act. The court also determined that Mr Richards did not engage in any conduct amounting to an agreement or acquiescence in BSP's use of the words "Black Star Pastry".
The final orders of the court were that Mr Richards succeeds on his infringement claims against BSP. The court also ordered that BSP's registration of the trade marks including the words "Black Star Pastry" be cancelled, and that BSP be restrained from using the words "Black Star Pastry" in relation to the sale of coffee beverages and coffee.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
Mr Richards advertised, promoted, and sold Blackstar Coffee in a number of ways. These included creating and maintaining a webpage at selling roasted coffee beans and cold pressed coffee to both retail and wholesale outlets;[32] and promoting the Blackstar brand through social media channels.[33][31] Affidavit M Richards 01.03.2024, MR-1, [21]-[22].[32] Affidavit M Richards 01.03.2024, MR-1, [23]-[25].[33] Affidavit M Richards 01.03.2024, MR-1, [28].Registration of the Blackstar 976 trade mark The application for registration for the Blackstar 976 trade mark was accepted for registration on 4 January 2008, with effect from 26 April 2007. The Blackstar 976 trade mark was registered in respect of the following goods and 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)Registration of Blackstar 833 trade mark On 20 March 2009 Mr Richards and Ms Andrews applied for the registration of the Blackstar 833 trade mark, which was accepted for registration on 19 November 2009, with effect from 20 March 2009. The Blackstar 833 trade mark was registered in respect of the following goods and services:Class 29: Milk based beverages (milk predominating); soya based dairy substitutesClass 30: Additives for coffee; coffeeClass 33: Alcohol for drinking; alcoholic beveragesBSP Business up to 2011 (before incorporation)Conception In around 2004 Mr Thé began to consider the idea of opening his own bakery. Although he completed a Bachelor of Arts degree in 1996, Mr Thé realised he had a passion for cooking. That led him to complete a Certificate III in Commercial Cooking in 2001; and from 1999 to January 2008 Mr Thé worked in a number of fine dining restaurants.[34][34] Affidavit C P Thé 03.04.2024, [6]-[9].The “Black Star Pastry” name and logo In around 2004 Mr Thé “started to properly consider the idea of opening” his own bakery, and he researched and developed a business model on which to operate a bakery store. Mr Thé’s “general concept was to bring high end cooking into a café setting so that it would be affordable and accessible to the broader community”.[35] In early 2008 Mr Thé identified a property in Newtown he considered would be appropriate for his proposed business; and in about February 2008 he entered into a lease over those premises.[36][35] Affidavit C P Thé 03.04.2024, [11].[36] Affidavit C P Thé 03.04.2024, [12]. In the course of designing and creating his store, and while listening to his favourite band who have a song called “Black Star”, Mr Thé thought that “Black Star” would be a great name for his business.[37] Mr Thé attempted to register “Black Star” as a business name, but he was unable to do so because that name was registered to a mining company. Mr Thé, however, added the word “pastry” to “Black Star” and, on 21 July 2008, he registered “Black Star Pastry” as a business name.[38] Mr Thé did not undertake any trade mark searches.[39] In the meantime, and as I noted at the beginning of these reasons, in May 2008 Mr Thé engaged two of his friends to design a logo for use by him in the proposed business;[40] and they designed the logo which, in the circumstances I discuss later, became registered as a trade mark.[37] Affidavit C P Thé 03.04.2024, [13].[38] Affidavit C P Thé 03.04.2024, [14].[39] Affidavit C P Thé 03.04.2024, [15].[40] Affidavit C P Thé 03.04.2024, [17]-[18].Commencement and nature of business