Tuga Pastries Australia Pty Ltd - [2025] ATMO 59

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2434559 (classes 9, 16, 25, 29, 30, 32 and 43) – FABRICA - in the name of Tuga Pastries Australia Pty Ltd

Delegate: Bianca Irgang

Representation: Applicant: Shakvaan Wijetunga of Carroll & O’Dea Lawyers with Dianne Retief, Special Counsel

Decision: 2025 ATMO 59
Trade Marks Act 1995 (Cth) – s 38 – Revocation of acceptance proposed by the Registrar – s 44 ground for rejection – deceptive similarity – similarity and close relationship of goods and services – 44(3)(b) not applicable – application should not have been accepted and reasonable to revoke acceptance – application to be returned to examination.
Background

Tuga Pastries Australia Pty Ltd (‘the Applicant’) has made an application for registration of the trade mark detailed below (‘the Application’).
Trade mark:              FABRICA                (‘Trade Mark’)
Application Number: 2434559
Filing Date:               25 March 2024
Specification:             Class 9: Luminous signs; Display signs of non-metallic materials (luminous              mechanical); Display signs of metal (luminous or mechanical)
Class 16: Advertisement boards of card; Advertisement boards of cardboard; Advertisement boards of paper; Advertisement boards of paper or cardboard; Advertisement display boards of cardboard (non-luminous); Advertising leaflets; Advertising posters; Advertising materials of cardboard; Advertising material of paper; Printed advertisements; Booklets; Computer print outs; Covers for menus; Menu cards; Menus; Printed menus; Coasters of cardboard; Coasters of paper; Coasters in card form; Advertisements (printed matter); Advertising material being printed matter; Printed matter for advertising purposes; Printed matter
Class 25: Shirts; Headwear; Apparel (clothing, footwear, headgear)
Class 29: Bacon products; Beef products; Broth; Garlic butter; Candied fruits; Cheese products; Chicken products; Cooked meals consisting principally of poultry; Cooked chicken; Cream desserts; Food products made from eggs; Egg products; Foods made from fish; Egg-based foodstuffs; Chips (french fries); French fries; Fruit desserts; Food products made from nuts; Nut products for food; Almond milk-based beverages; Desserts made from milk (except ice cream); Desserts made from milk products (except ice cream); Milk-based drinks (milk predominating); Milk-based beverages flavoured with chocolate; Oat milk; Prepared desserts (milk-based); Cooked meals consisting principally of meat; Cooked meat dishes; Food preparations made from meat; Pickled onions; Pork products; Preparations for making milk shakes; Prepared meals made of eggs (eggs predominating); Prepared meals made from meat (meat predominating); Prepared meals made from poultry (poultry predominating); Prepared meals consisting principally of seafood; Prepared meals consisting principally of chicken; Dairy desserts (except ice cream or frozen yoghurt); Drinks made from dairy products; Food spreads consisting principally of dairy products; Cooked meals consisting principally of meat and vegetables; Cooked dishes with vegetables (vegetables predominating); Cooked vegetables; Food preparations with a vegetable base; Vegetable salads; Foodstuffs consisting of sausages; Sausages; Banana based snack food products; Fruit filling for pastry; Pastry fillings of meat; Pastry fillings of vegetables; Fruit pie fillings; Pie fillings of meat; Hash brown potatoes; Edible seeds
Class 30: Bakery products; Beverages with tea base; Bread; Bread mixes; Pancakes; Aromatic preparations for cakes; Cake batter; Cake frosting…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 59
Decision Date: 18 March 2025

CaseChat Overview and Summary

This decision concerns trade mark application number 2434559, filed by Tuga Pastries Australia Pty Ltd. The dispute arose when the acceptance of the trade mark was questioned, leading to a hearing before Bianca Irgang, a Hearing Officer for Oppositions and Hearings. The core issue was whether it was reasonable to revoke the acceptance of the trade mark application, given circumstances that arose during the examination process.

The Hearing Officer was required to determine if the acceptance of the trade mark should be revoked under section 38 of the relevant Act. This involved considering all surrounding circumstances to assess the reasonableness of revocation, even if grounds for rejection under section 44 or regulation 4.15A were found. The court also had to consider whether the applicant's proposed amendments and endorsements could overcome the identified issues, and whether the evidence of trade mark use supported an application to proceed under section 44(3) or 44(4).

The Hearing Officer found that the applicant's evidence of trade mark use was minimal, despite evidence of a long-standing business. Consequently, the provisions for proceeding based on prior continuous use or honest concurrent use did not apply. Proposed amendments to restrict the application to Portuguese food and link the trade mark to a trading name were considered insufficient to differentiate the goods and services from earlier registrations, as such distinctions would be overly fine. The Hearing Officer concluded that the trade mark should not have been accepted and that revocation of acceptance was reasonable.

Accordingly, acceptance of trade mark application 2434559 was revoked, and the application was returned to the examination phase. The Hearing Officer also declined to refund the costs associated with the HeadStart process, noting that it does not guarantee acceptance or registration.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Under s 38(1)(b) I must now take into account all the surrounding circumstances of the case to determine whether it is reasonable to revoke acceptance. Thus, a finding of a s 44/ reg 4.15A ground for rejection does not automatically mean that I must revoke acceptance of the Trade Mark. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for an application to proceed to registration on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the Applicant’s submissions and evidence. Evidence The Applicant’s evidence in relation to the use of its Trade Mark is de minimis. Annexure A and B of the Applicant’s submissions contain the current ABN search for the Applicant and Annexure B contains the ‘About Us (Our Story)’ section of the Applicant’s website. Annexure C contains the Applicant’s profit and loss statement while the remaining Annexures relate to the Official File and the examination process for the Trade Mark. Annexure B demonstrated that the Applicant commenced its first business in 1994 with a bakery in Bondi and then expanded into Marrickville factory in 1997 where they hand produce 3000 pasteis de nata per day. In 2016, 2017 and 2021 the Applicant opened café/bakery venues in three different areas and then relaunched one of the venues under a different name in 2023. Interestingly, there is nothing in this evidence that demonstrates use of the Trade Mark. Given that there is evidence of a long-standing business but no evidence of use or intended use of the Trade Mark, the provisions of s 44(3) and 44(4) do not apply. Amendments The Applicant has proposed the following amendment and endorsements:· That the application be restricted to Portuguese food;· That the Trade Mark will not be standalone but in connection with the trading name ‘Tuga Patries’; and · That the Trade Mark is the Portuguese word for ‘Factory’. I have considered whether amendments and/or endorsements may be made to the specification of the Trade Mark in order to overcome the similarities in the trade marks and overcome close relationships in the goods and services, and I have taken account of the written submissions provided by the Applicant, said to delineate where the potential connections exist and the differences in geographical usage by the respective parties. However, I am not persuaded that the goods and services which the Applicant submits are different, really are. On the contrary, it is difficult to envisage appropriate amendments which would sufficiently differentiate the goods and services of the trade marks given the broad goods and services specifications of the Regazzi Earlier Registrations. In my estimation such amendments would result in the sort of ‘fine distinctions’ cautioned against in McHattan v Australian Specialised Vehicle Systems Pty Ltd.[16] [16] [1996] FCA 481, (1996) 34 IPR 537, 545 (Drummond J). Additionally, I do not believe deleting the goods and services currently in conflict with the Regazzi Earlier Registrations and leaving the Applicant with those limited goods in class 9, 16 or 25 would provide a meaningful and useful registration for the Applicant. Particularly since the evidence put forward by the Applicant demonstrates that the Applicant is in the restaurant/café business and not in the business of manufacturing signage or clothing. For this reason I have not suggested any amendments to the Applicant’s specification. Rather, as will be seen I consider the more sensible approach is to return the Trade Mark to examination wherein the Applicant may address the s 44/ reg 4.15A issues. The Applicant will also have the option, if they wish, of negotiating with the owners of the Earlier Registrations, although this course of action also carries the risk of potential opposition with it.Assertions that revocation is unreasonable

Decision

Reasons for decision

The Applicant has requested that the costs associated with the HeadStart Process be refunded to the amount of $560. I am not satisfied it is appropriate to refund the costs associated with the Headstart process. The Headstart process clearly states that it is not a guarantee of the acceptance and registration of the Trade Mark. Indeed, there are numerous reasons why a Trade Mark may not proceed to acceptance or registration and ultimately, the discovery of late grounds for rejection and the potential for revocation of acceptance is one of them.Decision I am satisfied that the Trade Mark should not have been accepted and that it is reasonable to now revoke acceptance, in accordance with s 38. Accordingly, I revoke acceptance of trade mark application 2434559 and the Application will be returned to the examination phase of the registration process.Bianca IrgangHearing OfficerOppositions and Hearings18 March 2025

Ratio Decidendi

Legal Principle Established

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Delegate:	Bianca Irgang
Representation:	Applicant: Shakvaan Wijetunga of Carroll & O’Dea Lawyers with Dianne Retief, Special Counsel
Decision:	2025 ATMO 59 Trade Marks Act 1995 (Cth) – s 38 – Revocation of acceptance proposed by the Registrar – s 44 ground for rejection – deceptive similarity – similarity and close relationship of goods and services – 44(3)(b) not applicable – application should not have been accepted and reasonable to revoke acceptance – application to be returned to examination.