Black Star Pastry Pty Ltd v Richards

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Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457; [2010] FCA 1380

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PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598; [2021] FCAFC 128

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379; [2017] FCAFC 83

Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186; [2023] HCA 8

1. Leave to appeal is granted.
2. The appeal is allowed and the cross-appeal is dismissed.
3. Order 1 of the Order of the Federal Circuit and Family Court of Australia dated 1 August 2025 be set aside and in lieu thereof, it is declared that:

(a) the respondent was not the owner of Australian trade mark number 1172976 (within the meaning of section 58 of the Trade Marks Act 1995 (Cth)) as at the priority date of that trade mark;

(b) Australian trade mark number 1172976 is and has at all material times been invalid.

1. Pursuant to section 88(1) of the Trade Marks Act 1995 (Cth), Australian trade mark number 1172976 be cancelled or otherwise removed from the Register of Trade Marks.
2. The declarations in paragraphs 3 and 4 of the Order of the Federal Circuit and Family Court of Australia dated 1 August 2025 be set aside and in lieu thereof, the application be dismissed.
3. Orders 2, 3 and 4 of the Order of the Federal Circuit and Family Court of Australia dated 11 September 2025 be set aside.
4. The respondent pay the applicant's costs of the proceeding in the Federal Circuit and Family Court of Australia, of the application for leave to appeal, and of the appeal and cross-appeal (including the notice of contention).
5. Orders 3 to 7 above are stayed until:

(a) the expiry of 14 days from the date of these orders; or

(b) if an application for special leave to appeal is filed within 14 days from the date of these orders, the final determination of that application if special leave not be granted or, if special leave be granted, the subsequent final determination of any appeal.

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

1. This is an application for leave to appeal, and if granted, an appeal from the decision of Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226 (J).
2. The respondent (Mr Richards) has filed a cross-appeal, in which cross-appeal, the applicant (BSP) has filed a notice of contention.
3. BSP operates a specialty bakery or pastry business which it acquired in 2011, but which Mr Christopher Thé, then the sole shareholder and controller of BSP, had commenced in around October 2008 (BSP business). The BSP business consists of the preparation and sale of baked goods, including bread, croissants, pastries, cakes, pies, and sandwiches; and it has achieved particular notoriety with its "Strawberry Watermelon Cake", which forms a substantial proportion of the total trade of the BSP business. The BSP business, however, has also sold, and continues to sell, among other things, coffee beverages and coffee beans.
4. Mr Richards is the owner of two registered trade marks (Blackstar trade marks) in connection with a business (Blackstar business) which principally consists of the roasting and sale of coffee beans, and the making of coffee beverages for direct consumption by use of the coffee beans which the business roasts: J [2].
5. Following a hearing on liability only and relevantly to the appeal, the primary judge found that BSP had infringed, and was continuing to infringe, the Blackstar trade marks pursuant to s 120(1) and 120(2)(b) of the Trade Marks Act 1995 (Cth): J [8], [172], [190]. The primary judge also dismissed a cross-claim by BSP which sought cancellation of one of the Blackstar trade marks: J [99], [224]. That cancellation had been sought on the basis that Mr Richards, who was one of two joint owners of the mark, had applied for and obtained registration of the mark in his sole name, being something that he was not entitled to do: J [9(a)].
6. Relevantly to the cross-appeal, the primary judge found that the BSP trade marks (as defined in J [6]) were not substantially identical with either of the Blackstar trade marks: J [163], [164]. The primary judge also found that Mr Richards has abandoned all claims made in the statement of claim in relation to BSP's registration and use of the BSP974 trade mark (as defined below): J [220].
7. The primary judge made orders on 1 August 2025 which (inter alia):

(1) declared that, by using the words "BLACK STAR PASTRY" in relation to the supply of coffee beverages, café services, and coffee (other than coffee beans and ground coffee the respondent supplied in packages on which the words "ST. ALi" in their entirety were visible) BSP "infringed Australian Registered Trade Mark No 112976 [sic], being a trade mark of which the applicant is the registered owner";

(2) declared that, by using the words "BLACK STAR PASTRY" in relation to the supply of coffee (other than coffee beans and ground coffee the respondent supplied in packages on which the words "ST. ALi" in their entirety were visible) BSP "has infringed the applicant's Australian Registered Trade Mark No 128833 [sic], being a trade mark of which the applicant is the registered owner".

1. The primary judge made further orders on 11 September 2025 which included the following permanent injunction (which order was stayed):

The respondent be permanently restrained, whether by itself, its directors, officers, employees, servants, agents or otherwise, from using as a trade mark, without the licence or authority of the applicant, Australian trade mark nos. 112976 (976 mark) [sic] and 128833 (833 mark) [sic] or any sign that is substantially identical with, or deceptively similar to, either or both of the 976 and 833 marks, in relation to the goods in respect of which those marks are registered, and in particular from using, without the licence or authority of the applicant, the words "BLACK STAR PASTRY" as a trade mark in relation to the supply of coffee beverages, café services, and coffee (including specialty coffee retailing services).

(Emphasis in original.)

1. BSP is the owner of four registered trade marks.
2. The first trade mark is comprised of the words "BLACK STAR PASTRY" (BSP012 trade mark). In around December 2021, it began to use the following logo (New BSP Logo) in connection with the BSP business which Mr Richards submits is an embodiment of the BSP012 trade mark. The New BSP Logo is depicted below:

1. At J [10], the primary judge stated that, although the statement of claim does not specifically allege that BSP has used the New BSP Logo, BSP pleaded in its defence that its use of the New BSP Logo constitutes the use of the BSP012 trade mark. The primary judge proceeded on the basis that the allegations in the statement of claim in relation to the BSP012 trade mark apply both to the BSP012 trade mark, and to the New BSP Logo. This approach was not the subject of complaint on appeal, and I will adopt the same approach.
2. Two of the trade marks are composite marks each of which is comprised of a logo (BSP logo) that includes the words "BLACK STAR PASTRY", as follows (BSP202 trade mark and BSP011 trade mark):

1. The evidence before the primary judge was such that he was unable to make any findings about the particular manner in which BSP has used the BSP202 trade mark and the BSP011 trade mark: J [161]. There is no appeal from this finding.
2. The fourth trade mark (BSP974 trade mark) is as follows:

1. The BSP974 trade mark is registered in class 30 (among other things) for "bakery products, bread, foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries; donuts; croissants; pastry; sandwiches; coffee; tea; chocolate".
2. The primary judge found that Mr Richards has abandoned all claims made in the statement of claim in relation to BSP's registration and use of the BSP974 trade mark: J [220]. This finding is challenged in the cross-appeal.

1. Mr Richards is registered as the owner of a word mark with registration number 1172976, "BLACKSTAR" (Blackstar 976 trade mark), which was accepted for registration on 4 January 2008, with effect from 26 April 2007.
2. The entitlement of Mr Richards to apply for registration in his own name, when he was one of two joint owners of the Blackstar 976 trade mark, is the central issue to ground 1 of the proposed appeal by BSP.
3. Mr Richards and Ms Evonne Andrews were the registered owners of a composite mark which was accepted for registration on 19 November 2009, with effect from 20 March 2009, with registration number 1288833 (Blackstar 833 trade mark). Ms Andrews assigned her interest in the Blackstar 833 trade mark to Mr Richards in 2013, with the assignment being recorded in the Register of Trade Marks in 2019.
4. The Blackstar 833 trade mark is comprised of the words "BLACKSTAR COFFEE" and a large star graphic as follows:

1. The Blackstar 976 trade mark is registered in class 30 for (among other things) "beverages consisting principally of coffee", beverages made from coffee, coffee, coffee beverages, coffee beans, and ground coffee; and the Blackstar 833 trade mark is registered in (among other classes) class 30 for (among other things) "additives for coffee", and "coffee".

1. For the following reasons, leave to appeal will be granted.
2. First, it is common ground that BSP seeks to appeal what is, in effect, a final judgment, and that if leave to appeal was refused, BSP would be denied any opportunity to challenge the primary judge's findings on liability.
3. Secondly, the decision below, and the proposed grounds of appeal, raise a novel legal issue for which there is no authority. Ground 1 concerns the proper construction of s 28 of the Trade Marks Act where only one of two joint owners applies for registration of a trade mark, and the consequences on the validity of the registration under s 58. Even Mr Richards accepts that this ground is not one which "has not been fully considered by any Full Court".
4. Thirdly, contrary to the submissions by Mr Richards, the proposed grounds of appeal raise substantive issues which have sufficient merit to warrant the grant of leave.

1. By ground 1 of the Notice of Appeal, BSP challenges the primary judge's dismissal of its claim that the Blackstar 976 trade mark was invalid and liable to be cancelled or otherwise removed from the Register of Trade Marks pursuant to s 58 of the Trade Marks Act.

1. BSP's claim below was premised on the following matters, which facts were not in dispute at trial:

(1) Mr Richards applied for registration of the Blackstar 976 trade mark in his sole name;

(2) at the date of application, Mr Richards was not the sole owner of the Blackstar 976 trade mark. Rather, he was an owner of that mark with his wife, Ms Andrews;

(3) Mr Richards and Ms Andrews jointly authored the Blackstar 976 trade mark;

(4) Mr Richards and Ms Andrews intended to use, and did use, the Blackstar 976 trade mark together in the Blackstar business: J [2];

(5) Ms Andrews was not named as an applicant.

1. Notwithstanding these facts, the primary judge dismissed the claim by BSP. His reasons for doing so appear at J [81]-[99]:

... Relevant to BSP's cross-claim [for cancellation pursuant to s 88] is s 58, which provides that the "registration of the trade mark may be opposed on the ground that the applicant is not the owner of the trade mark".

Although s 58 provides as a ground for opposing an application for the registration of a trade mark that the applicant is not the owner of the trade mark, the TM Act does not require that a person who applies for the registration of demonstrate that he or she is the owner of the trade mark. Paragraph (a) of s 27(1) of the TM Act only requires that the person who applies for the registration of a trade claim that he or she is the owner of the trade mark. Further, although s 28 of the TM Act concerns applications for the registration of a trade mark in which two or more people have an interest, that section does not require that persons who hold such interest together apply for the registration of the trade mark. That is apparent from the text of s 28, which provides that such persons may together apply for its registration under s 27(1) of the TM Act (emphasis added):

If the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except:

(a) on behalf of all of them; or

(b) in relation to goods and/or services with which all of them are connected in the course of trade;

the persons may together apply for its registration under subsection 27(1).

There is another observation that may be made: s 28 of the TM Act does not capture all the circumstances in which two or more persons may have an interest in a trade mark. It is conceivable that one of two or more persons who hold an interest in the trade mark may be entitled to use the trade mark without having to do so on behalf of all of the other persons. That entitlement may arise from an express agreement; or it may arise from some other way, for example, the applicant's holding his or her interest in the trade mark on trust for one or more other persons which authorise the trustee to use the trade mark as the trustee sees fit, subject to the terms of the trust to which the trade mark is subject. It is also conceivable that one of two or more persons interested in the trade mark may be entitled to use the trade mark in relation to goods or services with which all of the persons with an interest in the trade mark them are not concerned. Thus, two or more persons who have an interest in a trade mark who do not fall within the circumstances specified by s 28 of the TM Act would not be permitted by that section to apply together for the registration of the trade mark.

The scheme of the TM Act, therefore, is only to require a person who applies for the registration of a trade mark to claim that he or she is the owner of the trade mark, but to leave it up to a person who disputes the claim to initiate the dispute, either by invoking the administrative mechanism provided for by s 58 of the TM Act before the trade mark is registered, or by invoking the jurisdiction of a prescribed court pursuant to s 88(1) of the TM Act, after the trade mark has been registered. That suggests, and in any event it has been held, that the onus lies on the person who disputes an applicant's claim that he or she is the owner of the trade mark that the applicant was not the owner of the trade mark the time he or she applied for its registration.

Next, it is necessary to consider the meaning of the expression "the owner of a trade mark". The meaning of that expression is based on the meaning judges have given to the expression "the proprietor of a trade mark" that was used in earlier trade mark legislation, beginning with the Trade Mark Registration Acts 1875-1877 (UK). Initially there was doubt about whether those Acts "did no more than provide for the registration of marks already distinctive by reason of use and, as such, protected at common law, or whether it enabled a person who had coined a trade mark to obtain registration and treat the registration as equivalent to prior use". That doubt was resolved in In re Hudgson's Trade-Marks, where Cotton LJ said:

The difficulty is this: Is a [person] to be considered as entitled to the use of any trade-mark when he [or she] has never used it at all? That is a difficulty, but I think the meaning is this. If a [person] has designed and first printed or formed any of those particular and distinctive devices which are referred to in the first part of sect. 10 [being equivalent to s 17 of the TM Act], he [or she] is then looked upon as the proprietor of that which is under that Act a trade-mark, which will give him [or her] the right so soon as he registers it. How can it be said he is entitled to the exclusive use of it? He never has used it; but in my opinion the language, though not appropriate, means this, that a [person] who designs one of those special things pointed out in sect. 10, is, as designer, to be considered as the proprietor of it, and if there is no one else who has used it, or who can be interfered with by the registration and subsequent assertion of title to the mark, then he [or she] is to be considered as entitled within the meaning of the Act to the exclusive use of that which in fact has never been in any way used, but which has only been designed by him [or her], and which he [or she] can be treated as the person entitled to register, if no one else had so used it as that his user would be interfered with by the registration.

In Shell Company of Australia Ltd v Rohm and Haas Company, Dixon J reviewed the course of legislation and decisions in relation to the use and meaning of the expression "proprietor of a trade mark", and provided the following influential statement of what that expression means:

[I]t is clear enough from the course of legislation and of decision that an application to register a trade mark so far unused must, equally with a trade mark the title to which depends on prior user, be founded on proprietorship. The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration. For a time the provision that application was equivalent to prior user necessarily embodied in statutory form the conclusion that the applying for registration completed title to the unused mark, where the other elements existed. But the principle had been already adopted by Cotton L.J. in In re Hudson's Trade Mark . . . .

Dixon J went on to explain the notion of "authorship" as follows:

Authorship of course includes claim through or under the author. But it involves the origination or first adoption of the word or design as and for a trade mark.

His Honour noted that this notion authorship was "well brought out" by the Victorian case of In re Hicks Trade Mark, and Dixon J reproduced the following passage of what Holroyd J said in the course of argument in Hicks:

A person cannot be properly registered unless he is the proprietor. Proprietor is the person who at the moment he makes application to be registered is entitled to the exclusive use of the name, whether he then or before publicly adopted it. A man cannot be said to have adopted a name if someone else has done so before him. Section 19 merely says that the act of applying is to be deemed equivalent to public user. No one could otherwise be entitled to registration as proprietor unless he had publicly used the trade name before. The section does not affect the fact that another person used the name first. The difficulty here is that although Hicks may have by virtue of his application publicly used the name, someone else publicly used it before him.

Dixon J also reproduced the following passage from the judgment of Holroyd J:

For the reasons given by us in the course of the argument, we think this application to expunge Hicks's name from the register of trade marks as the proprietor of the word 'Empress' as a trade mark applied to stoves ought to be granted. 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, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

The judgment of Dixon J in Shell, and his Honour's reference to Hicks, suggests that the notion of "proprietor" of a trade mark and, therefore, "owner" of a trade mark for the purposes of s 58 of the TM Act, is directed to whether some person other than the person claiming to be the owner of the trade mark used the trade mark before the person claiming to be the owner of the trade mark applied for its registration. That is the notion to which "the owner" in s 58 of the TM Act is directed is supported by the following passage from the judgment of the Full Federal Court [in] Food Channel Network Pty Ltd v Television Food Network GP:

Section 58 of the Act provides that registration of a trademark may be opposed on the ground that the applicant is not the owner of the mark. In this context, the term "owner" derives meaning from its common law origins relating to prior use. As explained in Shanahan's Australian Law of Trade Marks and Passing Off (4th ed, Lawbook Co., 2008) (p 380):

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.

The question, therefore, that arises on an application under s 88(1) of the TM Act for the cancellation of the registration of a trade mark on the ground that the applicant for the registration of the trade mark is not its owner is whether some person other than the applicant had used or intended to use the trade mark before the applicant applied for its registration.

Determination

BSP claims that being one of two joint owners, Mr Richards was not entitled to apply for the registration of the Blackstar 976 trade mark in his name alone, but was only entitled to apply for the registration of that trade mark together with Ms Andrews. That, however, does not address the question that arises on an application to cancel the registration of a trade mark on the ground specified in s 58 of the TM Act; the question is whether the person who applied for the registration of a trade mark, in this case, Mr Richards, was not the owner of the trade mark at the time the person applied for its registration.

That being the question, and given the matters it alleges in its cross-claim and in its written submissions, BSP's case is that Mr Richards was not the owner of the Blackstar 976 trade mark at the time he applied for its registration because he was a joint owner of the Blackstar 976 trade mark, but only he, not Mr Richards and Ms Andrews, applied for its registration. BSP does not, however, explain how that translates into Mr Richards being an "applicant who is not the owner of the [976] trade mark" within the meaning of s 58 of the TM Act. Perhaps one way is to read "applicant" in s 58 to mean "applicants", so that s 58 will be made out if the applicants are not both the owners of the trade mark they have applied to be registered. Even if s 58 is so read, it could not be applied to the circumstances of Mr Richards's application for the registration of the Blackstar 976 trade mark, because only Mr Richards applied for its registration. Thus there were not two applicants of whom it could be said they both were not the owners of the Blackstar 976 trade mark at the time Mr Richards applied to have it registered.

Perhaps BSP implicitly submits that s 58 of the TM Act is to be construed to mean "the applicant is not the owner of the trade mark or, where there is more than one owner, the applicant is not the only owner of the trade mark". Apart from the general impermissibility of adding text to construe statutory provisions, such a construction of s 58 would be inconsistent with s 28 of the TM Act in two ways. As I have already noted, s 28 does not require that two or more persons interested in a trade mark in the circumstances stated in that section must together apply for the registration of the trade mark; it provides that such two or more persons may together apply for the registration of the trade mark. Second, and as I have also noted, s 28 of the TM Act does not capture all the circumstances in which two or more persons may have an interest in a trade mark. If s 58 is construed to mean "the applicant is not the owner of the trade mark or, where there is more than one owner, the applicant is not the only owner of the trade mark", it would effectively prevent two or more persons who have an interest in a trade mark, but who do not fall within the circumstances provided in s 28, from being able to register the trade mark.

How, then, should the expression "the owner of the trade mark" in s 58 of the TM Act be construed where two or more persons have some interest in the trade mark? The simplest and most appealing construction is that "the owner of the trade mark" means a person who has used or has the ability to use the trade mark, with or without the authority of any other person who has an interest in the trade mark. This construction would leave open for inquiry, if another person so alleges, whether a person who is not the applicant for the registration of the trade mark has used the trade mark and, if so, whether that person was entitled to do so without the authority of, and otherwise without acting in concert with, the applicant. If the second question is answered in the affirmative, the applicant for the trade mark will not be the owner of it for the purposes of s 58 of the TM Act. It would also leave open for enquiry, if another party so alleges, whether there is another person who has an interest in the trade mark and, if so, whether that other person did not intend to use the trade mark with the applicant for registration. Again, if the second question is answered in the affirmative, the applicant for registration would not be the owner of the trade mark for the purposes of s 58 of the TM Act.

BSP's cross-claim appears to be premised on another assumption, namely, that two or more joint owners of a trade mark cannot each be "the owner of the trade mark". That assumption may overlook the nature of the interest joint tenants hold in the property of which they are joint tenants. The interest of joint tenants of property has been summarised as follows:

Concurrent ownership can take one of two forms: the 'joint tenancy' or the 'tenancy in common'. The term 'tenancy' in fact adds nothing: the word 'ownership' would provide greater clarity, but the use of the word 'tenancy' is entrenched. The essence of joint tenancy is that each joint tenant is entitled to the whole of the interest which is the subject of co-ownership. In other words, no joint tenant holds any specific or distinct share in the property; rather, each joint tenant (together with the other joint tenant or tenants) is invested with the totality of the co-owned interest. The distinguishing feature of joint ownership is survivorship (ius accrescendi): when one joint owner dies, the property is owned by the surviving joint owners, and the estate of the deceased joint owner gets nothing. By contrast, a tenancy in common is a form of co-ownership in which the co-owners hold distinct shares. . . . The sharing of a single thing in defined proportions is the essence of a tenancy in common - and gives rise to the phrase that tenants in common hold a thing in 'undivided shares'.

Thus, if Mr Richards was the joint owner of the Blackstar 976 trade mark with Ms Andrews, each of Mr Richards and Ms Andrews was the owner of it. It is, of course, the case that a joint owner's interest as the owner of the trade mark could be severed if the joint owner purported to deal with the trade mark without the consent of the other joint owner. BSP does not allege, however, that Mr Richards applied for the registration of the Blackstar trade mark without the consent of Ms Andrews. If it were necessary to make any such finding, the evidence would not support such finding; on the contrary it would support a finding that Mr Richards applied for the registration of the Blackstar 976 trade mark with the consent of Ms Andrews.

Another incident of joint ownership of personal property, at least where the personal property is a chose in possession, is that the joint owners may agree that one of them would have possession of the property, with the consequence that the joint owner in possession could, in his or her own name, maintain an action in detinue. That is a basis for concluding that the joint owners or any personal property, tangible or intangible, could agree that one of them could deal with the property solely in his or her own name. If that principle is correct, the onus would be on BSP to show that Mr Richards registered the Blackstar 976 trade mark in his own name without the agreement of Ms Andrews. BSP has not alleged or sought to prove any such thing. In any event, as I have already noted, the evidence would support a finding that Mr Richards applied for the registration of the Blackstar 976 trade mark with the authority of Ms Andrews.

I am not satisfied that Mr Richards was not the owner of the Blackstar 976 trade mark within the meaning of s 58 of the TM Act. BSP's cross-claim, therefore, fails. On the contrary I am satisfied that Mr Richards was entitled to apply for the registration of the Blackstar 976 trade mark in his own name; and he was so because he was the joint owner of the Blackstar 976 trade mark, and Ms Andrews consented to his applying for the registration of the Blackstar 976 trade mark in his own name.

(Emphasis original; footnotes omitted.)

1. Section 27 of the Trade Marks Act relevantly provides that a person may apply for the registration of a trade mark in respect of either or both goods and services in certain circumstances, which include that the person claims to be the owner of the trade mark.
2. Like s 27, s 58 of the Trade Marks Act refers to "the owner" not "an owner". It provides that:

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

1. As to when joint owners of a trade mark will fall within the scope of the phrase "the owner" in ss 27 and 58, s 28 of the Trade Marks Act provides for the situation where "the relations between 2 or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except (a) on behalf of all of them; or (b) in relation to goods and/or services with which all of them are connected in the course of trade".
2. There is no provision other than s 28 which applies to a situation where there is more than one owner of the mark and, contrary to the submissions by Mr Richards, the word "may" as used in s 27 does not confer any ability or discretion upon one of two joint owners of a trade mark to apply for that mark to be registered on the Register in their name as the sole owner under s 27(1).
3. Ownership within the scheme of the Trade Marks Act and its predecessors provide for "registration of ownership not ownership by registration": see Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379; [2017] FCAFC 83 at [19] (Greenwood, Jagot and Beach JJ), citing PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47; [1999] FCA 1602 at [78]-[80] (Greenwood, Jagot and Beach JJ). Such ownership may be by authorship and prior use or ownership by the combination of authorship, the filing of the application and an intention to use: see Pham Global at [19], [29].
4. As a person may be the owner of a trade mark under the common law, such an owner can, but does not need to, apply to register the trade mark of which they are the owner. It is for this reason that a person may (not must) apply for the registration of a trade mark under s 27(1) of the Trade Marks Act if the person claims to be the owner of the mark, but it is not compulsory that they so apply.
5. However, if only one of two people who fall within s 28 makes an application under s 27, the scheme of the Trade Marks Act, and the rights conferred on such persons, becomes unworkable.
6. Upon being registered as an owner of a mark, the rights granted under s 20 of the Trade Marks Act are those of "the registered owner" (which includes the exclusive rights to use the mark and to authorise other persons to use the mark, and to obtain relief for infringement of the trade mark). If a trade mark is registered in the name of two or more persons as joint owners of the trade mark, the rights granted to those persons under s 20 are to be exercised by them as if they were the rights of a single person: see s 20(5).
7. However, if one joint owner is registered, but another is not, this would mean that the registered owner of the trade mark would have the rights given by registration under s 20 of the Trade Marks Act, including exclusive rights, but the (unregistered) joint owner of the mark would not have such statutory rights. This gives rise to a number of questions, the answers to which are not found in the legislation. For example, are the exclusive statutory rights of the registered owner to use the mark able to be asserted against the joint (unregistered) owner or against a third party without the consent of the joint (unregistered) owner? Can the registered owner of the mark license the use of the mark without the consent of the joint (unregistered) owner? Can the joint (unregistered) owner assign their interest in the mark to a third party?
8. These questions demonstrate that the interaction between the respective rights of joint owners in a situation where one is registered as the owner, and one is not, is legally complex. That the Trade Marks Act makes no provision for such a situation tells against a construction of the legislation which permits registration of a trade mark in the name of one of two joint owners of the mark.
9. Further, from the perspective of third parties who inspect the Register, a situation where one joint owner of a trade mark is registered, but the other is not, would mean that the Register would not reflect the true position, being that of joint ownership of the mark in question. This is contrary to the purpose of the Register "which is publicly available, must be kept by the Registrar; all particulars of registered trade marks must be entered on that Register (including the identified limits on the monopoly in the form of the mark, the class and the particular goods); and the Register is prima facie evidence of any particular entered in it": see Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (2023) 277 CLR 186; [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) at [38].
10. As observed by the Full Court in Killer Queen LLC v Taylor (2024) 306 FCR 199; [2024] FCAFC 149 (Yates, Burley and Rofe JJ) at [57]:

...Parliament can be taken to have intended the Register to speak for itself. In most cases people who peruse an extract from the Register should be able to understand what it says without being obliged to make inquiries about the business history or previous conduct of the registered owner of the mark.

(Citations omitted.)

See also Self Care at [39]-[40]; Health World Ltd v Shin-Sun Australia Pty Ltd (2010) 240 CLR 590; [2010] HCA 13 (French CJ, Gummow, Heydon and Bell JJ) at [22]; Austin, Nichols & Co Inc v Lodestar Anstalt (2012) 202 FCR 490; [2012] FCAFC 8 (Jacobson, Yates and Katzmann JJ) at [38].

1. Before the primary judge, it was common ground that Mr Richards and Ms Andrews jointly authored the mark, jointly intended to use it, and jointly used it in the same business. No case was advanced below, and no finding was made, that either was entitled to use the mark independently of the other. Nor was there any submission made by Mr Richards before the primary judge or on appeal that Mr Richards and Ms Andrews did not fall within the scope of s 28. Indeed, the relationship between them was a partnership. Thus, on the facts as they pertained to Mr Richards and Ms Andrews, such persons may together apply for registration of the mark under s 27(1).
2. Mr Richards submits that, as he was an owner of the Blackstar 976 trade mark, he was entitled to apply for registration in his own name under s 27. In support of this submission, counsel for Mr Richards relied upon a statement in Pham Global at [41], in which the Full Court stated by reference to s 27(1) that, "only an applicant claiming to be an owner may file an application". However, the Court was not addressing the same issue as that which arises in this case, and the use by the Court of the word "an" rather than "the" in the cited passage of this decision does not support the construction pressed by Mr Richards, and cannot be relied upon to alter the plain words used in the legislation.
3. The Trade Marks Act makes express provision for the situation which applied on the facts of this case, being one in which Mr Richards and Ms Andrews were joint owners of the Blackstar 976 trade mark. On the admitted facts, it is not the case, as Mr Richards submits on appeal, that Mr Richards held the trade mark registration on his own behalf and on behalf of Ms Andrews, who held a "beneficial interest".
4. As s 28 was engaged, the application for registration could only lawfully be made by Mr Richards and Ms Andrews under s 27(1) as joint owners, who would then be able to exercise their statutory rights as if they were the rights of a single person by reason of s 20(5), but not otherwise.
5. It follows that the defect in the registration of the Blackstar 976 trade mark in the sole name of Mr Richards fell outside the scope of what was permitted by the terms of the Trade Marks Act. Contrary to the primary judge's findings, whether Mr Richards applied for registration with the consent or authority of Ms Andrews was legally irrelevant to that issue. Consent does not appear in ss 27, 28, or 58, and cannot cure a lack of statutory entitlement to apply.
6. Nor does it affect the outcome that Ms Andrews subsequently disclaimed any right, title and interest in the Blackstar 976 trade mark in a partnership dissolution agreement dated 31 July 2013. There were no operative words of transfer of the ownership rights of Ms Andrews in the mark. In any event, this agreement cannot cure the fact that Mr Richards had no statutory entitlement to apply, solely in his own name, for registration of the Blackstar 976 trade mark pursuant to s 27(1) of the Trade Marks Act.
7. For these reasons, ground 1 is upheld.
8. There are two remaining questions.
9. The first is whether the Register should be rectified by cancelling the registration of the Blackstar 976 trade mark pursuant to s 88(1) of the Trade Marks Act. This is one of the orders sought by BSP on this appeal.
10. Section 88(1) provides:

Subject to subsection (2) and section 89, a prescribed court may, on the application of an aggrieved person or the Registrar, order that the Register be rectified by:

(a) cancelling the registration of a trade mark; or

(b) removing or amending an entry wrongly made or remaining on the Register; or

(c) entering any condition or limitation affecting the registration of a trade mark that ought to be entered.

1. In Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514; [2018] FCAFC 6 (Nicholas, Yates and Beach JJ) at [140] and [146], the Full Court observed that, by the use of the word "may", s 88(1) confers a discretion upon the Court to decline to order the rectification of the Register upon a ground of invalidity being made out, which discretion is at large, constrained only by the general scope and objects of the Trade Marks Act.
2. Upon a finding of a ground of revocation being made out, the prima facie position is that the Register should be kept accurate (or 'pure') by an order for cancellation, unless good cause is shown by the registered owner as to why it should not be: see Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (No 3) (2015) 116 IPR 159; [2015] FCA 1436 (Perram J) at [8]. In that case, his Honour also concluded in effect that it is the registered owner who bears the onus of demonstrating that the discretion in s 88(1) should not be exercised to cancel the registration of the mark.
3. Mr Richards did not make any submissions against cancellation of the Blackstar 976 trade mark in addition to those made which sought to uphold the primary judge's construction and findings, which submissions I have not accepted. As the Register has been and remains inaccurate, it is appropriate to order that the Register be rectified by cancelling the Blackstar 976 trade mark. I will make that order.
4. The second remaining question is whether Mr Richards is entitled to relief for infringement of the Blackstar 976 trade mark.
5. In Crazy Ron's Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212; [2004] FCAFC 196 (Moore, Sackville and Emmett JJ) at [134], the Full Court found that, although the appellants had prima facie infringed the respondents' mark, the appellants' successful application to cancel the registration of that mark meant that the respondents' infringement action failed.
6. Similarly, in Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Co (2018) 262 FCR 76; [2018] FCA 1014, Nicholas J found that a person who was once, but is no longer, the registered owner of the mark because the trade mark has been cancelled at or prior to the time of judgment in the proceeding has no entitlement to relief for trade mark infringement.
7. Applying the approach taken in these authorities, Mr Richards is not entitled to any relief for infringement of the Blackstar 976 trade mark.

1. By ground 2 of the Notice of Appeal, BSP contends that the primary judge erred in finding that the BSP trade marks are deceptively similar to the Blackstar 833 trade mark.

1. In the judgment, the primary judge recorded that the evidence showed that:

(1) the BSP business opened its first store for trading in about late October 2008: J [35];

(2) the BSP business sold a wide variety of baked goods, including bread, croissants, pastries, cakes, quiches, pies and sandwiches. The BSP business also sold coffee: J [36];

(3) Mr Thé used coffee beans supplied by a business known as "The Little Marionette"; and the BSP business sold all types of espresso-based coffees using The Little Marionette coffee beans, as well as other beverages. While the BSP business had, at one time, stamped coffee cups and paper bags with the Black Star Pastry logo (as noted at J [37]-[38]), counsel for Mr Richards confirmed that it was not part of his client's case that BSP had used its trade marks on coffee cups;

(4) in July 2018, JKLP BSP Pty Ltd (JKLP) purchased the majority of the shares that Mr Thé held in BSP. At that time, BSP was conducting four stores in Sydney. After JKLP acquired ownership of BSP, BSP opened further stores, including in Melbourne and China: J [61]-[63].

1. The primary judge also referred to the evidence given by Ms Emily Makiv, the Chief Executive Officer of the JKLP group of entities, who described the BSP business in terms including that "The core business of BSP remains a speciality bakery business with large production facilities in Melbourne and Sydney...": J [64]; see also J [103]. As recorded in J [65], Ms Makiv also identified that features of the BSP business which were introduced after JKLP acquired BSP included rebranding that was launched in December 2021 which "involved the introduction of the New BSP Logo, and the creation by a Japanese illustrator of the characters of "Star" (young boy), "Dough", a French bulldog, and "Black", a hedgehog"; the signage of the stores was changed to reflect the new branding and new packaging; new uniforms bearing the new branding were introduced to BSP's staff; BSP launched a new website; BSP acquired coffee beans from ST. ALi, and ceased obtaining coffee beans from The Little Marionette; and BSP introduced a merchandise range which features the new branding.
2. Ms Makiv also gave evidence (as recorded in the primary judge's reasons) that:

(1) BSP has sold coffee in its stores using beans supplied by other companies. When JKLP acquired the business, and until around 2019, BSP sold coffee using coffee beans supplied by The Little Marionette. In November 2021, in its St Kilda store, BSP started to use coffee beans supplied by ST. Ali, and since June 2021, BSP sells coffee from all of its stores using beans supplied by ST. ALi: J [104];

(2) BSP does not sell "Black Star Pastry" branded coffee products: J [108(a)].

1. The primary judge also referred to evidence that bags of coffee with the name ST. ALi on them are sold in BSP bakeries with most of the name covered by packaging that includes either the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo: J [109].
2. The labels placed on these bags of coffee do not include the words "Black Star Pastry" or "Black Star" or, indeed, any of the BSP trade marks. There were also photographs in evidence showing bags of coffee for sale which bore the words "St ALi" and which did not have a sticker placed on them by BSP.
3. At J [146], the primary judge stated that:

The evidence, and in particular the photographs Mr Richards took of the BSP stores, reveals that which BSP admits in its defence: BSP sells a number of classes of goods, and provides a number of services in connection with the sale of those goods at its stores. BSP sells cakes and pastries; it sells coffee beverages and other beverages; it sells coffee in packages, some of which bear the name "ST. ALi", and some of which are covered by packaging that includes either the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo; BSP provides the service of making coffee (and other) beverages on order for immediate consumption; and it provides space and facilities at and by which customers may sit down, have served to them, and consume coffee (and other) beverages, and products they have purchased from in or around the same space.

1. As to the use of the BSP012 trade mark and the New BSP Logo, the primary judge found that the most significant use to be BSP's prominent display of the words "Black Star Pastry" at or near each of BSP's stores: J [153]. His Honour also found that the use of the words "Black Star Pastry" is on the collar area of the uniform BSP's employees wear when taking orders for pastries, coffee beverages, coffee, and other products; accepting payment for such orders; providing the pastries so ordered, making coffee (and other) beverages so ordered; and in some cases serving the pastries and coffee (and other) beverages to the persons who have ordered and paid or will pay for the pastries or beverages: J [157]. There is no appeal from these findings. In particular, there is no contention that the BSP012 trade mark and the New BSP Logo were used by BSP in additional ways to those found by the primary judge.
2. In terms of determining whether the BSP trade marks are deceptively similar to either of the Blackstar trade marks, the primary judge found that the BSP012 trade mark and the New BSP Logo were deceptively similar to the Blackstar 976 trade mark: J [170]. That finding is not challenged.
3. Rather, the impugned finding on this appeal relates to the Blackstar 833 trade mark and appears at J [171] as follows:

There are greater differences between the Blackstar 833 trade mark and the BSP trade marks than between the Blackstar 976 trade mark and the BSP trade marks; and that is because the Blackstar 833 trade mark is a logo comprised of both the word "Blackstar" and a figure in the shape of star. Nonetheless, I find that the word "Blackstar" dominates the Blackstar 833 trade mark, as it dominates each of the BSP trade marks. Given that finding, the reasons for which I have found the BSP trade marks are deceptively similar to the Blackstar 976 trade mark apply to the Blackstar 833 trade marks, which means I find that the BSP trade marks are deceptively similar to the Blackstar 833 trade mark.

1. By this paragraph, the primary judge relies upon the same reasons as for the finding that the BSP trade marks are deceptively similar to the Blackstar 976 trade mark. The reasons for that finding appear at J [167]-[170]:

There is a very strong resemblance between the BSP012 trade mark and the New BSP Logo, on the one hand, and the Blackstar 976 trade mark, on the other; and that resemblance lies in all marks containing two differently composed names, but both of which contain two syllables which, when uttered, convey the same sound, namely, "Blackstar" and "Black Star". It is the case, as BSP submits, that "Black Star Pastry" has the additional word "pastry"; but "pastry" is liable to register a significantly lesser impression on the reader than the words "Black Star" when read with "Black Star". "Black Star" is not a descriptive term and for that reason is more liable to attract attention and be remembered than "pastry", which is a descriptive term.

The resemblance between the Blackstar 976 trade mark and the BSP202 and BSP011 trade marks is not as strong as the resemblance between the Blackstar 976 trade mark, the BSP012 trade mark and New BSP Logo; and that is because each of the BSP202 and BSP011 trade marks contains features additional to the words "Black Star Pastry". The words are written in fancier letters than the letters that comprise the New BSP Logo; the three words are written in the order of top to bottom, rather than left to right; and the letters are contained in a box with a grey background. Notwithstanding these additional features, however, the words "Black Star" predominate, both visually (the letters in which the words are written appear to be larger than the letters with which the word "pastry" is written), and aurally.

BSP submits that "pastry" conveys the idea of pastries or baked goods, noting that it "is unlikely that consumers with an imperfect recollection would disregard or forget the presence of these words". This submission appears to confuse which of the trade marks are required to be compared on the basis of a buyer's memory. The relevant trade mark that is to be compared on the basis of the buyer's memory is the registered trade mark that is alleged to have been infringed, in this case, the Blackstar 976 trade mark; and, moreover, whether a buyer would be deceived or confused must be determined by comparing the buyer's memory of the Blackstar 976 trade mark with the BSP trade marks as the BSP trade marks are in fact used in connection with coffee beverages, and coffee, being among the goods in respect to which the Blackstar 976 trade mark is registered. The relevant question is: would a person who buys a coffee beverage or coffee in relation to which any of the BSP trade marks have been used as a trade mark entertain a reasonable doubt as to whether the coffee beverages and coffee "come from the same source" as the coffee beverages in relation to which the Blackstar 976 trade mark has been used as a trade mark? Given the strong resemblance I have found exists between the Blackstar 976 trade mark and the BSP trade marks, that question is to be answered in the affirmative.

I am satisfied there is a real, tangible danger that, due to the resemblance between the Blackstar 976 trade mark, on the one hand, and each of the BSP trade marks, on the other, a notional buyer of a coffee beverage or coffee in relation to which the BSP trade marks have been used would entertain a reasonable doubt as to whether the coffee beverages and coffee each of Mr Richards and BSP supplies "come from the same source". The BSP trade marks, therefore, are deceptively similar to the Blackstar 976 trade mark.

(Footnotes omitted.)

1. In Self Care at [26]-[33], the High Court stated:

Section 10 of the TM Act, headed "Definition of deceptively similar", provides that 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". The essential task is one of trade mark comparison; the resemblance between the two marks must be the cause of the likely deception or confusion. In evaluating the likelihood of confusion, the marks must be judged as a whole, taking into account both their look and their sound.

The principles for assessing whether a mark is deceptively similar to a registered trade mark under s 120(1) are well established. In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon and McTiernan JJ explained the task in these terms:

"But, in the end, it becomes a question of fact for the court to decide whether in fact there is such a reasonable probability of deception or confusion that the use of the new mark and title should be restrained.

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part."

The question to be asked under s 120(1) is artificial - it is an objective question based on a construct. The focus is upon the effect or impression produced on the mind of potential customers. The buyer posited by the test is notional (or hypothetical), although having characteristics of an actual group of people. The notional buyer is understood by reference to the nature and kind of customer who would be likely to buy the goods covered by the registration. However, the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness arising from the use of the mark prior to filing or, as will be seen, any reputation associated with the registered mark.

The issue is not abstract similarity, but deceptive similarity. The marks are not to be looked at side by side. Instead, the notional buyer's imperfect recollection of the registered mark lies at the centre of the test for deceptive similarity. The test assumes that the notional buyer has an imperfect recollection of the mark as registered. The notional buyer is assumed to have seen the registered mark used in relation to the full range of goods to which the registration extends. The correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of the alleged infringer's mark (as actually used). As has been explained by the Full Federal Court, "[t]hat degree of artificiality can be justified on the ground that it is necessary in order to provide protection to the proprietor's statutory monopoly to its full extent".

...

A trade mark is deceptively similar if it "so nearly resembles" the other trade mark that it is "likely to deceive" or "cause confusion". "[D]eceive[d]" implies the creation of an incorrect belief or mental impression; "caus[ing] confusion" may merely involve "perplexing or mixing up the minds" of potential customers. Intention to deceive or cause confusion is not required, although if present may be a relevant consideration. Similarly, evidence of actual cases of deception or confusion is of great weight, but not essential.

The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods. As explained by Dixon and McTiernan JJ in Australian Woollen Mills, potential buyers of goods are not to be credited with "any high perception or habitual caution"; however, "exceptional carelessness or stupidity may be disregarded".

It is not necessary to establish actual probability of deception or confusion. But a mere possibility of confusion is not enough; there must be a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be "a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source".

In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit". In addition to the degree of similarity between the marks, the assessment 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 trade mark. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.

(Emphasis original; citations omitted.)

1. In PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598; [2021] FCAFC 128, the Full Court (Jagot, Nicholas and Burley JJ) stated at [109]-[110]:

The relevant question is whether the impugned sign is deceptively similar to the registered trade mark having regard to the goods in respect of which that mark is registered. In that regard, it is necessary and appropriate for the Court to consider the course of business and the way in which the particular class of goods are sold. This gives the setting, and the habits and observations of the ordinary consumer considered in the mass affords the standard, to determine whether the impugned mark is, properly judged, deceptively similar: Australian Woollen Mills at 658.

It is relevant to consider such contextual matters in order to set the broad standard of analysis by reference to the likely behaviour of the ordinary consumer. Typically, the characteristics of that consumer may be discerned from:

(a) whether or not the goods are expensive or of personal or intimate interest, in which case closer attention may be given to detail of trade marks;

(b) whether or not the goods are cheaper or a fast moving consumer good where the consumer may be less involved and pay less attention to trade marks;

(c) how the goods are promoted and acquired which may indicate the relevance and importance of aural or visual aspects of the mark; and

(d) the outlets from which goods of the class are typically acquired, which may indicate how trade marks are likely to be displayed and perceived.

1. In Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457; [2010] FCA 1380, Yates J stated at [94]:

As Australian Woollen Mills makes clear, the comparison takes place in a particular context in accordance with a particular standard: "the course of business and the way in which the particular class of goods are sold" gives the setting and "the habits and observation of men considered in the mass" affords the standard in determining whether the impugned mark is, properly judged, "deceptively similar".

1. Turning to the facts of this case, the issue addressed by the primary judge at J [171] was whether the BSP trade marks were deceptively similar to Blackstar 833 trade mark, which formed part of the infringement case advanced by Mr Richards.
2. The primary judge defined the "BSP trade marks" at J [6] as (in substance) the BSP 012 trade mark, the BSP 202 trade mark, the BSP 011 trade mark and the New BSP Logo.
3. The Blackstar 833 trade mark is depicted again for convenience:

1. No error has been shown in the primary judge's identification of the relevant legal principles, including at J [165]-[166]. However, with due respect to the primary judge and to the advantages which the primary judge enjoyed as the trial judge, the primary judge's error lies in the application of those principles to the facts of this case.
2. The primary judge described the Blackstar 833 trade mark at J [171] as "a logo comprised of both the word "Blackstar" and a figure in the shape of [a] star".
3. Dr Eliades who appeared for Mr Richards submits that what the primary judge did in this sentence was to identify the "memorable elements" of the trade mark. I disagree. By these reasons, the primary judge is setting out what the logo comprises, and nothing more.
4. It follows that the primary judge's description of the Blackstar 833 trade mark omits reference to the word "COFFEE". The evaluation by the primary judge of that mark was therefore conducted on an incomplete basis, which is an error because, as BSP submits, where the registered mark is a composite logo, the elements of the logo must be judged as a whole. As observed by Yates J in Optical 88 at [100]:

When considering the question of deceptive similarity, each mark must be compared as a whole. This is of particular significance in relation to composite marks and device marks which may consist of a number of elements. It is necessary to look at all these elements in their context. This will include the size, prominence and stylisation of words and device elements used in the mark and their relationship to each other. The impression created by the mark, considered as a whole, can only be determined by doing this. However, in this connection, it is recognised that deceptive similarity may be established when an impugned mark uses an "essential" or "distinguishing" feature of the mark as registered...

(Citations omitted.)

1. At J [171], the primary judge found that the word "Blackstar" dominates the Blackstar 833 trade mark. In circumstances which are analogous to this case, the Full Court in Crazy Ron's Communications was considering a composite trade mark which included a cartoon graphic and the words "CRAZY JOHN".
2. At [97], the Full Court addressed the issue of finding that words in a composite mark are an essential feature of the mark as follows:

If attention is confined to the 1995 mark itself, it is in our opinion very difficult to characterise the words "CRAZY JOHN" as an essential feature. The words form but part of a composite mark comprising a number of elements. The words themselves are not especially prominent and indeed are subsidiary to the fantasy character, which occupies the dominant position in the overall image. If anything, the words seem to identify the fantasy character, having regard to the deranged look on his face. The words also compete for attention with the letters "MW" which themselves occupy a central position on the stylised globe.

[A]lthough everything depends on the particular circumstances of the case, some caution needs to be exercised before characterising words in a complex composite registered trade mark as an 'essential feature' of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different...

1. Notwithstanding the finding that the word "Blackstar" dominates the Blackstar 833 trade mark, there was no explanation by the primary judge of why the additional elements of the Blackstar 833 trade mark (the large star graphic, and the word "COFFEE") were to be treated as subordinate or less significant to the word "Blackstar" in the comparison. In the absence of such analysis and as the elements of the logo were not judged as a whole, the finding by the primary judge that the word "Blackstar" is dominant cannot be accepted.
2. Finally, and as already observed, the primary judge stated that he was unable to make any findings about the particular manner in which BSP has used the BSP202 trade mark and BSP011 trade mark: J [161]. There is no challenge to this conclusion. As there is no finding as to the manner in which BSP actually used these marks, a finding by the primary judge that the "BSP trade marks" (which includes the BSP202 trade mark and BSP011 trade mark) are deceptively similar to the Blackstar 833 trade mark was not open to the primary judge, and nor am I able to make any such finding because any assessment is required by reference to the alleged infringer's marks as actually used.
3. Where the process of evaluation by the primary judge has miscarried, which has occurred in this case, the Full Court should carry out its own evaluation: see, for example, PDP Capital at [98].
4. I turn then to consider whether the BSP012 trade mark (as used by BSP and as depicted by the New BSP Logo) is deceptively similar to the Blackstar 833 trade mark.
5. The surrounding circumstances forming the background against which the deceptive similarity comparison is to be made in this case include:

(1) the BSP stores are specialty bakeries which prepare and sell coffee beverages and sell coffee beans in packets in those stores along with cakes, pastries and other baked goods, the latter being its core business;

(2) it is common practice for bakery businesses to sell coffee together with baked goods;

(3) the brand or source of the coffee prepared and served in stores such as bakeries may be depicted on the coffee cups, on the menu or by other signage, such as on the coffee machine itself, or, in the case of coffee beans, by labels;

(4) products of the kind covered by the registration of the Blackstar 833 trade mark are inexpensive, and they are fast moving consumer goods. In the case of coffee beverages, in particular, the notional buyer of such products (who is an ordinary consumer) is not going to linger over, or pay close attention to, the trade mark used in relation to these goods.

1. I turn then to compare the relevant marks, noting that the critical question is whether the hypothetical ordinary person in the market for coffee, seeing BSP's use of its New BSP Logo at or near the BSP stores (J [153]) and on the collar area of its employees' uniforms (J [157]), would be caused to wonder or entertain a reasonable doubt about whether the coffee beverages and beans sold by BSP might come from the same source as the goods covered by the registration of the Blackstar 833 trade mark.
2. In this case, the Blackstar 833 trade mark has a combination of features: a large, visually striking star graphic, the word "BLACKSTAR" and the word "COFFEE" (with the words being of equal size and with one above the other). Thus, there are three elements to this composite mark but of these, my impression is that the star graphic is the essential feature in the overall image - the star is larger than the words and it dominates the overall logo.
3. By contrast, the New BSP Logo is comprised of the words "Black Star Pastry", which appear in a horizontal line as shown below:

1. Like the BSP012 trade mark, the New BSP Logo does not include the word "COFFEE" or the prominent star graphic (or, indeed, any star graphic at all). It does include the word "PASTRY" which looks and sounds different to the word "COFFEE", and which references a different type of product.
2. What the respective marks have in common is (in effect) the word "Blackstar" which is not a descriptive term. However, I am not satisfied that this similarity is sufficient to deceive or confuse the ordinary consumer given the substantial and crucial differences between the marks.
3. Having regard to the Blackstar 833 trade mark as a whole, I consider that the impression (allowing for imperfect recollection) that the notional buyer would have of the Blackstar 833 trade mark (as notionally used on all of the goods covered by the registration) would be of a composite logo which features a large star graphic along with some words. If the notional buyer remembered the word "Blackstar", it would likely be because it was accompanied by the large star graphic. That is, they would not remember the word without the star also being present.
4. If such a notional or hypothetical buyer visited a BSP store, being a high-end speciality bakery, they would perceive that the BSP stores offer coffee beverages for sale, but that there is no overt indication that the source of the coffee beans used in the coffee beverages is that of the bakery itself. Taking into account the manner in which the brand of the coffee beans is typically identified in stores which sell coffee beverages, consumers in this market would be unlikely to consider that the use of the words "BLACK STAR PASTRY" as signage for the bakery's name, and the use of the same name on a staff member's uniform collar, was indicative of the source or brand of the coffee used in the coffee beverages in BSP's stores.
5. The notional or hypothetical buyer who wishes to buy coffee beans for self-preparation of coffee beverages is making a larger investment than the purchaser of a cup of coffee. For that reason, such a notional buyer would be more likely to be aware of the manner in which the source or brand of the beans used in the coffee beans can be ascertained, such as by signage above the bags of coffee beans and labels on the bags of coffee beans themselves. If the notional or hypothetical buyer of coffee beans visited a BSP store, they would discern, and be astute to discern, that the coffee beans sold in the BSP stores are not promoted by reference to, or branded or labelled with, any mark which contains the word "Blackstar" or a star graphic. For this reason, consumers in this market would be unlikely to consider that the use of the words "BLACK STAR PASTRY" as signage for the bakery's name, and the use of the same name on a staff member's uniform collar, was indicative of the source or brand of the coffee beans sold in BSP's stores.
6. In either scenario, the essential or distinguishing characteristic of the Blackstar 833 trade mark, being the star graphic, has not been taken by the BSP012 trade mark and the New BSP Logo.
7. In these circumstances, I am not satisfied that the uses by BSP of the BSP012 trade mark and the New BSP Logo are likely to deceive or cause confusion in the sense that there is a real risk that the ordinary consumer, who is taken to have knowledge of the Blackstar 833 trade mark used in relation to the full range of goods to which the registration extends, but an imperfect recollection of it, would be caused to wonder whether the coffee beverages and coffee beans served and supplied by BSP using the word mark "BLACK STAR PASTRY" in its stores come from the same source as those taken to be supplied using the Blackstar 833 trade mark.
8. By his submissions, Mr Richards relies upon the history of BSP's applications for the registration of the BSP202 trade mark, BSP011 trade mark and BSP012 trade mark and submits that the primary judge's decision on deceptive similarity is consistent with objections raised by examiners. Even if that is the case, it does not detract from the conclusion which I have reached.
9. For these reasons, the BSP trade marks are not deceptively similar to the Blackstar 833 trade mark, and ground 2 should be upheld. It follows that, contrary to the findings at J [172] and J [190], the BSP trade marks do not infringe the Blackstar 833 trade mark.

1. In light of the conclusions reached on grounds 1 and 2 and in relation to the cross-appeal below, it is not necessary to address these additional grounds of appeal.

1. The Amended Notice of Cross-Appeal describes the cross-appeal as follows:

The Respondent appeals from those parts of his Honour's reasons for judgment in the Federal Circuit and Family Court of Australia (Division 2) proceeding BRG 209/2023 given on 1 August 2025 reported as Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226 (J), that the:

(a) Appellant's trade mark Australian Registered Trade Mark No. 1953012 (the 012 mark), and its equivalent mark referred to in the reasons as the "New BSP Logo", were not "substantially identical with" the Respondent's registered Australian Trade Mark No. 1172976 within the meaning of that term in the Act s 120.

(b) Respondent had abandoned all his claims for infringement of Australian Registered Trade Marks Nos. 1172976 (976 mark) and 128833 (833 mark) [sic] by the Appellant's Australian Registered Trade Mark No. 2057974 (the 974 mark).

1. The following are the details of the cross-appeal:

The Respondent appeals from that:

1. part of the reasons at J[164], that the Appellant's 012 mark and the equivalent mark under Trade Marks Act 1995 (Cth) (the Act) s 7 , referred to in the reasons as the "New BSP Logo" were not "substantially identical with" the Respondent's registered Australian Trade Mark No. 1172976 within the meaning of that term in the Trade Marks Act 1995 (Cth) s 120.

2. part of the reasons at J[214] to J[220] that the Respondent had abandoned all his claims for infringement of the Respondent's 976 mark and 833 mark by the Appellant's use of its 974 mark under the Trade Marks Act 1995 (Cth) (the Act) s 120.

3. In all other respects the judgment in the Federal Circuit and Family Court of Australia (Division 2) proceeding BRG 209/2023 given on 1 August 2025 reported as Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226 is affirmed.

(Emphasis original.)

1. It is well accepted that one does not appeal from reasons, but from orders made: see Maughan Thiem Auto Sales Pty Ltd v Cooper (2013) 216 FCR 197; [2013] FCAFC 145 (Katzmann J, with whom Greenwood and Besanko JJ agreed) at [46]. In this case, there is no appeal from any order made by the primary judge and the cross-appeal is incompetent for this reason. Notwithstanding this conclusion, I will proceed to consider the grounds of appeal.
2. BSP filed a Notice of Contention on the cross-appeal; however, for the reasons given below, it is not necessary to address it.

A. Infringement of the 976 mark under s 120 of the Act

1. The primary judge correctly identified the method in determining whether the 012 mark and the New BSP Logo were substantially identical with the 976 mark, the method described by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 415 (the side-by-side comparison) (J "SCHEDULE - INFRINGEMENT OF TRADE MARKS - PROVISIONS AND PRINCIPLES" [28]). However, the primary judge erred in the application of the side-by-side comparison by:

(a) including in the comparison between on the one hand the Respondent's 976 mark, and on the other hand the Appellant's word mark the 012 mark and the "New BSP Logo" the word "pastry".

(b) finding that the inclusion of the word "pastry" was the determinative factor that the Appellant's marks were not substantially identical with the Respondent's 976 mark.

Particulars

In the side-by-side comparison:

(a) the essential elements or cognitive clues should be compared, and the word "pastry" should not be included in the comparison because it is not, for the purpose of the side-by-side comparison, an essential element or cognitive clue of the 012 mark and the New BSP Logo.

(b) the word "pastry" should not have been included in the comparison because in the context of the Appellant's mark, the word "pastry" is a mere descriptive element and not likely to perform the distinguishing role required in respect of the relevant goods and services.

1. The primary judge ought to have held that the Appellant's word mark the 012 mark and the "New BSP Logo" were substantially identical to the Respondent's 976 mark for the purpose of the Trade Marks Act s 120.

(Emphasis original.)

1. By these grounds, Mr Richards complains of error in the reasons and seeks a finding, and orders, which rely upon or relate to the Blackstar 976 trade mark. By reason of the findings made in relation to ground 1 of the Notice of Appeal, these grounds necessarily fail in any event as the Blackstar 976 trade mark is invalid.
2. Further, the primary judge found that the BSP trade mark and the New BSP Logo are deceptively similar to the Blackstar 976 trade mark: J [170]. There is no appeal from that finding. The utility in seeking a finding that they are also substantially identical is not apparent.
3. Finally, the primary judge's reasons on this issue appear at J [162] and J [164]:

In determining whether the BSP012 and New BSP Logo are substantially identical with either of the Blackstar trade marks, it is necessary to compare the trade marks side by side, note their similarities and differences, and the importance of the similarities and differences having regard to the essential features of the Blackstar trade marks, and the total impression of resemblance or dissimilarity that emerges from the comparison. "Substantial identity" requires "a total impression of similarity to emerge from a comparison between" the Blackstar trade marks, on the one hand, and the BSP012 trade mark and New BSP Logo, on the other.

...

A comparison of the Blackstar 976 trade mark, on the one hand, and each of the BSP202 and BSP011 trade marks, on the other, also does not produce a total impression of similarity. The Blackstar 976 trade mark is comprised of words, while each of the BSP202 and BSP011 trade mark is a composite mark. It is a more difficult question whether a comparison of the Blackstar 976 trade mark and each of the BSP012 trade mark and New BSP Logo produces a total impression of similarity. A strong consideration in favour of answering that question in the affirmative is the presence in each of the trade marks and logo of the non-descriptive words "Black Star". The presence of the descriptive word "Pastry" in the BSP012 trade mark and the New BSP Logo is likely to generate a relatively small impression on the viewer when read with "Black Star" or "Blackstar". On balance, however, I am not satisfied that a comparison produces a total impression of similarity, and that is because of the presence of "Pastry" in the BSP012 trade mark and the New BSP Logo.

(Citations omitted.)

1. Having regard to these reasons, no error has been shown by Mr Richards with the consequence that I am not persuaded that the primary judge ought to have held that the BSP 012 trade mark and the New BSP Logo were substantially identical to the Blackstar 976 trade mark for the purpose of s 120 of the Trade Marks Act.
2. For these reasons, grounds 1 and 2 must fail.

1. By ground 3, Mr Richards asserts an error by the primary judge in finding at J [220] that Mr Richards had "abandoned all claims made in the statement of claim in relation to BSP's registration and use of the BSP974 trade mark", and that the primary judge ought to have held that the BSP974 trade mark infringed either or both of the Blackstar 976 trade mark and Blackstar 833 trade mark.
2. By the orders sought in the cross-appeal, Mr Richards seeks an "order" that by using the BSP974 trade mark, BSP "infringed" the Blackstar trade marks, and an order that the BSP974 trade mark be cancelled.
3. At J [214]-[220], the primary judge found as follows:

On 18 May 2022 BSP secured the registration of the following trade mark (BSP974 trade mark), effective from 17 December 2019:

The BSP974 trade mark is registered in class 30 (among other things) for "bakery products, bread, foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries; donuts; croissants; pastry; sandwiches; coffee; tea; chocolate".

In the statement of claim Mr Richards alleges that the BSP974 trade mark is substantially identical with or deceptively similar to the Blackstar trade marks.

In its final closing submissions, BSP submits that Mr Richards, by his counsel, did not open any case in relation to the claims made in the statement of claim regarding the cancellation of the BSP974 trade mark pursuant to s 44 or s 60 of the TM Act.

In opening submissions, counsel for Mr Richards said that the BSP974 trade mark "will not take a high role in the proceeding because our evidence is it's not widely used; it is used in some shops in the merchandising section, predominantly". In his counsel's closing written submissions, Mr Richards submitted as follows:

The '974 trade mark is not a significant mark. It is what might be referred to as a "limping mark". It depends on the main BLACKSTAR PASTRY MARK for its existence. It is relatively new compared to the initial marks used by Mr Thé.

And in closing submissions, counsel for Mr Richards said:

The pleadings for the respondent make that criticism of Mr Richards in respect of the 974 mark, "BLKSTR", that he didn't appeal. But it's not the main game. The main game are those three - the two logo marks and the word mark.

I am satisfied that Mr Richards has abandoned all claims made in the statement of claim in relation to BSP's registration and use of the BSP974 trade mark.

(Emphasis original., footnotes omitted.)

1. No error by the primary judge has been shown for the following reasons.
2. First, while pleaded, Mr Richards did not open any case at trial in relation to his claims regarding cancellation of the BSP974 trade mark pursuant to ss 44 or 60 of the Trade Marks Act. No such claim was mentioned by Mr Richards in his written outline or his oral opening.
3. This was so notwithstanding that BSP's written opening submissions stated:

In his pleadings, the Applicant has made various other assertions regarding bases for cancellation of the 202, 011, 012 and 974 marks. None of these other bases are addressed in the Applicant's outline of submissions, and so it is assumed that they are not pressed. If the Applicant intends to press any of those other claims, he should indicate this in opening and identify the basis on which any of the other claims are pressed.

(Emphasis added.)

1. Notwithstanding this, Mr Richards did not make an oral submission to the primary judge that the claims were pressed.
2. Secondly, in Mr Richards' written closing submissions at trial, the BSP974 trade mark did not feature in the comparative analysis of marks said to give rise to infringement, and no submissions were developed either orally or in writing concerning the pleaded infringement claim by reference to this trade mark. Mr Richards cannot now complain that the primary judge failed to make findings which he did not ask the primary judge to make.
3. The primary judge was therefore correct to find that Mr Richards has abandoned all claims made in the statement of claim in relation to BSP's registration and use of the BSP974 trade mark.
4. There are additional reasons that the orders sought by Mr Richards on the cross-appeal would not be made.
5. First, although Mr Richards seeks an order in the Notice of Cross-Appeal that the BSP974 trade mark be cancelled, no grounds of appeal relate to or support the making of this order, and so I would have declined to make it, even had the cross-appeal been competent.
6. Secondly, Mr Richards complains of error in the reasons and seeks a finding, and orders, which rely upon or relate to (inter alia) the Blackstar 976 trade mark. By reason of the findings made in relation to ground 1 of the Notice of Appeal, this ground must fail in any event insofar as it relates to the Blackstar 976 trade mark.

1. For these reasons, the cross-appeal will be dismissed. It is therefore not necessary to address the matters raised in the Notice of Contention filed by BSP.

(1) leave to appeal will be granted;

(2) the declaration and injunctive relief as ordered by the primary judge and insofar as they relate to the Blackstar 976 trade mark will be set aside, and the order made by the primary judge (being order 4 of the Orders dated 11 September 2025) concerning an inquiry to assess damages or account of profits with respect to infringement of the Blackstar 976 trade mark will be set aside;

(3) the declaration and injunctive relief as ordered by the primary judge and insofar as they relate to the Blackstar 833 trade mark will be set aside, and the order made by the primary judge (being order 4 of the Orders dated 11 September 2025) concerning an inquiry to assess damages or account of profits with respect to infringement of the Blackstar 833 trade mark will be set aside;

(4) the cross-appeal will be dismissed.

1. As a consequence, the following orders will be made:

(1) Order 1 of the Order of the primary judge dated 1 August 2025 will be set aside and in lieu thereof, it will be declared that:

(a) Mr Richards was not the owner of Australian trade mark number 1172976 (within the meaning of s 58 of the Trade Marks Act) as at the priority date of that trade mark;

(b) Australian trade mark number 1172976 is and has at all material times been invalid.

(2) Pursuant to s 88(1) of the Trade Marks Act, Australian trade mark number 1172976 be cancelled or otherwise removed from the Register of Trade Marks.

(3) The declarations in paragraphs 3 and 4 of the Order of the primary judge dated 1 August 2025 be set aside and in lieu thereof, the application be dismissed.

(4) Orders 2, 3 and 4 of the Order of the primary judge dated 11 September 2025 be set aside.

(5) The orders in (1) to (4) be stayed until:

(a) the expiry of 14 days from the date of these orders; or

(b) if an application for special leave to appeal is filed within 14 days from the date of these orders, the final determination of that application if special leave is not granted or, if special leave is granted, the subsequent final determination of any appeal.

1. Costs will follow the event, including the costs of the proceeding below. This order will also be the subject of the proposed stay referred to above.

I certify that the preceding one hundred and twenty-five (125) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Downes.