FEDERAL COURT OF AUSTRALIA

Notaras v Barcelona Pty Limited [2019] FCA 4

ORDERS

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:

4    Ms Notaras is the owner of the trade marks listed in the table below.

5    Barcelona is a company based in Western Australia. It registered the business name “ATOMIC ESPRESSO” on 27 April 2004.

The statutory provisions

6    The relevant provisions of the Trade Marks Act 1995 (Cth) are as follows.

7    Use of trade mark

…

(4)    In this Act:

use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods).

(5)    In this Act:

use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.

…

10    Definition of deceptively similar

For the purposes of this 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 likely to deceive or cause confusion.

…

14    Definition of similar goods and similar services

(1)    For the purposes of this Act, goods are similar to other goods:

(a)    if they are the same as the other goods; or

(b)    if they are of the same description as that of the other goods.

…

17    What is a trade mark?

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

Note:     For sign see section 6.

…

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.

   Note 1:    For deceptively similar see section 10.

   Note 2:    For similar goods see subsection 14(1).

   Note 3:    For priority date see section 12.

Note 4:    The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

   Note 1:    For deceptively similar see section 10.

   Note 2:     For similar services see subsection 14(2).

   Note 3:     For priority date see section 12.

Note 4:     The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(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.

Note:     For limitations see section 6.

…

55    Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)    to refuse to register the trade mark; or

(b)    to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

…

58    Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note: For applicant see section 6.

…

60    Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)     because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

Note: For priority date see section 12.

The decision of the delegate

7    The delegate said, at [16], for the purposes of the s 44 ground of opposition he need only consider the Word Mark since if the s 44 ground of opposition failed with respect to the Word Mark it would also fail with respect to the Device Mark. This was said to be because the Device Mark was “less similar” to the proposed trade mark than the Word Mark.

8    The delegate set out s 14, the definitions of “similar goods” and “similar services” and relevant principles from McCormick & Co Inc v McCormick [2000] FCA 1335; 51 IPR 102 at [17].

9    At [21], the delegate set out from Braintree Communications Pty Ltd v Paypal, Inc [2017] ATMO 90; 128 IPR 497 at [28]-[29] a summary of the legal principles applicable when determining whether the services for which a trade mark was sought to be registered were closely related to the goods for which a word mark was registered.

10    The delegate then broke down Barcelona’s goods and services to make a number of separate comparisons, as follows.

a) Are Barcelona’s goods in Class 21 similar to Ms Notaras’ goods?

11    The delegate noted that Ms Notaras’ goods were limited to machines used to make coffee, and in particular espresso. He said such products were generally specialist machines sold from either specialist retailers or general whitegood stores. In comparison, Barcelona’s goods in class 21 were goods for holding coffee (and other food and beverages) and keeping it at a consistent temperature. This included coffee cups, thermoses and other insulated mugs. Such products were of a different nature, used for a different purpose and generally sold through different trade channels such as directly through coffee retailers. The goods may be complementary but were not similar.

b) Are Barcelona’s goods in Class 30, in particular coffee and coffee beans, similar to Ms Notaras’ goods?

12    The delegate said a subset of Barcelona’s class 30 goods and Ms Notaras’ goods were related since Ms Notaras’ goods used coffee beans to produce coffee. However this did not necessarily imply that the goods were similar. The products were of a different nature – one being a consumable and one being a whitegood. The delegate referred to the decision in Cantarella Bros Pty Ltd v Sunbeam Corp Ltd [2007] ATMO 3 in which the Registrar concluded that ice cream and gelato making machines were not similar goods to ice cream and gelato. The delegate considered that similar reasoning applied in this case. The trade channels of the goods were quite different, with Barcelona’s goods in class 30 being sold through a coffee shop or supermarket retailer, while Ms Notaras’ goods were sold through a whitegoods retailer or a specialist store. The manner in which they were purchased was quite different, with Barcelona’s goods in class 30 being regularly purchased like any other consumable while Ms Notaras’ goods were a significant, one-off purchase. In Cantarella Bros the delegate stated “I can not expect the average consumer to go shopping for an ice cream but return home with an ice cream maker instead – and even if they did, I am not satisfied that they would make any connection between the trade origin of the two.” The delegate considered the same logic applied here and found that Ms Notaras’ goods and Barcelona’s class 30 goods were not similar.

c) Are Barcelona’s services in Classes 35, 40 and 43 closely related to Ms Notaras’ goods?

13    With respect to the third question, the delegate said Barcelona’s services in classes 35, 40 and 43 were services normally provided by a coffee shop, restaurant or similar commercial operation. In the “Sizzler” case (Sabra International Pty Ltd v Sizzler Restaurants International Inc (1991) AIPC 90-746) the Registrar found that restaurant services were not services that were closely related to class 30 food items. While the comparison was different in the present case, with Ms Notaras’ goods being coffee machines in class 21, the logic remained the same. It was highly unlikely, the delegate said, that a coffee shop or restaurant would be involved in the manufacture and/or retail of a machine for making coffee and consumers would not perceive it to be the case. At best Ms Notaras’ goods were products used by restaurants and coffee shops to supply their services, but merely being an input into the supply of a service did not render a good closely related to that service. The delegate did not find Ms Notaras’ goods to be closely related to Barcelona’s services.

14    The delegate said he failed to identify any of Barcelona’s goods and services that were similar or closely related to the goods for which the Word Mark was registered. The delegate found that Ms Notaras had failed to establish the ground of opposition under s 44 of the Trade Marks Act. It was therefore not necessary to consider the question of honest concurrent use under s 44(3)(a).

d) Are Barcelona’s Goods in Classes 16 and 29, similar to Ms Notaras’ Goods?

15    The delegate said this question could be answered easily: No.

16    The delegate next considered s 58A and, at [30], found it did not apply.

17    The delegate then considered s 43. He said, at [35]-[36], that the requisite confusion or deception must arise from a connotation within Barcelona’s proposed trade mark itself rather than as a result of the reputation Ms Notaras may be able to demonstrate in her trade mark or confusion between Barcelona’s proposed trade mark and Ms Notaras’ trade marks.

18    As a consequence, the delegate was not satisfied that if Barcelona’s proposed trade mark was used in relation to its goods and services, there was an apparent connotation within it which was likely to result in deception or confusion. The delegate found that the ground of opposition under s 43 had not been established.

19    The delegate then considered s 58, whether Barcelona was the owner of its proposed trade mark.

20    At [38], the delegate said it was now well established that in order to succeed under this ground of opposition an opponent must establish three factors. These were:

•    that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’): Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495;

•    that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was (sic) used (‘the second factor’): Re Hicks’ Trade Mark (1897) 22 VLR 636; and

•    that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’): Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

21    At [40], the delegate found that Ms Notaras had used the trade mark as a trade mark from 1965 in respect of coffee machines. The first and third factors were satisfied. However, in order for Ms Notaras to succeed under this ground it was necessary to show that the second factor was satisfied, namely that Barcelona’s goods and services were the “same kind of thing” as the goods Ms Notaras used the trade mark for. The delegate referred to the discussion in respect of the s 44 ground of opposition in which he found that Ms Notaras’ goods were not goods of the same description or closely related services to any of Barcelona’s goods and services. As the test for “the same kind of thing” was a narrower test than the test required under s 44 of the Trade Marks Act, the delegate found that Barcelona’s goods and services were not the “same kind of thing” as the goods for which the trade mark(s) relied upon by Ms Notaras were used. The delegate held that Ms Notaras had failed to establish the ground of opposition under s 58.

22    In relation to s 60, the delegate said, at [50], he was satisfied by reason of Ms Notaras’ use of the Word Mark for over 50 years and the significant evidence of historical advertising and free media undertaken during that time that the trade mark was likely to have acquired some limited reputation in relation to coffee machines and concentrated on the Eastern states of Australia. However, the delegate said, it was not sufficient that Ms Notaras merely established that her trade mark had a reputation. The delegate said he must also be satisfied that because of that reputation, use of Barcelona’s proposed trade mark would be likely to deceive or cause confusion. At [56], the delegate said that while the Word Mark and Barcelona’s proposed trade mark were identical, Barcelona’s goods and services were different to the coffee machines which Ms Notaras had established a reputation in. He referred to his conclusions in respect of the s 44 ground of opposition. Furthermore he noted that Barcelona’s proposed trade mark was limited geographically to Western Australia. Ms Notaras was based in Sydney and it was apparent that most of the sales and advertising of Atomic coffee machines had taken place along the Eastern Seaboard. There was no evidence that Ms Notaras had made any sales in Western Australia prior to the priority date. Given the limited reputation Ms Notaras had in the ATOMIC mark, the fact that the reputation was concentrated in the Eastern Seaboard, the absence of any evidence of sales, advertising or general reputation in Western Australia at the priority date, and the difference in the respective goods and services, the delegate considered it unlikely that because of the reputation of the Word Mark, the use of Barcelona’s proposed trade mark for its goods and services would be likely to deceive or cause confusion. The delegate found that Ms Notaras had failed to establish the ground of opposition under s 60.

23    The delegate concluded that Ms Notaras had failed to establish any of the grounds of opposition she nominated in her Statement of Grounds and Particulars. The delegate decided that Trade Mark Application No. 1686087 may proceed to registration.

The appeal

24    The grounds relied on by the appellant, as amended, were as follows:

Prior reputation (section 60)

1.    Registration of the Trade Mark Application should be refused under s 60 of the Trade Marks Act 1995 (Cth)(Act) because:

(a)    another trade mark had, before the priority date of the Trade Mark Application, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the ATOMIC trade mark that is the subject of the Trade Mark Application would be likely to deceive or cause confusion.

        Particulars

(A)    The Appellant has, since 1964, extensively imported, promoted, sold and serviced coffee machines (including, in many cases, by supplying coffee for use in those machines) by reference to the ATOMIC trade marks that are referred to in paragraph 2 below.

(B)    As a result of the activity referred to in sub-paragraph (A) above, the Appellant’s ATOMIC trade marks had, by the priority date of the Trade Mark Application, acquired a reputation in Australia.

(C)    The Respondent well-knew of the reputation in the Appellant’s ATOMIC trade marks at the time it adopted for use, and applied to register, the ATOMIC trade mark that is the subject of the Trade Mark Application. The clear and strong inference is that the Respondent adopted the ATOMIC trade mark for purposes that included appropriating a benefit from that reputation.

(D)    Because of the reputation in the Appellant’s ATOMIC trade marks, the use of the ATOMIC trade mark that is the subject of the Trade Mark Application would be likely to deceive or cause confusion.

Prior registered trade marks (s 44)

2.    Registration of the Trade Mark Application should be refused under s 44 of the Act because:

(a)    the ATOMIC trade mark that is the subject of the Trade Mark Application is substantially identical with, or deceptively similar to, the Appellant’s prior trade mark registrations for ATOMIC; and

  (b)    the Trade Mark Application seeks registration for:

(i)    goods that are similar goods; and/or

(ii)    services that are closely related to,

the goods that are covered by the Appellant’s prior trade mark registrations for ATOMIC.

Particulars

(A)    The Appellant relies upon its prior registered trade mark nos. 791650 for ATOMIC and 1281511 for ATOMIC (Device), and refers to the goods specified in class 21 thereof.

3.    …

Respondent not trade mark owner (s 58)

4.    Registration of the Trade Mark Application should be refused, on the ground that the Respondent is not the owner of the trade mark.

Particulars

(A)    The Appellant first used the ATOMIC trade mark in Australia in respect of:

(i)    coffee machines;

(ii)    coffee grind samples supplied together with coffee machines;

(iii)    ground coffee supplied in cans; and

(iv)    fresh made cups of coffee,

before the priority date of the Trade Mark Application and before the Respondent first commenced using the ATOMIC trade mark for coffee and coffee related goods and services. See further the affidavit of Irene Notaras sworn on 23 May 2018 at paragraphs [25]-[37] and [45]-[46].

No geographic limitation to Western Australia appropriate

5.    It would not be appropriate to permit registration of the Trade Mark Application subject to a geographical limitation restricting the Respondent’s rights to Western Australia. Registration should be refused outright.

Particulars

(A)    The Appellant’s ATOMIC trade mark enjoys a reputation in the whole of Australia, including in Western Australia.

(B)    The Appellant has used, and intends to continue to use, her ATOMIC trade mark in Western Australia.

(C)    There is frequent travel between Western Australia and other states and territories in which the Appellant’s ATOMIC trade mark has a reputation.

25    There was also an amended notice of contention, as follows:

The Respondent contends that the decision of the Delegate of the Registrar of Trade Marks (the Delegate) in Irene Notaras v Barcelona Pty Limited [2018] ATMO 12 given on 1 February 2018, to allow the registration (sic) Australian trade mark application no. 1686087 “ATOMIC” in Classes 16, 21, 29, 30, 35, 40 and 43 (Trade Mark) should be affirmed on grounds other than those relied on by the Delegate.

The Respondent does not seek to cross-appeal from the Decision.

Grounds relied on

1.    If, contrary to the Delegate’s reasoning and the Respondent’s contentions, the Court finds that the goods and services in respect of which the Trade Mark is sought to be registered, are:

a.    similar goods; or

b.    closely related services,

to the goods covered by the Appellant’s registered trade mark nos. 791650 “ATOMIC” and/or 1281511 (Device), then the Respondent contends that the decision of the Delegate should be affirmed, and the Trade Mark should proceed to registration, on the ground of honest concurrent use pursuant to s 44(3)(a) and/or because of other circumstances pursuant to s 44(3)(b) of the Trade Marks Act 1995 (Cth).

        Particulars

i)    The Respondent commenced using the Trade Mark in relation to at least café services, coffee and paninis in about May 2004.

ii)    The Respondent has been using the Trade Mark in relation to cafés, restaurants and related services, including the retailing of food and drinks, and in relation to goods including coffee beverages and coffee cups since at least July 2005.

iii)    The Respondent has been using the Trade Mark in relation to ground coffee, coffee beans and other coffee products since at least 2011.

iv)    The application for the Trade Mark is subject to the endorsement that registration is limited to the state of Western Australia.

2.    If, contrary to the Delegate’s reasoning and the Respondent’s contentions, the Court finds that the Respondent is not the owner of the Trade Mark in relation to any good or service, then the Respondent contends that the decision of the Delegate should be affirmed, and the Trade Mark should proceed to registration, on the ground of honest concurrent use.

Particulars

i.    The particulars to paragraph 1 are repeated.

26    The parties provided a list of issues as follows:

A    Section 58 ground (ownership)

1.    Has Ms Notaras established use of the word ATOMIC as a trade mark in Australia in relation to ground coffee supplied in ½ pound cans before 8 April 2015, the priority date of the Barcelona application (priority date)?

2.    Has Ms Notaras established use of the word ATOMIC in Australia as a trade mark in relation to ground coffee samples before the priority date?

3.    If Ms Notaras establishes prior use in relation to ground coffee, are any other class 30 goods designated in the Barcelona application “the same kind of thing” as ground coffee?

4.    If the only prior use established is the use referred to in paragraph 1 above, did Ms Notaras abandon the ATOMIC mark in relation to ground coffee, before the priority date?

…

7.    If first use for the purpose of s 58 is established by Ms Notaras in relation to any good or service, is s 58 subject to the doctrine of “honest concurrent use”, such as to permit registration of the Barcelona mark with the geographical limitation to Western Australia?

B     Section 44 ground (prior registered mark)

8.    Has Ms Notaras established that any of the opposed Barcelona goods are the same or of the “same description” as the class 21 coffee machine goods that are designated in Ms Notaras’ prior registration for the ATOMIC word mark?

9.    Has Ms Notaras establish that any of the opposed Barcelona services are “closely related” services to the class 21 coffee machine goods that are designated in Ms Notaras’ prior registration for the ATOMIC word mark?

10.    If the answer to question 8 or 9 above is ‘yes’ in relation to any good or service, has Barcelona established “honest concurrent use” within the meaning of s 44(3)(a)?

11.    If the answer to question 8 or 9 above is ‘yes’ in relation to any good or service, has Barcelona established that “other circumstances” make registration proper within the meaning of s 44(3)(b)?

C    Section 60 (prior reputation)

12.    Has Ms Notaras established that the ATOMIC mark had acquired a reputation in Australia amongst a significant section of the relevant public as at the priority date?

13.    Has Ms Notaras established that because of any reputation referred to in paragraph 12, the use of the Barcelona mark for any designated good or service, would be likely to deceive or cause confusion?

…

E     Discretion and Geographical limitation

15.    Question not agreed:

a.    Appellant’s question: Should the Court allow registration of the Barcelona application having regard to the extent (if any) to which any ground of opposition has been established and subject to imposing a geographical limitation to Western Australia?

b.    Respondent’s question: Should the Court allow registration of the mark the subject of the Barcelona application in respect of all or any goods and services, having regard to the extent (if any) to which any ground of opposition has been established and subject to the geographical limitation to Western Australia?

The evidence

The evidence for Ms Notaras

27    Ms Irene Notaras affirmed three affidavits, dated 23 May 2018, 27 July 2018 and 29 July 2018. She was cross-examined.

28    In her first affidavit, Ms Notaras deposed that she operated the business Bon Trading Company (Bon Trading). Bon Trading had imported, promoted and sold coffee machines under the ATOMIC marks in Australia since approximately May 1964. Bon Trading had also:

(a)    sold spare parts and provided repairs and servicing for the Atomic machines; and

(b)    promoted, sold and supplied coffee and accessories (for example, t-shirts) under the Word Mark and/or the Device Mark.

29    She was, and had always been, the person who managed and conducted Bon Trading’s business. Initially, she operated Bon Trading as a sole trader. She currently operated the business through the legal structure of a small company, Liflo Pty Ltd (Liflo). She was the sole director and secretary of Liflo and controlled all of Liflo’s activities, including its use of the ATOMIC marks.

30    Ms Notaras deposed to the history of Atomic machines in Australia, as follows.

31    The Atomic machines were originally produced by an Italian designer and inventor, Mr Giordano Robbiati, together with persons and/or companies associated with him. Mr Robbiati’s professional office was in Italy and called Brevetti Robbiati (Robbiati). Robbiati developed and commercialised the Atomic machines from the late 1940s onwards.

32    Bon Trading was appointed by Robbiati as the exclusive distributor of the Atomic machines in Australia in 1965. Ms Notaras annexed to her affidavit a copy of a letter from Mr Robbiati dated 15 September 1965 confirming the appointment.

33    After the appointment, Ms Notaras regularly visited Mr Robbiati in Italy (typically annually) and they discussed business and related matters. Ms Notaras was regularly a guest at Mr Robbiati’s home, and she considered herself his friend and colleague. Between 1965 and 1972, Ms Notaras worked with Robbiati to develop and improve the Atomic machines, including the milk frothing steam wand and its operation.

34    In the late 1960s, Ms Notaras designed and drafted a two-page instruction sheet for the Atomic machines. The instruction sheet was provided with the Atomic machines that Ms Notaras sold in Australia in the late 1960s.

35    Ms Notaras also designed and drafted an instruction booklet for the Atomic machines. I refer to this further at [51]-[52] below.

36    By about the mid-1970s, Ms Notaras deposed, she became Robbiati’s biggest customer, to the point where she was being shipped almost all Robbiati’s production of the Atomic machines each year. About that time, Mr Robbiati told her that sales in other parts of the world were small and insignificant. She recalled that he said words to the effect of:

Irene, I am not selling many machines anywhere else in the world, it is you and your Australian business that are keeping me going.

37    She annexed to her affidavit an undated letter that Mr Robbiati sent to her sometime around June 1972. The letter stated: “All Atomic machines which we are manufacturing now are for you.”

38    From the mid-1970s onwards, Ms Notaras deposed, she had an open order to Robbiati to send her all the Atomic machines that Robbiati produced. She annexed a copy of a bill of lading dated 14 February 1986, recording one of the many shipments of Atomic machines that Robbiati sent her. At that time, a carton of machines contained 20 Atomic machines, and she deposed that that particular shipment was for 540 machines.

39    By the late 1980s, Ms Notaras deposed, Mr Robbiati was elderly. It was apparent that he could not continue to operate his business in Italy for much longer. Ms Notaras deposed he said to her words to the effect of:

Keep the Atomic alive, keep it selling; carry it on. I want you to continue the business.

40    In approximately the late 1980s to early 1990s, Ms Notaras deposed, she purchased the original moulds required to manufacture the Atomic machines, together with other technical materials and supplier lists and customer lists from the Robbiati family.

41    In each year from that time until today, Ms Notaras deposed, she had caused the Atomic machines and parts for the machines to be manufactured in Italy. The Atomic machines were, and had been, manufactured for Bon Trading to her specifications by former employees or contractors of Robbiati, and persons trained by such former employees or contractors. She had then imported the Atomic machines and sold them in Australia. See, however, Ms Notaras’ evidence as to local assembly, at [90] below.

42    Currently, Ms Notaras deposed, Bon Trading sold the Atomic machines and spare parts directly to customers from a retail shop she operated in Woollahra, Sydney. Bon Trading had sold the Atomic machines and spare parts from her Woollahra store since she opened the store, in approximately 1968. In the past, Bon Trading had also sold the Atomic machines through major department stores and other retail outlets, including coffee roasting shops.

43    Bon Trading, Ms Notaras deposed, also sold the Atomic machines and spare parts directly to customers by mail or telephone order and online, through its website at http://www.atomiccoffeemachines.com.au and on eBay. Bon Trading had sold the Atomic machines and spare parts online since August 2007. Bon Trading also provided servicing and repair of the Atomic machines, and had done so since at least the late 1960s.

44    Ms Notaras then turned to the sale and distribution of the Atomic machines in Australia.

45    She deposed that Bon Trading had sold the Atomic machines in Australia in every year since 1964. She had not retained business records that enabled her to identify the exact number of Atomic machines sold.

46    However, Ms Notaras deposed, she knew from her work conducting Bon Trading’s business that:

(a)    throughout the 1970s and 1980s, Bon Trading sold approximately 2,000 to 3,000 Atomic machines per annum;

(b)    Bon Trading sold fewer Atomic machines in the years before then, and through the 1990s and 2000s.

In the absence of the relevant records of the business, I admitted this material subject to weight.

47    Apart from current stock, Ms Notaras deposed, Bon Trading had sold every Atomic machine that it had imported from Italy since 1964.

48    During the period from the late 1960s/early 1970s to the late 1980s, Ms Notaras deposed, she engaged a Perth based distributor (Mr George Samios) to sell the Atomic machines in Western Australia. She recalled supplying Mr Samios with the Atomic machines during this period, for him to on-sell in Western Australia. Ms Notaras was unable to locate any business records that documented the distributorship relationship with Mr Samios, or how many Atomic machines Bon Trading supplied to Mr Samios. The distributorship arrangement ceased in around the late 1980s, when Mr Samios passed away.

49    Ms Notaras deposed that throughout the same period, and continuing to the present, Bon Trading had also sold the Atomic machines and spare parts directly to customers in Western Australia. This had been done by phone and mail orders and (from 2007 onwards) online. She annexed a small sample of copies of orders and/or sales receipts for Atomic machines or spare parts that Bon Trading had sold directly to customers in Western Australia.

50    Ms Notaras’ affidavit then turned to the supply of coffee under the ATOMIC trade mark.

51    She deposed that for at least the past four decades, Bon Trading had provided each person who had purchased an Atomic machine with an instruction booklet. She herself had inserted, and caused her staff working under her supervision to insert, the instruction booklet inside the box packaging in which each Atomic machine had been supplied over that period. She had not changed the instruction booklet over time, because she considered its “vintage” style complemented the long-standing history of the Atomic machine.

52    Since the instruction booklet was first printed, Ms Notaras deposed, it had always been her practice to include in each instruction booklet a small sample bag of finely ground coffee. She had personally stapled, and caused her staff to staple the sample bag to the page numbered 2 of each instruction booklet. She had always included the coffee sample bag in the instruction booklet, because it was important that purchasers of the Atomic machine used coffee of the same (fine dimension) grind as the sample for the best results. The relevant page of the instruction booklet stated: “The GRIND of COFFEE to be used must be IDENTICAL to that contained in sample” and underneath the small clear plastic bag, which contained a teaspoon or less of ground coffee, was stated: “Sample of grind”.

53    At [28] of her first affidavit as qualified by her second affidavit, Ms Notaras deposed that she, and staff working under her supervision, had prepared the coffee sample bags by purchasing coffee beans of various roasts, grinding them down to the correct size at the Woollahra shop and placing the ground coffee into small plastic sample bags. To clarify that statement, Ms Notaras deposed that sometimes the coffee that she and her staff had ground down and placed into the sample bags had been given to her by coffee roasters.

54    Ms Notaras deposed that during the period between the mid-1960s and the 1970s, Bon Trading also sold ground coffee in small (½ pound net) cans. Bon Trading sold the ½ pound coffee cans direct to customers. In addition, every customer who bought an Atomic machine direct from Bon Trading was given one of the coffee cans free. There was little in the way of vacuum packaged coffee then, she deposed, unlike today.

55    She did not now remember the exact year that Bon Trading first sold the ½ pound coffee cans. She annexed a copy of an order form that Bon Trading received for 12 of these coffee cans on 27 May 1972. She also annexed a copy of a bundle of mail orders that Bon Trading received for the coffee cans in the period between 1968 and 1972. During the 1960s and 1970s she remembered supplying ½ pound cans of coffee under orders like those. She was operating Bon Trading as a sole trader during that period. She had not retained business records documenting all such sales.

56    The coffee she supplied in the ½ pound cans was roasted and ground by a company called Andronicus. She personally chose to sell Andronicus coffee, because she liked its taste. She supplied Andronicus with Atomic machines (which Andronicus on-sold) and Andronicus supplied coffee that was finely ground to the size appropriate for use in the Atomic machines. She regarded Andronicus as the leading coffee roaster at that time.

57    Ms Notaras deposed that the ½ pound coffee cans that Andronicus supplied to her were blank (unmarked) on their surface. She printed paper labels, which she cut into strips and wrapped around the cans and glued to the cans. She annexed to her affidavit a black and white copy of the label that she recalled cutting into strips and wrapping around the ½ pound cans. It bore the Word Mark in lower case. She had been unable to locate in her records any of the actual coffee cans or original labels themselves. She exhibited to her affidavit an original coffee can label misprint that she had been able to locate in her records. She also exhibited a photograph of the coffee can, taken for promotional purposes sometime in the 1970s or 1980s.

58    At some stage (to the best of her recollection, it was the mid to late 1980s) Andronicus was bought out by another business, and ceased supplying coffee, including to Bon Trading. For a short period before Andronicus was bought out, Andronicus supplied Bon Trading with larger coffee cans (with a heavier weight of one pound) that bore its own label. When Andronicus was bought out, Ms Notaras deposed, she was unable to find a suitable alternative supplier.

59    Since Andronicus was bought out, Ms Notaras deposed, it had always been her intention to resume selling ground coffee under the Word Mark. In her opinion, coffee machines and coffee went together “hand in hand”. She had always thought it desirable, from a business perspective, for Bon Trading’s business in the Atomic machines to be complemented by ATOMIC branded ground coffee.

60    In May 2005, Ms Notaras registered the business name ATOMIC COFFEE in Liflo’s name. She annexed to her affidavit a copy of that business name registration. She deposed that her intention when she registered the business name was to resume selling ATOMIC branded ground coffee traded through Liflo, using that business name and the Word Mark. She deposed that this remained her intention today.

61    Ms Notaras deposed that in addition to registering the ATOMIC COFFEE business name, before and after 2005, she had investigated various different coffee blends, coffee roasters and coffee suppliers with the objective of resuming the sale of ATOMIC branded coffee. For example, in 2011, 2015 and 2017, she attended the Host Exhibition in Milan, Italy. She regarded the Host Exhibition to be the leading Italian coffee exhibition. While she was at each Host Exhibition, she sampled many different coffee types and investigated potential coffee suppliers. She annexed to her affidavit a copy of some emails between her and a supplier whom she met, and identified as a potential supplier, at the Host Exhibition in 2011: see further [105] below.

62    Ms Notaras deposed that in around the early 1990s, she also bought her own coffee roaster. However, she was distracted by caring for her elderly mother, who was unwell in that period, and she never got around to getting the roaster operating. She no longer had that roaster. She deposed that she had not yet decided whether she would buy another roaster, or source roasted coffee from Italy, when she resumed selling coffee under the Word Mark. She deposed that she aimed to resume selling coffee in the next six months.

63    Ms Notaras deposed that from no business to begin with, she considered that she had built up a unique, niche market for the Atomic machine with the ATOMIC brand, based substantially on promotion, teaching and service. She deposed that she was aware from her work operating the Bon Trading business that in providing a personalised service in what was essentially a niche market business, it was essential that she made a personal appearance in the media to not only promote the equipment, but most importantly, to educate customers as to this unique and distinctive method of making rich, aromatic coffee.

64    She deposed that since 1965 she had promoted the Atomic machines on television, via interviews, at various shows and exhibitions, in the press, via in store demonstrations and the like as well as magazines, newspapers and other periodicals. She gave details and examples of such promotion.

65    Initially, she established her business in Balmain in Sydney. In about 1968 she relocated to her present Woollahra address. From those premises, she had been selling the Atomic machines and spare parts up until the present time, as well as providing servicing facilities. The Atomic machines were also sold in each outlet of the major department stores across Australia in the 1970s until the late 1980s, being David Jones, Grace Brothers, Farmers and Myers, as well as other large retailers and major coffee roasting shops.

66    In order to promote the Atomic machines in the Australian market, Ms Notaras deposed, she initially advertised in newspapers and also did home demonstrations. She, together with staff, also demonstrated the product at the Royal Easter Show in Sydney for many years and other exhibition venues.

67    Ms Notaras listed some of the larger outlets to which, she deposed, Bon Trading had supplied the Atomic machines over the years, in addition to department stores:

(a)    Andronicus Coffee;

(b)    Harris Coffee;

(c)    ASCO Coffee;

(d)    Coffex Coffee;

(e)    Cremorne Coffee and Tea;

(f)    J & C Coffee Centre;

(g)    Grinders Hotel and Cafe Supplies;

(h)    Grinders Coffee;

(i)    Hotel and Cafe Supplies in Perth and South Australia;

(j)    Lucia’s Pizza Bar;

(k)    Nock & Kirby’s;

(l)    Renoir’s Coffee Shops;

(m)     Renita Espresso Equipment;

(n)    Charles Vella;

(o)    Coffee Plus;

(p)    Chatterbox; and

(q)    Electro Centre.

68    During Thursday through to Saturday in the 1970s and 1980s, Ms Notaras deposed, she and demonstrators hired by her attended the kitchenware departments of Farmers and Grace Brothers retail stores in the city of Sydney and other major shopping centres to promote the Atomic machines and the ATOMIC brand. She personally attended in the order of hundreds of demonstrations during that period.

69    She deposed that it was the usual practice during those demonstrations to make free cups of coffee with the Atomic machine for customers and potential customers to sample. She herself made and handed out cups of coffee to customers. She exhibited to her affidavit an original point of sale promotional stand from that period. The Atomic machine was displayed in that stand at the department and shopping store demonstrations. She deposed that it was also displayed in that stand in the window of the Woollahra shop up until the previous week.

70    Ms Notaras deposed to the sale packaging in which Atomic machines had been sold since 1964. She annexed a copy of a photograph of the packaging. She deposed that all Atomic machines sold in Australia had displayed the Word Mark and the Device Mark on the machine itself.

71    Ms Notaras deposed that in the 1970s and 1980s she was asked by various television people to be interviewed with the Atomic machine and gave special interviews on Sydney television, as well as in Canberra, Melbourne, Wollongong, Brisbane, Adelaide and other various centres. It was very much a one to one type of marketing and selling activity during that period.

72    She also produced a television advertisement that was broadcast nationally, including to Western Australia, on channels 7, 9 and 10. She annexed to her affidavit a copy of a photograph taken of the spine of the commercial tape that recorded the television advertisement. The television commercial was broadcast in the 1980s and 1990s. A video of the television commercial had been available on YouTube’s website at https://m.youtube.com/watch?v=Zp8eCxPlebY&feature=youtu.be since 9 August 2013.

73    She deposed that in 1982 she produced a demonstration video recording of how to make coffee using the Atomic machine. This video had been available on YouTube’s website at http://www.youtube.com/watch?v=GgPhg9SwkGU since July 2011.

74    She annexed to her affidavit a printout that recorded the current YouTube entry for the television commercial and for the video.

75    Ms Notaras deposed that it had been her practice to provide a copy of a business card to potential customers interested in purchasing the Atomic machines since at least the 1970s. She annexed a copy of her current business card, which she had used since at least the 1990s.

76    She deposed that the Atomic machines had been promoted in many different print advertisements and print feature articles over the years. She set out and annexed some examples of this, dating from May 1964 to 2014.

77    She also annexed to her affidavit letters she had received, and continued to receive, from satisfied customers, together with some example responses from Bon Trading.

78    She annexed a copy of an example customer invoice for the Atomic machine, dated 6 July 1999. She deposed that the present retail price of the Atomic machines was $575.00.

79    Ms Notaras deposed that from approximately 1999 to the present, she had not carried out much advertising and promotional work. Ms Notaras’ thinking was that she had not done so because it had been her assessment that the reputation of the ATOMIC brand in the marketplace was sufficiently strong that she was able to carry on selling and servicing the Atomic machines, without the need for engaging in any promotional activity. In addition, owners of Atomic machines in Australia were now her “demonstrators”. They made coffee using the Atomic machines for their family and friends. This led to sales by reference and word of mouth.

80    From time to time, she deposed, Bon Trading received requests from various media outlets to loan an Atomic machine for publications, television and other publicity. She annexed a bundle of copies of some examples of these requests. She lent the Atomic machine as requested in each of those examples.

81    Ms Notaras deposed that she caused the Atomic website www.atomiccoffeemachines.com.au to be set up in 2013. Before then, she promoted the Atomic machines, parts and accessories using the website www.bontradingco.com.au. She annexed to her affidavit some printouts that illustrated current website content. She also annexed some printouts from the Wayback Machine’s “web archive” of the Atomic website, as it appeared on 21 May 2013 and 14 April 2013. She deposed that she recognised these pages as displaying content that appeared on the website at that time.

82    She annexed a printout of Bon Trading’s eBay information on eBay’s website https://www.ebay.com.au/usr/bontrading. The entry recorded that Bon Trading became an eBay member in August 2007.

83    Ms Notaras deposed that since 2005 she had sold Atomic branded merchandise in her shop in Sydney by mail or phone order and online throughout Australia, including to Western Australia. She annexed to her affidavit a printout from the Atomic website that illustrated the merchandise she currently sold. She also annexed a printout dated 4 September 2012 of the old website at www.bontradingco.com.au. The printout illustrated Atomic merchandise that she was selling in 2012.

84    Ms Notaras deposed that she first became aware of the respondent and its business in or around July 2016, when she saw the respondent’s trade mark application advertised by IP Australia. She decided to oppose the application.

85    She deposed that she was very concerned that:

(a)    The respondent had adopted, and now sought to register, the ATOMIC trade mark for the purpose of appropriating, and benefiting from, the reputation and goodwill that she had developed in the ATOMIC brand through decades of hard work and investment.

(b)    The respondent’s use of the ATOMIC trade mark the subject of the Application for coffee and coffee related goods or services would cause consumers to be confused, misled or deceived into believing the respondent’s coffee and coffee related goods or services were provided by, or licensed by, or somehow associated with, her business and/or the Atomic machines.

(c)    The reputation and goodwill of her business and the Atomic machines would be damaged by the respondent’s use of the ATOMIC trade mark for coffee and coffee related goods or services.

(d)     If the Respondent obtained registration of the Application, the respondent could rely on that registration to try and prevent Bon Trading from supplying coffee samples with the Atomic machines and/or selling or supplying ATOMIC branded coffee.

I admitted this material as limited to Ms Notaras’ thinking and state of mind, and subject to relevance.

86    Ms Notaras deposed she was aware of registered Australian Trade Mark No. 1040677, owned by Suntory Coffee Australia Limited (Suntory) for the trade mark ATOMIC in relation to goods including coffee. She deposed she had decided to file an application to the Registrar of Trade Marks for that registration to be removed from the Register for non-use. To her knowledge, no ATOMIC branded coffee had ever been sold by Suntory in Australia.

87    Ms Notaras’ second affidavit, affirmed 27 July 2018, concerned certain financial statements and other documents for the period between 2008 and 2015 the subject of a notice to produce.

88    In the parts of that affidavit which were read or tendered, Ms Notaras deposed that in the 2013-14 and 2014-15 financial years, she operated the Bon Trading business through Liflo. It was not possible for her to identify the exact proportion of Liflo’s income in those years that was attributable to the sale of the Atomic machines by Liflo, because she had never kept a separate account or ledger of the number of ATOMIC machines that Liflo sold. However, she was the sole director of Liflo, and she worked in the Bon Trading Woollahra shop on a full time basis. She was aware from this work that over half of the income that Liflo generated in these years was derived from the sale of Atomic machines. She said this because the Atomic machines were the highest price goods that Bon Trading sold, and she had been personally involved in their sale.

89    She exhibited to this affidavit examples of shipping invoices. One such document was a copy of a receipt that recorded a shipment of goods to Bon Trading dated sometime in 2011 (it was, she said, difficult to read the month stamped in the bottom right hand corner). She recognised the goods the subject of the shipment to be 590 kilograms of original parts for the Atomic machines (the machines were presently finally assembled in Australia). Each machine weighed 2.03 kg. This shipment therefore enabled the assembly of about 290 Atomic machines. The original parts the subject of the shipment were assembled into Atomic machines and sold.

90    A second document was a copy of a further receipt of goods shipped to Bon Trading dated 5 October 2011. She deposed that she recognised the goods the subject of the shipment to be 274 original parts for the Atomic machines (identified in the shipping receipt as “Atomic coffee machine and jugs”). Again, Ms Notaras deposed, the original parts the subject of the shipment were assembled into Atomic machines and sold.

91    Ms Notaras deposed that she operated Bon Trading as a sole trader during the 1970s and the 1980s, and she was personally involved in the sale of the Atomic machines. That is, she and assistants working under her supervision wrote tax receipts into the books that were shown in the photographs annexed to her affidavit, accepted payments from customers, and handed customers the Atomic machines, or sent them to customers by mail. While it was impossible for her to remember the exact number of Atomic machines that she sold in each year during that period, it was her recollection that she sold at least 2,000 to 3,000 Atomic machines each year during that period. I admitted this evidence as to the number of Atomic machines sold each year but subject to weight.

92    Ms Notaras deposed that Bon Trading had sold the Atomic machine to consumers in all States and Territories of Australia. She annexed a copy of at least one sales invoice for the supply of an Atomic machine or part to each of, she deposed: Victoria, New South Wales, South Australia, Queensland, and the Australian Capital Territory. There was also an additional invoice in the bundle from Western Australia before April 2015. She had not been able to locate invoices for the Northern Territory or Tasmania. However, over the years, she deposed, she could recall personally causing Atomic machines to be sent to both the Northern Territory and Tasmania. In the absence of more comprehensive records of the business, I admitted this material subject to weight.

93    Ms Notaras annexed to her second affidavit email communications by her to her former accountant on 25 July 2018 concerning the production of records in answer to a notice to produce, and her former accountant’s reply to her solicitors, dated 27 July 2018, stating in part, with reference to Ms Notaras: “This lady is a liar and a thief.” The former accountant was Ms Notaras’ accountant for 15 to 20 years up to 2013. I refer to this material further at [289] below.

94    Ms Notaras’ third affidavit, affirmed 29 July 2018, annexed income tax returns and financial statements for Liflo and need not be further considered.

95    Ms Notaras accepted in cross-examination that from about the 1980s Australians had become increasingly interested in coffee. Since that time Sydney and Melbourne had been known for the availability of good coffee. One such good coffee brand that was well known in about the 1970s and the early 1980s was Andronicus.

96    She accepted that over the last 10 or 15 years the domestic coffee machine market had become much more competitive than it was when she first started business. She was asked whether since about 2005 there had been many more coffee machines for a domestic consumer to choose from than there were. Ms Notaras’ answer was that there were many electric coffee machines, but they came and went, and there were not many stovetop machines available on the market. In the main they were ATOMIC and Bialetti.

97    Ms Notaras agreed that over the last five years Bon Trading had increased its sales of Bialetti coffee makers and the price ranged from $35 to about $77 retail. She also agreed that Bon Trading had sold Zacconi machines over the last six or seven years and that its retail price on special was $950. Its ordinary price was about $1100.

98    Ms Notaras agreed that the Zacconi machine was more expensive than the Atomic machine and ultimately accepted that, contrary to her affidavit, the Atomic machines were not the highest priced goods that Bon Trading sold.

99    She agreed that since about the 1980s, good coffee beans and ground coffee had been available at least in Sydney and Melbourne.

100    She was not aware that Genovese was a highly regarded coffee roaster which made available in Australia coffee beans and ground coffee since before the 1970s.

101    She agreed that Grinders was a highly regarded roaster which supplied coffee and coffee beans in Australia since around 1962. She did business with Grinders, probably in the 1970s.

102    Ms Notaras agreed that the number of companies supplying coffee beans and ground coffee in Australia had increased since the 1970s.

103    It was put to her in cross-examination that if she had wanted to purchase coffee beans or ground coffee in the 1980s and 1990s she would have been able to find a supplier in Australia. She agreed. She also agreed she could have done that from suppliers in Australia or in Italy. It was put to her that it was not correct to say that she was unable to find a suitable alternative coffee supplier when Andronicus stopped supplying her. Her answer was that Andronicus was the only supplier with cans that were vacuum packed and she knew of nobody else that had that facility. She said there were suppliers, but she was posting out the coffee so it had to last. She said the Grinders coffee was not vacuum packed and there was no vacuum packed coffee available in the 1980s or 1990s which was suitable for the ATOMIC and which could be packed in the box with the machine.

104    It was put to Ms Notaras that if she had wanted to source coffee to sell to customers in the 1980s or the 1990s she could have done so. Her answer was it depended on the packaging because most of her customers were mail-order customers. She said that she knew of nobody that had suitable packaging. It was put to her that she did not spend any time trying to find somebody and her answer, as I understood it, was not responsive.

105    Ms Notaras was asked in cross-examination about email correspondence with an Italian company called Torrefazione. She agreed that in her view Torrefazione was a good brand of coffee and had a good reputation. It was put to her that there was no evidence that she had any correspondence with Torrefazione about selling their coffee under a brand other than their own brand. She answered that she had had a verbal conversation. She said she was looking at every aspect and had actually decided against importing coffee.

106    It was put to Ms Notaras that she had not given evidence about sourcing coffee anywhere else in Australia to resell to her customers, apart from this correspondence with Torrefazione. Her answer was that she had “spoken to a lot”.

107    It was put to her that she had no document, apart from the Torrefazione correspondence to show any discussion she had had. Ms Notaras agreed she did not have documents but said she had business cards.

108    It was put to her that it was difficult to remember, going back all those decades, as to exactly what she had sold and what she had not sold. She agreed it was difficult, but said the main part of the business was the ATOMIC and “they were just coming and going”.

109    She disagreed with the proposition that she had not reached any serious level in negotiations at any point for the supply of coffee to her. She disagreed that it had not progressed beyond a general discussion with any supplier of coffee at any point.

110    The cross-examination on this point ended as follows:

As at April 2015 you had no intention to supply coffee to consumers, ground coffee or other coffee?---Well, I did have every intention.

But that was 30, maybe 40 years after you dealt with Andronicus with their coffee and you hadn’t done it in that time, had you?---Had done - - -

You hadn’t supplied coffee in that time, had you?---Only samples.

111    She agreed that once she sold an Atomic machine to a customer, she aimed to have further transactions with that customer through the sale of spare parts and through servicing the machine. She agreed that the spare parts and servicing component was a minor but important part of her business, and had been since 2015.

112    Ms Notaras was taken in cross-examination to her response to a notice to produce.

113    She was taken to two documents which in her second affidavit she had identified as separate shipments. Ultimately she accepted that it was likely that the two documents referred to the same shipment of goods.

114    Ms Notaras accepted in cross-examination that some of the goods referred to in invoices she had annexed to establish sales were invoices in respect of non-ATOMIC goods, such as an induction plate and soda siphons.

115    She did not agree in cross-examination that there was a period of about nine years in the 1990s up to about 2001 when the Atomic machine was not available in Australia. The proposition derived from annexures to Ms Notaras’ affidavits. She maintained nevertheless that the contents were unreliable.

116    Ms Emily Jane Murphy, solicitor, affirmed an affidavit dated 18 May 2018. She was not required for cross-examination.

117    The first part of her affidavit concerned the sale of coffee machines and coffee through the same trade channels, illustrated by reference to the Nespresso coffee business. Ms Murphy said she had observed the Nespresso coffee business promoting and offering for sale coffee machines, coffee and accessories (such as coffee cups) under the Nespresso trade mark. She annexed a collection of screenshots from the Nespresso website. Nespresso branded coffee and coffee machines were sold at various locations in Australia, including a boutique store located at 188 Pitt Street, in Sydney. She annexed a fact sheet to her affidavit which showed that the Sydney Nespresso boutique store opened in 2010. The screenshots annexed to Ms Murphy’s affidavit showed locations where Nespresso branded coffee and/or coffee machines were sold in Sydney, there being some 16 locations.

118    Ms Murphy deposed that on 16 May 2018 she attended the Nespresso Boutique located at the Wintergarden Shopping Centre, Brisbane. She observed the coffee bar facility and that customers were able to receive a complimentary coffee, made by staff using the Nespresso branded coffee and coffee machines. She ordered a coffee from the menu and observed other customers doing the same. On the same date, Ms Murphy obtained a collection of screenshots of the Nespresso website dated 23 January 2014, 23 November 2013, 1 April 2014 and 14 January 2014 from the Wayback Machine archive. The screenshots illustrated the promotion and offer for sale of coffee machines, coffee and accessories (such as coffee cups) under the Nespresso trade mark online in January 2014.

119    Ms Murphy deposed that she had observed the online appliance retailer Kogan promote and offer for sale both coffee and coffee machines under the Lavazza and Nescafé trade marks, respectively. She annexed a screenshot from Kogan’s website on 14 May 2018 showing the promotion and offer for sale of a Lavazza branded coffee machine together with Lavazza branded coffee. A further screenshot from the same website showed the offer for sale of a Nescafé branded coffee machine together with Nescafé branded coffee.

120    Ms Murphy deposed to a visit on 14 May 2018 to the Coles supermarket at 700 Logan Road, Greenslopes, Queensland. She there observed coffee machines being offered for sale under the trade marks Espressotoria and Map in the same supermarket aisle and on the supermarket shelf located directly underneath the shelf where coffee was also sold under the Espressotoria and Map trade marks, respectively.

121    Ms Murphy deposed to visits she made on 16 May 2018 to two cafes. The first was “Bunker” in Milton, Queensland. She there observed coffee machines or makers such as the AeroPress and Hario V60 Dripper being offered for sale in the cafe where dine in and takeaway coffee were also being served. She annexed photographs. The second cafe was “Kin + Co” in Teneriffe, Queensland. Ms Murphy observed coffee machines or makers such as AeroPress, Hario V60 Dripper and Bialetti being sold in the cafe where dine in and take away coffee was also being sold. She annexed photographs.

122    Mr Marcello Nadile, director of Euroespresso Machine Co Pty Ltd (Euroespresso), affirmed an affidavit dated 18 May 2018.

123    His evidence was that he and his wife had operated Euroespresso as a family run business since 1986. Mr Nadile worked full-time in the business. The purpose of his affidavit was briefly to identify what goods and services Euroespresso provided.

124    Since 1986, he deposed, Euroespresso had:

(a)    imported, sold and serviced espresso coffee machines, including commercial models (sold for use in cafes, restaurants etc), and domestic models (sold for use in households). The primary brand of coffee machine that Euroespresso imported and sold was the Italian brand La Pavoni. To his knowledge, his company was the only distributor of La Pavoni coffee machines in Australia;

(b)    roasted and sold coffee to commercial and domestic customers, in a variety of forms e.g. beans, espresso grind, stove top percolator grind, et cetera. For example, the coffee blends that Euroespresso roasted and sold included the company’s Euroblend House Blend and Pavoni Blend;

(c)    operated a cafe and retail store/showroom at an address on Parramatta Road, Annandale, New South Wales; and

(d)    provided spare parts and servicing for the La Pavoni espresso coffee machines.

125    He annexed to his affidavit a printout of pages of Euroespresso’s website.

126    He also annexed some photographs of the Annandale cafe and retail store/showroom taken on 17 May 2018 and deposed that the in-store layout and arrangement, as shown in those photographs, had been the same for over a decade.

127    He identified what goods and services were provided at Euroespresso’s Annandale cafe and retail store/showroom, which was open to the general public. Since 1986, the public had been able to:

(a)    buy La Pavoni coffee machines (commercial or domestic);

(b)    sample and by the company’s house roasted coffee, for example the EUROBLEND and PAVONI BLEND coffee;

(c)    purchase fresh made espresso coffee from the in store cafe (cappuccino, cafe latte, flat white, short black, long black, et cetera), including coffee made using the company’s own blends;

(d)    access the company’s spare parts and coffee machine repair/servicing business.

128    Mr Nadile identified how and why the name PAVONI BLEND was chosen for that blend of coffee. The PAVONI BLEND was a medium to dark roast with a sharp spicy flavour. He and his wife chose to name the blend PAVONI BLEND, because they made the blend for use in the La Pavoni machines specifically.

129    Mr Nadile addressed the question whether he was aware of the manufacturer of the La Pavoni coffee machines, La Pavoni S.p.a., ever having sold coffee. He first became aware that that company sold coffee about 20 years ago, when he visited in Milan, Italy the roaster that supplied La Pavoni with the coffee that company sold. He annexed to his affidavit a copy of a printout from the website of La Pavoni S.p.A., illustrating the sale by that company on its website of PAVONI ESPRESSO brand coffee in 10 kilogram and 12.5 kilogram packets.

130    Mr Nadile said he was aware of the ATOMIC brand of coffee maker. His opinion was that ATOMIC was a very well-known Italian made domestic coffee maker. It had been on the market for decades. For a time, his company itself supplied the Atomic coffee maker.

131    Mr Nadile was cross-examined. He agreed that over the last 10 or 15 years the domestic coffee machine market in Australia had become much more competitive than when he first started in business. He agreed there were many more domestic coffee machines for a customer in Australia to choose from in the period from 2005 until the present than there were in the 1980s or the early 1990s when he first started in business.

132    Mr Nadile agreed that he had supplied Atomic coffee machines from 1986 for 10 or 12 years so that his last sale was, roughly, more than 15 years ago. Although he was not still selling the Atomic machine he displayed an Atomic machine on the shelf in his store. He agreed he also had on that shelf other caffettiera or coffee pots, as well as some old coffee grinders. He agreed that the purpose of displaying those old caffettiera and grinders was to create a bit of atmosphere in his store and to show that he and his business were serious about coffee making.

133    Mr Nadile agreed that his purpose in having the Atomic machine on a shelf was not to create an association in the minds of his customers between his business and the manufacturers of the Atomic machine. He did not put the Atomic pot there to create a connection between his business and Bon Trading nor with Ms Notaras.

The evidence for Barcelona

134    Mr Michele De Marte, cafe and restaurant owner, swore two affidavits, the first dated 29 June 2018 and the second 29 July 2018.

135    Mr De Marte was the sole director and company secretary of Barcelona.

136    He deposed that he had over 18 years’ experience as a cafe and restaurant owner.

137    He began his career in the cafe/restaurant business with a cafe called Cafe Bocca in the Perth CBD. He and his brother came up with the concept for this cafe which was opened by Modena Pty Limited (Modena) (of which he was a director) in 2000. He was responsible for the day to day running of this business until Cafe Bocca was sold in 2004.

138    In 2001, Modena opened an espresso bar with a coffee focus in Perth called Rosso Espresso. He was responsible for its design and concept, together with its day to day running. Modena sold the Rosso Espresso business in 2004.

139    In September 2005, Barcelona opened its cafe/restaurant concept in South Perth under the name “ATOMIC”.

140    In addition to these cafes, Mr De Marte had been responsible for the establishment of and the running of two restaurants owned by Bologna Pty Limited, of which he was the sole director and company secretary: an Italian restaurant which opened in Claremont in Perth in July 2013 called Nolita and an Italian restaurant in Nedlands which opened in 2010 called La Lola.

141    Mr De Marte annexed several newspaper articles about his cafe and restaurant businesses, including “ATOMIC”.

142    Mr De Marte deposed that in relation to the cafes and restaurant business owned by Barcelona, he was responsible for coming up with the concept and fit out (with the assistance of internal architects and designers) and for the launch of those concepts. Once launched, he had been responsible for the day to day running of those businesses, and for making all the key decisions for those businesses, including in relation to the ATOMIC cafe/restaurants.

143    In the operation of the Barcelona business, and over the course of the last 18 years, Mr De Marte frequently visited other cafes and restaurants, both in Perth (at least fortnightly), and less regularly around Australia and overseas (at least four times per year), to ensure that he was up to date with cafe/restaurant industry practice and activities. In visiting other cafes and restaurants, he had observed their practices, including their goods and services offerings. To keep up to date with industry trends, he also had subscriptions to magazines including GlobalCoffeeReport, Gourmet Traveller, Belle and Vogue Living. He read these magazines monthly to keep up to date with the cafe/restaurant industry and changes in that industry (as these magazines featured new cafes and restaurants). He also read a New Zealand magazine called Cuisine, as well as doing his own internet research on a cafe/restaurant concept that he had read about in these magazines or otherwise come across.

144    Mr De Marte had also purchased coffee machines for his cafes. In early 2017, he purchased two machines as well as four coffee grinders from Xtracted Espresso Solutions which dealt in commercial coffee machines.

145    Due to his own experience as a cafe and restaurant owner, and from the observations he had made during his visits of other cafes and restaurants, he deposed that he had a deep knowledge and understanding of the operation of cafes and restaurants, and the goods and services offered and provided in cafes and restaurants, particularly in Western Australia.

146    Mr De Marte deposed as follows in relation to the adoption of the ATOMIC mark by Barcelona.

147    Prior to opening the ATOMIC cafes, he had an interest in the Atomic age design era spanning the 1940s to 1960s and particularly in furniture and other design pieces of the 1940s. He annexed the page printed from https://en.wikipedia.org/wiki/Atomic_Age_(design). He also annexed pages in relation to a design exhibition focussed on the Atomic age at https://www.brooklynmuseum.org/opencollection/exhibitions/1202.

148    Mr De Marte deposed that the espresso bar (Cafe Rosso) that he opened with his brother in 2001 was designed in the style of that era including original Eames DCM moulded plywood chairs (designed in 1945). He annexed to his affidavit an article that appeared in the magazine “indesign” in November 2003.

149    Mr De Marte deposed that to the best of his recollection, it was around that time that he became aware of the Atomic stove top coffee maker designed in Italy during the 1940s. He had a collection of vintage caffettiera some of which belonged to his parents or grandparents, such as an original Bialetti (aluminium stove top pot made in Italy) as well as an old Atomic stove top coffee maker. He recalled someone, he could not recall who, gave him the used Atomic coffee maker. He could not recall when that was but he believed it was around about 2005 after the opening of the ATOMIC cafe. He believed he was given it by a collector at the time who was a good customer in the early days. He put it on the back shelf behind the front bar at the ATOMIC cafe in South Perth and it acted as an ornament from then for the entire time the cafe was trading. His caffettiera collection had been on display at various of his cafes over the years.

150    Mr De Marte deposed that he carried through the 1940s Atomic design era concept from Cafe Rosso into the design of the first ATOMIC cafe in South Perth, the building work for which commenced in mid-2004. Atomic age design elements, including furniture, dressings (fabrics) and lighting from this period were used in the ATOMIC cafe/restaurants spaces.

151    For example, he deposed, the ATOMIC cafe/restaurants were, and had been since inception, fitted out with furniture and other items from the 1940s including George Nelson “ATOMIC” clocks (designed in 1947) and platform benches, Louis Poulsen pendant lighting (designed in the 1940s) and original Eames DCM moulded plywood chairs (designed in 1945), together with custom made corian table tops with tulip table bases. He annexed to his affidavit a bundle of photographs of some of these items. In the case of the ATOMIC cafe in South Perth, Mr De Marte deposed, for a number of years the used Atomic coffee maker, also designed in the 1940s, was displayed along with other caffettiera from his personal collection. He said that the George Nelson ATOMIC clock hung as a feature on the side wall of the ATOMIC cafe in South Perth from the time it opened in September 2005 until about 2008 when it was replaced with the George Nelson Star Clock. He annexed a photograph of the George Nelson ATOMIC clock which he said was identical to the ATOMIC clock that hung in the South Perth ATOMIC cafe/restaurant for those years.

152    Mr De Marte deposed that Barcelona registered the business name “ATOMIC ESPRESSO” in April 2004. He annexed a copy of the business name registration certificate together with the current and historical business name extract for “ATOMIC ESPRESSO”.

153    Mr De Marte deposed that his choice of the “ATOMIC” name in 2004 was influenced by the 1940s ATOMIC stove top coffee machine together with the whole Atomic era concept and 1940s European cafe atmosphere that he had tried to recreate in his cafes as described. He was aiming to evoke the era rather than any connection with any particular trader.

154    At that time, he deposed, and for some years after that, he was not aware that the Atomic stove top coffee machine that existed in Europe in the 1940s and 1950s was still being manufactured, and sold anywhere in the world, or that such machines were available for sale in Australia.

155    He only became aware of the sale in Australia by Bon Trading of the Atomic coffee machines some several years after Barcelona commenced use of the ATOMIC mark (he could not recall precisely how many years after) when he happened to walk past the Bon Trading shopfront in Sydney and saw the Atomic machine in the shop window.

156    Both when selecting the ATOMIC mark in or around April 2004, and at the time that Barcelona commenced using the mark, Mr De Marte deposed, he had no knowledge of any of the prior registered trade marks cited as obstacles to acceptance of its trade mark application in the examiner’s report dated 5 May 2015 namely:

(a)    Australian trade mark no. 433638 “ATOMIC” in class 25 in the name of Atomic Austria GmbH filed on 24 September 1985;

(b)    Australian trade mark no. 744111 “ATOMIC TOMATO” in classes 29 and 30 in the name of Snack Foods Limited filed on 17 September 1997;

(c)    Australian trade mark no. 791650 “ATOMIC” in class 21 in the name of Irene Notaras filed on 20 April 1999;

(d)    Australia trade mark no. 1040677 “ATOMIC” in classes 30 and 43 in the name of Cerebos (Australia) Limited filed on 7 February 2005;

(e)    Australian trade mark no. 1249280 “ATOMIC PLAYWEAR” (device) in class 25 in the name of Sun Smart Industries Pty Ltd filed on 2 July 2008;

(f)    Australian trade mark no. 1661212 “ATOMIC” in classes 35, 39 and 42 in the name of Aqua Terra Oil and Mineral Service and Supply Company Pty Ltd; and

(g)    Australian trade mark application no. 1677436 “ATOMIC” in classes 30 and 43 in the name of Cerebos (Australia) Limited.

(collectively the Cited Trade Marks)

157    Mr De Marte deposed that he was informed by his solicitors that in addition to Australian Trade Mark No. 796150, Ms Notaras was presently also the owner of Australian Trade Mark No. 1281511 ATOMIC (device) in Class 21 for “stove top coffee maker”. In addition to having no knowledge of the Cited Trade Marks when he adopted the ATOMIC mark, Mr De Marte deposed that he had no knowledge of the Device Mark when he adopted the ATOMIC mark in relation to Barcelona’s goods and services.

158    Mr De Marte deposed that he was not aware of any confusion between Ms Notaras’ products, and the goods and services offered under or by reference to ATOMIC by Barcelona.

159    He deposed that particularly in the early days after opening the South Perth ATOMIC cafe, and even more recently, but now less frequently, a few customers had come into the cafe and asked him in words to the following effect:

Why have you named your cafe after the Atomic bomb?

160    On the other hand, Mr De Marte deposed, to the best of his recollection, no customer had ever indicated to him that they associated his ATOMIC cafes, or the goods and services provided there, with Ms Notaras or the goods she sold.

161    Mr De Marte also gave evidence as to trade channels for cafe and restaurant services and coffee machines.

162    He deposed that in his experience in cafes and restaurants over the past 18 years, coffee as a beverage could be purchased for consumption, for example, at a cafe, coffee bar or restaurant as well as at other locations such as service stations and convenience stores.

163    He deposed that the sale of coffee by cafes and coffee shops was a primary source of income for this type of business. He annexed to his affidavit a copy of the IBISWorld Industry Report “Cafes and Coffee Shops in Australia” from April 2015. He had become aware of IBIS reports in the course of operating his cafe and restaurant businesses. In particular, he referred to page 12 of the Report which stated “the majority of customers visit cafes or coffee shops to purchase coffee”.

164    In his experience, Mr De Marte deposed, cafe services were the offering and providing of food and beverages. He referred to page 8 of the IBIS Report which said:

Cafes that offer diverse menus with an emphasis on fresh and premium ingredients are expected to be the best performers, as discerning consumers search for better quality. This focus on quality will be particularly intense with regards to coffee. Australia's coffee culture is becoming increasingly serious, with consumers well aware of what constitutes a good coffee and easily able to spot a poor coffee. The prevalence of online reviewing websites such as Urbanspoon, ensures that cafes will continue to be judged by their quality and service.

165    In Mr De Marte’s experience, the cafe industry in Australia was predominately made up of small independent businesses. He referred to page 23 of the IBIS Report which said: “The majority of cafes are small businesses employing less than 20 people…”.

166    Mr De Marte deposed that he was aware from his experience that consumers would frequent a particular cafe because it used a particular type of coffee bean that the consumer was partial to - for example, a cafe may make coffee using Australian coffee bean providers such as Toby’s Estate or Campos. He referred to page 12 of the IBIS report which said: “Consumers are increasingly paying attention to the origins of their coffee ...”. This accorded with his experience and observation of consumer behaviour in cafes and restaurants.

167    Mr De Marte deposed that, in addition to selling coffee beverages, in his experience some cafes and coffee bars offered and provided coffee beans for sale. Certain brands of coffee bean, instant coffee and ground coffee were also available for purchase by consumers in supermarkets.

168    In contrast, he deposed, in his experience goods such as coffee machines and stove top coffee makers were generally sold in Australia through retailers of whitegoods and other home appliances retailers such as Harvey Norman, David Jones, Myer, the Good Guys and Nespresso. He was also aware that coffee machines may also be sold through speciality coffee machine retailers such as EspressoWorks (which stocked mainly commercial machines) in Perth and Xtracted Espresso Solutions in Melbourne. He annexed printouts from those retailers’ websites showing the coffee machine products they had available for sale. He deposed that he was not aware of any cafe or restaurant, or any similar type of service provider, such as a coffee bar, offering for sale or selling those products. Further, he was not aware of any customer of any of his businesses having asked if coffee machines were available for sale at the cafe/restaurant.

169    Mr De Marte deposed that he was aware that some cafes and specialty coffee shops sold a brand of portable coffee brewing device called an AeroPress. This was a small, plastic, portable plunger style device. He deposed that these products were of a different nature to home use coffee machines, percolators and stove top coffee machines. The AeroPress was a portable system that did not require a stove top or other heat source to function. This type of product and others products such as reusable coffee cups were sometimes made available for sale by cafes and speciality coffee shops to capture impulse purchases by customers of the cafe. However, he deposed, the nature of these small portable products was different to the coffee machines sold through retailers. Mr De Marte noted that the IBIS Report did not include any reference to “coffee machines” or goods of that nature in its section “Products and Services” offered by cafes.

170    Mr De Marte deposed that goods such as coffee cups, cups of paper or plastic, were provided by a cafe or coffee bar. A cafe or coffee bar may also sell reusable coffee cups to hold coffee purchased by a consumer. Reusable coffee cups may also be available through larger retailers. However, he deposed, such goods were distinct from coffee machines and “non-electric coffee percolators” and “stove top coffee machines”, and they were not used for the same purpose.

171    While a cafe/restaurant or coffee bar/coffee shop all made use of an industrial commercial coffee machine, in Mr De Marte’s experience in cafes and restaurants, they did not manufacture or offer for sale coffee machines. He was not aware of cafes and restaurants offering for sale and selling coffee machines such as those advertised for sale on the David Jones, Harvey Norman, Myer, the Good Guys, Nespresso and EspressoWorks websites, nor of a customer having asked if the cafe sold this type of machine.

172    In relation to Nespresso, Mr De Marte deposed that he had visited Nespresso stores both in Australia, and globally (such as in Singapore) on several occasions. In his experience, the Nespresso concept stores, under the banner of which coffee machines and coffee pods were offered for sale under the one Nespresso brand, were quite different from the provision of “cafe services” and associated retail of coffee. His observation on visiting these concept stores was that the serving of coffee was an incidental offering by way of promotion of the coffee pods sold for exclusive use in the coffee machines for sale in those stores. The Nespresso concept was the tied sale of coffee machines and pods under the same brand, and this had been copied by other coffee machine providers/coffee manufacturers such as Lavazza. He was not aware of any of those coffee appliance manufacturers operating a cafe or restaurant or providing services associated with that kind of operation.

173    Mr De Marte also deposed to Barcelona’s reputation in the ATOMIC brand.

174    He deposed that Barcelona began trading at the South Perth premises under or by reference to ATOMIC in September 2005. From September 2005 until at least 30 January 2017, Barcelona had continuously provided its goods and services under or by reference to ATOMIC at the same premises located in South Perth in Western Australia. This location was presently under renovation. It was anticipated it would reopen on 1 October 2018. He annexed to his affidavit a bundle of photographs showing the signage bearing the ATOMIC mark that had been used at the original South Perth premises throughout the period.

175    In addition to the South Perth location, from April 2011 to about November 2015 Barcelona continuously provided the goods and services under or by reference to the ATOMIC mark at premises in Claremont, Perth. Barcelona sold this location in November 2015 and licensed the purchaser to continue trading under or by reference to ATOMIC until the end of February 2016. Mr De Marte annexed photographs showing the signage bearing the ATOMIC mark in use at the Claremont premises throughout the period April 2011 to February 2016.

176    In addition to the South Perth and Claremont locations, Mr De Marte deposed, in December 2014 Barcelona opened a take-away food and drink location trading under or by reference to the ATOMIC mark at an additional premises located in Claremont, Perth. This location was also sold by Barcelona in November 2015, and was licensed to continue trading under or by reference to ATOMIC until the end of February 2016. He annexed a photograph showing the signage bearing the ATOMIC mark that was used at these take-away premises.

177    Mr De Marte deposed that the menus in use at Barcelona’s ATOMIC cafes had always been branded with ATOMIC. He annexed a representative sample of menus used at the South Perth and Claremont premises bearing the ATOMIC mark. The layout and ATOMIC branding of this menu was the same as the ones used prior to April 2015.

178    From at least September 2005 until 30 January 2017 when the original South Perth site closed for renovation, Mr De Marte deposed, Barcelona had used take-away coffee cups bearing the ATOMIC mark at the original South Perth premises. He annexed to his affidavit a representative sample of the take-away coffee cups bearing the ATOMIC mark so used, and used at the Claremont premises while they were operating under or by reference to ATOMIC.

179    Mr De Marte deposed that in April 2011, Barcelona commenced offering and providing 1 kg bags of coffee under or by reference to the ATOMIC mark at the South Perth and Claremont premises (until that location ceased operating under or by reference to ATOMIC in February 2016). He was not able to ascertain the exact quantity or value of 1 kg coffee bags sold under or by reference to the ATOMIC mark since 2011 because Barcelona’s financial system did not track this item as a separate line item in its various point of sale systems. He annexed a photograph of the coffee sold under or by reference to the ATOMIC mark offered for sale during the period April 2011 to late 2012. He also annexed a photograph of the coffee sold under or by reference to the ATOMIC mark during the period late 2012 to 30 January 2017.

180    Mr De Marte also deposed to Barcelona’s promotion and advertising of the ATOMIC mark.

181    He deposed that the goods and services provided by Barcelona under or by reference to the ATOMIC mark had been written-up in The West Australian Good Food Guide, a yearly publication published by The West Australian, in each of the 2012, 2013, 2014 and 2015 editions of the guide. He annexed the relevant pages.

182    He deposed that the goods and services provided by Barcelona under or by reference to the ATOMIC mark had also been frequently referred to in newspaper and magazine articles. He annexed a representative sample of newspaper and magazine articles, dated and marked as follows:

(a)    Fresh, The West Australian, 13 May 2010;

(b)    The Sunday Times Magazine, 8 August 2010;

(c)    The West Australian, 16 February 2011;

(d)    The West Australian, 24 March 2011;

(e)    The West Australian, 10 August 2011;

(f)    The West Australian, 8 November 2014.

183    He deposed that the goods and services provided by Barcelona under or by reference to the ATOMIC mark had been frequently reviewed on the internet, including on Tripadvisor, Zomato (formerly UrbanSpoon), Yelp, and BeanHunter, as well as on blogs. He annexed a bundle of the relevant pages of the following websites:

(a)    Google, with reviews dating from seven years ago;

(b)    Zomato (formerly UrbanSpoon), with reviews dating from June 2009;

(c)    Foursquare, with reviews dating from January 2010;

(d)    Yelp, with reviews dating from December 2011;

(e)    Beanhunter; with review dating from four years ago;

(f)    Tripadvisor, with reviews dating from August 2013;

(g)    Weekend Notes, review dated 18 December 2011.

184    He also annexed reviews from the following blogs:

(a)    Poached Perth, dated 11 July 2010;

(b)    WenY Wonders Why, dated 17 November 2010;

(c)    The Most Important Meal of the Day, 27 March 2011;

(d)    The Baking Jogger Blogger, 23 November 2013.

185    Mr De Marte deposed that since at least 21 September 2014 to at least November 2015 the goods and services provided under or by reference to the ATOMIC mark had been promoted by Australian lifestyle and city guide Urban Walkabout, an initiative of the City of South Perth. He annexed an extract of the relevant website page of Urban Walkabout, as well as the WayBack Search archive for the same page, together with a copy of the map issued by the City of South Perth referring to ATOMIC and indicating the South Perth location.

186    During the period 2007 to 2011, Barcelona sponsored a professional cycling team called the “ATOMIC BROOKS”. During the period of sponsorship, the ATOMIC BROOKS cycling jerseys and shorts were branded with the ATOMIC mark. The ATOMIC BROOKS competed in Perth based, national and international cycling events during the period of sponsorship. He annexed photographs of the ATOMIC BROOKS cycling jerseys and shorts bearing the ATOMIC mark.

187    He annexed to his affidavit a print out of the Google reviews that Atomic coffee machines and Bon Trading had received which appeared in a Google search engine search for each of Atomic coffee machines and Bon Trading Company.

188    In cross-examination, Mr De Marte was asked questions about the sale by Barcelona in November 2015 of the premises in Claremont, Perth and the statement in his affidavit that Barcelona “licensed the purchaser to continue trading under or by reference to ‘ATOMIC’ until the end of February 2016.” Mr De Marte said this was not an actual licence agreement but it was included as a special condition in the offer to purchase agreement. The licence was a three-month licence that terminated at the end of February 2016. Mr De Marte was taken to a newspaper article published on 26 April 2016 and in particular to statements in that article that the new owners would call the premises “Academy” and that it would begin trading in its new guise on 19 May 2016. Mr De Marte said he was not the source of the article but accepted that he had earlier told the same journalist that ATOMIC in Claremont had been sold and it would be called Academy and would begin trading in its new guise on 19 May 2016. Mr De Marte knew by 26 April 2016 that the purchaser was rebadging and that rebadging was imminent. He agreed that the reason why the licence that Barcelona granted was limited to three months was because its purpose was simply to enable the new Claremont business to retain the benefit of existing custom while it went through the process of rebranding to the Academy name. Mr De Marte also agreed that there was a takeaway food and drink location also sold by Barcelona in November 2015 to the same company that was now trading under Academy and was also licensed to continue trading under or by reference to ATOMIC until the end of February 2016.

189    Mr De Marte was then taken to a statutory declaration made by him on 23 May 2016 in the context of a Trade Mark Examination Report No. 1 dated 5 May 2015 identifying a number of barriers to registration of Barcelona’s application to register the ATOMIC trade mark. In particular, he was taken to the following statements in his statutory declaration:

39.     Barcelona intends to expand the provision of the Goods and Services offered under or by reference to the “ATOMIC” (sic) throughout Western Australia and internationally and has had discussions to this effect with business brokers, franchise solicitors and funding organisations.

40.     In this regard, the business operated at the Claremont premises at which Barcelona provides the Goods and Services under or by reference to the “ATOMIC” mark has recently been acquired by a third party. As part of this agreement, Barcelona has licensed the third party to use the “ATOMIC” mark in relation to the Goods and Services at the premises. This is one step which Barcelona has effected in the execution of its plan for widening its operations in respect of the use of the “ATOMIC” mark in relation to the Goods and Services. Its intention is to continue licensing the “ATOMIC” mark in relation to the Goods and Services in further locations.

190    Mr De Marte was asked whether he specifically thought that if the Trade Marks Office understood that Barcelona had widened its use of the ATOMIC trade mark by licensing the Claremont premises to use the ATOMIC trade mark, the Trade Marks Office may be more likely to accept his trade mark application for registration. He answered:

I hadn’t thought of that. The – this party at Claremont had requested to enter into an agreement to licence the name on a long term basis. But due to the fact that the trade mark had not been resolved, I wasn’t in a position to do so, so it was a month by month basis.

191    It was put to him that when he made the statement in the statutory declaration on 23 May 2016 he knew that the licence for the Claremont business to use the ATOMIC trade mark had expired at least three months earlier in February 2016. He answered:

That licence was – we agreed to just go on a month to month basis. It wasn’t a specific document and I was – they requested that we extend it and I was happy to, you know, assist them and proceed with that.

192    The following questions were asked and answers given:

Mr de Marte, you knew, didn’t you, at 23 May 2016 that it was imminent that the purchaser of the Claremont premises would rebrand to Academy. That’s true, isn’t it?---That was in discussions but it wasn’t confirmed. To this day that particular party has still requested if this Trademark is resolved they would like to continue with their licence agreement of the ATOMIC brand.

Well, you knew, didn’t you, that they had made a decision to make significant changes, in the meantime at least, by rebranding the café Academy; didn’t you?---Yes, it was imminent at some stage.

Yes. And it was imminent at 23 May 2016; wasn’t it?---No, it wasn’t. It was – at some particular stage it may have been but on that particular date the branding was still ATOMIC.

193    Mr De Marte said the intention of the purchaser was to retain the ATOMIC licence. But without confirmation from the Trade Marks Office that Barcelona could use the ATOMIC mark, Barcelona could not give that assurance.

194    Mr De Marte agreed that he knew that it was more likely than not as at 23 May 2016 that the purchasers of the Claremont premises would rebrand as Academy. He also agreed that he knew that it was more likely than not as at 23 May 2016 the Claremont premises would imminently begin trading as Academy rather than ATOMIC.

195    Mr De Marte said nevertheless that he believed it was true at the time to say as at 23 May 2016 that Barcelona had widened its operations in respect of the use of the ATOMIC mark through the licence that had been granted to the Claremont premises.

196    Mr De Marte did not agree that the statement was a half-truth because at the time of the statement, the Academy branding still had not occurred and it took a period of time for that to be executed, and the purchaser’s intention was always to continue with the ATOMIC brand.

197    Ultimately, Mr De Marte accepted that the statement in the second sentence from the end of paragraph 40 of his statutory declaration was not true and correct in every particular and was a half-truth. Nevertheless he said he believed he was candid with the Trade Marks Office. He said:

I just agreed with you that it was only a half-truth because it wasn’t confirmed, and there was a possibility that it wouldn’t – it would not proceed. But at the time that was certainly the intention, so I was not trying to mislead the Trade Marks Office with that statement.

198    Mr De Marte agreed that the Atomic machine was something that he respected and admired and the statement: “There is no doubt that the Atomic carries a cachet like no other coffee machine” was an opinion that he agreed with in 2004. He agreed that the ATOMIC machine was fashionable in the sense it was a classic design product and that was his view in 2004. He agreed it was an iconic product and a product worthy of respect and reference. He agreed that before he chose to use the ATOMIC trade mark in Barcelona’s business he had seen the Atomic coffee machine featured in one or more design journals or interior design magazines.

199    Mr De Marte agreed that the Atomic coffee machine was one of the most beautiful stove top coffee machines ever mass produced and that was his view before he chose the ATOMIC trade mark. He agreed with the statement that the Atomic machine unified form and function in organic perfection.

200    Mr De Marte was taken to the following paragraph of his statutory declaration:

3.    The Applicant took inspiration for the trade mark “ATOMIC” (Trade Mark) for use in relation to the Goods and Services from the stove top coffee machine known as the “Atomic Coffee Machine” that was manufactured in Europe in the late 1940’s and 1950’s.

201    He said in cross-examination that was just one part of the inspiration that took place. He added:

I’m saying in hindsight I should have expanded on that paragraph. That’s one part which is true, but there was more to the inspiration and the influence of choosing the word “ATOMIC”, not just specifically the ATOMIC coffee machine and hence why the name, the ATOMIC coffee machine, based on the era of industrial design.

202    Mr De Marte agreed he was inspired by the Atomic machine because he considered it was stylish, distinctive, classic, iconic and respected and admired. He thought it was a stylish, distinctive, fashionable trade mark to adopt because the Atomic coffee machine itself was stylish, fashionable and iconic. He agreed it was an important part of the inspiration.

203    Mr De Marte was shown a photograph of the interior of his South Perth cafe and agreed that one reason why he displayed the Atomic machine on the shelf in the photograph was to make an association between the stylish and classic Atomic machine and his ATOMIC mark. He agreed the ATOMIC trade mark was what the Atomic machine was widely known by. He agreed there was a group of people who were interested in classic design and stylish items and among that group a significant number of people within that group would know the Atomic coffee machine and that was the case when he chose the ATOMIC trade mark back in 2004. He agreed he was one person within that group.

204    In relation to the design of the first ATOMIC cafe in South Perth, Mr De Marte agreed that he engaged an interior designer to assist him with the fit out and it was likely that when he first approached the interior designer, having chosen the ATOMIC trade mark, he told him that at least one inspiration for that choice was the Atomic coffee machine.

205    In relation to the date he acquired the Atomic coffee machine, Mr De Marte agreed it was possible that he acquired it before he chose the ATOMIC trade mark. He believed it might have been just after the opening if the cafe in South Perth in September 2005, although it was possible and likely that it was before he began trading.

206    Mr De Marte was taken to the Atomic machine he was given. A photograph of the top of the machine is as follows:

207    Mr De Marte accepted that it was obvious to any person looking down on the photograph that this Atomic machine was supplied by a business called Bon Trading Co of Woollahra, Sydney, New South Wales.

208    He accepted that he would have looked at the machine when it first came into his possession but his recollection was that he saw the word ATOMIC but not the information underneath. He disagreed that it was a reasonable step that was required of a commercially honest trader to check any Atomic machine in their possession to identify the source of the machine if they were choosing the ATOMIC trade mark, having been inspired by the machine.

209    Mr De Marte did not accept that a commercially honest and reasonable trader in his position would have inspected his Atomic machine using the ATOMIC trade mark and then taken, at the least, the steps of finding the number in the telephone directory and calling the business to ask whether they still traded in the machines.

210    He agreed that he did not obtain any legal advice before he chose the ATOMIC trade mark in 2004 or before he opened the South Perth cafe in September 2005 about whether he was entitled to use the ATOMIC trade mark. He did not accept that where the Atomic machines were an important inspiration for him choosing the ATOMIC trade mark, a commercially honest and reasonable trader in his position would have sought legal advice before opening the first cafe using the ATOMIC trade mark for Barcelona’s business.

211    He agreed that before Barcelona chose the ATOMIC trade mark in 2004 and before it opened the first cafe in September 2005, Barcelona did not carry out any searches or inquiries to ascertain whether any person that may be marketing the Atomic machines had obtained registered trade mark protection for the trade mark ATOMIC.

212    He also agreed that before Barcelona applied to register the ATOMIC mark in 2015, Barcelona did not carry out any searches or inquiries to ascertain whether any person was marketing the Atomic machines in Australia at that time.

213    He did not agree that this demonstrated a lack of reasonable care and diligence on Barcelona’s part. He said he had never sought a trade mark for the other trading names he had had in the past and it was not general practice or common in the industry. He did not know any cafe/restaurant owner that had a trade mark.

214    Mr De Marte was asked questions about the AeroPress coffee maker. He agreed that the plastic around the body of that coffee maker functioned as a heat insulator. He accepted that it was an ordinary and natural use of the English language to describe the AeroPress coffee maker as an espresso maker. He also agreed that it was a natural and ordinary use of English language to describe AeroPress as a coffee machine.

The parties’ submissions

Introductory matters

215    Ms Notaras identified the ultimate issue as whether Barcelona could register an identical trade mark (the word ATOMIC) for its coffee related goods and services in the face of Ms Notaras’ prior registration of the Word Mark for coffee machines, together with her prior use of (and reputation in) the Word Mark for coffee machines and coffee since 1964. Ms Notaras noted that Barcelona accepted that if registration was permitted, it should be subject to a geographic limitation confining its trade mark rights to Western Australia. In summary, Ms Notaras contended that registration of Barcelona’s proposed trade mark should be refused because:

(a)    Barcelona was not the owner of the ATOMIC mark for coffee, or coffee grinding for the purposes of s 58;

(b)    Ms Notaras’ prior registration of the Word Mark operated as a barrier to registration for the purposes of s 44;

(c)    the use of the ATOMIC mark for the coffee related goods and services would be likely to deceive or cause confusion, because of the reputation that Ms Notaras’ Word Mark had acquired in Australia before the priority date, s 60;

(d)    Those grounds of opposition were not overcome by imposing a geographical limitation to Western Australia. Registration should be refused outright: s 55(1).

216    Ms Notaras submitted that, through Bon Trading, she had since 1964 imported, promoted and sold ATOMIC branded coffee machines using (1) the word ATOMIC as a trade mark (in both lower and upper case) and (2) various versions or adaptations of the ATOMIC logo trade mark. She submitted that Bon Trading had had also supplied ground coffee and accessories (e.g. T-shirts) under the ATOMIC trade marks, together with providing spare parts, repair and servicing of the Atomic machines. She also submitted that she had used the ATOMIC trade marks in relation to ground coffee.

217    Counsel for Ms Notaras submitted that unsurprisingly it was impossible for her to document or recall the exact number of Atomic machines she had imported and sold. Based on her direct involvement, she recalled that the number of Atomic machines sold peaked at around 2,000 to 3,000 per annum in the 1970s and 1980s. Revenue from Bon Trading’s sales of the Atomic machines during the 2013/14 and 2014/15 financial years (approximate to the priority date) was identified in the income tax returns and financial statements for Liflo. Ms Notaras had never kept a separate account or ledger of the number of Atomic machines that Bon Trading had sold. Her evidence was that over half the income set out in the income tax returns and financial statements for Liflo was attributable to sales of the Atomic machines. Counsel for Ms Notaras accepted that it was apparent from her oral evidence that she was incorrect in her identification of why over half the sales revenue was for Atomic machines as the Atomic machine was not the highest priced goods that Bon Trading sold during this period but rather it was the highest sold product by number. In any case, it was submitted, it was not necessary to determine precisely how much of the revenue was attributable to the sale of Atomic machines. It was sufficient that she engaged in active, ongoing trade in the Atomic machines and their parts in the lead up to the priority date.

218    Ms Notaras submitted that the evidence documented at least one sale of an Atomic machine or part to a customer in each of Victoria, New South Wales, South Australia, Queensland and the Australian Capital Territory. Bon Trading had also sold the Atomic machines and parts directly to customers in Western Australia through online, mail and telephone orders, subsequent to Ms Notaras’ engagement of a Perth based distributor in the period between the late 1960s and early 1970s.

219    The respondent, Barcelona, submitted that Ms Notaras bore the onus of proof in respect of the grounds of opposition. In summary, each of her grounds of opposition failed, Barcelona submitted, for at least the following reasons:

(a)    Ms Notaras could prove no use of ATOMIC as a trade mark in relation to coffee generally, or coffee grinding services, and any use in relation to ground coffee was de minimis and ceased 40 or 50 years ago. Therefore the ground under s 58 must fail;

(b)    she could not prove that her prior mark should prevent registration of Barcelona’s proposed trade mark for the purpose of s 44 as the Barcelona goods were not the “same or of the same description” as coffee machines/espresso makers nor were the Barcelona services “closely related to” coffee machines/makers; and

(c)    she could not prove sufficient reputation in the Word Mark as at the priority date to establish any likelihood of confusion or deception by the use of Barcelona’s proposed trade mark in relation to the Barcelona goods and services in Western Australia. This disposed of the ground under s 60.

220    If Ms Notaras succeeded, Barcelona relied on its Amended Notice of Contention seeking registration on the basis of either honest concurrent use, or on the basis of “other circumstances” pursuant to s 44(3)(b).

221    Barcelona submitted that Ms Notaras’ evidence should be approached with caution. Ms Notaras agreed it was difficult to remember. Barcelona submitted Ms Notaras was an evasive witness who often would not accept even obvious propositions when she thought it might not assist her case. A number of her assertions in her affidavit evidence were accepted in oral evidence to be incorrect, or had been shown to be so.

Section 58 – alleged prior use by Ms Notaras of the ATOMIC mark in relation to ground coffee and coffee grinding services such as to disentitle Barcelona to ownership of its proposed trade mark

222    Ms Notaras contended that she used the Word Mark in Australia in relation to coffee and coffee grinding before the April 2015 priority date of Barcelona’s proposed trade mark and, because of this prior use, Barcelona was not the owner of the ATOMIC trade mark for at least coffee and coffee grinding. Barcelona’s application had to be rejected in the circumstances.

223    She submitted that her prior use for coffee and coffee grinding had two aspects. First, between the mid-1960s and the 1970s Bon Trading sold ATOMIC branded ground coffee in small (1⁄2 pound) cans. Ms Notaras remembered selling these coffee cans under mail orders. Every customer who bought an Atomic machine from Bon Trading during this period was also given one of the coffee cans. She sourced the ground coffee supplied in the cans from Andronicus. When Andronicus was bought out, Ms Notaras was unable to find a suitable alternative supplier. While she had not supplied ground coffee cans since then, she had never made a deliberate decision to abandon her rights arising from this early use of the ATOMIC trade mark for ground coffee.

224    The second aspect of her prior use of the ATOMIC trade mark was in relation to both ground coffee and coffee grinding. For at least the past four decades, Ms Notaras had provided every purchaser of an Atomic machine with a small sample bag of finely ground coffee to educate them about the necessary grain size. This supply constituted use of the Word Mark for ground coffee for at least the following reasons, it was submitted. First, with reference to s 7(4), the Word Mark appeared repeatedly in the instructional booklet. This constituted use of the trade mark in physical or other relation to each coffee grind sample stapled to the instructional booklet. Secondly, the Word Mark was plainly used in the instruction booklet as a “sign” that distinguished the trade origin of the goods that were supplied together with the booklet. Thirdly, while the primary goods supplied with the instruction booklet were the Atomic machines, the ground coffee was also a good supplied in the course of trade. The supply of the ground coffee contained in the sample was an integral or essential part of the trading activity because the Atomic machine would not operate correctly without the correct coffee grind. Further, the provision of the ground sample involved Ms Notaras providing a “coffee grinding” service to her customers under the Word Mark, that is, the service of grinding coffee for consumers to illustrate the correct grind size.

225    Ms Notaras submitted that Barcelona was not the owner of the ATOMIC trade mark for coffee or coffee grinding. It was submitted that, for the purposes of s 58, if the opponent showed the same trade mark had been used by a person other than the applicant for the same goods or services before the priority date, registration must be refused unless the applicant can demonstrate earlier trade mark use: EOS Australia Pty Ltd v Expo Tomei Pty Ltd (1998) 42 IPR 277 at 286, where Branson J said:

The Act does not displace the common law concerning trade marks, it merely supplements it. The test of ownership of an unregistered trade mark is a common law test. A person who publicly uses a trade mark acquires at common law, as an adjunct to the goodwill of his or her business, the right to preclude others from using that mark; and the first person who uses a trade mark within a country becomes the proprietor of the mark there: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413.

Ms Notaras also referred to Davison MJ and Horak I, Shanahan’s Australian Law of Trade Marks and Passing Off (6th ed, Thomson Reuters (Professional) Australia Limited, 2016) at [50.2220] for the proposition: “The first user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.”

226    Applying these principles, Ms Notaras submitted, the ground of opposition under s 58 was established. Barcelona did not begin using the ATOMIC word trade mark for its cafe services until September 2005 and also did not sell any of its 1 kg bags of coffee until April 2011. The use by Ms Notaras of the Word Mark for ground coffee predated this. Therefore, Barcelona was not the owner of the ATOMIC trade mark for ground coffee and other goods that were “the same kind of thing”. Ms Notaras submitted that the goods that fell into this category in the opposed application were the following goods in 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; and coffee-based beverages. Further, Ms Notaras submitted, Barcelona was not the owner of the ATOMIC trade mark for the coffee grinding services in Class 40.

227    Ms Notaras submitted that while she had not supplied the cans of ATOMIC branded ground coffee for many years, this did not assist Barcelona. Authority showed that only deliberate abandonment, estoppel or acquiescence would lead to a loss of proprietorship once established. Mere non-use will not: Elkington B, Hall M and Kell D, Annotated Trade Marks Act 1995 (2nd ed, LexisNexis Butterworths, 2010) at [58.25]. Abandonment required the formation of a deliberate intention to abandon the trade mark: Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 572 and 602. This was not the case here. Ms Notaras had continuously used the Word Mark in relation to the Atomic machines and the ground coffee samples. Further, her conduct in registering the business name ATOMIC COFFEE through Liflo, buying a coffee roaster, and investigating potential coffee suppliers was inconsistent with her having formed any deliberate intention to abandon the ATOMIC trade mark for ground coffee before the priority date. Ms Notaras relied on her evidence that she had always intended to resume selling ground coffee under the Word Mark and that she intended to do so in the next six months. Consistently with this, she had applied to remove the Suntory mark from the register for non-use. Her affidavit evidence made it clear that she had also sold the 1⁄2 pound coffee as ordinary goods and she was not challenged on this evidence. In cross-examination, Ms Notaras rejected the suggestion that she would have considered supplying coffee under the brand name of a coffee manufacturer.

228    Barcelona submitted that s 58 had been narrowly construed and required use of the mark in relation to the same “kind of thing” or goods that were “essentially the same” as the goods in relation to which registration was sought. Barcelona referred to Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506, especially at [89]-[90]. Barcelona referred also to Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 at [177], [178] and [190].

229    Barcelona submitted the relevant enquiry involved consideration of how consumers would perceive the relationship between the goods and any element which may have the character of a brand: Nature’s Blend Pty Ltd v Nestlé Australia Ltd [2010] FCAFC 117; 272 ALR 487 at [19], as follows:

In considering the reasons of the primary judge and the arguments put on appeal, it is necessary to bear in mind the principles governing whether Nestlé used “luscious Lips” as a trade mark. They may be summarised as follows:

1.    Use as a trade mark is use of the mark as a “badge of origin”, a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else: Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107 at [19]; E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 265 ALR 645 at [43].

2.    A mark may contain descriptive elements but still be a “badge of origin”: Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 347–348; Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192; Aldi Stores Ltd Partnership v Frito-Lay Trading GmbH (2001) 190 ALR 185 at [60].

3.    The appropriate question to ask is whether the impugned words would appear to consumers as possessing the character of the brand: Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 422.

4.    The purpose and nature of the impugned use is the relevant inquiry in answering the question whether the use complained of is use “as a trade mark”: Johnson & Johnson at 347 per Gummow J; Shell Company at 422.

5.    Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand, are relevant in determining the purpose and nature (or “context”) of the impugned words: Johnson & Johnson at 347; Anheuser-Busch, Inc v Budějovicky Budvar, Národní Podnik (2002) 56 IPR 182.

6.    In determining the nature and purpose of the impugned words, the court must ask what a person looking at the label would see and take from it: Anheuser-Busch at [186] and the authorities there cited.

230    Barcelona submitted the free distribution of one class of goods to promote a merchant’s trade in a different class of goods was not use of the mark on the free goods as a trade mark: Karu Pty Ltd v Jose (1994) 53 FCR 15.

231    As to abandonment, Barcelona referred to King Par LLC v Brosnan Golf Pty Ltd [2014] FCA 795; 106 IPR 457 and to CUB Pty Ltd (formerly Fosters Australia Ltd) v Elixir Signature Pty Ltd [2013] ATMO 74; 103 IPR 130 at [114]-[116].

232    Barcelona submitted there was no evidence that Ms Notaras had provided the service of coffee grinding under the ATOMIC mark, or at all such as to use the trade mark in the course of trade. Whatever services had been engaged in by Ms Notaras, those services had been conducted under the name and mark Bon Trading Co or Bon Trading Company and not ATOMIC.

233    Barcelona submitted that Ms Notaras’ evidence addressed only alleged prior use of the mark in relation to ground coffee. Any use in relation to ground coffee did not establish use in relation to coffee more generally, nor coffee beans, coffee products, preparations for making coffee-based beverages, flavoured coffee, instant coffee, unroasted coffee, decaffeinated coffee, mixtures of coffee, coffee substitutes, extracts of coffee for use as flavours in beverages and coffee-based beverages. These were not “the same kind of thing” as, nor “true equivalents” of, ground coffee. Beverage products, including coffee beverages, were entirely different from ground coffee. One was liquid, the other solid. The consumer did not go out to buy a coffee beverage and come back with ground coffee. The same could be said regarding coffee beans and ground coffee.

234    In relation to the coffee samples, Barcelona submitted there was no trade mark use of ATOMIC in relation to Ms Notaras’ free ground coffee samples, but only in relation to the coffee machines. At no time had the unbranded ground coffee samples been provided for the purpose of trade in ground coffee. They had been supplied as free samples ancillary to the instructions for use of the coffee machines, demonstrating the size of the grind required for the machine, which itself was provided in trade. Consumers would perceive the sample as being provided by Bon Trading for the purpose of demonstrating the grind for optimal use of the machine. Barcelona referred to Lomas v Winton Shire Council [2002] FCAFC 413; AIPC 91-839 at [41]-[45] and distinguished Visa Trade Mark [1985] RPC 323 on the facts.

235    In relation to the tins of ground coffee, Barcelona accepted that de minimis use of the ATOMIC mark was made in the 1960s and possibly early 1970s in relation to Ms Notaras’ manually labelled tins for the purpose of showing customers what sort of grind was appropriate for the Atomic machines. But even if trade mark use was found in relation to the tins of coffee, this was well before the priority date and Ms Notaras abandoned any use of the ATOMIC mark in relation to ground coffee, including because of the lack of use since the 1970s, the subsequent sale of ground coffee branded with the ANDRONICUS trade mark and the failure to substantiate her assertions of intention with any business document. The only purpose of supplying ground coffee in the 1960s and 1970s was to demonstrate the required size of the grind. On her own evidence this became unnecessary. She had not one business record to substantiate the assertion that she had been negotiating with others to supply coffee under the ATOMIC mark.

236    Barcelona submitted that Ms Notaras’ evidence about being unable to source coffee in the 1980s could not be accepted in light of the prevalence of available coffee products in Australia at the time, including from a company with which she had business dealings at the time, Grinders, as well as Genovese and others.

237    In relation to the decision of the Full Court in Riv-Oland, Barcelona submitted it should be distinguished: the period of non-use in the present case far exceeded that in Riv-Oland and this was not the case of an Australian distributor registering the mark of a foreign manufacturer who was still using the mark overseas in relation to the relevant goods, but a case of an entirely unrelated party independently conducting a different business under the relevant trade mark. Barcelona submitted that the objective facts pointed to an abandonment on the part of Ms Notaras, as at the priority date, of any use of the ATOMIC mark in relation to coffee or ground coffee.

238    Barcelona submitted that the mark Ms Notaras relied on was a common law mark so far as it related to goods apart from coffee machines/makers. Such a mark only existed to the extent there was any residual goodwill or reputation in it in relation to the relevant goods. She had proved no such reputation as at the priority date.

Section 44 – “similar goods”/“closely related services”

239    Ms Notaras submitted that ss 44(1) and (2) operated as barriers to registration because:

(a)    the following class 30 goods designated in the Barcelona application were “similar goods” to the goods covered by the Word Mark: 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 flavour in beverages; coffee-based beverages (together, Coffee Goods);

(b)    the following class 21 goods designated in the Barcelona application were “similar goods” to the goods covered by the Word Mark: coffee cups; cups of paper or plastic; cardboard cups; heat insulated containers for beverages; containers for beverages (together Coffee Cups/Heat Insulated Containers);

(c)    the following class 35 services designated in the Barcelona Atomic application were “closely related” to the goods covered by the Word Mark: retailing and wholesaling of coffee and coffee based products; retailing and wholesaling of drinks (so far as this included coffee) (together, Coffee Retailing/Wholesaling Services);

(d)    the following class 40 services designated in the Barcelona application were “closely related” to the goods that were covered by the Word Mark: coffee grinding; coffee roasting (together, Coffee Grinding/Roasting Services); and

(e)    the following class 43 services designated in the Barcelona application were “closely related” to the goods covered by the Word Mark: cafes; cafe services; coffee bar and coffee house services; coffee shop services; take away drink services; mobile beverage services; provision of drink (together, Coffee Shop/Cafe Services).

240    Ms Notaras submitted that the Court should make findings in relation to each of these goods or groups of goods.

241    As to the relevant legal principles for “similar goods”, Ms Notaras submitted the assessment of whether goods were “of the same description” was not confined to the inherent character of the goods but involved a broader assessment of whether the relationship between the goods was such that they would be seen by purchasers as having the same trade origin if sold under substantially identical or deceptively similar trade marks. Reference was made to Shanahan (6th edition, 2016) at [35.505], citing Polo Textile Industries Pty Ltd v Domestic Textile Corp Pty Ltd (1993) 42 FCR 227 at 240. Ms Notaras also referred to Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606.

242    Applying these principles, Ms Notaras submitted that the Coffee Goods were “goods of the same description” as the coffee machines (and the other goods in Class 21 over which the Word Mark was registered by Ms Notaras) as they were either used together with a coffee machine to make a cup of coffee or they were the thing that was produced by a coffee machine. The Coffee Goods and coffee machines were often manufactured and produced or marketed by the same companies and sold under the same trade marks. In addition, Ms Notaras was selling ATOMIC branded ground coffee alongside the Atomic machines in the 1960s and 1970s and had always provided ground coffee samples. Also, the trade channels through which coffee and coffee machines were sold were the same or substantially overlapping. These factors were likely to lead to the Coffee Goods and coffee machines being seen by purchasers as having the same trade origin if sold under substantially identical or deceptively similar trade marks.

243    Ms Notaras submitted that the delegate’s findings should not be followed as the fresh evidence showed that, contrary to the delegate’s findings and the position that may apply to ice cream and gelato making machines, coffee was sold by coffee machine manufacturers through the same or overlapping trade channels and using the same trade marks. Barcelona’s submission that coffee machines were not commonly provided through cafe and restaurant channels in Western Australia did not assist as the Word Mark in class 21 covered espresso makers and coffee machines and the AeroPress product was plainly an espresso maker. Therefore cafes did sell one of the Class 21 goods covered by the Word Mark. Further, the ordinary trade channels were not limited to cafes. Registration would grant Barcelona the right to supply their coffee goods through any trade channel through which coffee was ordinarily sold. It was submitted that it was a natural and ordinary commercial thing for a coffee-machine manufacturer to also sell and supply coffee.

244    Ms Notaras also submitted that Coffee Cups/Heat Insulated Containers were goods that were the same or of the same description as coffee machines. Heat insulated containers included any espresso maker or coffee machine that was insulated to keep coffee warm while brewing. Further, coffee cups were goods of the same description for similar reasons to those for coffee. The coffee beverages that coffee machines made were drunk from coffee cups. Consumers seeing a coffee cup sold under the same trade mark as a coffee machine would expect the trade origin to be common.

245    Turning to “closely related” services, Ms Notaras submitted that the term was of wider import than the expression “similar goods”, referring to Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [37]. There French J said, at [37]-[38]:

… The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “'closely related”. As its use in the Mathys Committee Report indicated however, it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services: Cmnd 5601, par 70.

The range of relationships between goods and services which may support the designation “closely related” will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them.…

246    In many cases, Ms Notaras submitted, the businesses that manufactured or sold coffee machines also sold Coffee Goods, both wholesale and retail. This was an example of a case where the conclusion that the goods were goods of the same description required a conclusion that the services contemplated by Barcelona which would feature the goods already held to be goods of the same description as those of Ms Notaras were services closely related to her goods: Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398 at 405. Further, coffee roasting and coffee grinding were properly viewed as “closely related” to coffee machines.

247    Ms Notaras submitted that Coffee Shop/Cafe Services were closely related to coffee machines for at least the following reasons. First, the cafe services were provided “by means of” coffee machines. Secondly, some businesses that manufactured and/or sold coffee machines also provided cafe services. Thirdly, some cafes sold coffee machines or espresso makers in addition to fresh made coffee. The trade channels were again overlapping, and the services were closely related.

248    Barcelona accepted that Ms Notaras’ Word Mark was a prior registration of an identical mark. It submitted however that a prior registered mark would only prevent registration of a later mark pursuant to s 44 when the later mark was sought in respect of “similar goods” to the goods the subject of the prior registered mark; or “closely related services” to those goods. Barcelona submitted that the relevant principles were set out in the delegate’s decision, including that the principal factors to be considered in assessing whether goods are “of the same description” were: the nature of the goods (including their origin and characteristics), the uses made of them, including their purpose, and the trade channels through which the goods were bought and sold. Barcelona referred in particular to McCormick; 51 IPR 102, SMA Solar Technology AG v Beyond Building Systems Pty Ltd (No 5) [2012] FCA 1483 and Woolworths.

249    In relation to goods, Barcelona submitted that Ms Notaras’ case relied largely on her contention that relevant goods were sold through “overlapping” trade channels. The existence of common trade channels was by no means determinative of the matter. In any event, Barcelona submitted, the evidence did not support a finding that Barcelona’s goods were commonly sold through the same trade channels as coffee machines. The Barcelona services (cafe and restaurant services, retailing and provision of food and drink, coffee grinding and roasting et cetera) and the Barcelona goods (such as coffee, coffee beans, prepared meals of various kinds, coffee cups) were goods and services commonly provided by cafes and restaurants. Coffee machines on the other hand were not commonly provided through cafe and restaurant channels but through large whitegood and appliance retailers or specialty coffee machine retailers.

250    Taken at its highest, Barcelona submitted, Ms Notaras’ evidence proved nothing more than a niche submarket of the coffee machine market where retailers of “pod” coffee machines also sold the pods together with the machines and may, in promoting their coffee machines, provide some free cups of coffee; and there might be one retail outlet in Sydney and a handful of cafes in Milton, Queensland where one could purchase a cup of coffee from the same establishment that sold a portable coffee machine (such as an AeroPress) and one cafe in Teneriffe, Queensland that sold a percolator (the Bialetti).

251    Mr De Marte said in his evidence that in his 18 years of operating cafes and restaurants, he was not aware of any consumer ever enquiring to buy a coffee machines there, or of cafes/restaurant selling coffee machines. The IBIS Report divided the goods provided by cafes and coffee shops into the categories of coffee, other beverages and food but with no reference at all to coffee machines.

252    Barcelona submitted the fact the goods may be “used together” with other goods (such as coffee with coffee machines to make coffee beverages drunk from coffee cups) as submitted by Ms Notaras, was not sufficient to make them “of the same description”. Barcelona submitted that coffee machines, coffee beans, coffee beverages and coffee cups may be complementary but they were different and not in any way substitutable for each other.

253    In relation to services, Barcelona submitted, the answer to the question: what function did the Barcelona services serve with respect to coffee machines, was none. They were not closely related. Barcelona submitted this conclusion was consistent with Winton Shire Council at [55]-[57].

254    Barcelona submitted that the Court should give particular weight to the delegate’s expertise and that his approach was orthodox and consistent with earlier decisions which had held that ice cream was not a “similar good” to an ice cream machine and that restaurant services were not closely related to food items in Class 30.

Section 60

255    Ms Notaras submitted that she was required to establish that: (a) there was “another trade mark”; (b) which had acquired a reputation in Australia before the priority date; and (c) because of that reputation, the use of Barcelona’s proposed trade mark for any designated goods or services would be likely to deceive or cause confusion. She submitted that each of these criteria were established, therefore s 60 operated as a further barrier to registration of Barcelona’s proposed trade mark.

256    As to (a), the trade mark was the word ATOMIC. Ms Notaras submitted that the ATOMIC word mark enjoyed a reputation both as a word (in any font, case or stylisation) and when represented visually in the particular style that appeared in the ATOMIC logo.

257    As to (b), Ms Notaras submitted that the ATOMIC trade mark had acquired a reputation at the priority date in connection with the Atomic machine. Citing Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; 50 IPR 1 at [91], Ms Notaras submitted that a significant number of persons interested in these kinds of coffee machines knew the ATOMIC trade mark. Second, the question of reputation was not determined merely by reference to sales volume. Here, Ms Notaras submitted, the esteem component of the reputation in the ATOMIC trade mark could not be clearer. Third, an important consideration when assessing reputation was the duration of the trade mark use. Here it was not possible to determine exactly how many Atomic machines had been sold over the years or in recent times but they had been sold by Bon Trading over a very long period of time, and were continuing to be sold (including in Western Australia) in the lead up to the priority date.

258    As to (c), Ms Notaras submitted that because of the ATOMIC trade mark’s reputation, the use of Barcelona’s proposed trade mark would be likely to deceive or cause confusion. No intention to deceive or cause confusion was required, however where a mark was used for the purpose of creating an association in the mind of the public with another trade mark then, as in Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; 58 CLR 641 at 657 it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse. The threshold for confusion was not high. Further, the question was not confined to whether the actual trade mark use that Barcelona had engaged in would be likely to deceive or confuse as it was the statutory rights of use that Barcelona sought which must be considered.

259    Here, Ms Notaras submitted, the statutory rights would include, as normal and fair use, an entitlement to sell ATOMIC branded ground coffee, roasted coffee or coffee beans, and ATOMIC branded coffee cups: in a boutique store or coffee retailer; in a department store; on eBay, or another online retail platform; and in a supermarket or cafe. In each of these examples, Ms Notaras submitted, there was a real likelihood of deception or confusion, having regard to the substantial identity of the trade marks and the close relationship between the trade of coffee machines and coffee. The same position arose when considering the coffee related services. The actual manner in which Barcelona was using the ATOMIC trade mark for its cafe goods or services reinforced the likelihood that the relevant “significant” consumers would be confused. Mr De Marte accepted in cross-examination that a reason for displaying the Atomic machine in his cafe was to make an association between the stylish and classic Atomic machine known by the ATOMIC trade mark on the one hand, and Barcelona’s proposed trade mark on the other.

260    Barcelona submitted that the principles were uncontroversial and that Ms Notaras must prove that as at the priority date her ATOMIC mark: had a reputation in Australia; amongst a significant section of the public; such that the use of Barcelona’s proposed trade mark would be likely to deceive or cause confusion. Barcelona submitted that “Atomic” was a plain English word with various associations, for example, generally relating to atoms in chemistry; the atomic bomb and the atomic era of design. A number of traders had chosen to use it apart from the parties before the Court and in respect of a variety of goods/services.

261    Barcelona submitted that whatever the reputation of the Atomic coffee machines may have been in Australia in the twentieth century, by 2015 it was insubstantial. There was no real evidence extending any reputation beyond coffee machines. It was a niche market. Apart from a handful of sales invoices bearing the ATOMIC mark and addressed to Western Australian customers, there was no compelling evidence of sales in Western Australia, despite Ms Notaras spending considerable time searching for invoices to customers. The sales closest to the priority date were for parts rather than whole machines, suggesting few if any new owners of Atomic machines in Western Australia in the years leading up to the priority date. Barcelona submitted that the limitation to Western Australia should be taken into account. This application had been accepted on that basis. Barcelona referred to PB Foods Limited v Malanda Dairy Foods Limited [1999] FCA 1602; 47 IPR 47 at [69] and following.

262    Indeed, Barcelona submitted, there was scant evidence of sales in Australia at all under the mark during the years leading up to the priority date. By contrast, Barcelona submitted, by the priority date it had acquired a strong and independent reputation in the ATOMIC mark in relation to its cafes and associated goods and services. The majority of the evidence related to the years 2010-2014, the years leading up to the priority date. There was no evidence that anyone had confused, or even associated, Barcelona’s goods or services with those of Ms Notaras (or Liflo). There was specific evidence to the contrary.

263    In terms of associations in fact made by the public from the use of ATOMIC, the evidence showed that some people had associated Barcelona’s naming of its cafes with the Atomic bomb. Ms Notaras’ submission that Barcelona had sought to evoke an association with the Atomic machine by displaying it on the shelf in one of its cafes should be rejected.

264    Mr Nadile, who gave evidence for Ms Notaras, also displayed the Atomic coffee machine in his store for the purpose of creating atmosphere but not to create an association between the manufacturer of Atomic or Ms Notaras and her business.

265    Barcelona submitted there was nothing in the evidence that would lead the Court to infer that because of any reputation of the Atomic machines provided by Ms Notaras, a significant section of the public would see or experience Barcelona’s goods and services provided under the ATOMIC mark and be confused or deceived as to their source. This was particularly, although not necessarily, so because of the geographical limitation on Barcelona’s application to Western Australia.

Section 55 – residual discretion

266    Barcelona submitted that the text of s 55 allowed for a residual discretion not to reject an application even if the ground of opposition was made out. If, for example, Ms Notaras were to succeed in proving a small amount of use of the ATOMIC mark in relation to ground coffee in the 1960s and 1970s and not since then, Barcelona submitted that this would be a circumstance where the Court should allow registration of Barcelona’s proposed trade mark in relation to the full specification of goods and services sought, having regard to the limited extent of the use which was de minimis and historic use in Sydney and Melbourne, and the geographical limitation on Barcelona’s proposed trade mark to Western Australia.

267    Ms Notaras submitted that this question only arose after the Court had determined whether a ground of opposition arose, and if so, to what extent. This was made clear by the words “at the end” in s 55(1). No geographical limitation was appropriate, it was submitted, for a number of reasons. First, the ATOMIC trade mark had a reputation in Western Australia. Second, Ms Notaras had traded and continued to trade in the Atomic machines and spare parts with persons in Western Australia. Third, even if the reputation in the Word Mark was concentrated in the Eastern states, the supply of coffee and coffee machines, together with the related services, occurred as part of a national market. Fourth, the Word Mark provided Ms Notaras with nationwide statutory rights. Unless Barcelona established “honest concurrent use” or “other circumstances” under s 44(3), there was no basis upon which the Court should consider allowing a geographical limitation to overcome the prior conflicting mark ground. If there was no honest concurrent use then the Court would not impose a geographical limitation as a matter of discretion. Fifth, counsel for Ms Notaras’ research had not identified any case that had allowed a mark opposed on the ground that the applicant was not the owner to proceed to registration with the geographical limitation. Sixth, the circumstance that Barcelona had not demonstrated commercial honesty in the relevant sense provided a further basis for declining to exercise the discretion under s 55(1) in its favour.

Notice of contention

268    Barcelona submitted that this was a classic case for registration on the basis of honest concurrent use. Barcelona had honestly, and without improper motive, adopted in 2004 and for all the years since then used the ATOMIC mark in Western Australia for its cafes/restaurants and the goods and services associated with them. Barcelona submitted that Mr De Marte had been open from the outset of his knowledge of the Italian Atomic coffee machine. He described his interest in the 1940s Atomic era of design, including the Atomic coffee machine which influenced his choice of the ATOMIC name. However at the time he adopted the mark he was not aware that the Atomic machine was still being sold internationally or within Australia. Barcelona contrasted the position in Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd [2016] FCA 1406; 122 IPR 232 at [125].

269    Barcelona submitted that Ms Notaras’ submission that Mr De Marte was not candid in his declaration to the Trade Marks Office was not available on the evidence.

270    Barcelona submitted that confusion evidence was not fatal to an application on the basis of honest concurrent use, but its absence was telling. Another factor weighing against any likelihood of confusion was the very different price of Ms Notaras’ coffee machines ($575) compared with the kinds of goods supplied by Barcelona, such as bags of coffee beans, cups of coffee and food.

271    Also relevant, Barcelona submitted, were Barcelona’s lengthy period of use and extensive reputation and the lack of reputation of Ms Notaras in Western Australia in particular.

272    Mr De Marte gave evidence of the inconvenience and cost to Barcelona involved in any rebranding after more than 12 years of trade and, in any event, this could be inferred from the lengthy period of use of the mark and the goodwill accrued from positive reviews over the years, including the Good Food Guide. By contrast there was no evidence that the use by Barcelona of the mark in Western Australia had caused any inconvenience to Ms Notaras.

273    To the extent that Ms Notaras suggested any potential downside to her business caused by registration of Barcelona’s proposed trade mark, this was belied by her lack of awareness of the Barcelona Atomic cafes/restaurants until after Barcelona’s proposed trade mark was advertised in mid-2016, by which time those cafes/restaurants had been running for about 11 years. Also the sales in Western Australia by Ms Notaras were insubstantial and she had not sold any ground coffee for some 50 years. In the absence of any evidence of confusion and the very different locations of the parties’ businesses, there was no real risk of any effect on Bon Trading’s business. Barcelona submitted that, as evidenced by the nature of its businesses, the supply of the goods and services the subject of its application tended to be very localised.

274    Barcelona submitted that the relevant “other circumstances” also favoured registration of the mark. Barcelona relied on both the geographical limitation on its registration to Western Australia and the fact that a third party was the registered owner of the ATOMIC mark in all other States of Australia, including in relation to coffee, with a priority date of 7 February 2005.

275    Ms Notaras submitted, with reference to McCormick, that Barcelona must establish that it was appropriate to permit registration having regard to honesty; the extent of the use in terms of time and the sales volume; the degree of confusion likely to ensue between the marks in question; any instances of confusion that had been proved; and the inconvenience that would ensue if registration was granted. This involved a discretionary judgment. The date for assessing whether there had been honest concurrent use was the priority date, 8 April 2015. Barcelona bore the onus of proving honesty.

276    Ms Notaras submitted that Barcelona had not discharged its onus. It was not candid with the Trade Marks Office when it sought to overcome the Examiner’s objection to Ms Notaras’ prior Word Mark and other cited trade marks. Ms Notaras referred in particular to [39] and [40] of Mr De Marte’s statutory declaration sworn on 23 May 2016 and to the evidence he gave in cross-examination. This, it was submitted, established that Mr De Marte lacked candour in his dealings with the Trade Marks Office, and of itself provided a sufficient basis for finding that Barcelona had not discharged its onus of establishing honest concurrent use.

277    Further, Mr De Marte’s choice of the ATOMIC trade mark was inspired by the Atomic machine which bore and was known by the ATOMIC trade mark. Ms Notaras submitted that the inspiring Atomic machines were the vehicle for explaining the new ATOMIC branding to the market.

278    Third, Ms Notaras submitted, Mr De Marte displayed an Atomic machine on the cafe shelf in close proximity to Barcelona’s proposed trade mark and one reason why he had so displayed the machine was to make an association between the stylish and classic Atomic machine and Barcelona’s proposed trade mark.

279    Fourth, even if Mr De Marte was not aware that the Atomic machines were still being manufactured and sold in Australia when Barcelona’s South Perth cafe opened in September 2005, this would not have discharged Barcelona’s onus on the issue of honesty. Ms Notaras submitted that commercial honesty required Barcelona to take reasonable steps and precautions before opening the cafe, such as checking whether or not the Atomic machines remained on the Australian market and whether or not the ATOMIC trade mark used on the machines may have enjoyed registered trade mark protection. Ms Notaras referred to Tivo Inc v Vivo International Corp Pty Ltd [2012] FCA 252 at [293]-[294]; Insight Radiology at [125]-[127] (affirmed on appeal sub nom Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83; 251 FCR 379 at [103]); and Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 at [111] and [141]-[150]. In Flexopack, Beach J said at [111]:

The test to be applied is in one sense objective. If a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then they are not acting in good faith. If the Respondents are to avail themselves of this defence they must show that their conduct was in good faith. The onus rests on them.

280    Ms Notaras submitted that because Barcelona had not established the essential element of “honesty”, the discretion to permit registration for honest concurrent use could not be made out.

281    Turning to the duration and extent of use, Ms Notaras submitted there was no dispute that in the period between 2008-2009 and 2014-2015, a material amount of revenue was generated by Barcelona providing class 43 cafe services and class 30 coffee beverages at the South Perth and Claremont cafes under the ATOMIC trade mark. But this was but one factor that must be weighed with the other considerations. There was no evidence that Barcelona ever used the ATOMIC trade mark before the priority date for at least ground coffee; preparations for making beverages (coffee based); instant coffee; unroasted coffee; or coffee substitutes in class 30; wholesaling of coffee and coffee based products; wholesaling of drinks in class 35; heat insulated containers for beverages in class 21 or coffee grinding; coffee roasting in class 40. Barcelona’s contention that there had been honest concurrent use of the ATOMIC trade mark for these goods and services must be rejected accordingly: the absence of evidence was immediately fatal in respect of these goods and services.

282    Further, Ms Notaras submitted, the evidence also did not establish that Barcelona engaged in any significant volume of trading in the class 30 “coffee bean” goods before the priority date. While Mr De Marte stated that Barcelona commenced offering and providing 1 kg bags of coffee at the South Perth and Claremont cafes in April 2011 his evidence did not establish any significant volume of coffee beans was sold. The profit and loss statement showed negligible sums.

283    Ms Notaras also submitted that Barcelona’s position on the s 60 ground and its case of honest concurrent use were in conflict. This was because honest concurrent use required both parties to have engaged in more than de minimis concurrent use.

284    Ms Notaras also submitted that the remaining factors relevant to assessing honest concurrent use reinforced the conclusion that registration should not be permitted on that ground. Mr De Marte chose a trade mark that he knew had prior use for the Atomic machines and he took no step to investigate whether or not the mark was registered or remained in use. Any inconvenience that Barcelona would suffer because of the registration being refused fell to be assessed in that light. Second, Ms Notaras would be prejudiced by registration being permitted. Third, the likelihood of confusion, particularly bearing in mind the notional use, was high.

285    In relation to s 44(3)(b), Ms Notaras submitted that the geographical limitation was not a relevant “other circumstance” since a geographical limitation was permitted to be imposed if other circumstances existed. Therefore the “other circumstances” must be something other than the geographical limitation itself. Further, the fact that a third party (Suntory) owned registration for the trade mark ATOMIC for coffee, with a priority date of 7 February 2005, was not a proper circumstance that justified permitting registration of Barcelona’s proposed trade mark. Any conflict between Ms Notaras’ mark and other trade marks was irrelevant to the issue under consideration. In any event, Ms Notaras was not aware of Suntory ever having used the ATOMIC trade mark for coffee, and Barcelona had led no evidence to establish the contrary. Ms Notaras had also applied to remove the Suntory trade mark from the Register for non-use.

286    The parties were also at issue as to whether “honest concurrent use” provided an exception to the ground of opposition under s 58. Ms Notaras submitted that Barcelona had not established that the reasoning in McCormick was plainly wrong in its application to s 60 or should not be followed in the case of s 58.

Remedy

287    Ms Notaras submitted that to succeed in her opposition to registration she need only establish one or more grounds of opposition, having regard to one or more of the coffee related goods or services, citing Apple Inc v Registrar of Trade Marks [2014] FCA 1304; 227 FCR 511 at [232]. She submitted that she had discharged that onus and it was a matter for Barcelona to make any application for amendments that narrowed the goods and services. She would consent to Barcelona being given an opportunity to make such an application, once reasons were published.

288    Barcelona submitted that the approach taken in Apple was not applicable here by reason of the different circumstances. Further, the Full Court in Lomas at [46]-[47] stated in obiter dicta that the correct approach was to delete only the service in respect of which any opposition under s 58 succeeded, and not the whole class of services, let alone the whole specification. The Court’s power under s 197 was very wide and the discretion under s 55 was also broad. In the alternative Barcelona sought the opportunity to amend its trade mark application to remove any goods or services for which the ground of opposition succeeded. It was clear that the Court had power under s 65(7) to cut down the breadth of the application.

Consideration

289    Ms Notaras was hard of hearing and the device for assisting her hearing was not working well. Nevertheless, although astute, she was not an impressive witness. I formed the view that in certain instances she chose not to understand questions that were being put to her and maintained, improbably, that she could not remember details of recent events. One example of this was her answers to questions about recent correspondence, in one instance three days before she gave oral evidence on 30 July 2018, which she claimed she had not seen and did not recall but which she had annexed to her second affidavit: see [93] above. No doubt the professional relationship between Ms Notaras and her former accountant ended with some bitterness. I formed the view that she did not give her evidence truthfully and to the best of her recollection but framed her answers and her non-answers so as best to advance her case. She showed a keen awareness of which questions had the capacity to undermine her case. Also the evidence was she was a good record-keeper and had copious records. Yet she gave no convincing explanation as to the incompleteness of the records she did deploy in her evidence.

290    I do not accept Ms Notaras’ evidence where it was not supported by contemporaneous records or the underlying probabilities. I give no weight to her claims set out at [46], [91] and [92] above where they are not supported by contemporaneous documents. I accept the respondent’s submissions that Ms Notaras’ evidence should be approached with caution and that she was an evasive witness who at times would not accept even obvious propositions when she thought it might not assist her case.

291    Mr De Marte gave his evidence in a more forthright manner and I find that he gave his evidence honestly. Nevertheless, I formed the view that because he was convinced in his own mind that what he had done was commercially honest, it took him longer than it should have to accept what was obvious, namely that an important part of the inspiration for his choice of the ATOMIC trade mark was the Atomic coffee machine.

292    Subject to one matter I accept Mr De Marte’s evidence. In particular I accept his evidence that he innocently commenced using the trade mark ATOMIC unaware of Ms Notaras’ rights in the mark. The one matter to which I refer, but which has potential significance as considered in [300] below, is in relation to Mr De Marte’s statutory declaration dated 23 May 2016 and his equivocation during cross-examination about the use of the ATOMIC mark after he had sold the Claremont premises. This was in circumstances where he had accepted it was more likely than not that the new owners would begin trading as Academy rather than under the name ATOMIC: see [189]-[197] above.

293    There are four respects in which the evidence was controversial and requires specific findings.

294    First, I find that Ms Notaras did not intend to resume sales of ground coffee, or indeed coffee beans, either at all or under the ATOMIC trade mark at any relevant time. I find that those sales ceased in about 1972 and I do not accept her evidence that she had an intention subsequent to that time to resume those sales. I do not accept Ms Notaras’ evidence, see [105] above, that she had conversations with representatives of Torrefazione about selling that company’s coffee in Australia under the ATOMIC brand. I do not accept Ms Notaras’ evidence, see [106]-[107] above, that she had spoken to coffee suppliers in Australia with a view to selling or supplying coffee in Australia under the ATOMIC brand. I do not accept Ms Notaras’ evidence, see [103] above, that she wished to but could not source coffee suitable for the Atomic machine to sell to customers in Australia after about 1972. I find she had no intention to supply coffee under the ATOMIC brand in Australia at any time between about 1972 and 2015. I do not accept that the registration of the business name “ATOMIC COFFEE” in May 2005 is anything more than equivocal in this respect. I do not accept that Ms Notaras’ decision to file an application for Suntory’s registered word mark for ATOMIC in relation to goods including coffee to be removed for non-use casts any light on her state of mind before 2018. That decision arose in the course of this litigation. Suntory’s word mark for ATOMIC had been registered since 7 February 2005. Ms Notaras’ inaction speaks louder than her words.

295    Second, as I have indicated at [291] above, I find that an important part of the inspiration for Mr De Marte’s choice of the ATOMIC trade mark was the Atomic coffee machine. I find that this inspiration was a conscious part of the choice made by Mr De Marte to use the ATOMIC mark for the goods and services supplied by Barcelona from September 2005.

296    Third, in relation to “honest concurrent use”, I accept Mr De Marte’s evidence that he had no knowledge of the use of the ATOMIC mark before he adopted or Barcelona adopted the ATOMIC mark for the Perth businesses supplying goods and services. In particular, I accept Mr De Marte’s evidence that although he acquired the Atomic coffee machine at the time he began trading at the cafe in South Perth in September 2005 he saw only the word ATOMIC but not the information underneath it: see the photograph reproduced at [206] above. Also I accept his evidence that he was unaware at that time that the Atomic espresso machine was still being manufactured at all, including in Australia.

297    I find that Mr De Marte was not aware of the appellant’s trade marks and I also find that he did not constructively know of those trade marks in the sense that he should have known of them or turned a blind eye so that he would not become aware of them. I reject the appellant’s submissions that it was a reasonable step required of a commercially honest trader to check any Atomic machine in their possession to identify the source of the machine if they were choosing the ATOMIC trade mark, having been inspired by the machine; that a commercially honest and reasonable trader in Mr De Marte’s position would have inspected his Atomic machine using the ATOMIC trade mark and then taken, at the least, the steps of finding the number in the telephone directory and calling the business to ask whether they still traded in the machines; and that, where Atomic machines were an important inspiration for him choosing the ATOMIC trade mark, a commercially honest and reasonable trader in Mr De Marte’s position would have sought legal advice before opening the first cafe using the ATOMIC trade mark for Barcelona’s business: see [208]-[210] above. I therefore find that the respondent’s mark was adopted honestly. Although the Atomic machine was an important part of Mr De Marte’s inspiration to use the name ATOMIC for his Perth businesses, it was the machine rather than the trade mark which was the inspiration. As I have said, I accept Mr De Marte’s evidence that at that time he thought the Atomic machine had gone out of production and was no longer sold and he had no knowledge of Ms Notaras’ ATOMIC trade marks.

298    I also find that the respondent’s use has been limited to the city of Perth and its suburbs.

299    I further find that confusion is not likely to ensue given the differences between the appellant’s goods on the one hand and the respondent’s goods and services on the other hand, and I also find that confusion has not in fact occurred.

300    Mr De Marte was challenged in relation to the honesty of certain paragraphs of his statutory declaration dated 23 May 2016. I have set out the particular paragraphs at [189] above and the questions and answers in relation to those paragraphs at [190]-[197]. I do not accept Mr De Marte’s evidence that the intention of the purchaser of the Claremont business was to retain the ATOMIC licence and to continue with the ATOMIC brand but that because the trade mark issue had not been resolved Barcelona was not in a position to license the name to the purchaser on a long-term basis. I find that Mr De Marte was to that extent not candid with the Trade Marks Office as to Barcelona’s and the purchaser’s intention in that he did not draw to the attention of the Trade Marks Office that there was a probability that the long-term licensing would not proceed. Nevertheless I do not find that this “half-truth” adversely affected the honesty of his concurrent use of the ATOMIC trade mark.

301    Fourth, in relation to the question of ownership under s 58, although the primary facts were not dependent on findings in relation to the two principal witnesses, I find that the ground coffee samples supplied by Bon Trading with the Atomic coffee machines were not supplied for use with the machines but solely to illustrate the grind of coffee required for those machines. That is what the accompanying prose in the instructional booklet states. It is also consistent with the evidence Ms Notaras gave in her first affidavit, where she said she had included the coffee sample bag in the instruction booklet because it was important that purchasers of the Atomic machine used coffee of the same (fine dimension) grind as the sample for the best results: see [52] above. Each sample was not of such an amount of ground coffee as to be usable in the machine to be made into coffee, again see [52] above. The sole purpose was to show the appropriate grind for use in the Atomic coffee machines.

302    I turn then to a number of issues in the common list provided by the parties and which I have set out at [26] above. It may be noted that those issues did not include that Ms Notaras also first used the ATOMIC trade mark in Australia in respect of fresh made cups of coffee. I assume that that claim was abandoned. If it was not, in my opinion the evidence of Ms Notaras was of insufficient substance to support it.

303    The issues numbered 1-7 arise in relation to s 58 of the Trade Marks Act, the question being whether Barcelona was not the owner of its proposed trade mark.

Issue 1

304    I find that Ms Notaras has established historic use of the word ATOMIC as a trade mark in Australia in relation to ground coffee supplied in ½ pound cans before the priority date of Barcelona’s application, 8 April 2015.

305    As I have indicated at [294] above, I do not accept that Ms Notaras or Bon Trading continued to sell ground coffee in ½ pound cans until the mid to late 1980s. Ms Notaras’ clearest evidence was that she remembered supplying hundreds of ½ pound cans during the 1960s and 1970s. I also do not accept that Ms Notaras was unable to find a suitable alternative supplier when Andronicus stopped supplying to her. I find that as at April 2015 and before Ms Notaras did not have an intention to supply ground coffee to consumers.

306    I find that the ground coffee samples provided with the instructional booklets were not the supply of ground coffee either under the ATOMIC trade marks or at all. I repeat what I have said at [301] above. I reject the appellant’s submission, at [224] above, that this supply of samples constituted use of the Word Mark for ground coffee. I also reject the submission that the provision of the coffee ground samples involved Ms Notaras providing a “coffee grinding” service to her customers under the Word Mark. I have found that the sample was not usable as coffee. I accept the respondent’s submission that there was no trade mark use of ATOMIC in relation to the ground coffee samples. The use of the sample in each case was only to demonstrate the grind of coffee for optimal use of the machine. Also, the samples were unbranded and the use of the ATOMIC mark in relation to the machine did not extend to the unbranded samples.

307    I do not accept Ms Notaras’ evidence that she investigated various different coffee blends, coffee roasters and coffee suppliers with the objective of resuming the sale of ATOMIC branded coffee, both before and after 2005, including by visiting the Host Exhibition in Milan to sample coffee types and investigate potential suppliers.

308    I do not accept that Ms Notaras registered the business name ATOMIC COFFEE in May 2005 with the intention of resuming selling ATOMIC branded ground coffee using that business name and the Word Mark.

309    In these circumstances, dealing with the unregistered mark in relation to ground coffee, it is appropriate to consider issue 4 which is whether Ms Notaras abandoned the ATOMIC mark in relation to ground coffee before 8 April 2015, the priority date of Barcelona’s application.

310    In this respect I find that the prior use was not only not continuous but that Ms Notaras did not have the intention to use the ATOMIC trade mark in respect of ground coffee between the early 1970s and April 2015. I find that as at April 2015 the appellant had no subsisting reputation in the marketplace. In these circumstances it may not be appropriate to analyse the question by reference to the abandonment of, implicitly, the property in the trade mark.

311    In any event, the decision of the Full Court in Riv-Oland is distinguishable on the facts. In that case, not only did the Full Court refer to one small sale of seven drums of Riv-Oland material by Settef in Australia in a six year period, but also Settef used its trade mark in Australia in a number of transactions. The primary judge concluded, Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 425, that the proper inference was that Settef never formed or evinced an intention to abandon the trade mark. At no time when it was not using the mark did it have it in mind that it would not resume its use.

312    In the case before me, there are no countervailing indications of intention and there is nothing to suggest a mere pausing in making use of the trade mark in respect of ground coffee. The present is not a case of slightness of use of the trade mark but, I infer from decades of non-use, Ms Notaras having in mind up to at least April 2015 that she would not resume its use. I infer an intention to abandon the trade mark in respect of ground coffee.

Issue 2

313    I find that Ms Notaras has not established use of the word ATOMIC in Australia as a trade mark in relation to ground coffee samples before 8 April 2015, or at all. I repeat my findings at [301] and [306]-[308] above.

Issue 3

314    This issue arises because Ms Notaras has established some prior use in relation to ground coffee. If I am wrong about abandonment in relation to ground coffee, plainly some of the other class 30 goods designated in Barcelona’s application are “the same kind of thing” as ground coffee. I would include in this category coffee, coffee beans, ground coffee, coffee products and decaffeinated coffee. Obvious exceptions would be the prepared or frozen meals listed at the end of the class 30 goods: see [3] above.

Issue 4

315    I have considered this issue, the question of abandonment, at [309]-[312] above.

Issue 7

316    The last issue under this head, issues 5 and 6 no longer arising, depends on whether first use for the purpose of s 58 is established by Ms Notaras in relation to any goods. I note that in McCormick, Kenny J held that “honest concurrent use” under s 44(3) does not provide an exception to s 60 of the Trade Marks Act. The issue whether there is an “honest concurrent use” exception to s 58 does not arise in light of my conclusion as to abandonment: see also Dunlop Aircraft Tyres Limited v Goodyear Tire and Rubber Company [2018] FCA 1014; 134 IPR 220 at [292].

Summary on s 58 ground

317    For these reasons I conclude that for the purposes of s 58 of the Trade Marks Act, Ms Notaras has not shown that the respondent was not the owner of the trade mark.

318    The next set of issues concerned the s 44 ground, referred to by the parties as concerning the prior registered mark.

Issue 8

319    In Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6; 351 ALR 436 the Full Court said:

Substantially Identical

[57]    The relevant test for determining substantial identity was discussed by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407. His Honour said at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”. Whether there is substantial identity is a question of fact.

(citations omitted)

[58]    In Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (Funship) Gummow J noted at 513 that the phrase “substantially identical” as used in s 62 of the Trade Marks Act 1955 (Cth) (“the 1955 Act”) “… requires a total impression of similarity to emerge from a comparison between the two marks”: see also Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 (Colorado) per Allsop J (as the Chief Justice then was) at [106]–[110].

…

Services of the Same Kind

[61]    The authorities establish that a person’s ownership of a trade mark will usually extend not only to the goods or services in relation to which he or she has used or proposes to use, but also to other goods or services that are “of the same kind.” The expression “the same kind of thing” derives from the judgment of Holroyd J in Re Hicks Trade Mark (1897) 22 VLR 636 at 640. His Honour said at 640:

In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word “proprietor” must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word “Empress” in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark.

[62]    As Kenny J explained in Colorado at [6]:

The owner of a mark does not have rights at large in relation to the mark. The effect of the 1995 Act, which, in this regard, is much the same as earlier trade mark legislation, is that a trade mark must be registered in respect of particular goods or services as set out in Sch 1 to the Trade Marks Regulations 1995 (Cth): see reg 3.1, 4.4 and Sch 1; also the 1995 Act, ss 19 and 27. Ownership by first use is therefore ownership (or proprietorship) in relation to the goods or classes of goods on which the mark has first been used. The owner’s right to registration in this circumstance is not limited to the identical goods or classes of goods but extends to goods or classes of goods “of the same kind”: see Jackson & Co v Napper (1886) 35 Ch D 162 at 178 and Re Hicks Trade Mark (1897) 22 VLR 636 at 640.

[63]    Her Honour said at [14]:

As we have seen, generally speaking, the prior public use in Australia of a mark as a trade mark — that is, the use of the mark in relation to goods or services in order to show a connection between the goods and the user of the mark — may support the user’s claim to be the “owner” of the mark for the purpose of s 27 of the 1995 Act: see Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414 at 432 per Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed). For this purpose, too, the owner’s right to registration extends to goods “of the same kind” as the goods that have already borne the mark: see Jackson v Napper (1886) 35 Ch D 162 at 178 per Stirling J and Re Hick’s Trade Mark (1897) 22 VLR 636 at 640 per Holroyd J. Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper (1886) 35 Ch D 162 where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet.

[64]    As Allsop J also observed in Colorado at [89], there is a difficulty involved in fixing upon the proper frame of reference for the purpose of determining whether goods or services are of the same kind. Nevertheless, as his Honour also suggested at [89], the question whether goods or services are of the same kind must be addressed in a practical and common sense way and by asking whether the relevant goods or services are essentially the same.

320    The first task in relation to issue 8 is to identify the goods. In Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84, cited with approval in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 606-607, Dixon J said, at 94:

What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business.

321    Applying these principles, first in relation to goods, I do not accept Ms Notaras’ submission that the class 30 goods designated in Barcelona’s application and set out at [239(a)] above were “goods of the same description” as the goods over which the Word Mark was registered, being non electric coffee percolators, espresso makers, coffee machines and non electric cappuccino makers. I find that the nature of the goods is quite different. I also find that the uses of the goods are quite different notwithstanding that ground coffee is used in coffee machines and coffee as a beverage is produced by a coffee machine.

322    The respondent’s cafes do not sell coffee machines. It is not common for cafes to sell coffee machines retailing at many hundreds of dollars. Coffee machines are not commonly provided through the same trade channels as coffee, notwithstanding there are instances of cafes selling a relatively cheap device for making coffee, such as the AeroPress. I accept the evidence of Mr De Marte, set out at [169] above, that these small, plastic, portable plunger style devices are of a different nature to home use coffee machines, percolators and stove top coffee machines sold through retailers. I give no weight, as occupying a distinct niche, to the evidence of sellers of coffee pod machines and the coffee pods used in them. I also do not regard it as significant that in some instances those sellers provide coffee to their customers to drink to demonstrate to prospective purchasers the pod machines’ function. I accept Mr De Marte’s evidence that at these concept stores the serving of coffee was an incidental offering by way of promotion of the coffee pods sold for exclusive use in the coffee machines for sale in those stores and that the Nespresso concept was the tied sale of coffee machines and pods under the same brand.

323    Although there is some overlap in trade channels through which the goods are bought and sold, I find that that overlap does not amount to the goods commonly being sold in the same kinds of “shops or departments” and it is not sufficient to lead to the conclusion that the goods are of the same description as each other and thus similar goods within the meaning of s 14. I find that Barcelona’s goods in class 30 are not commonly sold through the same trade channels as coffee machines, although there are some instances where a coffee machine may be purchased at a cafe or at a retail store selling coffee beans or ground coffee. Similarly, I find that the sale by retail in certain instances of coffee pods together with pod coffee machines, with or without a free cup of coffee, does not establish that the class 30 goods are goods of the same description as the coffee machines.

324    I accept the evidence of Mr De Marte that he was not aware of any consumer ever enquiring to buy a coffee machine at any of his cafes or restaurants.

325    Continuing in relation to goods, for similar reasons I do not accept Ms Notaras’ submission that the class 21 goods designated in the Barcelona application and set out at [239(b)] above were “goods of the same description” as the goods over which the Word Mark was registered, being the non electric coffee percolators, espresso makers, coffee machines and non electric cappuccino makers.

326    I find that coffee cups, cups of paper or plastic, cardboard cups, heat insulated containers for beverages and containers for beverages have quite a different nature to coffee machines. I find that coffee cups are used with coffee machines in the sense that the beverage produced by the coffee machine is poured into a coffee cup but the goods remain different and it could not be said that one was substitutable for the other. I reach this conclusion notwithstanding also that some types of coffee machine include a part which may be described as a heat insulated container. I also find that the uses of the goods are quite different notwithstanding that that the coffee beverage which a coffee machine makes is drunk from a coffee cup.

327    Again, I find that although there is some overlap in trade channels through which these goods are bought and sold, that overlap is not sufficient to lead to the conclusion that these goods are of the same description as each other and thus similar goods within the meaning of s 14.

328    In respect of all of these goods, I take into account the reasoning in Polo Textile at 241 that it is relevant to consider the matter of the likelihood of confusion or deception when assessing whether or not goods are similar to other goods within the meaning of s 14.

Summary on s 44 in relation to Barcelona’s goods

329    In my opinion, Ms Notaras has not established that any of the opposed Barcelona goods in class 21 and class 30 are the same or of the “same description” as the class 21 coffee machines designated in Ms Notaras’ prior registration for the Word Mark. The minor overlapping of trade channels does not lead to a different conclusion.

Issue 9

330    Turning to services, in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 48 ALR 511 the Full Court considered the background to the amendments to the Trade Marks Act 1955 (Cth) by the Trade Marks Amendment Act 1978 (Cth) when the Act was extended to cover services. In that case, the Supreme Court of South Australia had granted an injunction restraining the appellants:—