Tuga Pastries Australia Pty Ltd
[2025] ATMO 59
•18 March 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe: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 (icing); Cake mixes; Cake powder; Cake preparations; Cakes; Chocolate cake; Chocolate covered cakes; Chocolate decorations for cakes; Cream cakes; Edible cake decorations; Flavourings, other than essential oils, for cakes; Icing for cakes; Sponge cakes; Caramel; Beverages consisting principally of chocolate; Beverages made from chocolate; Chocolate beverages; Beverages with a chocolate base; Chocolate based products; Ice beverages with a chocolate base; Beverages with coffee base; Beverages consisting principally of coffee; Beverages made from coffee; Coffee beverages; Condiments; Croissants; Caramel custard; Custard; Custard mixes; Custard powder; Imitation custard; Cake dough; Dough; Decaffeinated coffee; Essences for cooking (other than essential oils); Essences for food (other than essential oils); Essences for use in food preparation (other than essential oils); Food essences (except etheric essences and essential oils); Cake flour; Dough flour; Flour; Flour for baking; Flour for culinary purposes; Flour mixtures for use in baking; Food products predominantly made of flour; Almond pastries; Aromatic preparations for pastries; Chocolate pastries; Danish pastries; Food products having a pastry base; Fruit filled pastry products; Fruit pastries; Fruit slices (pastries); Pastries; Pastries consisting of vegetables and fish; Pastries consisting of vegetables and meat; Pastries consisting of vegetables and poultry; Pastries containing creams; Pastries containing creams and fruit; Pastries containing fruit; Pastry; Pastry cases; Pastry confectionery; Pastry dough; Pastry mixes; Pastry products; Pastry shells; Prepared desserts (pastries); Puff pastry; Shortcrust pastry; Savoury pastries; Filled sandwiches; Sandwiches; Herbal teas; Iced coffee (coffee based beverages); Ice beverages with a coffee base; Ice cream products; Meringue; Orange based pastry; Orange based confectionery; Pie crusts; Pie mixes; Apple pies; Egg pies; Fresh pies; Fruit pies; Pies; Meat pies; Pies containing fish; Pies containing meat; Pies containing poultry; Pies containing vegetables; Pizza pies; Pork pies; Vegetable pies; Preparations for making cakes; Preparations for making custard; Preparations for making desserts; Preparations for making coffee based beverages; Preparations for making chocolate based beverages; Sauces (condiments); Toast; Toasted bread; Vanilla flavorings for culinary purposes; Seasonings; Tarts; Salad dressings; Quiche (tart); Quiches; Chai tea
Class 32: Fruit based drinks; Fresh fruit juices; Fruit juices; Smoothies
Class 43: Arranging for the provision of drink; Arranging for the provision of food; Arranging for the provision of meals; Arranging of meals; Bar services; Bistro services; Cafe services; Cafes; Cake baking; Cake decorating; Business catering services; Catering services; Coffee shop services; Food and drink catering; Food cooking services; Food preparation; Preparation of food and drink; Preparation of meals; Providing food and drink; Coffee bar and coffee house services (provision of food and drink); Provision of food and drink; Restaurant services; Restaurants; Take-away restaurant services; Take away food services; Takeaway food and drink services (‘Applicant’s Goods and Services’)
The Application was examined as required by s 33 of the Trade Marks Act 1995 (Cth) (‘Act’), and examination was expedited at the request of the Applicant. The application was accepted early on 10 April 2024.
On 19 September 2024 the Registrar sent to the Applicant a Notice of Intention to Revoke Acceptance of a Trade Mark (‘the Notice’), on the following basis:
Your trade mark and earlier trade marks 2299968, 2299969, 2299970, 2332934, 2259821 all share the phonetically and visually similar word FABRICA/FABBRICA as an essential identifying element The goods and services are similar as the earlier trade mark's claims in Class 9 for various computer software, games and electronic publications are similar to your claims for various software and games in Class 9, printed publications in Class 16, games in Class 28, and game services in Class 41.
I have considered the additional words in the earlier trade marks, however these are not sufficient to differentiate the marks in the marketplace as they are merely descriptive of the goods and/or services being provided.
It is therefore likely that consumers seeing your trade mark and the earlier marks will believe them to denote a common trade source, or be otherwise confused.
Trade Mark Registration number 2259821 is the Australian designation of International Registration Designating Australia no. 1653278 (‘the IRDA’). Details of the IRDA are shown below.
Trade mark: CREATIVE FABRICA
IRDA: 1653278
Registration No.: 2259821
Convention: 18 March 2021
1438613 BXFiling Date: 21 July 2021
Owner: Creative Fabrica B.V.
Specification: Class 9: Software and application software (apps) for the design, formatting, generation, storage, publishing, management, sharing, searching, browsing, printing and/or downloading digital files, data and information via, inter alia, an online platform concerning, inter alia, fonts, images, drawings, patterns and documents; electronic and digital publications, downloadable or on computer media.
Class 16: Artists' materials; stationery articles for craftsmen or household purposes, namely, paper and cardboard, glues, pencils, paintbrushes; paper and cardboard for decoration and art; photographs; cards; printing products (printed matter); knitting and embroidery patterns and other printed patterns.
Class 26: Sewing articles and decorative textile articles, notably sewing kits, sewing needles, sewing boxes and sewing baskets; decorative textile articles, notably ornamental cloth patches, decorative ribbons and decorative textile bows for decoration; lace and embroidery, ribbons and braid; buttons, hooks and eyelets, pins and needles; artificial flowers.
Class 35: Creation and management of data files and other administrative services for the design, formatting, generation, storage, publishing, management, sharing, searching, browsing, printing and/or downloading digital files, data and information via, inter alia, an online platform concerning, inter alia, fonts, images, drawings, patterns and documents; research on behalf of third parties of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; classification of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; subscriptions to database services by telecommunications; commercial intermediation services for the purchase and sale of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; commercial intermediary services for the purchase and sale of materials for artists, craftsmen and enthusiasts and other supplies for artists, craftsmen and enthusiasts, posters, photographs, cards, printed matter, knitting and embroidery patterns and other printed patterns, sewing articles and decorative textile articles, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles and artificial flowers; commercial intermediary services for combining the supply and demand of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; commercial intermediary services for bringing together fans and designers, craftsmen and enthusiasts for the exchange and sharing of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; commercial intermediation services for the purchase and sale of goods by third parties via an online platform; retailing and wholesaling services for materials for artists, craftsmen and enthusiasts and other supplies for artists, craftsmen and enthusiasts, posters, photographs, cards, printed matter, knitting and embroidery patterns and other printed patterns, sewing articles and decorative textile articles, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles and artificial flowers; rental of advertising space; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer.
Class 38: Providing access to an online platform for the design, formatting, generation, storage, publishing, management, sharing, searching, browsing, printing and/or downloading of digital files, data and information via, inter alia, an online platform concerning, inter alia, fonts, images, drawings, patterns and documents; providing access to multimedia content, websites and Internet portals; rental of access time to a computerized database; providing access to interactive communications via the Internet, the cable network or other forms of data transfer; discussion forum and chat room services; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer.
Class 40: Printing services, including digital printing; printing of materials, including clothing, including with images, designs and patterns; embroidery services; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer.
Class 41: Organization and provision of courses, training, of seminars, conferences and other educational activities for, inter alia, artists, craftsmen and enthusiasts, for, inter alia, the design, formatting, generation, storing, editing, managing, sharing, searching, browsing, printing and/or downloading of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents; preparation and provision of educational materials and educational examinations; providing audio and video material and other educational materials, for educational purposes; education, publishing of publications in electronic or digital form or not; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer.
Class 42: Development and design of fonts, images, designs, patterns and documents, for others; development and design of materials for artists, craftsmen and enthusiasts and other supplies for artists, craftsmen and enthusiasts; reproduction and conversion of digital files, data and information concerning, inter alia, fonts, images, drawings, patterns and documents for others; interactive hosting services enabling users to create, bookmark, comment, download, organize, publish and share their own digital files, data and information online; hosting of digital content, namely online journals and blogs; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer
Class 45: Granting of licenses, including the sale of licences to others; online social networking services; advice concerning the aforesaid services; the aforesaid services can also be provided via the Internet, the cable network or other forms of data transfer.
The details of the other four trade mark registrations owned by Ragazzi Retail Pty Limited (‘Regazzi’) are as follows[1]:
[1] I will refer to these four registrations as the ‘Regazzi Earlier Registrations’ for ease of reference.
Trade mark: Fabbrica Pasta Shop
Registration Number: 2299968
Filing Date: 13 September 2022
Specification:
Class 30: Cereals for use in making pasta; Dried pasta; Dried pasta foods; Freeze-dried dishes with the main ingredient being pasta; Fresh pasta; Frozen meals consisting primarily of pasta; Lyophilised dishes with the main ingredient being pasta; Lyophilized dishes with the main ingredient being pasta; Meals made predominantly from rice, pasta or noodles; Pasta; Pasta containing eggs; Pasta containing fillings; Pasta containing insect larvae; Pasta containing insects; Pasta in the form of sheets; Pasta products; Pasta salads; Pasta sauce; Preparations for making pasta; Prepared meals containing (principally) pasta; Prepared pasta meals; Sauces for pasta; Sauces for use with pasta; Snack foods consisting principally of pasta; Stuffed pasta; Bread; Bread buns; Bread mixes; Bread rolls; Fresh bread; Gluten-free bread; Malt bread; Mixes for the preparation of bread; Pre-baked bread; Rye bread; Wholemeal bread; Wholemeal bread mixes
Class 43: Bar services; Cafe services; Cafes; Cafeteria services; Cafeterias; Bistro services; Cocktail lounge services; Coffee shop services; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Food and drink catering; Food cooking services; Food preparation; Hospitality services being the provision of food and drink; Arranging of meals; Preparation of meals; Reservation of meals; Arranging for the provision of meals; Salad bar restaurant services; Restaurants; Restaurant services; Restaurant reservation services; Take-away restaurant services; Booking of restaurant places; Booking of restaurant seats; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Snack-bars; Wine bar services; Wine club services (the provision of drink); Wine tasting services (provision of beverages)
Trade mark:
Reigstration Number: 2299969
Filing Date: 13 September 2022
Specification: Class 30: Cereals for use in making pasta; Dried pasta; Dried pasta foods; Freeze-dried dishes with the main ingredient being pasta; Fresh pasta; Frozen meals consisting primarily of pasta; Meals made predominantly from rice, pasta or noodles; Lyophilised dishes with the main ingredient being pasta; Lyophilized dishes with the main ingredient being pasta; Pasta; Pasta containing eggs; Pasta containing fillings; Pasta containing insect larvae; Pasta containing insects; Pasta in the form of sheets; Pasta products; Pasta salads; Pasta sauce; Preparations for making pasta; Prepared meals containing (principally) pasta; Prepared pasta meals; Sauces for pasta; Sauces for use with pasta; Snack foods consisting principally of pasta; Stuffed pasta; Bread; Bread biscuits; Bread buns; Bread mixes; Bread rolls; Soft rolls (bread); Semi-baked bread; Rye bread; Pre-baked bread; Mixes for the preparation of bread; Gluten-free bread; Fresh bread; Wholemeal bread; Wholemeal bread mixes
Class 43: Bar services; Salad bar restaurant services; Restaurants; Restaurant services; Restaurant reservation services; Take-away restaurant services; Booking of restaurant places; Booking of restaurant seats; Cafe services; Cafes; Provision of food and drink; Food and drink catering; Cocktail lounge services; Coffee shop services; Restaurant services for the provision of fast food; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Food cooking services; Hospitality services being the provision of food and drink; Take away food services; Takeaway food and drink services; Preparation of meals; Arranging of meals; Arranging for the provision of meals; Snack bars (provision of food and drink); Snack-bars; Wine bar services; Wine club services (the provision of drink); Wine tasting services (provision of beverages)
Trade mark:
Reigstration Number: 2299970
Filing Date: 13 September 2022
Specification: Class 30: Bread; Bread mixes; Bread buns; Bread rolls; Fresh bread; Ginger bread; Malt bread; Mixes for the preparation of bread; Pre-baked bread; Rye bread; Wholemeal bread; Wholemeal bread mixes; Semi-baked bread; Snack foods consisting principally of bread; Fresh pasta; Dried pasta foods; Dried pasta; Frozen meals consisting primarily of pasta; Freeze-dried dishes with the main ingredient being pasta; Cereals for use in making pasta; Lyophilised dishes with the main ingredient being pasta; Lyophilized dishes with the main ingredient being pasta; Meals made predominantly from rice, pasta or noodles; Pasta; Pasta containing eggs; Pasta containing fillings; Pasta containing insect larvae; Pasta containing insects; Pasta in the form of sheets; Pasta products; Pasta salads; Pasta sauce; Preparations for making pasta; Prepared meals containing (principally) pasta; Prepared pasta meals; Sauces for pasta; Sauces for use with pasta; Snack foods consisting principally of pasta; Stuffed pasta
Class 43: Cafe services; Cafes; Catering services for the provision of coffee for offices; Coffee shop services; Bar services; Snack-bars; Wine bar services; Bistro services; Coffee bar and coffee house services (provision of food and drink); Snack bars (provision of food and drink); Club services for the provision of food and drink; Food and drink catering; Preparation of food and drink; Providing food and drink; Provision of food and drink; Takeaway food and drink services; Hospitality services being the provision of food and drink; Preparation of meals; Arranging for the provision of meals; Restaurants; Take-away restaurant services; Restaurant services; Booking of restaurant places; Booking of restaurant seats; Restaurant services for the provision of fast food; Restaurant reservation services; Salad bar restaurant services
Trade mark: Fabbrica Pasta Bar
Reistration Number: 2332934
Filing Date: 8 February 2023
Specification: Class 30: Cereals for use in making pasta; Dried pasta; Dried pasta foods; Freeze-dried dishes with the main ingredient being pasta; Fresh pasta; Frozen meals consisting primarily of pasta; Lyophilised dishes with the main ingredient being pasta; Lyophilized dishes with the main ingredient being pasta; Meals made predominantly from rice, pasta or noodles; Pasta; Pasta containing eggs; Pasta containing fillings; Pasta containing insect larvae; Pasta containing insects; Pasta in the form of sheets; Pasta products; Pasta salads; Pasta sauce; Preparations for making pasta; Prepared meals containing (principally) pasta; Prepared pasta meals; Sauces for pasta; Sauces for use with pasta; Snack foods consisting principally of pasta; Stuffed pasta; Bread; Bread buns; Bread mixes; Bread rolls; Fresh bread; Gluten-free bread; Malt bread; Mixes for the preparation of bread; Pre-baked bread; Rye bread; Wholemeal bread; Wholemeal bread mixes
Class 43: Bar services; Cafe services; Cafes; Cafeterias; Cafeteria services; Bistro services; Cocktail lounge services; Coffee shop services; Club services for the provision of food and drink; Coffee bar and coffee house services (provision of food and drink); Food and drink catering; Food cooking services; Food preparation; Hospitality services being the provision of food and drink; Arranging of meals; Preparation of meals; Reservation of meals; Arranging for the provision of meals; Salad bar restaurant services; Restaurants; Restaurant services; Restaurant reservation services; Take-away restaurant services; Booking of restaurant places; Booking of restaurant seats; Restaurant services for the provision of fast food; Snack bars (provision of food and drink); Snack-bars; Wine bar services; Wine club services (the provision of drink); Wine tasting services (provision of beverages)
I will refer to these five previous registrations collectively as the ‘Earlier Registrations’ for ease of reference throughout the decision.
IP Australia was made aware of the Earlier Registrations, after acceptance of the Trade Mark. This is because the search strategy of the Examiner for Trade Mark Application no. 2463962 (a trade mark filed by Ragazzi after the Priority of the Trade Mark) was able to locate the Trade Mark as a potential ground for rejection. However, by way of Ragazzi being the owner the above four prior registrations (‘Regazzi Earlier Registrations’), Trade Mark Application No. 2463962 was accepted under the provisions of s 44(3)(b) other circumstances. The Applicant was advised of this by way of a Third Party notice of acceptance letter date 19 August 2024.
However, having now located the Trade Mark and being aware of Regazzi’s Earlier Registrations and the IRDA, IP Australia determined that the Trade Mark should not have been accepted and it was considered reasonable to revoke acceptance in accordance with s 38 of the Act. The Applicant was advised of this in a letter dated 19 September 2024.
The Applicant exercised its right to be heard on the revocation. Prior to the hearing the Applicant filed written submissions which included:
· Annexures A through to U.
I heard the matter, as a delegate of the Registrar of Trade Marks (‘Registrar’), on 31 January 2025. Mr Shakvaan Wijetunga of Carroll & O’Dea Lawyers made oral submissions with Dianne Retief, Special Counsel attending.
Section 38
Section 38 of the Act provides:
38 Revocation of acceptance
(1) Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:
(a) the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and
(b) it is reasonable to revoke the acceptance, taking account of all the circumstances.
(2) If the Registrar revokes the acceptance:
(a) the application is taken to have never been accepted; and
(b) the Registrar must examine, and report on, the application as necessary under section 31; and
(c) sections 33 and 34 again apply in relation to the application.
The decision to revoke acceptance is therefore broadly reliant upon two factors. First that the Application should not have been accepted, and second, that it is reasonable to now revoke acceptance, taking account of the circumstances that existed at the relevant times (including circumstances that were not known at acceptance, as is the case here).
The purpose of s 38 is to remedy acceptances that have been made in error. If the error is realised before a trade mark proceeds to registration, the Registrar has the power to revoke the acceptance and examine the trade mark once again, thus providing a simple procedure for remedy. The effect of revocation, reflected in s 38(2), is that the trade mark is taken to have never been accepted and the application is returned to the examination phase of the registration process.
Section 38(1)(a)
The question under s 38(1)(a) is whether the Trade Mark should not have been accepted and the basis upon which I must consider that is whether a ground for rejection exists under s 44 of the Act because of the Earlier Registrations[2].
[2] As Trade Mark number 2259821 is an IRDA reg 4.15A would also apply which is largely the same as s 44.
Mr Wijetunga, legal representative for the Applicant, argued that a simple change of opinion was insufficient to allow revocation. Mr Wijetunga’s submissions went on to assert that the acceptance of the Trade Mark in the face of the Earlier Registrations indicates that all the trade marks are sufficiently distinguishable from each other to be able to coexist as the Examiner was aware of the other parties using these Earlier Registrations. This view is based on the supposition that the internet search strategy engaged in by the Examiner when making their determination under s 41, revealed that another party was using the Earlier Registrations and that the Examiner considered this and was on notice of the Earlier Registrations when they accepted the Trade Mark. The Applicant submits that even if the Registrar is not persuaded by this reasoning that the Trade Mark is not deceptively similar to the Earlier Registrations in any event.
I believe that the Applicant’s first argument concerning a change of opinion and the search strategy of the Examiner requires discussion. To do this, it is important that I outline the normal practice of an Examiner in relation to the conduct of searches of the register for the purposes of s 44 and s 41.
Change of opinion?
Firstly, an examiner builds a search strategy by entering different parameters into various fields of the trade marks register (‘Register’) database. Each search request will return a certain number of ‘hits’. These ‘hits’ are the number of trade mark records that match the search criteria. The examiner then reviews each record one by one, extracting those that immediately appear similar to the Trade Mark of or that require further consideration. Once the search is completed the Examiner will then look more closely at the list of extracted trade marks which have been saved onto the electronic application file. These extracts are then annotated to show the outcome of the consideration - for example, that the trade mark has been raised as a ground for rejection, or that it has been considered but not cited with a brief reason as to why not.
A close inspection of the official files for the Trade Mark reveals that the search strategies employed by the Examiner would not have located the Earlier Registrations. As a consequence of this, the Examiner did not extract or apparently consider the Earlier Registrations before accepting the Trade Mark.
I turn now to the Applicant’s argument surrounding the Examiner being on notice of the Earlier Registrations by virtue of the internet search the Examiner conducted when making a decision on the basis of s 41 of the Act. I believe it is necessary to point out that an internet search conducted for the purpose of s 41 does not form a basis for a s 44 ground for rejection. The purpose of the s 41 internet search is to ascertain whether or not there is a s 41 ground for rejection in relation to the Trade Mark. It is not for the Examiner to note other traders using trade marks and then raise s 44 grounds for rejection against the Trade Mark on that basis. The Examiner and IP Australia is not an advocate or enforcer for people with unregistered/common law trade marks. The Registrar does not have legal authority to search the marketplace to locate common law trade marks and raise them as grounds for rejection under s 44 against a trade mark application. To do so would be at odds with s 44 of the Act which specifically mentions that the Trade Mark must be rejected if the Applicant's Trade Mark is substantially identical with, or deceptively similar to a trade mark registered or applied for on the Trade Marks Register by another person in respect of similar goods/services or closely related services/goods with an earlier priority date.
The Examiner potentially being aware of other traders in the marketplace using trade marks through an internet search is not sufficient justification for raising a s 44 ground of opposition. None of the trade marks seen in the s 41 internet search were raised as grounds for rejection under s 44 and rightly so. Suffice to say, the purpose of the research was to ascertain whether the trade marks are capable of distinguishing, and any common law trade marks identified during the course of that research do not form the basis of a s 44/reg 4.15A ground for rejection.
None of the behavior mentioned by the Applicant on the part of the Examiner amounts to a change of opinion. Instead, it is clear that the Examiner’s initial search strategy of the Register would not have located the Earlier Registrations. Once IP Australia was aware of the Earlier Registrations it was necessary to then assess them and the Trade Mark with regards to s 44/ reg 4.15A. I have addressed this argument of the Applicant, I turn now to a consideration of the Trade Mark and the Earlier Registrations to determine whether they are deceptively similar.
Section 44 / reg 4.15A
Section 44 provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
To constitute a valid objection under s 44/reg 4.15A, the Earlier Registrations must meet the following requirements:
I.it is in the name of a person other than the Applicant (‘First Requirement’);
II.it has a priority date which is earlier than the priority date of the Trade Mark (‘Second Requirement’);
III.it is in respect of services and/or goods which are either similar and/or closely related to the Relevant Services (‘Third Requirement’); and
IV.it is substantially identical with, or deceptively similar to, the Trade Mark (‘Fourth Requirement’).
The First Requirement and the Second Requirement have been met by the Earlier Registrations. When it comes to the Third Requirement, the Applicant has argued:
Since Ragazzi is in the business of producing Italian bread and pasta, and the Applicant’s most famous product is the Portuguese pastel de nata, the goods for which each trader is seeking registration are not of the same description. Each trader operates in different target markets. Therefore, the general public would not be confused in that the goods offered by each entity are different and there is a separate market for both, which would allow them to co-exist with the acceptance of the Applicant’s Trade Mark. The nature of the goods as sweet as opposed to savory, and the use of each of the goods, as desserts as opposed to entrees or mains, are different.[3] As for whether they are sold through the same trade channels, a specialised Italian restaurant is unlikely to serve a Portuguese dessert; and a Portuguese restaurant is unlikely to serve pasta or Italian bread, as is evidenced by the Applicant’s menu which serves Portuguese bread and no pasta. These different trade channels are to be distinguished from, for example, beer and wine which are commonly sold alongside each other in the same shops.
[3] Southern Cross (1954) 91 CLR 592, 606.
While the parties may use their respective trade marks on different goods in the marketplace, this is not how the goods and services of the respective trade marks must be considered under s 44/ reg 4.15A. Under s 44/ reg 4.15A it is the full scope of the goods and services claimed in the respective specifications which must be considered. I note that the specifications of goods and services is very broad in all of the Earlier Registrations and the Trade Mark. I am satisfied that the Third Requirement has been met with regard to the Earlier Registrations.
It now remains to be determined if the Fourth Requirement has been met in regards to the Earlier Registrations.
Section 10 states that for the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is unlikely to deceive or cause confusion. The comparison is between the impression based on recollection of the Earlier Registration that a person of ordinary intelligence and memory have (bearing in mind that the recollection may be imperfect),[4] and the impression that same person would have of the Trade Mark.[5]
[4] In the Matter of an Application by the Pianotist Company Ltd for Registration of a Trade Mark (1906) 23 RPC 774, 777 (Parker J).
[5] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (Windeyer J).
The Applicant argues:
…This deconstruction of the Ragazzi Marks is supported by the Federal Court’s recent approach to composite marks, that the word “fabbrica” cannot be isolated from the complex combinations of words, symbols, colours and arrangements in which it appears.[6] What this approach means is that Ragazzi can only be said to be the owner of the combination of particular elements for which it has in fact sought registration and used as a trade mark. It was not until 5 July 2024, almost 4 months after the Applicant’s priority date, that Ragazzi attempted to secure registration for a mark whose only word was “fabbrica”.
As was the case in Cantarella, the word in question is taken from a Romance language. In Cantarella, it was “oro” (Italian for “gold”), and in this case it is “fabrica” (Latin for “factory”, and its modern language derivatives). While it would be correct to say that neither word has an ordinary signification in the common stock of Australian language,[7] thereby going to its capacity to distinguish, there is clearly a difference between “oro”, which has no semblance to an Australian English word (coming from Latin “aurum” for gold), and “fabrica”, which is only one letter different from a common English word. Therefore, the distinctiveness of “oro”, and the prominence it would occupy in a customer’s memory, cannot be compared to “fabrica” and “fabbrica”. An Australian of ordinary intelligence would readily recognise the English word stem “fabbric-“ spelt with a double b, as opposed to “fabric-“.[8] And since “fabbrica” is not the only element of the Ragazzi Marks, whereas “fabrica” is the only element of the Applicant’s Trade Mark, there is even less chance of confusion between them.
This approach has been anticipated in a s 38 context, for example in Sealite, where registration of a mark incorporating the word “TABOU” with additional elements did not grant ownership rights in the single word “tabou” sufficient to overcome a s 44 issue with another mark “tabu”.[9] Likewise, the nature of the earlier Ragazzi Marks cannot accord to Ragazzi any monopoly over the word “fabbrica”. Ragazzi has acknowledged so much by including an endorsement on its trade marks that “Fabbrica” is the Italian word for Factory.
[6] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258, [567], [572] (Cantarella).
[7] Cantarella [463].
[8] Cantarella [417]-[433].
[9] Sealite (2009) 84 IPR 658, 664-665 [21] (Hearing Officer Irgang).
I have considered these submissions but nonetheless consider that the Trade Mark is deceptively similar to the Regazzi Earlier Registrations. The Applicant’s argument is that essentially ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[10]. I agree.
[10] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
Below are the Earlier Registrations and the Trade Mark:
Earlier Registrations
Trade Mark
CREATIVE FABRICA
Fabbrica Pasta Shop
Fabbrica Pasta Bar
FABRICA
The term FABRICA is the most distinctive and striking term of the IRDA which is identical to the Trade Mark. While the IRDA also contains the term CREATIVE, I am satisfied that this would be a common term used in relation to class 16 goods such as printed matter.
The term FABBRICA is also the most distinctive and striking term of the Regazzi Earlier Registrations. While there are additional words and graphic devices such as ‘PASTA SHOP’, ‘PASTA BAR’ and an ellipse, these are descriptive or common to the services of interest to the Applicant and to Regazzi.
Unlike Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd,[11] I do not consider that the descriptive terms within the Earlier Registrations carry equal weight to the essential feature, or that the common idea of the marks is expressed in forms that are quite different to each other.
[11] [1952] HCA 15 (Dixon, Williams and Kitto JJ).
Instead, I am satisfied it is likely that a consumer, when faced with the Earlier Registrations would focus on and recall the FABRICA/FABBRICA portion of the trade marks and if a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection”,[12] this can cause confusion. Particularly since the term FABRICA is the only element of the Trade Mark and is a striking and distinctive term for the goods and services of interest to the respective parties. Despite the spelling and font being different in the respective trade marks, the visual and phonetic similarities between Trade Mark and the Earlier Registrations are still likely to give rise to confusion, if not outright mistake.
[12] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147 [162] (HL)
I do note that the Regazzi Earlier Registrations advise that the term FABBRICA is Italian for ‘Factory’ and that the Trade Mark is the Portuguese word for ‘Factory’ though may also be seen as the Latin word for ‘Factory’, However, I am not satisfied that this is sufficient to preclude the trade marks from being considered deceptively similar. This is because the general Australian consumer is not likely to be fluent in Italian or Latin or Portuguese. The difference between FABRICA and FABBRICA is the additional letter ‘b’ buried in the middle of FABBRICA. This is not enough, even coupled with additional descriptive words or an ellipse to sufficiently differentiate the Regazzi Earlier Registrations from the Trade Mark. This spelling can be interchangeable and phonetically equivalent especially when located in the middle of the word. It is likely that a casual observation by the general Australian consumer would not make a distinction between the trade marks. In Rysta Limited’s Application[13], Luxmoore LJ held that:
It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.
The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants.
[13] (1943) 60 RPC 87 [108]
Applying the relevant tests and with reference to Re Application by the Pianotist Co Ltd[14] I accept that the visual and aural similarities between FABRICA and FABBRICA only serve to emphasise that it is probable that all the trade marks would be pronounced as phonetic equivalents by the Australian customer. This is particularly likely given the tendency in the English language to slur the termination of words[15]. I am satisfied the trade marks are deceptively similar. The first limb of section 38 has been established.
[14] Re Application by the Pianotist Co Ltd (1906) 1A IPR 379
[15] London Lubricants (1920) Limited Application (1995) 42 RPC 264
Section 38(1)(b)
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
In asserting that revocation would be unreasonable, taking account of the circumstances, the Applicant points to the inconvenience to be incurred should acceptance of the Trade Mark be revoked.
When it comes to the inconvenience that the Applicant would face, I note that the Applicant intends to expand its business and in anticipation of the construction of its Marrickville Premises, sought to register the Trade Mark. Once the building had been constructed the Applicant intended to name it ‘FABRICA’.
Whilst the Applicant may have plans for the Trade Mark, of itself this is not a basis upon which to find that revocation of acceptance is necessarily unreasonable. The circumstances here are similar to those in Ladbrokes Digital Australia Pty Ltd (‘Ladbrokes’)[17] wherein the delegate revoked acceptance of the trade mark, notwithstanding that the applicant had already invested in it. There, as here, the applicant had requested expedited examination and received an Early Notice of Acceptance which explicitly stated that the trade mark had yet to undergo an opposition period. I note also that in this matter the Applicants’ Early Notice of Acceptance states ‘…your trade mark cannot proceed to registration at this time. This is because IP Australia must honour the priority date of applications from convention countries for up to 6 months’.
[17] [2016] ATMO 116 (Hearing Officer Wilson).
While no application from a convention country was received in this case, another application came in which revealed the error in the Examination Process and the Earlier Registrations.
In Ladbrokes the delegate noted:
[A]cceptance of an application is not, and should not be taken to be, a guarantee that the applied for trade mark will proceed to registration. An examiner’s acceptance of an application is not the final step on the stairway to registration. Inconvenience or hardship brought on by the Applicant’s own actions will not support a view that revocation is unreasonable where those actions are undertaken on the assumption that an unregistered trade mark will become registered.
…
Any inconvenience that the Applicant might suffer as a result of its expenditure following its receipt of the Early Notice is of its own making…In using the Trade Mark before it was registered, and in the full knowledge that the Application was subject to possible opposition, the Applicant has accepted this risk. The Applicant is in the business of gambling – in that business, sometimes you win, sometimes you lose. It is not persuasive for the Applicant to argue that revocation is unreasonable because it gambled on the Trade Mark becoming registered in the full knowledge that this may not occur, and that gamble has not paid off. There are no other apparent circumstances that would make revocation unreasonable.[18]
[18] Ibid [25]-[30].
In this case the Applicant was on notice that once the Trade Mark was accepted that this was no guarantee that the Trade Mark would proceed to registration. There were numerous possibilities that could have arisen between acceptance and registration which may have disrupted the Applicant’s plans and I refer to the letter from IP Australia dated 18 March 2024 titled ‘CLEAR TM Headstart assessment’. This letter contained information stating that the report was not a guarantee of the acceptance or registration of the Trade Mark. Additionally, a great deal of information was provided which outlined the consequences of paying or not paying the Part 2 application fee. Included in this information was the possibility of additional marks being filed which would act as a barrier to the Application, trade marks with earlier convention claims being filed (hence why seven and a half months would need to pass between paying a Part 2 application fee and registration[19]) which would act as a barrier to the Application and that there was always the possibility of opposition proceedings commencing should the Trade Mark gain acceptance. All of this information was provided upfront to the Applicant to enable them to make decisions for its business.
[19] This seven and a half month period of time was reiterated in the letter from the Office dated 10 April 2024.
From the little evidence before me it does not appear that the Applicant has heavily invested in the Trade Mark much beyond the Application and its intentions to name a new venue. Taking all of the circumstances into account, I am satisfied that it is reasonable to revoke acceptance of the Trade Mark and return it to examination.
Costs
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 Irgang
Hearing Officer
Oppositions and Hearings
18 March 2025
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