IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 28 February 2021.  Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further. 

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic. 

However, these COVID-19 extension provisions are not a simple free-for-all (see our earlier article here: https://shelstonip.com/insights/briefings/ip-australias-covid-19-extensions-of-time-a-word-of-caution/).  An element of discretion does apply and, if asked, a requestor must be able to provide genuine reasons and evidence to justify the grant of the extension.  The timing of the request can be of significance too.  In addition, IP Australia warns that a false declaration could put the validity of an IP right at risk.Many deadlines for patents, trade marks and designs are covered by the streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Gareth Dixon, PhD

Introduction

IP Australia is providing free extensions of time of up to 3 months if a deadline cannot be met due to the effects of COVID-19.  As reported here https://www.shelstonip.com/news/covid-19-update-ip-australia-now-extended-streamlined-relief-measures-31-january-2021-provide-certainty-holiday-period/, the period for requesting such an extension currently ends on 31 January 2021 with the prospect of the period being further extended. 

A streamlined process has been implemented for requesting COVID-19-related extensions.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic (equating to circumstances beyond control).  Although these COVID-19 extensions of time have so far been routinely allowed, they are nonetheless subject to the Commissioner’s discretion. 

New decision from IP Australia

A recent decision from IP Australia, Shell Internationale Research Maatschappij B.V. v Yara International ASA [2020] APO 55, http://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/APO//2020/55.html, relates to a request for a COVID-19 extension in the context of a patent opposition.  It provides a reminder that care is required when requesting COVID-19 extensions at IP Australia, both in terms of the timing of the request and the reasoning.

Shell Internationale Research Maatschappij B.V. (the Opponent) filed a Notice of Opposition and, at the same time, requested a COVID-19 extension of 3 months for filing the Statement of Grounds and Particulars (SGP), which was due to be filed within 3 months of the Notice of Opposition. 

In accordance with usual procedure under Australian law, Yara International ASA (the Applicant) was afforded the opportunity to comment on the Opponent’s request for an extension of time.  The Applicant opposed the Opponent’s request for an extension of time. 

The Opponent’s submissions

The Opponent filed a declaration which provided a general overview of the COVID situation in the UK and at Shell.  The declaration noted that, as a consequence of the pandemic, the responsible in-house attorney had commenced working at home in April 2020, solely with the use of a laptop, without access to printers or desktop monitors, and that he did not have access to numerous physical documents that were required for the opposition.  The declaration also reasoned that, due to COVID-19, obtaining mandates and financial approvals for the opposition at Shell had become more difficult. 

The Applicant’s submissions

The Applicant, however, noted that the Opponent had filed two rounds of third-party observations at the EPO on the corresponding European application.  The Applicant argued that, although another Shell attorney had filed those third-party observations, the Opponent had not provided any reason why that attorney could not have prepared or assisted with the preparation of the SGP or why the task could not have been delegated to the Australian representative.  The Applicant pointed out that preparation of the SGP does not need expert witnesses and that the amount of time required to prepare the SGP is significantly less than that required for the preparation of evidence.  Furthermore, the Applicant argued that an undue delay would lead to an extended period of uncertainty for the Applicant and would not be in the public interest. 

Decision to grant a shortened extension and reasoning

The Commissioner commented that it was “not the existence of the pandemic, but rather the specific impacts on the responsible person, that must be taken into consideration”. 

The Commissioner considered that the extension request was “largely prospective and based on conjecture of circumstances that might arise in the future”.  The fact that the extension request had been filed at the same time as the Notice of Opposition did not work in the Opponent’s favour.  In this regard, the Commissioner observed that “if a party can anticipate on-going delays, and even quantify those delays in requesting an extension upfront, then presumably they can also plan and take action to mitigate their impact”.  The Commissioner expressed concern that “a party obtaining an upfront extension and working to an extended deadline may not be as diligent in completing their work, or as motivated to consider and implement mitigating strategies that could enable them to meet the original deadline”.

In the concluding remarks, the Commissioner adjudged that, whilst there were circumstances that had impacted on the Opponent’s ability to complete the SGP in time, the request was made at the beginning of the period for preparing the SGP when the impacts and the extent of delay were uncertain.  Further, the Commissioner was not satisfied that the Opponent had provided a sufficiently detailed disclosure of the circumstances to justify the request for an extension at that time, including the reasons why no strategies were available to mitigate the impacts. 

On balance, the Commissioner decided to allow an extension but the length of the extension allowed was less than the 3 months requested.

The Commissioner noted that the decision to allow the extension of time of course does not preclude the Opponent seeking a further extension based on current circumstances that may prevent completion of the SGP by the extended due date.

Conclusion

Whilst a shortened extension was granted in this circumstance, this decision serves as a stark reminder that IP Australia’s COVID-19 streamlined extension provisions are not a simple free-for-all.  An element of discretion does apply. 

A requestor must be able to provide genuine reasons and evidence to justify the grant of the extension and the timing of the request can also be of significance. 

In addition, it is worth mentioning IP Australia’s warning that a false declaration could put the validity of an IP right at risk.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us. 

Authored by Serena White, DPhil and Michael Christie, PhD

IP Australia is providing free extensions of time of up to three months if a deadline cannot be met due to the effects of COVID-19.  The period for requesting such an extension has been extended until 31 January 2021 Depending on the ongoing impact of the pandemic, both in Australia and overseas, this period could be extended further.

Whilst the maximum length of extension that can be requested at one time is three months, additional extensions of time of up to three months are available if needed.

IP Australia has implemented a streamlined process for requesting an extension of time of up to three months when an IP Rights holder is unable to meet a deadline due to the disruptive effects of the COVID-19 pandemic.  No declaratory evidence or fee is required; all that is needed is to check the relevant box on IP Australia’s eServices system to declare that the deadline cannot be met due to disruptions from the pandemic.

Many deadlines for patents, trade marks and designs are covered by these streamlined extensions of time, including deadlines associated with oppositions and hearings processes (such as periods to file evidence).  However, there are some exceptions.  For example: these extensions of time do not apply to deadlines for payment of renewal fees for patents, trade mark and designs, for which the usual 6 month grace period applies.  For trade marks, these extensions are also unavailable for filing of divisional applications.

For more information, or if you have been affected by the COVID-19 pandemic and require assistance with your IP Rights, please contact us.

Authored by Serena White, DPhil and Gareth Dixon, PhD

LION

In the recent Trade Marks Office decision of Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd [2020] ATMO 109, the issue of whether a film title functions as a trade mark has again been discussed.

The decision concerned a film called Lion, which is based on the story of young Indian man, Saroo Brierly, who grew up in Australia. At the age of five, he lost contact with his family in India when he was at a train station waiting for his brother, who never returned. After surviving three weeks in Calcutta by himself, he was placed in an orphanage and subsequently adopted by an Australian family. He then spent the next 25 years living in Tasmania, Australia. He then went searching for his natural parents in India, eventually being re-united with them and discovering that his original name was Sheru, meaning Lion.

The book, which was called A Long Way Home, received wide acclaim and a film adaptation called Lion, was subsequently produced. The film starred Dev Patel and Nicole Kidman and was nominated for six Academy Awards.

The story was written by Mr Brierly, with some editorial assistance, and he licensed the film rights, but kept musical and theatrical rights separate.

The holder of the licensed film rights, See Saw Films Pty Ltd (“See-Saw”) wished to produce a stage show, but was not granted rights by Mr Brierly, who applied for registration of the trade mark LION in respect of a range of theatre and musical services in Class 41. Long Way Home Holdings Pty Ltd (“LWHH”), a subsidiary of See-Saw then opposed that application.

According to the evidence, See-Saw decided to change the name of the title of the film from A Long Way Home, to Lion. According to them, Mr Brierly was not approving of this name.

In brief, the Hearing Officer found that LWHH did not have any good basis for opposing the acceptance of Mr Brierly’s application because its use of Lion as a film title was not use as a trade mark.

On the further issue of whether Mr Brierley’s application was filed in bad faith, because it was filed at a time when he was negotiating with LWHH concerning theatrical rights, the Hearings Officer decided:

Mr Brierley has rights in the story contained in that book which he may choose to licence to others, or not, as he sees fit. Mr Brierley chose to grant rights to See-Saw to produce a film based on the story in his story. A film was made and was entitled LION—this is not some random title but the meaning of a phonetic equivalent of his first name. Whether Mr Brierley decided on that title for the film or was happy with that title or not is of little import here. Mr Brierley was approached by See-Saw to produce a stage show based on his memoir. That Mr Brierley might have seen monetary value in a trade mark and/or sought, through the Applicant, to improve his bargaining position in negotiations in respect of rights he owns by applying to register LION as a trade mark seems a natural approach, rather than behaviour which is likely to be seen as unscrupulous, underhand or unconscientious in character by persons adopting proper standards. This is especially so in the light of my finding that the Opponent has, at no time, used LION as a trade mark.

Cases concerning Film Titles

Superficially, film titles seem just like trade marks. They are names used to identify a particular product. However, the nature and types of titles vary considerably, as does their function.

In some cases, the film title is derived directly from a prior publication, in others, it directly describes what the film is about. In other cases, it is at best suggestive. The function of names in the title also vary to an extent depending upon whether it is indicative of a series of releases, or a one-off film.

There are few judicial decisions in Australia on this issue. The two that most readily spring to mind concern Disney’s Hunchback of Notre Dame[1] and a television program called Discover Downunder.[2]

In the case concerning Disney’s Hunchback of Notre Dame, it was alleged that Disney’s proposed use of Hunchback of Notre Dame in respect of a musical production was an infringement of a trade mark registration for Hunchback of Notre Dame. As might be expected, the Court found that the word “Disney’s” functioned as a trade mark but that “Hunchback of Notre Dame” was simply being used to describe a musical based on a book commonly referred to as The Hunchback of Notre Dame. Hence there was no infringement.

In the case of Discover Downunder, it concerned an application to register that trade mark in respect of the “production of television programs”. In that case, the Court did not need to decide whether Discover Downunder functioned as a trade mark. This is because it decided that use and intended use as the name of a television program was not intended use for the “production of television programs”. The business of producing television programs was to be carried out by the production company, whose name was Evergreen, not Discovered Downunder.

With this paucity of judicial consideration, it is useful to look at decisions at the level of the Trade Marks Office. Here we find that film and television program titles have not typically been considered use as a trade mark. Decisions in respect of Braveheart,[3] Veronica’s Closet,[4] Thirtysomething[5] and Matrix,[6] found no use as a trade mark. However, Die Hard[7] was distinguished on the basis that it was a name used to identify a series of productions.

In the case of Braveheart, an opposition to registration of BRAVEHEART THE MUSICAL, in respect of theatre musical production services, was nevertheless successful on the basis that, while Braveheart was not considered to have been used as a trade mark, use of the name by a third party would connote an association with the film by virtue of its reputation.

Also, in the Twentysomething case, the Hearings Officer commented that:

By analogy, the television series name is just that. It is not an indicator of the trade source of the goods. Had the opponent applied the name, or licensed others to apply the name, ‘thirtysomething’, to merchandised goods sold in Australia then I would have no hesitation in finding that there was use of the name as a trade mark in relation to those goods.

In the Die Hard case the rationale was explained:

I think that motion pictures, if there is a series of them, fall into the same genus of publication as the newspapers, sound recordings, magazines and newspapers referred to above. By analogy, therefore, the titles of motion picture films should also be capable of functioning as trade marks. Whether particular movie titles do function as trade marks, will, naturally, depend on the evidence how such indicia have been used and whether such indicia have, in fact, developed trade mark significance. 

As regards the decision in the Matrix case, as at the relevant date, only one Matrix movie had been released.

Conclusion

Whether a film title, or words in a film title function as a trade mark, depends upon the circumstances. Currently, it seems that a one-off film title will not usually be considered use as a trade mark. However, where there is a series, for example Harry Potter and Star Wars, the identifying name used consistently across the series will usually function as a trade mark.

There is also likely a distinction to be drawn between use in respect of films and use in respect of merchandise, and the merchandising of a film title may also enhance its prospects of being considered a trade mark, even in respect of the film.

Similar considerations are relevant in respect of book titles and song titles, and it is worth noting that even if the title is not being used “as a trade mark”, there may still be protectable property, as indicated by the decision in the Braveheart case.


[1] Christodoulou v Disney Enterprises Inc [2005] FCA 1401 (4 October 2005).

[2] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71 (3 May 2019)

[3] Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (19 January 2000).

[4] Time Warner Entertainment Company LP v Cosmopolitan Enterprises Pty Limited [2001] ATMO 83 (6 September 2001).

[5] Metro-Goldwyn-Mayer Studios Inc v Andrea Margaret Higgs [2007] ATMO 44 (6 August 2007).

[6] Time Warner Entertainment Company LP v Just Spectacles Pty Ltd [2003] ATMO 43 (29 July 2003)

[7] Twentieth Century Fox Film Corporation v Die Hard [2001] ATMO 43 (25 May 2001).

On 1 March 2020, the Vanuatu Trade Marks Office (“VTMO”) announced the introduction of a new annual maintenance fee (“the AM Fee”) for all Vanuatu trade mark registrations.

The AM Fee has currently been set at US$35 and is due on or before the “anniversary date” of the trade mark. The anniversary date is taken from the date of the receipt of the file in the Vanuatu Office (i.e. the filing date). For older Vanuatu marks, which were based on re-registrations of United Kingdom registrations, the anniversary date is calculated from the filing date of the UK mark.

The AM Fee is payable for nine (9) consecutive years before the renewal fee applies. It is not payable on renewal.

The VTMO will issue a reminder notice and invoice for the AM Fee to the agent of record, however, according to present advice, there are delays in the implementation process. As a result, issuance of reminders for the AM Fee may not commence until 2021.

There is currently no official grace period for payment of the AM Fee and no penalty fee for late payment.

The new requirement is an unexpected development that presently seems to be administratively burdensome for international owners of registrations, and we wait to see if there will be some revision once actually operational.

Shelston IP deals directly with the Vanuatu Trade Marks Office and various other South Pacific intellectual property offices with respect to trade mark rights.

If you require further information regarding the Vanuatu AM Fee or assistance with other IP rights in South Pacific jurisdictions, please let us know.

As IP practitioners, you have probably noticed counterfeit watches being sold at local markets, sometimes hidden from immediate view by the seller.  Over the past ~30 years, growth in online retailing (including third party retailers) has allowed counterfeiters to flourish and expand into goods such as footwear, leather goods, perfumes, jewellery and even pharmaceuticals.  A 2019 OECD Report puts the value of counterfeit and pirated goods at US$509 Billion which corresponds to approximately 3.3% of global trade.

Criminal Offences under Trade Marks Act 1995

So what can brand owners do to combat the counterfeiters in Australia?  Apart from commencing trade mark infringement proceedings, Part 14 of Australia’s Trade Marks Act 1995 also outlines a series of criminal offences in relation to registered trade marks, including:

  • Section 145 ‒ Falsifying or removing a registered trade mark;
  • Section 146 ‒ Falsely applying a registered trade mark;
  • Section 147 ‒ Manufacturing a die, etc. for use in a trade marks offence.
  • Section 147A – Drawing etc. trade mark for use in offence;
  • Section 147B – Possessing or disposing of things for use in trade mark offence
  • Section 148 ‒ Goods with false trademarks.

Each of these criminal provisions feature both summary and indictable offences with differing fault elements (intention, knowledge, recklessness or negligence) which must be proven depending on the offence.  If there is a prosecution for an offence under Part 14, Section 160 establishes the criteria to be used in determining a natural person’s state of mind and his/her responsibility for the conduct of employees and agents.

Any person may institute proceedings to commit a person for trial for an indictable offence under the Trade Marks Act 1995.  While private prosecutions for trade mark offences are possible, they are extremely rare as the costs involved are generally considered to outweigh the benefits.  In practice, criminal proceedings for offences under the Trade Marks Act would most likely be brought by the Australian Federal Police or the Department of Public Prosecutions.   Unfortunately for brand owners, such prosecutions are rarely brought in Australia (presumably on the basis that such actions are insufficiently “important”) and are typically confined to cases which primarily involve organised crime or public health and safety issues.  The penalties for such offences range from a term of imprisonment (12 months for summary offence or 5 years for indictable offence) and/or fines (60 units for summary offence or 550 units for indictable offence) or both.  On 1 July 2020, the value of one (1) penalty unit was increased to AU$222 (~US$160).  Given the enormity of the counterfeit goods market, we think that such penalties are likely to be regarded as insignificant and simply “the cost of doing (counterfeit) business”.

Miscellaneous Offences

Section 150 to 157 also establish a number of other miscellaneous offences, namely:

  • Section 150 – Aiding and abetting offences;
  • Section 151 – False representations regarding trade marks;
  • Section 152 – False entries in Register etc.;
  • Section 153 – Disobeying summons etc.;
  • Section 154 – Refusing to give evidence etc.;
  • Section 156 – Acting or holding out without being registered;
  • Section 157 – False representation about Trade Marks Office;

The penalties for such offences range from a term of imprisonment (up to 2 years) or fines (up to 150 units) depending on the particular offence.  Section 150 relates to aiding and abetting conduct including doing “an act outside Australia which, if it were done in Australia, would be an offence against this Act.  In such circumstances “the person is taken to have committed that offence and is punishable accordingly”.

Sections 151 – 157 are largely directed toward “administrative” offences such as the use of the ® symbol on or in relation to goods or services when the relevant trade mark is not currently registered in Australia.  While brand owners should be aware of how to avoid such offences (for example, by utilising the TM symbol rather than ® or by specifying the country in which the mark is actually registered), these provisions are unlikely to offer brand owners any significant assistance with the prevention of counterfeit goods being sold in Australia.

Customs Notices and ACL

Apart from the actions outlined above, brand owners should also lodge a “Notice of Objection” which allows Australian Customs to seize potentially infringing goods when being imported into Australia.  Under Australian legislation, the importer of the seized goods must make a claim for their return, otherwise they will be forfeited to the Commonwealth. This claim must include information which will assist the brand owner in contacting the importer and prevent further importations.

As China is a global manufacturing centre, it is also a significant source of counterfeit goods.  In this regard, Chinese Customs also has the power to seize infringing goods including those being either imported to or exported from China.  Brand owners should consider recording their trade marks with Chinese Customs, in an attempt to reduce the prevalence of counterfeit goods in other parts of the world.

An action could also potentially be brought against counterfeiters (by the Australian Competition and Consumer Commission) under Australia’s consumer protection law the Australian Consumer Law (ACL) which relates to conduct that is misleading and deceptive (or is likely to mislead or deceive) but again such actions would be rare.

Remedies and options are available to brand owners, however, active policing of the marketplace is required to protect brand value and minimise the trade in counterfeit goods being sold in Australia.

There was no sweet victory for the owners of the WICKED SISTER trade mark, used mostly for dairy desserts, in their attempt to prevent use of the WICKED trade mark for dipping sauces and related products.

The recent Federal Court case of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078 (30 July 2020), heard by Markovic J, involved numerous issues relating to competing registrations, infringement and validity, but ultimately PDP was unsuccessful in its claims against Grasshopper for trade mark infringement, misleading and deceptive conduct under the Australian Consumer Law and passing off under the common law.

PDP also failed in its claim to cancel Grasshopper’s trade mark registration, although it partially succeeded in its challenge to the registration on the basis of non-use.

Grasshopper’s cross claim to cancel the Wicked Sister registrations also failed, but it partially succeeded to restrict the registrations on the basis of non-use.

Background

PDP has manufactured and sold a range of chilled dairy desserts and snacks under the Wicked Sister brand since 2008.

PDP owns registrations for WICKED SISTER in plain word and stylised forms which cover various goods in classes 29 and 30 (collectively “the Wicked Sister marks”). The earlier stylised mark

dates from 2008 and is owned by PDP Fine Foods Pty Ltd (“PDP Fine Foods”). The later stylised mark

and plain word mark WICKED SISTER both date from 2016 and are owned by PDP Capital Pty Ltd (“PDP Capital”), a related IP holding company. PDP Capital’s marks achieved registration by consent from PDP Fine Foods.

Grasshopper is an IP holding company which has authorised the use by various entities selling dipping sauces since 2002 under the WICKED brand.

Grasshopper owns a registration dating from 2005 for

(“Wicked tail mark”) in class 30. The WICKED brand was modified in 2014 to

(“new Wicked mark”) with the original branding phased out by early 2016. Grasshopper also owns a pending application for the new Wicked mark, and an accepted application for the plain word WICKED (which has, since these proceedings, been successfully opposed by PDP in proceedings before the Trade Marks Office, on the basis of a lack of distinctiveness. In that case, the Hearing Officer expressed the view that “the ordinary signification of the trade mark is a colloquial word for ‘excellent’ and when applied to the goods there is an implication of decadence”).

Grasshopper extended its product range to include waffle dippers in 2018.

The Wicked Sister and Wicked products are sold through Coles supermarkets.

The products sold under the Wicked Sister marks are flavoured rice puddings, custard, tiramisu and panna cotta, made from fresh ingredients and found in the refrigerated section of the dairy aisle.

The Wicked dipping sauces are not made from fresh ingredients and therefore do not require refrigeration, although they are still sometimes placed with frozen berries in the fresh food section of the supermarket.

Common Issues

Markovic J initially considered two main issues common to the parties’ various claims in the proceedings:

»  whether the new Wicked mark is substantially identical or deceptively similar to the Wicked Sister marks; and

»  whether the goods covered by the respective marks are the same or of the same description.

The marks were not found to be substantially identical. In making her determination that the marks were also not deceptively similar, her Honour considered a number of factors including:

  • the new Wicked mark and the Wicked Sister marks are not visually or aurally similar;
  • the adjective “wicked”, when used on its own, is an abstract concept which could describe anything. In contrast, the word “wicked”, used in conjunction with the noun “sister”, is not a strongly distinguishing feature of the Wicked Sister marks;
  • despite her Honour agreeing that the goods are fast moving consumer goods sold at a low price point, based on the evidence, the goods are found in different parts of the supermarket, consumers are able to view the products and their associated trade marks, and confusion is unlikely; and
  • the evidence of confusion advanced by PDP was ultimately given little weight as it was not evidence of an “ordinary person”, but of people who have a personal or trade affiliation with PDP.

This conclusion had significant implications for a number of the claims brought by the parties, but perhaps most significantly meaning that there could be no finding of trade mark infringement.

Her Honour then determined that dipping sauces and waffle dippers are not similar to desserts, rice pudding or any of the other goods covered by the earlier stylised Wicked Sister mark owned by PDP Fine Foods. However, dipping sauces were specifically covered by the later Wicked Sister registrations owned by PDP Capital, and waffle dippers being bakery products, were also encompassed by those registrations.

Grasshopper’s cross-claim for rectification

Grasshopper sought rectification under section 88 of the Trade Marks Act for cancellation of the registration of the Wicked Sister marks.

There was a difference in ownership between the later WICKED SISTER registrations and the first registration, which was principally for tax minimisation reasons. This conflict was resolved at the examination stage by the owner of the earlier registration providing a letter of consent to the subsequent applicant. However, interestingly, her Honour upheld Grasshopper’s claim under the section 58 ownership ground finding that PDP Capital was not the owner of the later registered Wicked Sister marks because PDP Fine Foods, which owned the earlier registered Wicked Sister mark, was also the true owner of the later marks. Despite this finding, her Honour decided not to exercise discretion to cancel the registrations because there was no risk of consumer confusion due to the “unity of purpose” between PDP Fine Foods and PDP Capital being related companies [applying the principle enunciated in the Full Federal Court case of Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] HCAFC 100]. This nevertheless leaves open the possibility of a similar claim in succeeding opposition proceedings, since the discretion exercised by the Court in this case does not exist in those proceedings.

Grasshopper’s non-use applications

PDP was able to establish use of the earlier stylised Wicked Sister mark for dairy desserts, yoghurt desserts, creamed rice, rice puddings, rice tapioca and cheesecakes. PDP also sought to rely on use of flavoured rice puddings to retain “sauces for rice”, but this was not accepted and these goods were removed together with all other goods for which use could not be shown.

Regarding the challenge to the later registered Wicked Sister marks under section 92(4)(a) for lack of intention to use, her Honour found evidence of actual use for various goods including, dairy products, dairy-based desserts panna cottas; crème caramels, custard, cheesecakes, cakes, frozen yoghurts, creamed rice. She also held that use of the marks for panna cotta was sufficient to retain the broad claim for “all other desserts in this class including prepared desserts”. However, as there was no intention to use or actual use of the trade marks for bakery products, confectionery, ice cream confections, dipping sauces and yoghurt products, these goods were removed.

PDP’s claim for trade mark infringement

For trade mark infringement, PDP needed to establish the threshold issue that the new Wicked mark is substantially identical or deceptively similar to the Wicked Sister marks and that dipping sauces and waffle dippers are the same as or of the same description as the goods for which the Wicked Sister marks are registered.

As the marks were not found to be substantially identical or deceptively similar, PDP’s infringement claim failed at the first hurdle and it was therefore not necessary to consider whether Grasshopper had any defences to infringement. However, in case her Honour was wrong in relation to her conclusions to PDP’s infringement claim, she went on to consider the threshold issue – whether Grasshopper’s authorised use of the new Wicked mark is capable of constituting trade mark infringement.

While Grasshopper did not deny that it authorised use of the new Wicked trade mark to other entities within the meaning of the Trade Marks Act, it argued that it could not be subject to direct liability for infringement under section 120 because there is no statutory tort of authorisation in the Act. Her Honour agreed and indicated that the threshold issue would have been decided in Grasshopper’s favour. She did add, however, that this does not mean that no cause of action could have succeeded against Grasshopper as a joint tortfeasor, had that been pleaded.

PDP’s claim under the Australian Consumer Law (ACL)

PDP alleged that Grasshopper’s conduct breached sections 18 and 29 of the Australian Consumer Law. Grasshopper argued that (1) as a mere IP holding company it could not have made any of the alleged misrepresentations and (2) there was no real likelihood of confusion. Her honour rejected Grasshopper’s first contention which indicates that Grasshopper could have been liable under the ACL if the marks were otherwise found to be sufficiently similar and PDP had an established reputation in the Wicked Sister marks as at 2014 when use of the new WICKED trade mark commenced. However, ultimately her Honour found that there was no real likelihood of confusion and, consequently, PDP’s claim under the ACL failed.

PDP’s claim for passing off

PDP’s passing off claim followed her Honour’s findings in relation to the ACL. While Grasshopper’s conduct may amount to conduct for the purposes of establishing passing off, PDP had not established a sufficient reputation in the Wicked Sister marks as at 2014, nor that a sufficient number of consumers were likely to be deceived by Grasshopper’s use of the new Wicked mark.

PDP’s non-use application

PDP sought removal of the Wicked tail mark on the grounds of non-use under sections 92(4)(a) and 92(4)(b). As her Honour had found that Mr Valentine had an intention to use the mark, the section 92(4)(a) ground was dismissed. In relation to the section 92(4)(b) ground, Mr Valentine could establish use during the non-use period for dips including chocolate dips, but conceded that the mark had not been used for dessert toppings and sauces and confectionery products. Despite this, her Honour exercised discretion to retain the registration for all goods except savoury dips.

Takeaways

When comparing marks for the purpose of determining deceptive similarity, whether the combination has a meaning that differs from that of the word alone can impact on whether that word is determined to be an essential feature of the mark.

The case also provides a timely reminder to business owners, who wish to protect and enforce their marks, to ensure that they are filed in the name of the legal entity who will use or authorise use of the mark. Further, it confirms that there is no statutory tort of authorisation in the Trade Marks Act with the result that an IP holding company which merely authorises use of a mark cannot be subject to liability for direct infringement, although it may be liable as a joint tortfeasor.

Counterfeiting can be a significant problem for brand owners and legitimate rights holders. It directly undermines legitimate business through lost sales revenue and has the potential to strain relationships between IP owners and their licensees. The sale of counterfeit products can also damage the value of the associated brand in various ways. This could be where the counterfeit products are defective or of poor quality compared with the genuine article; or where unauthorised trade mark uses disrupt brand owners from effectively controlling the use of their brands, resulting in brands being presented to the market unfavourably or in a way that is inconsistent with the brand owner’s interests.

Even consumers seeking to do the right thing by purchasing legitimate products can be confused about whether a particular product is authentic or being traded through an authorised channel. This is especially the case in the context of online retail.

To help with combatting counterfeiters, IP Australia has begun trialling its “Smart Trade Mark” initiative with industry and government partners. The expectation is that the Smart Trade Mark will become an effective tool to identify and authenticate genuine products and sales channels, thereby resolving the potential for consumer confusion and allowing consumers to be confident that they are purchasing the genuine article from a legitimate source.

What is Smart Trade Mark?

The Smart Trade Mark is a digital platform that uses blockchain technology to enable businesses to verify that certain products, sales channels and trade mark uses are legitimate by linking them to their registered trade marks as published on the Australian Trade Marks Register.

How Smart Trade Mark works

The platform currently being trialled involves 3 main steps:

  1. The trade mark owner submits certain product information and/or domain addresses to IP Australia;
  2. IP Australia stores the details and authenticates the trade mark by linking the details provided by the trade mark owner to the Australian Trade Marks Register; and
  3. A Trust Badge is displayed on the relevant websites notified to IP Australia. Consumers can verify the Smart Trade Mark digitally by referring to the Trust Badge, which links through to details of the registered trade mark and information confirming that the website is verified.

NRL

The NRL (Australian Rugby League Commission Limited) is one of the key industry partners trialling the Smart Trade Mark. Shaun McMartin, NRL’s General Manager Consumer Business, sees the Smart Trade Mark as a potential “game changer” for similar businesses, stating that:

NRL members and fans are the lifeblood of our sport who want to buy the genuine article when supporting their club – the Trust Badge helps NRL fans identify authentic and licensed products online

The Smart Trade Mark is currently used by the NRL at www.nrlshop.com and by one of its authorised distributors at www.savvysupporter.com.au to indicate that both are legitimate sources of authentic NRL merchandise.

Shelston IP is proud to act for NRL in connection with protection and maintenance of its trade mark portfolio. Along with the NRL, we are excited by the prospects of Smart Trade Mark becoming an effective tool in the fight against counterfeiters.

Smart Trade Mark will be made available to all Australian trade mark owners if the trials are successful. IP Australia has not provided a specific timeframe for completion of the trials. However, trade mark owners can register their interest and subscribe to receive further updates at – https://smarttrademark.search.ipaustralia.gov.au/.

In the recent decision of Ceramiche Caesar S.p.A. V Caesarstone Ltd [2020] FCAFC 124 (28 July 2020) the Full Federal Court decided that the primary judge had erred in finding “honest concurrent” use of the CAESARSTONE mark.  The decision also considers the requirements for “quality control” and a finding of “authorised use”.

Proceedings

The decision involved Ceramiche Caesar S.p.A’s (Ceramiche Caesar) appeal of the primary judge’s decision to allow Caesarstone Ltd’s (Caesarstone) Australian Trade Mark Application No 1058321 for the word mark CAESARSTONE (CAESARSTONE Mark) to proceed to registration for certain class 19 floor and wall goods on the basis of honest concurrent use.

The decision also involved proceedings in Ceramiche Caesar’s appeal of the primary judge’s decision to allow Caesarstone’s Australian Trade Mark Application No 1211153 for

to proceed to registration for certain goods and services in classes 19, 35 and 37 (Caesarstone Device Mark) and to allow Caesarstone’s Australian Trade Mark Registration No 1211152 for the word mark CAESARSTONE to remain registered for services in classes 35 and 37 (Caesarstone Services Word Mark).

The parties agreed that the result in the first proceeding would determine the results in the second proceedings and almost entirely determine the result in the third proceeding.  The discussion below therefore relates only to the first proceeding.

Facts

The appellant, Ceramiche Caesar, has manufactured ceramic tiles for indoor and outdoor flooring and wall cladding in Australia since 1988. Effective from 23 November 2004, Ceramiche Caesar has had a registration in class 19 covering  “ceramic tiles for indoor and outdoor use” for a CAESAR device mark:

The respondentCaesarstone, is an Israeli company that manufactures and sells large quartz slabs which have been labelled on the underside of the slab with the mark “CAESARSTONE” since 1987.

Caesarstone’s slabs were distributed in Australia from 2003 by two distributors: Caesarstone’s licensee, Tessera Stones and Tiles Pty Ltd (Tessera) and Tessera’s sub-licensee, Carsilstone Pty Ltd (Carsilstone). In 2006, Caesarstone incorporated an Australian subsidiary, Caesarstone Australia Pty Ltd (Caesarstone Australia).

From 2003 the distributors, Tessera and Carsilstone, sold the slabs to stonemasons in Australia who would then convert them into finished products, including benchtops and countertops, vanities and surrounds and splashbacks, which would then be sold on to customers.

Ceramiche Caesar’s CAESAR device mark registration was cited against the  application to register the CAESARSTONE mark on 2 June 2005.  To overcome this citation, Caesarstone amended its goods specification to disclaim “tiles” as follows:

Panels for floors, floor coverings, wall cladding, ceilings; non-metallic covers for use with floors and parts thereof; profiles and floor skirting boards; none of the foregoing being in the nature of tiles.”

The CAESARSTONE application was subsequently successfully opposed by Ceramiche Caesar, with the Registrar’s delegate deciding that the CAESARSTONE mark was deceptively similar to the CAESAR device mark and that, based on the facts, the exception for “honest concurrent use” under s 44(3)(a) and/or “prior continuous use” under s 44(3)(4) of the Trade Marks Act 1995 should not apply.

Caesarstone appealed the decision and the primary judge in Caesarstone Ltd v Ceramiche Caesar S.p.A. (No 2) [2018] FCA 1096 (Caesarstone (No 2)). found that there had been “honest concurrent use” of the CAESARSTONE mark on floor panels and wall cladding and that the use of the CAESARSTONE mark by Caesarstone’s distributors was “authorised use”.

On the appeal the two main issues in dispute in the first proceedings were whether the primary judge erred in concluding that:

(1) there was honest concurrent use of the CAESARSTONE mark on the designated Class 19 goods;

(2) the prior use of the trade mark was authorised use under Caesarstone’s control”.  [1]

Honest concurrent use

The interpretation of the disclaimer of “tiles” in the goods description was crucial to the question of whether there was honest concurrent use.

Caesarstone argued that the exclusion of “tiles” from its specification was of no significance because it did not limit the goods specifically listed in the specification.  They relied on the primary judge’s finding that the disclaimer did not “subtract all content from” the words “panels for floors” and “wall cladding”.  [2]

Ceramiche Caesar argued that the disclaimer effectively excluded tiles.  As the primary judge found that the goods in honest concurrent use were floor panels and wall cladding in the nature of tiles, there was therefore no honest concurrent use of the mark in respect of the goods covered by the application.

Their Honours considered that “as a matter of plain English, the words “none of the foregoing being in the nature of tiles” operate to limit the class 19 goods to include only panels for floors, floor coverings and wall claddings which are not in the nature of tiles”.  They said that “the primary judge’s conclusion that the tile disclaimer did not “subtract all content” from the words “[p]anels for floors, floor coverings, and wall cladding” which are not “in the nature of tiles” was a statement of the obvious” and “not a statement which supports the conclusion that the tile disclaimer was “ineffectual” in the sense contended for by the respondent”.  [3]

The Full Court held that the primary judge erred in finding honest concurrent use because honest concurrent use must be in respect of the goods covered by the application. In this case, the finding of honest concurrent use was for goods which were all “in the nature of tiles”.  As tiles had been expressly excluded from the specification they were not covered.

The Full Court also refused Caesarstone’s request to remove the disclaimer, because this would effectively widen the scope of the registration to include tiles.

Authorised use

While the Full Court found that there had not been honest concurrent use, and the second question of whether Caesarstone’s use would have been “authorised use” did not therefore strictly arise, the judges considered the question briefly.

Section 8(1) of the Trade Marks Act 1995 states that a person is an authorised user “if the person uses the trade mark under the control of the owner of the trade mark” and section 8(3) provides that:

(3) If the owner of a trade mark exercises quality control over goods or services:

(a) dealt with or provided in the course of trade by another person; and

(b) in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

The primary judge’s finding that Caesarstone’s prior concurrent use was authorised use under Caesarstone’s control and therefore use in accordance with section 8(3) of the Trade Marks Act was on the basis that Caesarstone:

“(1) gave instructions regarding slab transport and storage to the Australian distributors;

(2) provided technical and marketing support services to the Australian distributors;

(3) sought to exercise quality control by ensuring that the Australian distributors provided fabrication and installation manuals to the stonemasons, and contributing to the content of these manuals.”  [4]

However, on appeal their Honours decided that the evidence did not support this and that the primary had judged erred in finding authorised use.

The Full Court stated that “Authorised use requires the trade mark applicant to establish “control as a matter of substance”: Lodestar Anstalt v Campari America LLC [2016] FCAFC 92(2016) 244 FCR 557 (Lodestar) at [97]. What constitutes control as a matter of substance is informed by the function of the trade mark, which is to indicate a connection in the course of trade with the registered owner – see PioneerKabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56(1977) 137 CLR 670 (Pioneer) at 683 per Aickin J”. (pgh 39).  [5]  The court also noted “the critical enquiry is whether there was quality control with respect to the designated goods”.

The court held that Caesarstone did not exercise quality control because the control was not in relation to the designated goods, being panels for floor covering and wall covering.  Further the quality control was not in relation to the work of the stonemasons who fabricated the slabs into the finished products and were therefore responsible for the ultimate quality of the designated goods.  Their honours found that “not only did Caesarstone not have any contractual relationship with the stonemasons, but there was no evidence that Caesarstone ever inspected the stonemasons’ work or conducted any quality control regarding the final product.” [6]

In relation to the evidence on which the primary judge based his finding of quality control, the court noted that:

  1. Caesarstone’s storage and transport instructions only ensured that the slabs were not damaged, they did not enforce quality control over the finished products covered by the application being the panels for floor covering and wall cladding;
  2. The installation and fabrication manuals provided by the distributors to stonemasons were for guidance only and the “provision of technical information is not, at least of itself, the exercise of quality control”. [7]
  3. There were no terms relating to “quality control standards, brand guidelines, marketing approval mechanisms or rights of inspection of fabricated product” in Caesarstone’s distribution agreement with Tessera. [8]

Authorised use on a wider basis

The primary judge had also found that there had been control “on a wider basis than… exercising quality control”.  However, their Honours held that this was not the case because “the application of the mark to a slab is not indicative of control over the designated goods” [9] and the various claims of wider control, such as Caesarstone’s website listing ideas on possible uses for the slabs did not “operate to constrain or demand the stonemasons to use the slabs in any particular way or require fabrication in any particular way” [10].  Further, the general communications between Caesarstone and its distributors did not include reporting back to Caesarstone on the ultimate application of the slabs and did not “translate into a finding of “control” over the designated goods”.  [11]

Decision

Their honours found that the primary judge erred in concluding that there had been honest concurrent use in respect of the goods covered by the amended application. They also found the claimed use was not authorised use under Caesarstone’s control and that Caesarstone did not exercise quality control and general control on a wider basis.

The second proceeding was resolved in the same way as the first and third proceeding also went the same way as the first.

The appeals in all three proceedings were allowed, the primary judge’s orders were set aside, Ceasarstone’s application numbers 1058321 and 1211153 were refused and registration number 1211152 was cancelled.

Takeaway

The decision is an important reminder that quality control must be exercised as a matter of substance. This is essential if the use of the trade mark is to be considered authorised use that can be relied upon by a registered owner for the purposes of defending a non-use removal action, or to support an applicant’s claim to registration based on use.

It serves as useful clarification that disclaimers in goods specifications are to be interpreted as a matter of plain English and is a reminder that to establish “honest concurrent use”, it is necessary to prove use on the goods covered by the application.


[1] Ceramiche Caesar S.p.A. V Caesarstone Ltd [2020] FCAFC 124 (28 July 2020), paragraph 22.

[2] Ibid, paragraph 27.

[3] Ibid, paragraph 29

[4] Ibid, paragraph 45.

[5] Ibid, paragraph 39.

[6] Ibid, paragraph 60.

[7] Ibid, paragraph 52.

[8] Ibid, paragraph 58.

[9] Ibid, paragraph 64.

[10] Ibid, paragraph 70.

[11] Ibid, paragraph 75.

Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor [2020] FCAA 1718 (30 June 2020)

On 30 June 2020, Chris and Dora Di Lorenzo Partnership (Di Lorenzo) unsuccessfully appealed against a decision by the Registrar of Trade Marks regarding registration of the trade mark BLACK SHEEP by Denversian Pty Ltd (Denversian).

Background

Di Lorenzo is the registered owner of Australian Registration 1681212 for the BLACK SHEEP & Device trade mark represented below. This registration covers goods in classes 30 (coffee and coffee products) and 43 (coffee bar and coffee house services, coffee shop services) and has a priority date of 16 March 2015.

Since September 2011, Di Lorenzo operated a café business in Sydney, New South Wales under the name Black Sheep.

Denversian filed Application 1720917 for BLACK SHEEP covering “restaurants, restaurant services; café and bistro services” in Class 43 on 10 September 2015. Since August 2013, Denversian operated a bistro restaurant on the Gold Coast, Queensland.

Application 1720917 was initially accepted for registration pursuant to the provisions of s44(4), which refer to registration on the basis of prior and continuous use, and the trade mark included the endorsement “Registration of this trade mark is limited to the State of Queensland”.

Di Lorenzo subsequently opposed Denversian’s application, the parties lodged evidence and written submissions, and the Delegate made his decision.

The Delegate was of the opinion that the BLACK SHEEP & Device trade mark and the BLACK SHEEP trade mark are deceptively similar, and cover similar services. However, the Delegate was satisfied that Denversian adopted the BLACK SHEEP trade mark without knowledge of the BLACK SHEEP & Device trade mark of Di Lorenzo, because:

  • the businesses were substantially different (i.e. a café restaurant and a mobile coffee van, respectively;
  • the businesses operated in geographically distinct locations (i.e. Queensland and New South Wales);
  • Di Lorenzo had no plans to expand its business into the Queensland market; and
  • Denversian had established a reputation by use of the BLACK SHEEP trade mark in its local region.

The Delegate found that there was sufficient honest concurrent use provided by Denversian, and that Di Lorenzo had failed to establish any ground of opposition. Costs were awarded to Denversian.

Di Lorenzo appealed this decision.

Appeal

The appeal filed by Di Lorenzo (which relied on Sections 58 and 58A, i.e. ownership of the trade mark) was filed out of time, however, following procedural orders to allow for an extension of time, the appeal proceeded.

The grounds were:

  • Denversian is not the owner of the trade mark ‘BLACK SHEEP’
  • Di Lorenzo have earlier use of the same/similar trade mark ‘BLACK SHEEP’;
  • Di Lorenzo first used the trade mark ‘BLACK SHEEP’ in September 2011 i.e. before Denversian in around December 2013; and
  • Di Lorenzo registered Trade Mark 1681212 ‘BLACK SHEEP’ on 16 March 2015 in Classes 30 and 43.

Evidence of Use

Di Lorenzo’s Evidence

An overview of Di Lorenzo’s evidence before the priority date of 16 March 2015 is as follows:

  • Bank statement – for “Mrs Dora Di Lorenzo & Mr Chris Di Lorenzo T/A Black Sheep Mobile Café” with a single opening deposit of $2000 dated 18 August 2011;
  • Supplier invoices – 9 third party supplier invoices during the period November 2011-March 2015 for food and beverage supplied addressed to “Black Sheep Mobile Café” or “blacksheep mobile café”. The payment withdrawal details are for “Mrs Dora Di Lorenzo” and Her Honour notes that they do not evidence any sales or supplies in the course of trade by any person under the BLACK SHEEP & Device trade mark, or “black sheep mobile café”;
  • Van signage and business cards – Di Lorenzo stated that a professional sign writing business placed the BLACK SHEEP & Device trade mark on the sides of their van and on business cards in July 2011. In evidence they provided colour artwork proofs dated 28 June 2011 of vinyl graphics, and an artwork proof for a proposed business card (example below). The proofs do not show the BLACK SHEEP & Device trade mark by itself. The artwork proofs also show the domain name blacksheep,cafe.com, however, there is no evidence that this domain was registered or used. Invoices related to the vehicle transfers and business card addressed to “Black Sheep Mobile Café” were also provide, but it is was not clear who made the payments;
  • Domain name – Di Lorenzo claimed that they hosted the bsmcafe.com.au domain name from 28 June 2011, however, there was no evidence of when the domain name was registered, in whose name or whether it was operated as a website promoting any trading activities under or by reference to the BLACK SHEEP & Device trade mark;
  • April 2013 webpage – there is single historical webpage capture from www.bsmcafe.com.au from 23 April 2013, which bears the “Black Sheep Mobile Café” logo. However, it did not evidence an existing trade channel.
  • Other evidence after the priority date of 16 March 2015 – this evidence included the purchase of the domain names black-sheep.com.au and black-sheep.net.au, and mobile numbers in June 2015, a trade mark application filed in August 2015 for the word BLACK1. This evidence was not sufficient to establish or support a claim to use of the BLACK SHEEP & Device trade mark, or the phrases black sheep” or “black sheep mobile café”. There was also a “to whom it may concern letter” from Di Lorenzo’s accountant. However, the claims made by the accountant do not constitute proof of trading activity.

In conclusion, the material relied on by Di Lorenzo had substantial evidentiary gaps and deficiencies. Her Honour was not satisfied that Di Lorenzo established that they had a commitment to offering to supply any of the services or goods claimed by the BLACK SHEEP & Device registration, the BLACK SHEEP mobile café logo, the phrase “black sheep” or “black sheep mobile café”, prior to 16 March 2015.

Denversian’s Evidence

An overview of Denversian’s evidence (by way of a witness statement and evidence from the owner and sole director, Ms Bressolles) is as follows:

  • Since August 2013, Denversian had operated a bistro under the name “Black Sheep Bistro” on the Gold Coast, in Queensland;
  • A business name registration was filed for “Black Sheep Bistro”, and Denversian’s accountant confirmed that “Denversian ATF Denversian Family Trust trading as Black Sheep Bistro” had filed the required Business Activity Statements and Trust Tax returns since 16 December 2013;
  • Facebook posts for the “Black Sheep Bistro” from 16 December 2013;
  • Marketing through online listings and reviews on well-known websites (e.g. Google, Good Food Gold Coast, TripAdvisor), large signage outside the restaurant, other signage, kerbside chalkboards, menus and flyers used in the restaurant and locally distributed through mail drops.

Ms Bressolles noted that she came up with the name honestly as she is the “black sheep” in her family, and there is a growing New Zealand population on the Gold Coast. She also indicated that she was not aware of the Di Lorenzo BLACK SHEEP & Device trade mark until mid 2015 after a search of the Australian Trade Marks Register.

Her Honour was satisfied that the evidence established honest, continuous and consistent use of the trade mark in the course of trade from 2013.

Grounds of Opposition

Sections 58 (not the owner)

Di Lorenzo failed that the first hurdle as they did not establish first use of the phrase “black sheep” or the BLACK SHEEP & Device trade mark in the course of trade.

They also needed to establish first use of a mark substantially identical to the opposed mark. In this regard, Her Honour noted that the device element within the BLACK SHEEP & Device trade mark substantially informs and affects the trade mark’s identity. It is an essential element and a dominant cognitive cue. It is also not an immediately recognisable image (i.e. not identifiable as a black sheep). The commonality of the word elements “BLACK SHEEP” is insufficient to convey and overall substantial identity. Accordingly, Her Honour found that the respective trade marks are not substantially identical.

Therefore, the s58 ground of opposition was unsuccessful

Di Lorenzo would also have had to establish that they had made first use in relation to services that are “the same kind of thing”. Her Honour commented that, in her view, “café services” and “coffee shop services” are the same of kind of thing; however, she considered restaurants, restaurant services, and bistro services not to be true equivalents.

Section 58A (first and continuous use)

Di Lorenzo did not establish first use of the BLACK SHEEP & Device trade mark (or any other trade mark) prior to Denversian (i.e. from 2013). Di Lorenzo also failed to show use of the BLACK SHEEP & Device trade mark (or any other trade mark) in the course of trade. Therefore, the s58A ground of opposition was unsuccessful

Her Honour also made the point that the prior use ground of opposition under s58A will only be established when there has been competing prior use in the same geographical area covered by the accepted application. In the present case, Denversian’s acceptance was limited to the State of Queensland, while Di Lorenzo’s claimed use was in Sydney, New South Wales. For this reason also, it could not succeed under this ground.

Decision

Di Lorenzo failed to establish either of the grounds of opposition, namely, s58 and s58A, and therefore, the appeal was dismissed.

Denversian’s Trade Mark 1720917 for BLACK SHEEP has since proceeded to registration.

Takeaway

This decision provides guidance on what types of evidence may, or may not, be sufficient to prove use of a trade mark in the course of trade. Use in the course of trade does not require an actual sale, however, there must be commercial dealing/offering to trade in the goods or services under or by reference to the sign.

The decision is also informative in demonstrating that a stylised trade mark incorporating a word and a design element may not be substantially identical to the word alone.