Richards v Black Star Pastry Pty Ltd (No 2)

[2025] FedCFamC2G 1226

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 used those words as a trade mark – whether the respondent provided café services or specialty coffee retailing services its being accepted that those services are closely related to the sale of coffee beverages and coffee – whether the words “Black Star Pastry” are substantially identical with or deceptively similar to the Blackstar trade marks - whether to the extent the respondent used the words “Black Star Pastry” as a trade mark in relation to café services or specialty coffee retailing services it did so in circumstances where it is not likely to deceive or cause confusion – whether “bakery services” includes the supply of coffee beverages or the sale of coffee with the consequence that by using the words “Black Star Pastry” in relation to coffee beverages and coffee the respondent was exercising rights to use its registered trade marks and therefore it exercised rights to use trade marks conferred by the TM Act within the meaning of s 122(1)(e) of the TM Act – whether the applicant engaged in any delay or other conduct such as to amount to an agreement or acquiescence in the respondent’s using the words “Black Star Pastry” or otherwise to render it unconscionable to grant the applicant any remedy in relation to the respondent’s use of the words “Black Star Pastry” in relation to coffee beverages and coffee – whether the respondent was not the owner of the sign “Black Star Pastry” or of the BSP Logo and for that reason the registration of those trade marks should be cancelled – applicant succeeds on his infringement claims.

Legislation:

Trade Marks Act 1995 (Cth) ss 6(1), 7(4), 10, 20(1), 20(2), 43, 58, 88(1), 88(2)(a), 120(1), 120(2)(b), 122(1)(e), 126

Trade Marks Act 1905–1948 (Cth) s 114

Trade Marks Act 1955 (Cth)

Trade Marks Act 1938 (UK)

Trade Mark Registration Acts 1875-1877 (UK)

Cases cited:

Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521

Aristoc Ltd v Rysta Ltd [1945] AC 68

Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641

Bing! Software v Bing Technologies [2009] FCAFC 131

British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54

CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63

Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258

Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375

Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511

Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107

De Cordova and Others v Vick Chemical Company (1951) 1B IPR 496

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27

E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15

Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243

Electrolux Ltd v Electrix Ltd (1953) 71 RPC 2

Estex Clothing Manufacturing Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 25

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58

Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13

Henry v Leighton Admin Services Pty Ltd & Anor [2015] FCCA 1923

In re Hicks Trade Mark (1897) 22 VLR 636

In re Hudgson’s Trade-Marks (1886) 32 CH D 311

Jafferjee v Scarlett (1937) 57 CLR 11

Killer Queen LLC and Others v Taylor [2024] FCAFC 14

Korolak v Campbell (No 2) [2023] FedCFamC2G 1222

McCormick & Co Inc v McCormick [2000] FCA 133

McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412

MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236

Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 37

Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491

Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 48

Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365

Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 365

Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8

Shell Company of Australia Ltd v Rohm and Haas Company (1949) 78 CLR 601

Sizzler Restaurants International Inc v Sabra International Ltd (1990) 20 IPR 331

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592

Tavener Rutledge Ld v Specters Ld [1959] RPC 355

The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334

The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407

Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661

Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89

Winton Shire Council v Lomas [2002] FCA 288

Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97

Division:

General

Number of paragraphs:

225

Date of last submission/s:

5 February 2025

Date of hearing:

20-23 May 2024

Place:

Brisbane

Counsel for the Applicant:

Mr D Eliades

Solicitor for the Applicant:

Matthew Sulman & Associates

Counsel for the Respondent:

Mr M Fleming

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:	1 AUGUST 2025

THE COURT ORDERS THAT:

1.The respondent’s cross claim seeking the cancellation of Australian Registered Trade Mark No 112976 is dismissed.

2.The applicant’s application to the extent it seeks the cancellation of Australian Registered Trade Mark No 1449202, Australian Registered Trade Mark No 1953011, Australian Registered Trade Mark No 1953012, and Australian Registered Trade Mark No 2057974, is dismissed.

THE COURT DECLARES THAT:

3.By using the words “BLACK STAR PASTRY” in relation to the supply of coffee beverages, café services, and coffee (other than coffee beans and ground coffee the respondent supplied in packages on which the words “ST. ALi” in their entirety were visible) the respondent infringed Australian Registered Trade Mark No 112976, being a trade mark of which the applicant is the registered owner.

4.By using the words “BLACK STAR PASTRY” in relation to the supply of coffee (other than coffee beans and ground coffee the respondent supplied in packages on which the words “ST. ALi” in their entirety were visible) the respondent has infringed the applicant’s Australian Registered Trade Mark No 128833, being a trade mark of which the applicant is the registered owner.

THE COURT ORDERS THAT:

5.Pursuant to s 230(1) of the Federal Circuit and Family Court of Australia Act 2021 (Cth), until further order of the Court, subparagraphs (a)-(e) of paragraph 105 of the reasons for judgment on the basis of which these orders and declarations are made are suppressed to the extent the contents of those paragraphs may be released only to the legal representatives of the parties.

6.The matter be listed for a directions hearing at 9.30 am on 11 September 2025, or at such other time and date as may be convenient to the parties and the Court.

THE COURT NOTES THAT:

7.Order 5 is made because it is necessary to prevent prejudice to the proper administration of justice, it being the case that the information to which order 5 relates is commercially sensitive information which is the subject of a confidentiality order.

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

1. In this proceeding the applicant, Mr Richards, claims the respondent (BSP) has infringed, and continues to infringe, two registered trade marks (Blackstar trade marks) of which Mr Richards is the owner. The first is a word mark, “BLACKSTAR” (Blackstar 976 trade mark), which was accepted for registration on 4 January 2008, with effect from 26 April 2007. The second is a composite mark which was accepted for registration on 19 November 2009, with effect from 20 March 2009 (Blackstar 833 trade mark); it comprises the words “BLACKSTAR COFFEE” and a star as follows:

2. The Blackstar 976 trade mark is registered in class 30 for (among other things) “beverages consisting principally of coffee”, beverages made from coffee, coffee, coffee beverages, coffee beans, and ground coffee; and the Blackstar 833 trade mark is registered in (among other classes) class 30 for (among other things) “additives for coffee”, and “coffee”. Mr Richards has been using the Blackstar trade marks in connection with a business (Blackstar Coffee Business) which principally consists of the roasting and sale of coffee beans, and the making of coffee beverages for direct consumption by use of the coffee beans the business roasts. Mr Richards commenced the Blackstar Coffee Business in around July 2007 in Brisbane with his former wife, Ms Andrews.

3. BSP itself is the owner of three registered trade marks, one of which is comprised of the words “BLACK STAR PASTRY” (BSP012 trade mark), and two of which (BSP202 trade mark and BSP011 trade mark) are composite marks which comprise a logo (BSP Logo) that includes the words “BLACK STAR PASTRY”, as follows:[1]

   [1] BSP is also the owner of a fourth registered trade mark (BSP974). I will discuss in separate section of these reasons the issues that arise in relation to that trade mark.

4. The BSP202 trade mark was accepted for registration on 22 October 2014, with effect from 19 September 2011; and it was registered in class 16 (for recipes (printed matter); photographs); class 30 for (among other things) bakery products, cakes, pastries, bakery services, and providing food; and class 43 for bakery services, and providing food. The BSP011 and BSP012 trade marks were accepted for registration on 2 March 2022 and 24 February 2022 respectively, both effective from 4 September 2018. The BSP011 trade mark was registered for goods in classes 16 and 35, and, in relation to class 35, for “retail services (by any means), other than specialty coffee retailing services”; and the BSP012 trade mark was registered in classes 16, 30, 35, and 43 for “bakery products, foodstuffs made from dough; foodstuffs made with flour; biscuits, cakes, pastries” (in the case of class 30); “retail services (by any means) other than specialty coffee retailing services” (in the case of class 35), and “bakery services, providing food” (in the case of class 43).

5. Until around December 2021 BSP had been using all three BSP trade marks in connection with a business (BSP Business) it acquired in 2011, but which Mr Thé, then the sole shareholder and controller of BSP, had commenced in around October 2008. BSP continues to use the BSP011 trade mark in the BSP Business, but in around December 2021, BSP ceased using the BSP202 and BSP012 trade marks, and began to use the following logo (New BSP Logo) in connection with the business:

6. I will collectively refer to the three registered BSP trade marks and the New BSP Logo as the BSP trade marks.

7. The BSP Business consisted, and continues to consist, of the preparation and sale of baked goods, including bread, croissants, pastries, cakes, pies, and sandwiches; and it has achieved particular notoriety with its Strawberry Watermelon Cake, which forms a substantial proportion of the total trade of the BSP Business. The BSP Business, however, also sold, and continues to sell, among other things, coffee beverages and coffee. And it is BSP’s selling of coffee beverages and coffee in the course of the BSP Business that has given rise to this proceeding.

   CLAIMS AND DEFENCES

8. In this proceeding Mr Richards claims (Infringement Claims) that the BSP trade marks are substantially identical with or deceptively similar to the Blackstar trade marks. Mr Richards further claims that:

   (a)BSP has used, and continues to use, the BSP trade marks in relation to the selling, advertising, and promoting of coffee, and coffee-based products, being goods in respect of which the Blackstar trade marks are registered; and by having engaged, and continuing to engage in these activities, BSP has infringed, and will continue to infringe, the Blackstar trade marks within the meaning of s 120(1) of the Trade Marks Act 1995 (Cth) (TM Act); and

   (b)BSP has used, and continues to use, the BSP trade marks in relation to the providing of café services, and specialty coffee retailing services, being services in respect of which the Blackstar trade marks are not registered, but which are closely related to the goods in respect of which the Blackstar trade marks are registered; and by having engaged, and continuing to engage in these activities, BSP has infringed, and will continue to infringe, the Blackstar trade marks within the meaning of s 120(2)(b) of the TM Act.

9. BSP defends the Infringement Claims on the following grounds:

   (a)Mr Richards was not the sole owner of the Blackstar 976 trade mark at the time Mr Richards applied to register it and, for that reason, the Blackstar 976 trade mark is liable to be cancelled pursuant to s 88(2)(a) of the TM Act.

   (b)BSP accepts it has used and continues to use the BSP trade marks as trade marks; but it contends that it does not use them as trade marks in relation to goods in respect of which the Blackstar trade marks are registered. And although BSP accepts that “café services” or “specialty coffee retailing services” are closely related services to “coffee goods” (being one of the classes of goods in respect of which the Black Star trade marks are registered), BSP contends it does not provide “café services” per se, or “specialty coffee retailing services”. Further, to the extent it is found that BSP provides “café services”, BSP contends that such services are ancillary to the bakery services it provides.

   (c)BSP in any event denies that any of the BSP trade marks are substantially identical with or deceptively similar to either of the Blackstar trade marks; but if they are, and to the extent BSP has used the BSP trade marks in connection with its supplying of services that are closely related to the goods in respect of which the Blackstar trade marks are registered, BSP’s use of the trade marks is not likely to deceive or cause confusion.

   (d)In any event, the provision of coffee beverages falls within the scope of “bakery services”, being services in respect of which the BSP trade marks are registered; and to the extent, therefore, BSP has provided and continues to provide coffee beverages, it has done and will continue to do so by exercising rights to use trade marks given to it by the TM Act. For that reason, BSP contends it is entitled to the defence provided for by s 122(1)(e) of the TM Act.

   (e)Finally, if Mr Richards succeeds on any of his claims, relief should be withheld because Mr Richards failed to assert his rights in circumstances where he knew that BSP was using the BSP trade marks.

10. As I have already noted, BSP ceased using the BSP012 and BSP202 trade marks in around December 2021 and, in their stead, BSP has been using the New BSP Logo. The statement of claim does not specifically allege that BSP has used the New BSP Logo. The New BSP Logo, however, comprises the same words that are comprised in the BSP012 trade mark, and in its defence BSP pleads that its use of the New BSP Logo constitutes the use of the BSP012 trade mark. For these reasons, I will proceed on the basis that the allegations the statement of claim makes in relation to the BSP012 trade mark apply both to the BSP012 trade mark, and to the New BSP Logo.

11. Mr Richards also applies to cancel the registration of the BSP202, BSP011, and BSP012 trade marks on the ground that Mr Thé was the original user of those trade marks. As will appear later, the true ground on which Mr Richards relies is that, at the time BSP applied to register the BSP202 trade mark, it was not the owner of that trade mark, or of the trade mark to the extent it comprised the words “Black Star Pastry”.

    ARRANGEMENT OF REASONS

12. I will first set out the effect of the evidence, largely in narrative form, that relates to the creation, course, and nature of each of the Blackstar Coffee Business and the BSP Business. Unless the context suggests otherwise, any unqualified statement of fact should be taken to be a finding of the fact I state. I will then consider BSP’s cross claim. Next, I will consider the Infringement Claims, and I will do so by broadly reference to the following questions:

    (a)What goods, or what goods and services, does BSP supply or provide in the course of the BSP Business (BSP goods or BSP services)? In particular, are any of the BSP goods or BSP services goods or services in respect of which the Blackstar trade marks are registered (Blackstar registered goods or Blackstar registered services)?

    (b)To the extent (a) is answered in the affirmative, has BSP used any of the BSP trade marks as a trade mark in relation to any of the BSP goods?

    (c)To the extent (b) is answered in the affirmative, are any of the BSP trade marks that BSP has so used substantially identical with or deceptively similar to the Blackstar trade marks?

    (d)Do the BSP goods or services include the services Mr Richards alleges are closely related to the Blackstar registered goods? In particular, do the BSP services include “café services” or “specialty coffee retailing services”.

    (e)To the extent (c) and (d) are answered in the affirmative, will BSP’s using the BSP trade marks in relation to “café services” or “specialty coffee retailing services” be likely not to deceive or cause confusion?

    (f)Given the determinations of (a)-(e), is BSP entitled to rely on s 122(1)(e) of the TM Act?

    (g)To the extent Mr Richards succeeds on his Infringement Claims, has Mr Richards engaged in any conduct that would lead the Court to decline to grant him a remedy?

1. The determination of the Infringement Claim requires the identification and application of an extensive set of principles that have been pronounced and applied by courts of authority. For ease of comprehension of the issues in this proceeding, I have set out in a schedule to these reasons (Principles) the provisions and principles that are relevant to the determination of the questions that arise on the Infringement Claims.

2. Finally, I will consider separately two other issues. The first relates to a fourth BSP trade mark (BSP974 trade mark); and the second relates to Mr Richards’ application for the cancellation of the BSP trade marks.

   BACKGROUND

   Blackstar Coffee Business up to 2011

   Beginnings

3. Sometime before September 2006 Mr Richards and Ms Andrews, whom Mr Richards describes as his then “business partner”, discussed and agreed to form a business of selling quality coffee.[2] By around 1 September 2006 Mr Richards and Ms Andrews chose “Blackstar” as the name under which they would conduct the business.[3] The name “Blackstar” originated in part to pay homage to Ms Andrews’s grandfather who had started the Star Milk Bar in the early 1960s.[4]

   [2] Affidavit M Richards 01.03.2024, MR-1, [9] (CB 634).

   [3] Affidavit M Richards 01.03.2024, MR-1, [7] (CB 633).

   [4] Affidavit M Richards 01.03.2024, MR-1, [8] (CB 634).

4. By 2 March 2007 Mr Richards prepared a document titled “Enterprise “Action Plan””.[5] It identified the taking of a number of steps from 1 March 2007 to 10 April 2007 in relation to three things: the “Blackstar Roastery”, the “Blackstar Cart”, and the “Co-Op”. The steps in relation to the “Blackstar Roastery” included making a “SVA Presentation” on 20 March 2007. “SVA” is a reference to an organisation called “Social Venture Australia” which, together with Brisbane City Council and Pricewaterhouse Coopers, formed the Brisbane Social Enterprise Hub (BSEH).[6]

   [5] Affidavit M Richards 01.03.2024, MR-1, [11]; MR-G (CB 634).

   [6] CB737: “Social Ventures Australia in partnership with Brisbane City Council and PriceWaterhouse Coopers have funded the Brisbane Social Enterprise Hub (known as ‘The Hub’) to support social enterprises, which are businesses with a primary social goal of creating employment for people marginalised from mainstream employment due to disability, mental health conditions, or cultural background.”

5. On 12 March 2007 Mr Richards submitted a “Business Proposal” to the BSEH for the funding of his proposed coffee business (Proposal).[7] The Proposal was for the “establishment of Brisbane’s first exclusively ‘fair trade’ expresso coffee enterprise – BLACKSTAR COFFEE” as a “social enterprise, generating employment training and income opportunities for members of disadvantaged communities”.[8] The Proposal identified its core purposes to be:[9]

   •to supply excellent, memorable espresso coffee, thereby increasing the reputation of the BLACKSTAR brand and blend.

   •to provide community education regarding both ‘fair-trade’ and ‘social enterprise’, putting these ideas about community and economy out amongst our customer base.

   •to create small business and employment opportunities for people from disadvantaged communities (specifically - amongst the Hazara [Afghan] new arrival community).

   •to generate income for the development of community enterprise and community development in Brisbane.

   [7] Affidavit M Richards 01.03.2024, [12]; MR-H.

   [8] Affidavit M Richards 01.03.2024, MR-1, [12]; MR-H (CB720).

   [9] Affidavit M Richards 01.03.2024, MR-1, [12]; MR-H (CB720).

6. The Proposal also described the vision of the business:

   To be a coffee brand that is known for both memorable coffee and its unique contribution towards economic justice, locally and globally.

   Central to the vision of BLACKSTAR is the desire to develop the integrity and reputation of its product and brand -

   – …from the ground up - quality green beans, grown by co-operatives in developing countries in accordance with international fair trade regulations,

   – …roasted with passion and dedication - by the dedicated BLACKSTAR roasting team

   – …transferred professionally into espresso drinks – by our trained BARISTA STAFF

7. Under the heading “The Business Idea” the Proposal stated:

   The proposed business idea is to establish the BLACKSTAR Roastery and then to open the first BLACKSTAR coffee cart/standing stall. The Roastery will function as the heart and soul of the initiative, offering both customers and staff a taste of the qualities and ethos of the BLACKSTAR brand and blend. The unique aspect of the idea/opportunity is that the Roastery will be located in an adjoining space to JAMIE’S ESPRESSO BAR, Fortitude Valley (JAMIE’S is a key partner in the venture). This means that customers can witness the roasting process and sample the BLACKSTAR blend at the same site. In terms of viability as a start up community enterprise, the involvement and proximity to Jamie’s has many benefits (these will be outlined more clearly under ‘key people’).

8. By letter dated 28 March 2007 the BSEH informed Mr Richards that it proposed that “Blackstar participate in the Brisbane Social Enterprise Hub, but not commence participating on the Accelerator Program”.[10]

   [10] CB874.

9. It would be convenient at this stage to note some other features of the Proposal which is relevant to Mr Richards’s evidence that Ms Andrews was his business partner:

   (a)The Proposal identifies Mr Richards as the person who prepared the Proposal.[11]

   (b)The Proposal states that “Blackstar Coffee” is “an initiative of EPM Enterprises, a Brisbane based social enterprise”.[12]

   (c)The section headed “key people” identifies three persons, one of which is Mr Richards. This part of the Proposal provides information about Mr Richards’ background, and also about his role. This is the only section of the Proposal that mentions Ms Andrews; and it is limited to the following: “Martin is married to Evonne and they have two young children”.[13]

   (d)The Proposal describes the nature and extent of Mr Richards’ involvement in the business as follows:[14]

   [11] CB720.

   [12] CB720.

   [13] CB730.

   [14] CB730.

   Level of Involvement – Martin will play a key role in the development and promotion of the roastery and the espresso cart/bar. He will be a founding partner of BLACKSTAR COFFEE and will invest time and finances towards the establishment of both the roastery and the espresso cart/bar. This includes helping with the logistical set-up stage, identifying, recruiting and supporting appropriate part time roastery worker and espresso cart operators, overseeing the developmental process according to license agreements and action plan (see below). With a strong commitment to community enterprise and an increasing awareness of fair-trade, he will liaise with Matt from PEOPLES COFFEE (see section 7 – Partners and Supporters) in the establishment phase to ensure the training received at PEOPLES, Wellington is translated effectively in the Brisbane context. Another contribution will be linking the initiative to the broader social enterprise sector support networks such as BSEH.

   Defining Marty’s Role

   ROASTERY CO-OWNER - SALES & OPERATIONS MANAGER

   CART/STALL MANAGER & CO-OWNER

   •Project Development role, responsible for the overall co-ordination of BLACKSTAR COFFEE, ensuring that it is on plan – both at the roastery and at the espresso bar.

   •Promoting the business, locating sufficient contracts to achieve growth targets – drawing on existing social enterprise networks as well as building new business relationships.

   •Marty to co-ordinate the training week at PEOPLES COFFEE in Wellington.

   •Supporting and resourcing worker/members.

   •Conducting necessary review/evaluation processes.

   •Marty to join an overseas fair-trade origin tour to meet with growers and educate himself re fair trade coffee

10. There is also in evidence an undated document titled “Notes from Chat with Anthony Esposito re Structure”.[15] There is a chart which identifies particular businesses, including “Blackstar Roastery” which contains the question: “Partnership Marty Evonne?”

    [15] CB785.

11. In March 2007 Mr Richards and Ms Andrews gave a presentation, presumably to persons that included representatives of BSEH, in which they explained the idea behind the proposed business, and the intended social outcomes, and financial assessment, of the proposed business.[16]

    [16] CB746-771.

    26 April 2007 Application for Blackstar 976 trade mark

12. According to Mr Richards, on 26 April 2007 he went to IP Australia’s office in Brisbane where he lodged an application for the registration of “Blackstar” as a trade mark (this being the Blackstar 976 trade mark I identified at the beginning of these reasons). Mr Richards went there alone,[17] and he alone signed the application.[18] Mr Richards remembers Ms Andrews was unable to attend with him.[19] Mr Richards gave evidence explaining why he alone, and not he and Ms Andrews, applied for the registration of the Blackstar 976 trade mark and, therefore, why, when registered as a trade mark, the Blackstar 976 trade mark was registered only in the name of Mr Richards, not in the names of Mr Richards and Ms Andrews. Mr Richards says as follows:

    (a)Although he does not recall the exact details of his conversation with Ms Andrews, Mr Richards says he does recall “we talked in detail about all of the important matters regarding the business and especially about securing the registration of our business’s trade marks”;[20] and “there is little we did not discuss about the Blackstar coffee business”.[21]

    (b)The reasons Mr Richards signed the application by himself was that Ms Andrews “could not make it into the office on that day”.[22]

    (c)The application for the Blackstar 976 trade mark was made when Mr Richards and Ms Andrews “were both very busy with business start-up tasks and also juggling family commitments”. The application for the Blackstar 976 trade mark was “one of many things” they “were both doing to get the necessary boxes ticked”, there being many tasks Mr Richards did on “behalf of the partnership”, and many things Ms Andrews did on behalf of “the partnership”.[23]

    (d)During the “start-up phase of the Blackstar business (early to mid-2007)”, and “prior to registration” of the Blackstar 976 trade mark, Mr Richards had “several discussions” with Ms Andrews “about whether we should register” the Blackstar 976 trade mark. In those conversations Mr Richards and Ms Andrews discussed it “was necessary as we were a small business” and, Mr Richards recalls, Ms Andrews “had good commercial sense”, and “she was always very strong about the importance of trade marks”.[24]

    [17] Affidavit M Richards 29.04.2024; MR-1, [45].

    [18] Affidavit M Richards 29.04.2024; MR-1, [49].

    [19] Affidavit M Richards 29.04.2024; MR-1, [46].

    [20] Affidavit M Richards 29.04.2024; MR-1, [47].

    [21] Affidavit M Richards 29.04.2024; MR-1, [48].

    [22] Affidavit M Richards 29.04.2024; MR-1, [49].

    [23] Affidavit M Richards 29.04.2024; MR-1, [51].

    [24] Affidavit M Richards 29.04.2024; MR-1, [52].

    27 April 2007 Blackstar Coffee Business plan

13. On 27 April 2007 Mr Richards prepared a business plan.[25] It described the Blackstar brand in terms of four ideas: the flavours of Blackstar, the ethos of Blackstar, the look of Blackstar, and “real coffee”. The idea was to promote and shift consumer culture towards coffee as a culinary art form, connecting coffee “into the experience economy concept”, where Blackstar “will combine both story and flavour”. Under the heading “Goals & Objectives” the goal is stated to be “to launch the Blackstar Espresso Bar by August 2007”.

    [25] Affidavit M Richards 29.04.2024; MR-1, [43] MR-1C (CB3042).

    Commencement and subsequent course of Blackstar Coffee Business

14. In July 2007 Mr Richards commenced the Blackstar Coffee Business. This consisted of roasting Blackstar Coffee beans, and selling coffee, coffee beans, and cold pressed coffee and food products at and from leased premises at Souths Leagues Club in West End, Brisbane. From that time, Mr Richards supplied Jamie’s Espresso Bar, a well-known high volume café in Fames Street, Fortitude Valley.[26] In October 2007 Mr Richards commenced a coffee cart venture known as “Blackstar Coffee-Green Square” at Brisbane City Council’s head office in Fortitude Valley. Mr Richards also sold Blackstar branded products, including coffee, coffee beans, cold pressed coffee, and food products.[27]

    [26] Affidavit M Richards 01.03.2024, MR-1, [15].

    [27] Affidavit M Richards 01.03.2024, MR-1, [16].

15. By letter dated 18 June 2008 the BSEH offered “Black Star a position in the 2008 Accelerator Programme subject to Black Star developing a not-for-profit legal structure as this is now a requirement of Social Venture Australia support for any enterprise”. This letter was written after Mr Richards, “Yvonne and Cara came to present to the Commerce Panel recently”.[28]

    [28] CB1023.

16. In July 2008 Mr Richards moved the “Blackstar Coffee-Green Square” to Alfred Street, Fortitude Valley, and renamed the outlet “The Driveway”.[29] In October 2008 Mr Richards opened his second retail outlet in Thomas Street, West End, which he named “The Blackstar Roastery”. Mr Richards sold Blackstar branded coffee from this outlet, including coffee, coffee beans, cold pressed coffee, and food products.[30]

    [29] Affidavit M Richards 01.03.2024, MR-1, [17].

    [30] Affidavit M Richards 01.03.2024, MR-1, [18].

17. 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

18. 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

19. 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 substitutes

    Class 30: Additives for coffee; coffee

    Class 33: Alcohol for drinking; alcoholic beverages

    BSP Business up to 2011 (before incorporation)

    Conception

20. 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

21. 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].

22. 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

23. It took Mr Thé about six months to develop the Newtown store; and he opened the store for trading in about late October 2008 (this being the BSP Business I identified at the beginning of these reasons).[41]

    [41] Affidavit C P Thé 03.04.2024, [20].

24. The BSP Business sold a wide variety of baked goods, including bread, croissants, pastries, cakes, quiches, pies, and sandwiches. The BSP Business also sold coffee. According to Mr Thé:[42]

    The business . . . sold coffee as an accompaniment to its baked goods. From the time it opened, the primary focus of the BSP Business was the sale of baked goods, which are my skillset. That focus remained for as long as I was involved in the business. . . .

    From October 2008, I worked in the store from around 3:00am/4:00am most mornings until close. There was a small kitchen and I baked cakes, patisseries, pies and quiches with the assistance of one other pastry chef. I employed a barista to make coffee, who commenced work when the store opened at around 7.00am.

    While not the primary focus of the BSP Business, coffee was always important to the local customers. As I could not make coffee well, I relied on the barista and one other shop person to make the coffee. I took over the coffee making once the barista left for the day at about 1.00pm or 2.00pm and I would make coffee until we closed at about 3.00pm or 4.00pm. As the business grew, I employed more staff, and I worked exclusively in the kitchen. By about February 2009, the business started trading 7 days a week from the Newtown store and had a full-time barista on duty on each of those days.

    [42] Affidavit C P Thé 03.04.2024, [21]-[23].

25. Mr Thé used coffee beans supplied by a business known as “The Little Marionette”; and he initially used a La San Marco coffee machine, which Mr Thé purchased at auction and which, in 2009, he replaced with a La Marzocco machine. Mr Thé also rented coffee grinders. [43] 

    [43] Affidavit C P Thé 03.04.2024, [24].

26. From the time he opened his store, the BSP Business sold all types of espresso-based coffees using The Little Marionette coffee beans, including espresso, latte, long black, cappuccino, and macchiato, with cow or soy milk. The BSP Business also sold other beverages, such as tea, chai, soft drinks, and juices. Customers were able to buy coffee and other items for sale as dine-in or takeaway; and the BSP Business stamped coffee cups and paper bags with the Black Star Pastry logo.[44]

    [44] Affidavit C P Thé 03.04.2024, [25].

27. At around the time he opened the Newtown store, Mr Thé created the Strawberry Watermelon Cake which has the novel feature of a layer of watermelon. Mr Thé began offering Strawberry Watermelon Cake at the Newtown store in late 2008 or early 2009, and it became the BSP Business’s most successful product.[45] The Strawberry Watermelon Cake gained an international reputation and recognition. In April 2019 the Australian Financial Review described the Strawberry Watermelon Cake as the “world’s most Instagrammed cake”; and in May 2019 the New York Times described it as “Australia's most Instagrammed Dessert”.[46]

    [45] Affidavit C P Thé 03.04.2024, [29].

    [46] Affidavit C P Thé 03.04.2024, [30].

    Website

1. In 2008 Mr Thé acquired the domain name “ for use in connection with the BSP Business, but Mr Thé did not take steps to develop the webpage until August 2010, when he engaged a web designer to design the website. Mr Thé launched the BSP Business website in September 2010. The website’s “about us” section described the BSP Business as follows:

   BlackStar Pastry was established in October 2008 and now over seven hundred and fifteen four-am starts later Christopher Thé and his team are still baking delicious moments for us all.

   A clear single vision and traditional techniques drive this dedicated team and you can taste the hard work that goes into their food. What comes out of the kitchen is real naturally beautiful and flavour is king.

   The café has an eclectic vibe which feels instantly familiar. Fine coffee made from Little Marionette coffee beans, a DIY toast station, house-brewed iced tea in summer and fresh juices serve as perfect accompaniments to the glorious array of sweet and savoury offerings.

   Good honest slow cooking enlivened with fresh experimentation is what BlackStar is all about. You can read more about Thé’s musings and creative process in his Journal, and you may be lucky enough to find a free recipe!

   Telephone conversation between Mr Richards and Mr Thé

2. In his first affidavit Mr Richards deposes that in 2011 some of his customers informed Mr Richards that a business in Newtown, Sydney, was using the name “BLACKSTAR”. Mr Richards says that “[a]s a result”, he rang Mr Thé after performing a Google search for Black Star Pastry. Mr Richards says he “wanted to establish that Mr Thé had no intention to use the BLACKSTAR name for any products for which” the Blackstar trade marks were registered”.

3. Mr Richards does not set out his recollection of the conversation he had with Mr Thé; Mr Richards goes no further than stating the understanding he says he was left with after the conversation, this being that Mr Thé “was operating a single bakery, pastry outlet only”, and that “coffee was not part of the overall direction as he was a qualified pastry chef and cakes, pastries and baked goods were his focus”.[47] Mr Richards further deposes:

   At no time in the conversation did Mr Thé say that he was applying for a trade mark to extend that trade mark application to “cafe services” and “providing drink services” which could have extended the goods or services to include coffee products for which my ‘976 and ‘833 marks were and are registered.

   [47] Affidavit M Richards 29.04.2024; MR-1, [48].

4. Mr Richards was cross-examined about his telephone conversation with Mr Thé, and the circumstances that led to his calling Mr Thé. Mr Richards said his customers told him there was a business in Sydney called “Blackstar”; that happened a “couple of times”;[48] Mr Richards decided he would try and find out a bit more about the business, so he conducted a Google search for “Black Star Pastry”;[49] Mr Richards does not recall visiting any website;[50] the Google search just revealed the name and telephone number of Black Star Pastry;[51] Mr Richards definitely does not remember reading anything about Black Star Pastry being a café; and he did not undertake any other research about Black Star Pastry.[52] Mr Richards further said that during the conversation he asked Mr Thé whether he owns coffee trade marks; and there had been some confusion. Mr Thé explained he was a pastry chef, that he was a bakery, and he sold very little coffee. Mr Richards said if Mr Thé is going to sell any coffee at all, it should be “my coffee because I am Blackstar Coffee”;[53] and that Mr Thé made the “point that he was a bakery and a pastry chef”, and that coffee “wasn’t a focus”.[54]

   [48] T89.15.

   [49] T90.15

   [50] T90.45

   [51] T90.15.

   [52] T91.35.

   [53] T92.10.

   [54] T93.30.

5. Mr Thé recalls having received a telephone call from Mr Richards; but he does not recall whether it was in 2009, 2010, or 2011. Mr Thé’s recollection of the conversation, as set out in his affidavit, is as follows:[55]

   (a) Mr Richards said that he had a Blackstar coffee business in Brisbane. I was not aware of Mr Richards’ business prior to his call.

   (b) Mr Richards asked me if I roasted coffee beans. I told Mr Richards that I was not a coffee roaster, I was a bakery patisserie and that I did not intend to start roasting coffee.

   (c) Mr Richards asked me light heartedly if I was interested in buying his coffee. I told him that I was not. As I state above, I was close friends with the owner of Little Marionette, which roasted coffee beans and supplied coffee to me. Roasting coffee is not, and has never been, my skillset. Baked goods are my skillset. I told him that I served coffee but that my business was a pastry shop first and foremost.

   (d) Mr Richards asked me if I had any plans to expand. I told him I had no present intention to expand but could possibly plan to expand in the future.

   (e) I noted the differences between the businesses geographically - Mr Richards’ coffee business was located in Queensland and my business was located in New South Wales. I also noted the differences between the nature of the businesses - Mr Richards’ business was focussed on coffee and my business was a bakery patisserie.

   (f) Mr Richards did not ask me to cease using the words ‘Black Star’ or ‘Black Star Pastry’ in connection with my business, nor did he suggest anything along those lines. I do not recall him mentioning how he had found out about my business.

   [55] Affidavit C P Thé 03.04.2024, [41].

6. Mr Thé also deposes as follows:[56]

   Mr Richards asked me what would happen if he wanted to go to New South Wales or I wanted to go to Queensland. I said to him that it was very unlikely that I would open a shop in Queensland. I told him that our businesses were very different and that they could co-exist, as his focus was on coffee and mine was on pastry. I recall telling Mr Richards that I sold coffee based drinks.

   [56] Affidavit C P Thé 03.04.2024, [46].

7. In evidence given under cross-examination, Mr Thé said he was not aware of Mr Richards’ business before he received the call from him.[57] Mr Thé also said that Mr Richards said he had a coffee business in Brisbane;[58] and that he had the name “Blackstar” in relation to his business;[59] Mr Richards offered to sell to Mr Thé wholesale coffee beans;[60] and Mr Thé said he was a pastry chef, and that was the focus of his business.[61] Mr Thé also gave the following evidence:[62]

   . . . . You didn’t say that you might expand in the future?‑‑‑I do recall that during that conversation, Mr Richards asked about, “What if you wanted to go to Queensland, and what if I” – what if he wished to go to New South Wales, and at the time I thought that was not an option, as I wasn’t a sophisticated business owner.  I ‑ ‑ ‑

   Right?‑‑‑ ‑ ‑ ‑ couldn’t see past 2011.

   You saw that the businesses were different?‑‑‑I can recall saying that I said something to the like of, “I sell pastry and you sell coffee.”  Yes.

   Right?‑‑‑Businesses are different.

   [57] T183.30.

   [58] T183.40.

   [59] T183.40.

   [60] T184.5.

   [61] T184.15.

   [62] T184.40.

8. For reasons that will appear later, it will be unnecessary to make any finding other than that, at around 2011, or perhaps 2010 or 2009, Mr Richards telephoned Mr Thé and had a conversation in the course of which Mr Richards came to understand that Mr Thé was a pastry chef who was using “Black Star Pastry” in connection with a business in which Mr Thé was selling pastries together with coffee; and Mr Thé came to understand that Mr Richards has a coffee business in Brisbane which used the name “Blackstar”.

9. According to Mr Thé, he was not concerned, after his telephone conversation with Mr Richards, of the existence of the Blackstar Coffee Business because he believed the BSP Business and the Blackstar Coffee Business were different; and he so believed because the focus of the BSP Business was then, and has remained, on baked goods. Further, Mr Thé says he had registered “Black Star Pastry” as a business name, and he did not understand the difference between the registration of business names and the registration of trade marks.[63] Mr Richards did not again contact Mr Thé after their conversation. Mr Thé says he felt confident that he had registered “Black Star Pastry”, he had a business name, and that was all he required at that time. Mr Thé believed the two business co-existed; and Mr Richards gave Mr Thé no reason to think otherwise.[64]

   [63] BSP’s closing submissions, [209].

   [64] BSP’s closing submissions, [210]-[211].

10. BSP relies on this evidence in support of its contention that Mr Richards had agreed or acquiesced in BSP’s use of “Black Star Pastry”; and I will address the relevance of Mr Thé’s evidence later in these reasons when I consider BSP’s contention.

    Incorporation of BSP

11. On 17 June 2011 Mr Thé arranged to incorporate BSP; and until around 31 July 2018 he was the sole director and shareholder of BSP. As sole director and shareholder, Mr Thé was solely responsible for the conduct and management of BSP.[65] Mr Thé says that he decided to incorporate the BSP Business because it had grown substantially, driven by the popularity of the Strawberry Watermelon Cake; and he also wanted to ensure that his personal and business assets were kept and managed separately.[66]

    [65] Affidavit C P Thé 03.04.2024, [37].

    [66] Affidavit M Richards 29.04.2024; MR-1, [37].

    Registration of the BSP202 trade mark

12. At the time Mr Thé arranged for BSP to take over the BSP Business, he instructed his lawyer to apply to register the BSP Logo as a trade mark. On 19 September 2011 BSP’s lawyers applied for the registration as a trade mark the BSP Logo (which when registered became what I earlier identified as the BSP202 trade mark).

13. By letter dated 7 February 2012 a trade mark examiner provided an adverse examination report (First Examination report) in which the examiner identified the following problem:[67]

    [67] CB1739.

    This problem applies to Class 43 only.

    Your trade mark closely resembles the following trade marks. These trade marks have earlier priority dates and are for similar goods and services:

    1172976, 1288833

    •Your trade mark closely resembles the earlier trade marks because your trade mark and the conflicting trade marks contain the words BLACK STAR as an essential element. I note the additional words and devices in your trade mark and the conflicting trade marks however these are not sufficient to prevent confusion. This is because a consumer who is familiar with the earlier filed trade marks is likely to believe that the closely related goods and services would originate from the same trade source.

    AND

    •the conflicting trade marks have claimed coffee goods in class 30 which are closely related to your cafes and providing drink services in class 43.

14. The numbers 1172976 and 1288833 are the Blackstar trade marks.

15. The First Examination Report identified a way in which BSP “would” overcome the problem it identified, namely, by removing “cafes” and “and drink” from the Class 43 services in respect of which BSP sought registration of the BSP202 trade mark. The First Examination Report noted, however, that if BSP were to use the BSP202 trade mark on goods and services it excludes, BSP “may infringe the rights of the owner of the conflicting trade mark/s”. The First Examination Report also noted that BSP “might” be able to overcome the problem if it could supply evidence under s 44(3) or s 44(4) of the TM Act.

16. On 8 May 2013 BSP’s lawyers sent a letter by post to Mr Richards and Ms Andrews dated 8 May 2013, and a letter by post to Mr Richards, also dated 8 May 2013. The letters were identical, except the letter addressed to Mr Richards and Ms Andrews related to the Blackstar 833 trade mark, and the letter addressed to Mr Richards alone related to the Blackstar 976 trade mark.[68] On 21 May 2013 Ms Karras, BSP’s lawyer, sent an email addressed to Mr Richards and Ms Andrews (addressed as Ms Richards), at “[email protected]”, to which Ms Karras attached “our letters to you of 8 May 2013”, noting that there has been no response.[69] The letter stated matters that included the following:[70]

    [68] CB2101; CB2105.

    [69] CB2100.

    [70] CB2100.

    (a)BSP had lodged an application for the registration of the BSP202 trade mark, but encountered an adverse report based on the existence of the Blackstar trade marks.

    (b)The Blackstar trade marks are restricted to coffee and other beverages.

    (c)BSP’s website is and its brand, Black Star Pastry, “is predominantly associated with bakery products and services”, noting further that BSP also operates a café under the same name which serves The Little Marionette coffee.

    (d)The BSP202 trade mark and Blackstar trade marks “can co-exist without conflict, and the operations of both businesses can co-exist without confusion in the market place”, for the following reasons:

    (i)BSP202 trade mark’s registration under class 43 for “bakery services; cafes; providing food and drink” is different from the Blackstar trade marks’ registration in classes 29, 30, and 33, which is restricted to coffee and other beverages, and does not include café services, or the provision of food and drink.

    (ii)The Blackstar Coffee Business is located in Brisbane while BSP operates in New South Wales, and does not intend to expand its operations in Queensland.

    (iii)The composition of “black” and “star” in the Blackstar trade marks is as one work, whereas the BSP202 trade mark maintains the separation of the two words.

    (iv)The coffee at BSP’s café is provided under “The Little Marionette” branding.

17. On the basis of these matters, BSP’s lawyer requested Mr Richards and Ms Andrews’ consent to facilitate the registration of the BSP202 trade mark.

18. Mr Richards responded by emails sent to Ms Karras on 22 May 2013 and 6 June 2013. In the second email, Mr Richards said that the matter was currently with his lawyer, “and we are preparing a response”.[71] Mr Richards did not, however, either by himself or by his lawyer, further respond to Mr Karras’s letters dated 8 May 2013.

    [71] CB2109, CB2111.

19. On 23 July 2013 BSP’s lawyers responded to the First Examination Report by letter to IP Australia in which they proposed BSP would amend the BSP202 trade mark, not in the manner the First Examination Report suggested, namely, by the removal from the Class 43 goods and services “cafes” and “and drinks”, but by adding after “cafes” the words “but not including the production of coffee”.[72] BSP’s lawyers relied on the following matters in support of BSP’s proposed amendment:

    (a)BSP’s brand, “Black Star Pastry”, is “predominantly associated with bakery products and services”; and BSP “operates a café in Sydney under the same name which serves The Little Marionette brand of coffee”.

    (b)The Blackstar trade marks are used in connection with coffee and beverage production; and while the Blackstar trade marks “are associated with a café of the same name which operates in Queensland, the registrations do not include café services or the provision of food or drink”; they “are restricted to coffee and other beverage production”.

    (c)BSP has no interest in producing coffee or other beverages, or trading in coffee, under the Black Star Pastry brand; BSP has an interest in “promoting its brand in association with bakery products and café services”.

    [72] CB1369.

20. IP Australia responded with a report dated 9 August 2013 in which the examiner said that BSP’s proposed amendment for the specification of services in Class 43 “does not overcome the section 44 objection because the exclusion does not remove the similarity between [BSP’s] claims for cafés and providing drink under Class 43, and the coffee goods covered by the conflicting registrations [being the Blackstar trade marks] in Class 30”.[73] The examiner concluded:

    I am therefore satisfied that confusion between the applicant’s trade mark and the conflicting marks is likely to occur, and that there is a real and tangible danger consumers will wonder whether the marks denote a common trade source for the closely related goods and services.

    As the section 44 grounds for rejection is maintained, I cannot accept the applicant’s trade mark for registration.

    The applicant may wish to consider the amendment suggested in the first examination report or supplying evidence under sections 44(3) or 44(4) to address this matter.

    [73] CB1371.

21. By letter dated 20 August 2013 BSP’s lawyers informed IP Australia that BSP agreed to amend its application for the BSP202 trade mark in the manner suggested by the examiner.[74] The application was accepted, and on 22 October 2014 the BSP202 trade mark was registered as a trade mark with effect from 19 September 2011.[75] The BSP202 trade mark was registered in respect of the following classes:

    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

    [74] CB1373.

    [75] CB693.

    Expansion of Black Star Pastry stores, and change of ownership of BSP

22. In July 2018 JKPL BSP Pty Ltd (JKPL), a member of the JKLP Group of companies, purchased the majority of the shares Mr Thé held in BSP. Mr Jiyuan (Louis) Li, the “ultimate owner of the JKLP Group”,[76] consequently became the sole director of BSP; and in September 2019 JKPL acquired the remainder of the shares Mr Thé held in BSP.[77]

    [76] Affidavit E J Makiv 10.04.2024, [8].

    [77] Affidavit E J Makiv 10.04.2024, [9], [10].

23. By 31 July 2018, when JKPL acquired a majority interest in BSP, BSP was conducting four stores in Sydney, including the Newtown store. These were a store in Dunning Avenue, Rosebery, which opened in January 2014, another in the Kinokuniya Bookstore inside the Galleries complex in the Sydney CBD, which opened in 2015, and one at the Entertainment Quarter in Moore Park, which opened in November 2017. The Moore Park store included the production kitchen for BSP’s New South Wales operations, which was on show to the public.[78]

    [78] Affidavit E J Makiv 10.04.2024, [12].

    Course of BSP Business after change in ownership

24. After JKPL acquired ownership of BSP, BSP opened stores at St Kilda, Melbourne (November 2019), Chadstone shopping Centre, Melbourne (December 2021), a Chinese flagship store in Shanghai, China (mid-January 2022), Driver Lane, Melbourne (April 2023), and Westfield Chatswood, New South Wales (October 2023).[79] In August 2020, the store at the Kinokuniya Bookstore was relocated to the ground floor of The Galeries shopping centre complex; and, on 9 April 2024, BSP moved the Newtown store to a new location in Newtown.[80] Further, BSP arranged Strawberry Watermelon Cake box pop ups at different locations in Melbourne and Sydney.[81]

    [79] Affidavit E J Makiv 10.04.2024, [13(a)].

    [80] Affidavit E J Makiv 10.04.2024, [13(b)]-[13(c)].

    [81] Affidavit E J Makiv 10.04.2024, [14].

    Description of current BSP Business

25. Ms Makiv, the Chief Executive Officer of the JKPL Group of entities, has described the Black Star business as follows:[82]

    The core business of BSP remains a speciality bakery business with large production facilities in Melbourne and Sydney. All baked goods including cakes, biscuits and other pastries are made fresh daily and distributed to our stores each morning. The Strawberry Watermelon Cake is the core product. Between 1,200 and 1,500 slabs of this cake are made every month between Victoria and NSW. Each slab equates to 60 individual slices. In 2023, BSP’s NSW kitchen made 11,436 slabs of Strawberry Watermelon Cake and the Victorian kitchen made 4,351 slabs of Strawberry Watermelon Cake which equates to 947,220 individual slices of Strawberry Watermelon Cake produced in 2023. This does not include other cakes made by BSP during the same period or signature creation Strawberry Watermelon Cakes custom made for weddings or other special events. These production figures are derived from spreadsheets compiled by BSP’s Head Pastry Chef, Arnaud Vodounou, who uses the spreadsheets to keep a running log of the production of Strawberry Watermelon Cake by day. . . . BSP produces on average over 400,000 slices of its other cakes per year, which is roughly half of the Strawberry Watermelon Cake production.

    [82] Affidavit E J Makiv10.04.2024, [16].

1. Ms Makiv also identified the following features of the BSP Business which were introduced after JKPL acquired BSP.[83]

   (a)In October 2018 BSP recruited a head of pastry chef, and took steps to increase the expertise of the team of chefs to focus on improved quality of all cake and pastry products together with an expansion of the core range of cakes and pastries.

   (b)In around September or October 2018 BSP engaged a creative agency to assist with rebranding; and the rebranding was officially launched in December 2021 to coincide with the opening of the Chadstone store in December 2021. The rebranding involved the introduction of the New BSP Logo, and the creation by a Japanese illustrator of the characters of “Star” (young boy), “Dough”, a French bulldog, and “Black”, a hedgehog.

   (c)The signage of the stores was changed to reflect the new branding and new packaging, and a special pink cake box, specifically designed for BSP’s “hero product, the Strawberry Watermelon Cake”.[84]

   (d)New uniforms bearing the new branding were introduced to BSP’s staff.

   (e)BSP launched a new website.

   (f)BSP acquired coffee beans from ST. ALi, and ceased obtaining coffee beans from The Little Marionette.

   (g)BSP closed its Moore Park retail shop in 2023, and moved the large kitchen facility to Alexandria.

   (h)BSP introduced a merchandise range which features the new branding.

   [83] Affidavit E J Makiv10.04.2024, [17].

   [84] Affidavit E J Makiv 10.04.2024, [17(c)].

   Application for and opposition to registration of BSP011 and BSP012 trade marks

2. On 2 September 2018 BSP lodged two applications for the registration of trade marks. One was for the registration of the Black Star Pastry Logo (this being what became the BSP011 trade mark I identified at the beginning of these reasons) in relation to the following classes:[85]

   [85] CB1376.

   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; cafés; hospitality services; take away food services

3. The second application was the registration of the name “Black Star Pastry” in relation to the following classes (this being what became the BSP012 trade mark I identified at the beginning of these reasons ):

   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; cafés; hospitality services; take away food services

4. IP Australia responded with an adverse report in relation to each of these applications. In the examiner’s report dated 12 October 2018, the examiner noted that the BSP011 trade mark closely resembled the Blackstar trade marks, but suggested that the problem would be overcome by the removal of “cafés” from Class 43.[86] In the examiner’s report dated 22 October 2018,  the examiner also noted that the BSP012 trade mark closely resembled the Blackstar trade marks; and similarly suggested the problem would be overcome if the word “cafés” was removed from Class 43.[87] By letter dated 28 November 2019 BSP, through its lawyers, informed IP Australia that it would remove “cafés” in class 43 of the trade mark applications, as suggested in the examiner’s reports; and requested that BSP’s trade mark applications be accepted for registration.[88] IP Australia accepted for possible registration BSP’s applications for the registration of the BSP011 and BSP012 trade marks, and on 29 November 2019 advertised those trade marks for opposition.

   [86] CB1390.

   [87] CB1392.

   [88] CB1397.

5. On or shortly before 5 January 2019 Ms Makiv contacted Mr Richards to arrange to meet with him on Tuesday, 8 January 2019. On 5 January 2019, after she and Mr Richards arranged to meet, Ms Makiv sent an email to Mr Richards to provide “some background prior to our coffee on Tuesday morning”.[89] After briefly describing the nature and history of the BSP Business, and noting that BSP is the owner of the BSP202 trade mark, Ms Makiv noted that BSP had applied for the registration of the BSP011 and BSP021 trade marks, but IP Australia had raised an objection on the basis of the Blackstar trade marks. Ms Makiv continued as follows:

   I understand that you run a business in the Brisbane area, roasting and supplying coffee beans, and manufacturing and supplying cold pressed coffee. . . .  According to your website at you use your trade

   mark in the form

   By contrast, our trademarks BLACK STAR PASTRY and  are used predominantly for pastry products, although we also provides [sic] take away and dine-in services for food and beverages, including coffee, which are generally made available to customers alongside the cakes, pastries and savoury items available for sale (see trademarks and our registration 1449202 for  have been coexisting since 2011 and both businesses have been concurrently active since at least 2008.

   During this period, we have not been aware of any consumer confusion between your marks and our marks. Any such confusion would be unlikely given the difference in geographic location of both businesses, and the fact that whilst the goods and services provided by both business are in the general field of hospitality, they are sufficiently specific to not overlap in the market.

   When we catch up on Tuesday I’m hoping to discuss a letter of consent for use and registration of our marks. Looking forward to meeting you.

   [89] CB1400.

6. Mr Richards and Ms Makiv met, and on 2 February 2019 Mr Richards sent to Ms Makiv a detailed email.[90] Mr Richards said he appreciated Ms Makiv having approached him because Mr Richards “wasn’t aware that Blackstar Pastry had more than one store and also wasn’t aware of [BSP’s] growth plans”. Mr Richards referred to his having been working on “BLACKSTAR since 2006” during which he has committed himself as “growing BLACKSTAR as a brand that is reflective of [Mr Richards’] vision and values”, noting that he always wanted BLACKSTAR to be “a market leader in specialty coffee in Brisbane and beyond”; and that Mr Richards wanted “us to be known in Australia and the world, for the best cup of coffee”, first, “for the coffee quality itself” and, second, for “how that coffee impacts the planet and the people involved in its production”. Mr Richards also provided some information about the extent of the Blackstar Coffee Business, after which, under the heading “MY CONCERNS”, Mr Richards said:

   I mention all of this to explain, more personally, what BLACKSTAR means to me, and why I must ensure that I protect the name from dilution in the market place. I was not aware that Blackstar Pastry had more than one store until we met. I wasn’t aware of the volume of coffee sold in NSW under the name “BLACKSTAR”. And now I am aware that you are planning a new store in Melbourne, the coffee capital of the world in fact (also my home town and the city where I plan to grow BLACKSTAR COFFEE next) I am even more concerned about protecting our Trademark. I can see no way that our Brands can both grow separately without confusing consumers. That being said, there may yet be ways forward together, as you stated in our meeting.

   I also expect to grow distribution of Blackstar Coffee into Sydney and surrounds in time. This is where we have an immediate issue, due to brand confusion already in Sydney and soon to be a similar problem in Melbourne. We have capacity at our East Brisbane roastery to grow our wholesale distribution exponentially. This is where we are heading and in future there may well be hundreds of cafe’s using BLACKSTAR COFFEE throughout the country (as well as flagship stores in each city).

   [90] CB1408.

7. Mr Richards then identified what he considered to be two main issues:

   a. On a practical level having two growing brands with the same name, in the hospitality industry, both involving and looking for all intents and purposes like retail cafes, will pollute and diminish the brand integrity of both businesses.

   b. There are legal implications involved with the dilution of my registered Trademarks related to “BLACKSTAR” (as you are already aware given the objection raised by IP Australia). There are various legal problems such as the service of coffee related products and beverages under the name “BLACKSTAR”. Also your use of the “BLACKSTAR PASTRY” trademark is deceptively similar to my BLACKSTAR COFFEE trademark.

8. After noting that he would do “what is necessary . . . to protect the name and its undiluted use”, Mr Richards identified two possible options in relation to the use of “Blackstar”.

   1. Your company procure (through agreement with me as owner) the rights and use of the name “BLACKSTAR” and the logo, as a Trademark in all relevant classes.

   2. Your company continues to retail and serve coffee (without procuring the Trademark) but ceases to use the name BLACKSTAR at your outlets (signage, menus, website etc) and you cease referring to any of your outlets serving coffee as “BLACKSTAR”.

9. Mr Richards suggested a further meeting on 11 or 12 February 2019, but no further meeting took place. Instead, Mr Richards, on 27 February 2019 filed notices of intention to oppose BSP’s applications to register the BSP011 and BSP012 trade marks.

10. On 4 January 2022 a delegate of the Registrar of Trade Marks (Registrar) made a decision which in part upheld the grounds of opposition on which Mr Richards relied, but decided that the applications in relation to the BSP011 and BSP012 trade marks may proceed to registration, subject to BSP removing from the class 43 services in each of the BSP011 and BSP012 trade marks the words “restaurant, café, hospitality services, [and] take away food services”, and excluding from the class 35 services “specialty coffee retailing services”.[91] The BSP011 and BSP012 trade marks were registered on 2 March and 24 February 2022 respectively, both with a priority date of 18 September 2018. It would be useful to reproduce the classes of goods and services for which each of the BSP011 and BSP012 trade marks were registered, noting the amendments that had been made to the classes of goods and services in respect of which BSP originally applied to register the trade marks.

    [91] CB1412-1441, at CB1440.

    BSP011 trade mark:[92]

    [92] CB80.

    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

    Class 43

    Restaurants; cafes; hospitality services; take away food services

    BSP012 trade mark:[93]

    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; restaurants; cafés; hospitality services; take away food services

    [93] CB85.

    Events leading to the commencement of proceeding

11. In December 2022 and January 2023 Mr Richards attended BSP cafés “with a view to collecting evidence which showed whether BSP was using the [BSP012 and BSP011 trade marks] for specialty coffee services . . . and in relation to goods for which [the Blackstar trade marks] are registered or to determine whether BSP offered and sold goods and/or services which were of the same description or closely related to the goods for which the [Blackstar trade marks] are registered”.[94]

    [94] Affidavit M Richards 01.03.2024, [53].

12. In her affidavit, Ms Makiv says that BSP “no longer uses the” BSP012 or BSP202 trade marks.[95] That means that BSP continues to use the BSP011 trade mark. BSP also continues to use the NEW BSP Logo.

    IS THE BLACKSTAR 976 TRADE MARK LIABLE TO BE CANCELLED?

    [95] Affidavit E J Makiv10.04.2024, [22].

    Claims and submissions

13. In its cross-claim BSP alleges that, by applying for the registration of the Blackstar 976 trade mark in his name only, Mr Richards claimed to be the sole owner of the trade mark; but Mr Richards was not the sole owner of the Blackstar 976 trade mark. For that reason, Mr Richards “was not entitled to apply, solely in his own name, for registration” of the Blackstar 976 trade mark pursuant to s 27(1) of the TM Act. Given those premises, and s 58 and 88(2)(a) of the TM Act, the Blackstar 976 trade mark should be cancelled pursuant to s 88(1) of the TM Act.

14. In its written submissions, BSP submits that the application for registration of the Blackstar 976 trade mark “could not have been made in [Mr Richards’s] name only”; and that is because Mr Richards was not “the owner” of the Blackstar 976 trade mark, given it was a mark in which Mr Richards had a “joint ownership interest with Ms Andrews”. BSP further submits that, as a mark with joint ownership interests, the application for the registration of the Blackstar 976 trade mark needed to be made under s 28 of the TM Act, naming both Mr Richards and Ms Andrews as applicants, not just Mr Richards.[96] In support of its submission that Mr Richards was the joint owner of the Blackstar 976 trade mark, BSP principally relies on admissions Mr Richards makes in his defence to BSP’s cross claim.[97] In particular, BSP relies on Mr Richards’s admission that he “was not the sole owner” of the Blackstar 976 trade mark;[98] Mr Richards was an owner of the Blackstar 976 trade mark together with Ms Andrews;[99] and Mr Richards and Ms Andrews together authored to use and did subsequently use the Blackstar 976 trade mark for the development of coffee and coffee related products through the Blackstar Coffee Business.[100]

    [96] BSP’s closing submissions, [111].

    [97] BSP’s closing submissions, [110].

    [98] Response to statement of cross-claim, [6(a)].

    [99] Response to statement of cross-claim, [2(a)].

    [100] Response to statement of cross-claim, [2(b)].

15. In his defence to BSP’s cross-claim, Mr Richards alleges he was entitled to apply for the registration of the Blackstar 976 trade mark on his own behalf as an owner of the Blackstar 976 trade mark, and on behalf of Ms Andrews, the other owner, or as trustee of Ms Andrews’s beneficial interest in the Blackstar 976 trade mark.

    Provisions and principles

16. Paragraph (a) of s 88(1) of the TM Act provides that, subject to s 88(2) and s 89, a “prescribed court, may on the application of an aggrieved person or the Registrar, order that the Register be rectified by . . . cancelling the registration of the trade mark”. “Prescribed court” is defined in s 6 to mean a court that is under s 190 a prescribed court for the purposes of the TM Act. Section 190 includes as a prescribed court the Federal Circuit and Family Court of Australia (Division 2). The expression “aggrieved person” is not defined, but, as noted by BSP in its closing written submissions,[101] it has been construed to include at least three classes of persons: persons who are trade rivals of the persons who are the owners of registered trade marks;[102] persons who themselves rely on the use of the trade mark in question as a defence to a claim for infringement;[103] and persons who have been sued on the basis of the registration of the trade mark such persons are applying to have cancelled.[104] There is no question that BSP is an “aggrieved person” within the meaning of s 88(2).

    [101] BSP’s closing submissions, [104].

    [102] Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13, at [43]-[44].

    [103] For example, by relying on s 122(1)(e) of the TM Act: McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412, at [133] (Burley J).

    [104] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258, at [471] (Yates J).

17. Subsection 88(2) of the TM Act specifies the grounds on which an application may be made pursuant to s 88(1). These include the grounds specified in s 88(2)(a), being “any of the grounds on which the registration of the trade mark could have been opposed under this Act”. That directs attention to Div 2 of Part 5 of the TM Act, which is headed “Grounds for opposing registration”. Relevant to BSP’s cross-claim is s 58, which provides that the “registration of the trade mark may be opposed on the ground that the applicant is not the owner of the trade mark”.

18. Although s 58 provides as a ground for opposing an application for the registration of a trade mark that the applicant is not the owner of the trade mark, the TM Act does not require that a person who applies for the registration of demonstrate that he or she is the owner of the trade mark. Paragraph (a) of s 27(1) of the TM Act only requires that the person who applies for the registration of a trade claim that he or she is the owner of the trade mark. Further, although s 28 of the TM Act concerns applications for the registration of a trade mark in which two or more people have an interest, that section does not require that persons who hold such interest together apply for the registration of the trade mark. That is apparent from the text of s 28, which provides that such persons may together apply for its registration under s 27(1) of the TM Act (emphasis added):

    If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except:

    (a)       on behalf of all of them; or

    (b)in relation to goods and/or services with which all of them are connected in the course of trade;

    the persons may together apply for its registration under subsection 27(1).

19. There is another observation that may be made: s 28 of the TM Act does not capture all the circumstances in which two or more persons may have an interest in a trade mark. It is conceivable that one of two or more persons who hold an interest in the trade mark may be entitled to use the trade mark without having to do so on behalf of all of the other persons. That entitlement may arise from an express agreement; or it may arise from some other way, for example, the applicant’s holding his or her interest in the trade mark on trust for one or more other persons which authorise the trustee to use the trade mark as the trustee sees fit, subject to the terms of the trust to which the trade mark is subject. It is also conceivable that one of two or more persons interested in the trade mark may be entitled to use the trade mark in relation to goods or services with which all of the persons with an interest in the trade mark them are not concerned. Thus, two or more persons who have an interest in a trade mark who do not fall within the circumstances specified by s 28 of the TM Act would not be permitted by that section to apply together for the registration of the trade mark.

20. The scheme of the TM Act, therefore, is only to require a person who applies for the registration of a trade mark to claim that he or she is the owner of the trade mark, but to leave it up to a person who disputes the claim to initiate the dispute, either by invoking the administrative mechanism provided for by s 58 of the TM Act before the trade mark is registered, or by invoking the jurisdiction of a prescribed court pursuant to s 88(1) of the TM Act, after the trade mark has been registered. That suggests, and in any event it has been held, that the onus lies on the person who disputes an applicant’s claim that he or she is the owner of the trade mark that the applicant was not the owner of the trade mark the time he or she applied for its registration.[105]

    [105] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, at [26], [36]. In Shell Company of Australia Ltd v Rohm and Haas Company (1949) 78 CLR 601, at page 624, Dixon J said: “[T]he title of a mark to registration is to be determined on the state of facts existing when the application [for a trade mark] is lodged”.

1. The expression “trade mark” is defined in s 17 of the TM Act as follows:

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

2. For a claimed infringing trade mark to be a trade mark within the meaning of s 17 of the TM Act, and be used as a trade mark, at least three matters must be present. First, there must be goods or services that are intended to be dealt with or provided, or which are being dealt with or provided, “in the course of trade”. This “encompasses the idea . . . of “vendible” articles”;[235] or more simply, “the selling or trading in goods” and services, “merchanting, selling, and the like”.[236] Second, the claimed infringing trade mark itself must be “used”, or intended to be “used”, in the course of trade, that is, in the selling or trading of goods or services. Although not expressly stated in s 17, but expressly stated in s 120(1) and s 120(2) of the TM Act, the use of the claimed infringing trade mark must be “in relation to goods” or “in relation to services”, expressions which, as I have already noted, are defined in s 7(4) and s 7(5) respectively.

   [235] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [44] (French CH, Gummow, Crennan, and Bell JJ).

   [236] Aristoc Ltd v Rysta Ltd [1945] AC 68, at page 102 (Lord Wright). Lord Wright did not include “services” because, at that time, trade marks could not be registered in respect of services.

3. Third, the claimed infringing trade mark must be used, or intended to be used in the course of trade, that is, in relation to the sale or supply of goods or services, for a particular purpose, namely, to distinguish goods or services in relation to which the claimed infringing trade mark is used from goods or services dealt with or provided by another person. As the plurality in E & J Gallo Winery v Lion Nathan Australia Pty Ltd noted:[237]

   [237] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [42] (French CH, Gummow, Crennan, and Bell JJ).

   The concept of “use” of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to “distinguish” the goods of one person from the goods of others.

   Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate “a connexion in the course of trade” between the goods and the owner, the requirement that a trade mark “distinguish” goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of “goods to which the mark is applied”. Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. . . .

   In Coca-Cola Co v All-Fect Distributors Ltd a Full Court of the Federal Court of Australia said:

   “Use ‘as a trade mark’ is use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of ‘trade mark' in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

   That statement should be approved.

4. In Woolworths Ltd v BP plc (No 2) the Full Federal Court said the following about determining whether a sign has been used as a trade mark:[238]

   [238] Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97, at page 117 (Heery, Allsop, and Young JJ).

   Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin:

5. Thus, in determining whether a sign has been used as a trade mark for the purposes of s 120(1) of the TM Act, “it is necessary to examine the use” by the alleged trade mark infringer “to assess whether, objectively, the use” of the sign “would be understood in the context of the trade and the surrounding circumstances to have been used so as to indicate a connection in the course of trade between the product or service and the person using the mark”.[239]

   [239] Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97, at [78] (Heery, Allsop, and Young JJ).

6. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court made the following observations about how to determine whether a trade mark has been used as a trade mark:[240]

   [240] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [24] (footnotes omitted).

   Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.

   Two classes of infringing trade marks

7. Section 120 of the TM Act identifies two classes of claimed infringing trade marks which, if used as a trade mark will infringe a registered trade mark. One class are marks that are “substantially identical with” the registered trade mark; the other are marks that are “deceptively similar to” the registered trade mark. A claim that a mark infringes a registered trade mark because it is substantially identical with the registered trade mark, and a claim that a mark infringes a registered trade mark because it is deceptively similar, “are to be judged in different ways”.[241]

   [241] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, at page 415.

   Substantially identical with registered trade mark

8. The method by which whether the claimed infringing mark is substantially identical with the registered trade mark was described by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd:[242]

   [242] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at page 415.

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

9. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd, Gummow J explained the expression “substantially identical” as follows:[243]

   [243] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, at page 391

   The phrase “substantially identical” as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

   Deceptively similar to registered trade mark

10. Section 10 of the TM Act defines when a trade mark is to be taken to be “deceptively similar to another trade mark”; and that is where “it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. This definition is silent about a number of matters. In particular, s 10 does not:

    (a)identify the matters about which a person or class of persons is required to be deceived or confused;

    (b)define what is meant by “deceived” or “confused”;

    (c)identify what is required to be the source of deception or confusion;

    (d)identify:

    (i)the person or classes of persons who must be deceived or confused (target persons);

    (ii)the characteristics target persons must have or be assumed to have; or

    (iii)the information that is or must be assumed to be available to the target persons by reference to which the question whether the target persons are deceived or confused is to be assessed;

    (e)identify the matters that are relevant to determining whether a claimed infringing mark is deceptively similar to a registered trade mark; or

    (f)the degree of probability that the use of the alleged infringing mark will deceive or confuse a member of the target audience before it may be concluded the use of the alleged infringing trade mark is likely to deceive or cause confusion.

11. These omitted details are supplied by the cases.

    Matters about which target persons must be deceived or confused

12. The matter about which target persons are required to be deceived or confused for the purposes of s 10 of the TM Act is whether the goods or services in relation to which the claimed infringer uses the claimed infringing mark (these being what I have already defined as the claimed infringing goods or services) come from the same source as the goods or services in relation to which the registered trade mark has been used (non-infringing goods or services). That is, a person will be deceived within the meaning of s 10 of the TM Act if he or she believes the claimed infringer’s and the non-infringer’s goods or services share a common source; and a person will be confused if he or she is confused about whether the claimed infringer’s goods or services have the same source as the non-infringer’s goods or services.

13. That this is the matter about which persons are required to be deceived or confused is apparent from the cases. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, for example, Kitto J, in the course of determining whether a trade mark that was sought to be registered was likely to deceive,[244] stated a number of propositions, one of which was as follows:[245]

    [244] Within the meaning of s 114 of the Trade Marks Act 1905-1948 (Cth).

    [245] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

    While a mere possibility of confusion is not enough . . . it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.

14. In Registrar of Trade Marks v Woolworths Ltd, after referring to Kitto J’s propositions in Southern Cross Refrigerating Co French J said:[246]

    [246] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, at page 382 ([50]).

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

15. And in Vivo International Corporation Pty Ltd v Tivo Inc, Keane CJ said:[247]

    [247] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 294 ALR 661, at page 674 ([77]).

    It must be emphasised that the issue is not whether the marks were substantially identical, but whether they were apt to cause confusion. In this regard, as has been repeatedly said in the authorities the issue is not whether consumers might think that the trade marks are the same, but whether a number of persons will be caused to “wonder whether it might not be the case that the two products or closely related products and services come from the same source . . . [or to] wonder or be left in doubt about whether the two sets of products . . . come from the same source.”

16. As these passages indicate, the state of mind denoted by the word “confusion” is that of “wonder” or “doubt”; there must be a doubt or wonder about whether the claimed infringer’s goods or services and the non-infringer’s goods or services come from the same source.

    Required source of deception and confusion

17. Section 10 of the TM Act implies that the deception or confusion produced by the claimed infringing mark in the mind of actual or potential customers of the claimed infringer’s goods or services must arise from the resemblance the claimed infringing mark bears to the registered trade mark. In the words of Windeyer J, the “deceptiveness that is contemplated must result from similarity”.[248]

    [248] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at page 416.

    Target persons

18. The persons who must be deceived or confused are the actual and prospective purchasers of the goods or services in relation to which the registered trade mark is registered. The substance of this principle has been stated in cases arising out of the refusal to register, or challenges to the registration of a trade mark on the ground that the use of the trade mark in relation to the goods or services for which it is intended to be used would be likely to deceive or cause confusion,[249] as well as in cases of claimed infringement of a trade mark. In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon and McTiernan JJ said:[250]

    [249] See s 43 of the TM Act.

    [250] In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 658.

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.

19. And in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J said:[251]

    [251] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at page 595.

    Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark.

20. The effect or impression produced on the mind of the actual or potential customers by the mark or device for which the protection of an injunction is sought, must be assessed on the assumption that the customers are “persons of ordinary intelligence and memory”.[252] The “usual manner in which ordinary people behave must be the test of what confusion or deception may be expected”.[253] Potential consumers “are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.”[254]

    [252] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at page 415 (Windeyer J).

    [253] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 658.

    [254] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 658.

    Assumed information available to the target persons when assessing deceptive similarity

21. There are at least two classes of information that is assumed are not available to the target persons when determining whether the claimed infringing mark is deceptively similar to a registered trade mark. The first is the registered trade mark itself. Although the “deceptiveness that is contemplated” by s 10 of the TM Act “must result from similarity”,[255] what resemblance the claimed infringing mark bears to the registered trade mark is not to be assessed by comparing the two marks side-by-side; the extent and significance of the resemblance are to be assessed by comparing the actual or potential customers’ impressions of the claimed infringing mark, with the customers’ impressions of the registered trade mark based on their memory of the features of the registered trade mark. Windeyer J stated this principle in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd:[256]

    [255] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at page 416.

    [256] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, at page 415.

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s television exhibitions.

22. The reason for this approach has been expressed in a number of authorities. In Jafferjee v Scarlett, for example, Latham CJ said:[257]

    [257] Jafferjee v Scarlett (1937) 57 CLR 115, at page 122.

    . . .  it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived.

23. The High Court recently reaffirmed these principles in Self Care (italics in original):[258]

    [258] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [29] (footnotes omitted).

    The issue is not abstract similarity, but deceptive similarity. The marks are not to be looked at side by side. Instead, the notional buyer’s imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity. The test assumes that the notional buyer has an imperfect recollection of the mark as registered. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used). As has been explained by the Full Federal Court, “[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor's statutory monopoly to its full extent”.

24. A second class of information that must be assumed is not available to the target persons is the actual use of the registered trade mark or any reputation associated with the registered trade mark. This principle was also affirmed by the High Court in Self Care:[259]

    [259] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [28] (footnotes omitted).

    The question to be asked under s 120(1) is artificial – it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The buyer posited by the test is notional (or hypothetical), although having characteristics of an actual group of people. The notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration. However, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, as will be seen, any reputation associated with the registered mark.

1. The High Court explained the reasons for this limitation of the information available to the target persons as follows:[260]

   [260] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [37] (footnotes omitted).

   As has been explained, the TM Act provides for the registration of trade marks and sets out and protects the rights deriving from registration. A registered trade mark is personal property and it is the Act that defines the rights that constitute that property, when the rights will come into existence (the date of registration), and what conduct will infringe those property rights. Of particular significance is that the rights that constitute the property – a monopoly – are limited to use of a mark on the particular goods in a particular class, being the goods for which registration was sought and then obtained. It is that registered mark, and that mark alone, which constitutes the property and against which allegedly infringing conduct is assessed. Registration of the trade mark alone confers the right of its exclusive use on the registered owner or, in the case of a defensive trade mark, the right to exclude use. If reputation was considered after registration other than where expressly provided for in the Act, the level of protection afforded to that right would vary and be inherently uncertain.

   Determining deceptive similarity

2. When determining whether a claimed infringing mark is deceptively similar to a registered trade mark, a court may take into account a number of matters. First, and most importantly, is the extent to which the registered trade mark and the claimed infringing mark share similar features, and the nature of the features that are similar. And here, the cases have identified a number of “signposts”[261] or “rules of comparison”[262] that are available to be applied to assist in that task. Three of these signposts were referred to by Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd:[263]

   [261] That is the expression of Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63, at page 74 ([35]).

   [262] Shanahan’s Australian Law of Trade Marks and Passing Off 6th ed., Lawbook Co, 2016, page 285.

   [263] CA Henschke & Co & Anor v Rosemount Estates Pty Ltd (1999) 47 IPR 63, at page 74 ([35]) (cases omitted).

   (i) when comparing names one must judge them by look and sound . . . and by the idea they convey . . .  (ii) one must take account of the way in which the mark is likely to be referred to or heard . . . (iii) particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks . . .  save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

3. Other signposts or rules of comparison have been identified in the cases. One is whether the feature that is shared by the two marks is “prominent or distinctive”[264] or “distinguishing”[265] or an “essential”[266] feature of the registered trade mark. Such features are relevant because they are likely to strike the eye and fix themselves in the recollection;[267] and it is the prominence of such features in a person’s otherwise imperfect memory of the registered trade mark that may lead him or her to be deceived or confused by the presence of the same feature in the claimed infringing mark about whether the claimed infringing goods or services come from the same source as the non-infringer’s goods or services.

   [264] Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd (2006) 69 IPR 243, at page 251 ([36]) (FCA, Moore J).

   [265] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 174 (Viscount Maugham).

   [266] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 162 (Greene MR); De Cordova and Others v Vick Chemical Company (1951) 1B IPR 496 (Privy Council), at page 498 (Lord Radcliffe).

   [267] This is a paraphrase of what Greene MR said in Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 162 where his Lordship, speaking of a particular trade mark said that “the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection.”

4. A second matter the court may take into account when considering the impressions the claimed infringing mark is likely to create is “the background of the usages in the particular trade”.[268] There are significant limits, however, to what a court may consider as background. This was explained by Gummow J in Wingate Marketing Pty Limited v Levi Strauss & Co.[269] After quoting a passage from the judgment of Graham J in Textron Inc and Textron Ltd v Henry C StevensLtd and Blick Office Equipment Ltd,[270] which included the statement that “in infringement proceedings one is concerned for practical purposes only with the two marks themselves”, Gummow J said:

   [268] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, at page 410 (Windeyer J).

   [269] Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89, at page 128.

   [270] Wingate Marketing Pty Limited v Levi Strauss & Co [1977] RPC 283, at page 286.

   The statement that in infringement proceedings the concern “for practical purposes” is only with the marks themselves requires some elaboration . . . . In particular – (i) The comparison is between any normal use of the plaintiff’s mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded, price differential was considered irrelevant by Kearney J^[[271]^] and Cross J,^[[272]^] his Lordship also disregarded the differences in use by the parties of colour and display panels, and his Honour discounted the differences in the respective sections of the public to whom the goods were sold. (ii) However, evidence of trade usage, in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i). (iii) In particular, in making an aural comparison of the marks, whilst ordinarily one is concerned with what appears to be the natural and ordinary pronunciation, evidence in my view is admissible that those in the trade pronounce the defendant’s mark in a manner which otherwise might be thought to vary from the normal fashion. (iv) Evidence of cases of deception or confusion may be taken into account . . . . (v) Although . . . it is not decisive, evidence is admissible that the defendant’s mark was adopted with a view to “sailing close to the wind”, in the sense of the adverse finding made by the primary judge in this case.

   [271] In Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491, at 497 to which Gummow J referred to at page 126, noting that “Kearney J held that in assessing whether “Solaroid” was deceptively similar to “Polaroid” . . . so that there was an infringement, it was no answer in determining deceptive similarity that the products the plaintiffs were more expensive and provided to a different class of customer.”

   [272] In British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54, at page 64 to which Gummow J referred at page 126.

5. The last proposition stated by Gummow J in this passage leads to a third matter a court may have regard to in assessing whether a claimed infringing mark is deceptively similar to a registered mark; and that is the intention of the claimed infringer. The principle is that if the court finds that the claimed infringer has adopted a mark “for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse”.[273] The rationale for accepting this type of reasoning was stated by Dixon and McTiernan JJ to be as follows:[274]

   [273] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 657 (Dixon and McTiernan JJ).

   [274] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 657.

   In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

6. A finding of an intention to deceive, however, is not conclusive of the question whether the claimed infringing mark is likely to deceive; whether or not a claimed infringing mark is deceptively similar to a registered trade mark is a matter for the court to determine.[275] This was emphatically stated by Lord Evershed MR in Electrolux Ltd v Electrix Ltd:[276]

   [275] Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) (2013) 103 IPR 521, at page 541 ([102] and [103]) (FCA, Robertson J).

   [276] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23, at page 31. This passage was quoted with approval by the Full Federal Court in Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation (1990) 24 FCR 370, at page 377.

   The question of infringement, the question whether one mark is likely to cause confusion with another, is a matter upon which the judge must make up his mind and which he, and he alone, must decide. He cannot, as it is said, abdicate the decision in that matter to witnesses before him.

7. And in Australian Woollen Mills Ltd v F S Walton & Co Ltd, [277] Dixon J and McTiernan JJ said that whether one mark is deceptively similar to another:

   [277] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, at page 659.

   is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

   Degree of probability of deception or confusion

8. In Self Care the High Court referred to the following principles relating to the required degree of probability to support a finding that the use of the alleged infringing mark is likely to deceive or cause confusion:[278]

   [278] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [32] (footnotes omitted).

   It is not necessary to establish actual probability of deception or confusion. But a mere possibility of confusion is not enough; there must be a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”. 

   Proviso under s 120(2)

9. Subsection 120(2) of the TM Act provides that where a person has used a trade mark in one of the ways provided for in s 120(2) and, therefore, without any further analysis, the person will have infringed a registered trade mark, the person “is not to be taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion” (Proviso).

10. The nature of the defence provided for by the Proviso was explained in the judgment of Lord Evershed M. R. in Tavener Rutledge Ld v Specters Ld (emphasis added);[279]

    [279] Tavener Rutledge Ld v Specters Ld [1959] RPC 355, at pages 359-360. His Lordship was concerned with the Trade Marks Act 1938 (UK).

    Now, of course, in order to raise effectively the right given to the defendant by Subsec. (2), the onus clearly is on the defendant to show that the use to which he is putting the mark is not likely to deceive or cause confusion. You may get, therefore-and this case has been suggested as being such a case - a clearly narrow point: the plaintiff has first to prove in general that the defendant’s mark is likely to cause confusion. But then the defendant may come along and say, “The actual use I am making of this mark is not in fact likely to deceive or cause confusion.” . . . before you get to the stage where an onus is put on the defendant, the plaintiff, if the mark used is not identical with his own mark, has got to prove in general of the defendant’s mark that it is as a mark likely to cause confusion: and I add by way of exposition, if used in circumstances which would give rise to such confusion. If the plaintiffs establish that then, as I have said, the defendants may still have another line of defence and may say, “Though it may generally be as you say a mark likely to cause confusion, in fact in the way I have used it and in the circumstances and environment in which I have used it, it is not likely to cause confusion.”

11. The Full Federal Court considered the nature of the defence provided for by the Proviso in E & J Gallo Winery v Lion Nathan Australia Pty Ltd:[280]

    [280] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 (Orders of the Full Federal Court set aside by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, but not on this point.)

    The words “as the person did” direct attention to the way in which, as a matter of fact, the alleged infringer has used the allegedly infringing trade mark. These concluding words pose a different question to that raised by the opening words of s 120(2) which, in the context of deceptive similarity, direct attention only to a comparison of the marks in the way already discussed. However, any conclusion about deceptive similarity would usually inform consideration of whether the actual use was likely to deceive or cause confusion. In a sense, an affirmative answer to the question of whether the alleged infringing mark was deceptively similar would be the starting point. If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion. Also relevant, in our opinion, would be the matters considered in determining whether the alleged infringer's goods are of the same description as the goods in respect of which the registered mark is registered.

12. The defence the Proviso makes available is limited. It calls for the same comparison as is required under s 120(1) of the TM Act, except the Court must take into account the manner in which the claimed infringer has in fact used the alleged infringing trade mark. All of the other assumptions that are involved in making the comparison remain. These include the irrelevance of the reputation of the trade mark that is alleged to have been infringed.

    Summary of elements of a cause of action based on s 120(1) of the TM Act

13. Thus, to succeed on a cause of action for infringement of a registered trade mark under s 120(1) of the TM Act, the owner of the registered trade mark must allege and prove the following:

    (a)the person who is alleged to have infringed the trade mark (this being the claimed infringer defined earlier in this Schedule) has sold or promoted or taken steps to sell or promote goods and services (these being the claimed infringing goods or claimed infringing services defined earlier in this Schedule);

    (b)one or more of the claimed infringing goods or services are denoted by – that is, fall within the meaning of - the words that describe the goods or services in respect of which the registered trade mark is registered (these being the registered goods or registered services defined earlier in this Schedule);

    (c)the claimed infringer has used a sign (this being the claimed infringing trade mark defined earlier in this Schedule) in relation to the claimed infringing goods or claimed infringing services;

    (d)the claimed infringer has used the claimed infringing trade mark as a trade mark; and

    (e)the claimed infringing mark is substantially identical with, or deceptively similar to, the registered trade mark.

    Summary of elements of a cause of action based on s 120(2) of the TM Act

14. To succeed on a cause of action based on infringement of a registered trade mark under s 120(2) of the TM Act, the owner of the registered trade mark must allege and prove the following:

    (a)the claimed infringer has sold or promoted or taken steps to sell or promote the claimed infringing goods or the claimed infringing services;

    (b)in relation to the claimed infringing goods:

    (i)they are goods of the same description as the registered goods, or

    (ii)closely related to the registered services;

    (c)in relation to the claimed infringing services:

    (i)they are services of the same description as the registered services, or

    (ii)closely related to the registered goods;

    (d)the claimed infringer has used the claimed infringing trade mark in relation to the claimed infringing goods or claimed infringing services;

    (e)the claimed infringer has used the claimed infringing trade mark as a trade mark;

    (f)the claimed infringing trade mark is substantially identical with, or deceptively similar to, the registered trade mark; and

    (g)the claimed infringer does not establish that using the claimed infringing trade mark as the claimed infringer used it is not likely to deceive or cause confusion.