Federal Court of Australia

Bickford’s Australia Pty Ltd v Noot Drinks Co Pty Ltd (No 2) [2026] FCA 1456

ORDERS

THE COURT ORDERS THAT:

1.    The applicant’s objection to the tender of opinion evidence of Ms Cara Devine in her reports dated 14 September 2025 and 9 October 2025 is overruled, save for [6] of the report dated 9 October 2025, which will not be received.

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

REASONS FOR JUDGMENT

O’SULLIVAN J:

1    Bickford’s Australia Pty Ltd is a company registered in Australia pursuant to the Corporations Act 2001 (Cth) and, since 26 July 1993, has been the registered owner of Australian trade mark number 607675 for the word ‘SPRITZ’ in class 32 in respect of “non-alcoholic soft drinks” (SPRITZ Trade Mark).

2    A dispute has arisen between the applicant and the first respondent, Noot Drinks Co Pty Ltd, over alleged infringement of the SPRITZ Trade Mark by Noot.

3    Numerous issues arise in this matter, one of which concerns whether Noot has used the signs ‘NEGRONI SPRITZ’ and ‘LIMONCELLO SPRITZ’ on its products as a trade mark. That question is assessed objectively. The objective purpose and nature of use is assessed by reference to context and surrounding circumstances which, amongst other things, includes the relevant trade: Self Care IP Holdings v Allergan Australia Pty Ltd [2023] HCA 8 at [24].

4    A separate question is whether, if used as a trade mark, those words are deceptively similar. In considering the likelihood of confusion or deception, the degree of similarity between the marks “takes account of the effect of that similarity considered in relation to the alleged infringer’s actual use of the mark, as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered mark”: Self Care at [33].

5    As part of the respondents’ case, Noot seeks to tender and rely upon two expert reports prepared by Ms Cara Devine, the first dated 14 September 2025 and the second, being a supplementary report, dated 9 October 2025 (Devine Reports).

6    Bickford’s objects to the proposed tender of the Devine Reports.

7    I heard argument on that objection on 29 September 2026 and delivered my ruling on 30 September 2026. I indicated that I would publish reasons for my ruling. These are those reasons.

Principles

8    Section s 76(1) of the Evidence Act 1995 (Cth) provides:

76    The opinion rule

(1)    Evidence of an opinion is not admissible to prove the existence of a fact about the existence of which the opinion was expressed.

9    The exception to that prohibition is contained in s 79(1) of the Evidence Act which provides:

79    Exception: opinions based on specialised knowledge

(1)    If a person has specialised knowledge based on the person’s training, study or experience, the opinion rule does not apply to evidence of an opinion of that person that is wholly or substantially based on that knowledge.

10    Section 8(1) of the Evidence Act relevantly provides:

(1)    This Act does not affect the operation of the provisions of any other Act …

11    Section 219 of the Trade Marks Act 1995 (Cth) provides:

219    In an action or proceeding relating to a trade mark, evidence is admissible of the usage of the trade concerned and of any relevant trade mark, tradename or get-up legitimately used by other persons.

12    The principles relating to the admissibility of expert opinion are well-known: Makita (Australia) Pty Ltd v Sprowles [2001] NSWCA 305; (2001) 52 NSWLR 705; Dasreef Pty Limited v Hawchar [2011] HCA 21; (2011) 243 CLR 588; Lang v The Queen [2023] HCA 29; (2023) 278 CLR 323.

13    In Makita, after an extensive review of the authorities, Heydon JA (as his Honour then was) expressed the principles in a well-known passage: at [85].

14    In its written submissions on its objection to the admissibility of the Devine Reports, Bickford’s correctly extract the following five principles emerging from that passage in Makita:

(1)    There must be a field of “specialised knowledge”;

(2)    There must be an identified aspect of that field in which the witness has demonstrated an expertise;

(3)    The opinion must be wholly or substantially based on the witness’ expert knowledge;

(4)    Insofar as the opinion is based on facts observed or assumed, those facts must be identified and proved in an admissible way; and

(5)    It must be established that the facts on which the opinion is based form a proper foundation for it.

15    In Dasreef, when considering s 79(1) of the Evidence Act, the plurality observed that evidence to be tendered must satisfy two criteria to be admissible under s 79(1). The first is that the witness to give the evidence must have specialised knowledge based on their training, study or experience. The second is that the opinion expressed in the witness’ evidence must be “wholly or substantially based on that knowledge”: at [32].

16    The plurality in Dasreef continued: at [37] that the question of whether opinion evidence should be admitted is to be determined by the application of the requirements of the Evidence Act.

17    In Honeysett v The Queen [2014] HCA 29; (2014) 253 CLR 122 at [23], the High Court first repeated what the plurality in Dasreef said about the two criteria for admissibility under s 79(1) of the Evidence Act. It then continued in that paragraph to explain that, as to the first criterion that the witness to give the evidence must have specialised knowledge, being “knowledge which is outside that of persons who have not by training, study or experience acquired an understanding of the subject matter” and that specialised knowledge may be acquired by experience.

18    As to the second criterion that the opinion expressed be wholly or substantially based on that specialised knowledge, the High Court: at [24] said:

The second condition of admissibility under s 79(1) allows that it will sometimes be difficult to separate from the body of specialised knowledge on which the expert’s opinion depends “observations and knowledge of everyday affairs and events”. It is sufficient that the opinion is substantially based on specialised knowledge based on training, study or experience. It must be presented in a way that makes it possible for a court to determine that it is so based.

(Citations omitted, emphasis in original)

19    In Lang, Kiefel CJ and Gageler J: at [11] said:

… the principles stated in Makita, and acknowledged and applied in Dasreef Pty Ltd v Hawchar in the context of considering the admissibility of the opinion of an expert under the uniform evidence legislation, apply equally to the determination of the admissibility of an expert opinion at common law. Those principles require that, in order to satisfy the condition of admissibility that the opinion of an expert be demonstrated to be based on specialised knowledge or experience, the inference drawn by the expert which constitutes the opinion be supported by reasoning on the part of the expert sufficient to demonstrate that the opinion is the product of the application of the specialised knowledge of the expert to facts which the expert has observed or assumed.

(Citations omitted)

20    Jagot J (with whom Kiefel CJ and Gageler J agreed in the ultimate conclusion) at [433] observed in relation to the requirement expressed in Makita that “the expert’s evidence must ‘fully’ expose the expert’s reasoning process does not involve an absolute standard, even in a case where admissibility is governed by the terms of s 79 of the uniform evidence legislation. Much will depend on the field of expertise and the nature of the opinion given.”

21    After referring to the judgment of the plurality in Dasreef, her Honour: at [434] continued:

The point being made in Dasreef is that, while satisfaction of the requirement that an expert opinion must be based on the expert’s expertise determines the admissibility and not just the weight of the evidence, it is not necessarily the case that, if all matters underlying the opinion expressed are not “made explicit, it is not possible to be sure whether the opinion is based wholly or substantially on the expert’s specialised knowledge”. Depending on the field of expertise and the expert opinion given, some matters may be properly assumed or inferred as forming part of the foundation of the expert’s opinion. In Hannes v Director of Public Prosecutions (Cth) [No 2] this reality was expressed in the observation that “the need to demonstrate the process by which an inference was drawn is less likely to be insisted upon with strictness in the case of a well-accepted area of expertise, than in other cases”. In Honeysett v The Queen French CJ, Kiefel, Bell, Gageler and Keane JJ expressed this criterion as requiring not so much that foundation for the opinion is to be “fully expose[d]” or “made explicit”, but that the expert evidence “must be presented in a way that makes it possible for a court to determine that it is [substantially] based” on the person’s training, study, or experience.

(Citations omitted, square brackets in original)

22    It is apparent from the authorities to which I have referred that what is required is that the expert evidence must be such that, amongst other things, it is possible for a court to determine that the expert’s opinion is substantially based on the person’s training, study or experience and that “… the opinion is the product of the application of the specialised knowledge of the expert to facts which the expert has observed or assumed.”: Lang at [11]; see also [434].

23    Included within the observations to which Jagot J referred in Lang was a reference to Hannes v Director of Public Prosecutions (Cth) (No 2) [2006] NSWCCA 373; (2006) 165 A Crim R 151 in which the New South Wales Court of Criminal Appeal said: at [292] that “the need to demonstrate the process by which an inference was drawn is less likely to be insisted upon with the strictness in the case of a well-accepted area of expertise, than in other cases.” The Court’s observation reflects the overarching objective of ensuring that the evidence is presented in a way that makes it possible for the Court to determine that the opinion is substantially based on the person’s training, study or experience and that the opinion is a product of the application of that person’s expertise to facts which have been found or observed: Honeysett at [24]; Lang at [11].

24    None of this is to say that Heydon J’s analysis in Dasreef at [61] and following where his Honour set out in detail the common law position in relation to what his Honour described as the assumption identification rule, the proof of assumption rule, and the statement of reasoning rule, does not remain of central importance when considering the construction of s 79 of the Evidence Act. Rather, it is to recognise that there is a significant range of expertise across innumerable subjects, that there are various means by which expertise in those subjects may be acquired, and that each case will depend on its own particular circumstances.

25    So it is that whereas Heydon J’s analysis in Dasreef provides a basis from which to consider objections to the admissibility of expert evidence, as Jagot J observed in Lang: at [433]-[434] when referring to [85] of his Honour’s judgment in Makita, it is not necessarily the case that, if all matters underlying the opinion expressed are not “made explicit, it is not possible to be sure whether the opinion is based wholly or substantially on the expert’s specialised knowledge”.

26    The key point, and the point underlying Heydon J’s analysis, in Makita and Dasreef, is as the High Court observed in Honeysett, that it must be possible for the Court (and with respect to the Court, I add, as a matter of course the opposing party) to determine the opinion is substantially based on the person’s training, study or experience. It must also, of course, be possible to determine the facts assumed or proven (or to be proved) which form the basis of the opinion.

Section 219 of the Trade Marks Act

27    It is against that background that s 219 of the TMA falls for consideration. Given the provisions of s 8 of the Evidence Act, s 219 makes it clear that evidence of usage of the trade concerned and of any relevant trade mark, trade name or get-up legitimately used by other persons, is admissible.

28    In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 in considering s 66 of the Trade Marks Act 1955 (Cth), the predecessor to s 219 of the TMA, Windeyer J said that “all questions concerning trade marks must be considered against the background of the usages in the particular trade”, as recognised by s 66: at 410.

29    In Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCA 138; (2024) 181 IPR 78, Charlesworth J considered the operation of s 219 of the TMA in relation to the hearsay rule and in the context of an objection to certain website extracts which were said to be inadmissible pursuant to s 59 of the Evidence Act. At [309], her Honour held that an objection founded on the hearsay rule is answered by s 219 where a document or thing evidences the use of the relevant trade mark and that to hold otherwise would be to act contrary to s 8 of the Evidence Act. Her Honour held that s 219 applied to all the website extracts whether or not the extracts contain representations of fact adduced to prove the truth of the fact. In short, in her review of s 219, her Honour did not consider that s 59 operated to preclude the admissibility of hearsay evidence.

30    The objection under consideration in this matter is of a different kind. There is nothing in s 219 of the TMA that operates to make opinion evidence that would otherwise be inadmissible under s 79 of the Evidence Act, admissible. That is because s 79 is directed at ensuring that the evidence is presented in a way that makes it possible for the Court to determine that it is substantially based on the person’s training, study or experience: Lang at [434] referring to Dasreef at [41]-[42]; Honeysett at [24].

31    However, if an expert relies on evidence of trade usage and any relevant trade mark, trade name or get-up legitimately used by other persons as a foundation in whole, or in part, for that expert’s opinion, and an objection is taken to that evidence, then in principle, that evidence of trade usage etc, is admissible under s 219.

Bickford’s submissions and consideration

32    Bickford’s submits that the Devine Reports should not be received on four grounds.

Ground 1 – Fact finder

33    The first ground advanced by Bickford’s is that the Devine Reports involve Ms Devine playing the role of a “fact finder” in the sense described by Mortimer J (as her Honour then was) in Kaplan v State of Victoria (No 3) [2022] FCA 728.

34    In Kaplan, which was not a trade mark dispute, the expert in question was required to reach a conclusion on matters of fact before expressing an opinion about those facts. Those factual matters were not the subject of any evidence, and the expert did not confine himself to documentary evidence. Instead, the expert was expressly instructed to consider and rely upon outlines of evidence filed on behalf of the applicants. Her Honour explained that that forensic choice of a method of instruction left the expert to sift through various factual accounts given to him, select what he considered to be important or persuasive, and having made that selection, express opinions on the basis of that selection. Her Honour considered that the expert had become a fact finder and in doing so had miscarried his task.

35    The circumstances in Kaplan were quite different to the approach taken by Ms Devine in preparing the Devine Reports.

36    In preparing her report, Ms Devine expressed opinions based on her experience and other supporting material. That other material is admissible by reason of s 219 of the TMA and provides a basis for Ms Devine’s opinion.

37    This ground fails.

Ground 2 – Relevance

38    Bickford’s submits that the Devine Reports are not relevant to any issue in dispute having regard to the questions asked and answered by Ms Devine on three bases:

(1)    First, they are directed towards Ms Devine’s own observations and subjective understanding, rather than the meaning of the relevant words as they are generally understood by ordinary Australians;

(2)    Second, they are directed to a point in time (being the date of each of the Devine Reports) not relevant on the pleadings; and

(3)    Third, they are directed, in part, towards alcoholic drinks despite the SPRITZ Trade Mark being registered in respect of non-alcoholic drinks only.

39    Taking each of those matters in turn in relation to the first of the Devine Reports.

40    As to the first basis, I accept that the opinions are directed towards Ms Devine’s own observations. However, that has to be seen in the context of her experience, and in particular the interaction with consumers of both alcoholic and non-alcoholic drinks. Consideration of the first of the Devine Reports reveals not only her opinions but the basis for those opinions, albeit in some cases supported by reference to hyperlinked documents. Those documents are, at least, admissible under s 219 of the TMA. Having worked in the drinks industry for 15 years as a bartender, manager and as a venue owner, Ms Devine’s experience alone forms a basis for her opinions, in addition to her explanations as to the bases for her opinions.

41    To that extent, the Court and Bickford’s are able to understand Ms Devine’s opinions and how they were reached within the context of her experience.

42    Whereas I accept that Ms Devine’s opinions may not be expressed in the type of form that one might expect, for example, from a forensic accountant or forensic engineer accustomed to providing expert evidence in a well-recognised discipline, nonetheless they are expressed in a form sufficient to enable the Court and Bickford’s to determine that Ms Devine’s opinions are based on her experience applied to known or assumed facts, and to enable Bickford’s to challenge her position in cross-examination to the extent it chooses to do so.

43    Following cross-examination of Ms Devine, it is always open to Bickford’s to submit that the Court should give little or no weight to Ms Devine’s opinions. Bickford’s objection on this basis fails.

44    As to the second basis, insofar as the opinions are directed to a point in time not relevant on the pleadings, that may or may not be the case depending on how this matter evolves. If it is not relevant, then it will be given no weight. This basis fails.

45    As to the third sub-basis, that Ms Devine’s opinions are directed, in part, towards alcoholic drinks despite the SPRITZ Trade Mark being registered in respect of non-alcoholic drinks, that necessarily supposes that Ms Devine’s opinions are irrelevant notwithstanding that Ms Devine’s experience covers both alcoholic and non-alcoholic drinks. Ms Devine’s opinions are clearly relevant, however the same point in relation to the weight the Court should afford to Ms Devine’s opinion, as I have raised above, again applies.

46    That is not to confuse issues with admissibility with issues of weight, a distinction which must be firmly borne in mind. It merely makes the point that in my view, this particular basis is not such as to warrant a ruling that the first of the Devine Reports is inadmissible.

47    Taking each of those matters so far as they apply to the second of the Devine Reports, the same points arise as I have set out in relation to the first report.

Ground 3 – No opinion but subjective understanding and factual observations

48    The third ground is that the Devine Reports do not contain any opinion but are directed towards Ms Devine’s own factual observations and subjective understanding and are not in an admissible form if advanced solely as a witness of fact.

49    It is important to bear in mind that Ms Devine’s expertise is based on experience. To that extent there was always going to be an element of factual observations based on that experience which in turn informs her opinions on the questions posed insofar as they concern the areas of the trade in which she has expertise.

50    This is a case where over many years of dealing with consumers at numerous levels as well as authoring articles and publishing books, Ms Devine is able to express an opinion as to the matters the subject of her reports based upon her experience.

51    To the extent Ms Devine deals with historical matters, particularly in relation to the origin of the words ‘Spritz’ and ‘Spitzer’, the source of that information make it clear that it is information available to anyone. That evidence should be received on the basis it provides historical context notwithstanding that it is not based on Ms Devine’s actual knowledge. Ms Devine is able to speak to that historical context, gained as part of her experience.

Ground 4 – Opinions

52    There are four sub-grounds to the fourth ground which is directed to the extent that the Devine Reports contain opinions.

53    The first of the sub-grounds is that Ms Devine does not have expertise.

54    Ms Devine sets out her experience at [3]-[5] in both of the Devine Reports. Bickford’s took an inconsistent position in relation to Ms Devine’s expertise. During oral argument, it did not object to Ms Devine’s expertise per se, but rather questions how the opinions set out in Ms Devine’s Reports are based on that expertise. That said, in its written submissions, Bickford’s called into issue Ms Devine’s expertise.

55    Nonetheless and for the avoidance of doubt, I have no hesitation in accepting that Ms Devine has relevant expertise. That field of expertise arises from her work as a bartender, in management and ownership of venues serving alcoholic and non-alcoholic drinks, as well as a consultant in relation to alcoholic and non-alcoholic cocktails (Mocktails) and drinks. That is borne out by her research into the history of cocktails and spirits, current drink trends, her regular contribution to industry magazines and her publication, as an author, of two cocktail books, both of which include non-alcoholic recipes.

56    The second of the sub-grounds is that Ms Devine’s opinions do not adequately identify the facts (assumed or observed) upon which the opinion is based and/or do not identify which facts are assumed and which are observed. Bickford’s submit that to the extent Ms Devine’s opinions rely upon facts observed by her, such facts are not properly identified or admissibly proven.

57    I do not accept that submission. As I have noted previously, whereas I accept that Ms Devine’s opinions may not be expressed in the type of form that one might expect from a forensic accountant or forensic engineer accustomed to providing expert evidence in a well-recognised discipline, nonetheless they are sufficient to enable the Court and Bickford’s to determine that Ms Devine’s opinions are based on her experience and factual observations. Those factual observations are admissible pursuant to s 219 of the TMA. Specifically, they are sufficient to allow Bickford’s to challenge her opinions.

58    The third of the sub-grounds is that the identified facts do not form a basis for the opinion expressed.

59    Save for one point, I do not accept that submission. That one point is in the second of the Devine Reports in which, having been asked to consider some 68 documents provided to her by Noot’s solicitors in a second letter of instruction dated 6 October 2025, Ms Devine states simply that she is happy to stand by her statements in her first report. That does not assist the Court, and Bickford’s should not be expected to trawl through those documents seeking to glean which opinion is supported by which document.

60    What was required was for Ms Devine to consider the documents and identify from those documents the matters upon which Ms Devine bases her opinion and explain why.

61    I am not prepared to allow Noot to address this aspect of Ms Devine’s opinions at this late stage such that in my view the statement by Ms Devine in her second report dated 9 October 2025, that she is happy to stand by her statements in the original expert report dated 14 October 2025, is devoid of meaning and will not be admitted.

62    The fourth of the sub-grounds is that Ms Devine’s opinions do not or do not adequately or explicitly explain how the field of “specialised knowledge” applies to the facts proven or assumed so as to form a basis for the opinion advanced.

63    I do not accept that submission.

64    As I have noted above, Ms Devine gives her opinions based on her experience, and has applied that experience to the facts proven (or to be proved).

Conclusion

65    It is for these reasons that the Devine Reports will be received into evidence save that [6] of the second of the Devine Reports dated 9 October 2025 will not be received.

Associate:

Dated:    2 October 2026