Notaras v Barcelona Pty Limited

• Jurisdiction: Australia Federal only
• Judge: ROBERTSON J
• Judgment Date: 10 January 2019
• Neutral Citation: [2019] FCA 4
• Court: Federal Court
• Date: 10 January 2019

FEDERAL COURT OF AUSTRALIA

Notaras v Barcelona Pty Limited [2019] FCA 4

Appeal from:	Irene Notaras v Barcelona Pty Limited [2018] ATMO 12
File number:	NSD 215 of 2018
Judge:	ROBERTSON J
Date of judgment:	10 January 2019
Catchwords:	TRADE MARKS – appeal from decision of delegate of the Registrar of Trade Marks – delegate held that appellant had failed to establish any of her grounds of opposition and that the respondent’s trade mark application could proceed to registration – appellant’s registered ATOMIC Word Mark in respect of coffee machines – appellant’s registered ATOMIC Device Mark in respect of stove top coffee makers – respondent’s application for registration of ATOMIC in respect of goods, including coffee cups, coffee, coffee beans, ground coffee and in respect of services, including retailing and wholesaling of coffee, coffee grinding, coffee roasting and cafes – whether respondent not the owner of the trade mark for the purposes of s 58 of the Trade Marks Act 1995 (Cth) – whether appellant abandoned property in common law trade mark – whether respondent’s trade mark substantially identical with, or deceptively similar to, appellant’s trade mark in respect of similar goods, being goods of the same description for the purposes of s 44 – whether respondent’s trade mark in respect of services substantially identical with, or deceptively similar to, appellant’s trade mark in respect of closely related goods, being goods closely related to the respondent’s services for the purposes of s 44 – whether honest concurrent use for the purposes of s 44 – whether appellant’s mark had acquired a reputation in Australia such that use of respondent’s mark would be likely to deceive or cause confusion for the purposes of s 60 – whether Court should allow registration of respondent’s mark subject to a geographical limitation to Western Australia
Legislation:	Trade Marks Act 1995 (Cth) ss 7, 10, 14, 17, 44, 55, 58, 60
Cases cited:	Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 351 ALR 436 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 Dunlop Aircraft Tyres Limited v The Goodyear Tire and Rubber Company [2018] FCA 1014; 134 IPR 220 Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR 1 McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 Winton Shire Council v Lomas [2002] FCA 288; 119 FCR 416
Date of hearing:	30 July - 31 July 2018
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	358
Counsel for the Appellant:	Mr C Burgess with Mr G Tsang
Solicitor for the Appellant:	Moulis Legal
Counsel for the Respondent:	Ms JM Beaumont
Solicitor for the Respondent:	Bird & Bird

ORDERS

		NSD 215 of 2018
BETWEEN:	IRENE NOTARAS Appellant
AND:	BARCELONA PTY LIMITED Respondent

JUDGE:	ROBERTSON J
DATE OF ORDER:	10 January 2019

THE COURT ORDERS THAT:

1. The appeal is dismissed.

2. Trade Mark Application No. 1686087 proceed to registration.

3. The appellant pay the costs of the respondent, as agreed or assessed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J:

Introduction

1. This appeal is from the decision of a delegate of the Registrar of Trade Marks dated 1 February 2018. The proceeding before the delegate was an opposition brought by Ms Irene Notaras, the present appellant, to the registration of Trade Mark Application No. 1686087 by Barcelona Pty Limited (Barcelona), the present respondent.

2. The delegate’s decision was that Ms Notaras had failed to establish any of the grounds of opposition nominated in her Statement of Grounds and Particulars and that Trade Mark Application No. 1686087 could proceed to registration.

3. The application, having a priority date of 8 April 2015, was as follows:

   Application Number:	1686087
   Filing Date:	8 April 2015
   Goods and Services:	Class 16: Bags of plastics for packaging food; bags of plastics for wrapping foodstuffs; packaging materials made of card or paper for use with food articles; paperboard trays for packaging food Class 21: Coffee cups; cups of paper or plastic; cardboard cups; heat insulated containers for beverages; containers for beverages; containers for food; heat retaining containers for food; isothermic bags for keeping foodstuffs cool Class 29: Prepared meals containing poultry, seafood, game or meat; prepared meals containing tofu or vegetables; prepared meals containing fruit; frozen meals containing poultry, seafood, game or meat; frozen meals containing tofu or vegetables; cooked meals containing poultry, seafood, game or meat; cooked meals containing tofu or vegetables; chilled meals containing poultry, seafood, game or meat; chilled meals consisting of tofu or vegetables; chilled meals containing fruit Class 30: Coffee; coffee beans; ground coffee; coffee products; preparations for making beverages (coffee based); flavoured coffee; instant coffee; unroasted coffee; decaffeinated coffee; mixtures of coffee; coffee substitutes; extracts of coffee for use as flavours in beverages; coffee-based beverages; prepared pasta meals; prepared meals containing rice; prepared meals containing noodles; prepared pizza meals; frozen pasta meals; frozen meals containing rice; frozen pizza meals; frozen meals containing noodles ; Class 35: Retailing of food and drinks; retailing and wholesaling of coffee and coffee based products (by any means); retailing and wholesaling of prepared meals, frozen meals, cooked meals and chilled meals (by any means) Class 40: Coffee grinding; coffee roasting Class 43: Cafes; cafe services; take away food and drink services; coffee bar and coffee house services (provision of food and drink); coffee shop services; mobile food and beverage services;...