Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd

1. Makes the ruling in [8] of the reasons published as Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd [2020] FCA 1895. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

YATES J: 1 The respondents seek to tender 19 documents purporting to be invoices. Without wishing to express criticism, the evidence sought to be adduced by the documents is late-served. The blame - if there is to be blame - does not fall at the feet of the applicant. 2 Although trade mark use can be established by use of a sign on a document, such as an invoice, it is not irrelevant to look at the goods themselves, to which the document refers, to inform the question whether the document does, in fact, use a particular sign as a trade mark. This is a legitimate inquiry for a party in the position of the applicant in the present case to make. Its case does not necessarily need to be confined to the document itself. One is entitled to look to the circumstances surrounding the alleged trade mark use to inform the question whether use in the document is, in fact, trade mark use. 3 Here, the tender is of the documents themselves, without other evidence explaining them or the process by which they were created or used or, indeed, the function they actually performed. I can draw inferences from the documents, but it is not permissible for me to make guesses. It is possible that the documents here were documents sent to the persons whose addresses appear on them, but it does not follow that, simply because an Australian address is shown, that the documents were, in fact, sent to Australia, or, if documents were sent in a particular transaction, these were the actual documents that were sent. All of this is left in the air. 4 The place where the word "Oro" appears in the documents is a product description. "Oro" is used with other words. It is far from self-evident that "Oro" is there being used as a trade mark. In my view, the use relied on is entirely equivocal as to trade mark use and certainly distinguishable, in fact, from the example provided in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592. As the evidence in this case already shows, and by way of example only, the word "Oro" can refer to the colour of the packaging used for a product; it can refer to the quality or standard of the product, as a premium or first-ranking product. Indeed, the respondents themselves argue that it can also refer to a blend or, at least, part of a description of a blend. There are clear indications in the documents themselves that the descriptions are, in fact, idiosyncratic statements about the products to which they refer. I would infer that these statements are of the authors of the documents. I do not know what was in the authors' minds when the documents were created, in particular the reason or reasons why they chose to describe the products in the way they variously did. 5 All in all, I am of the view that the probative value of the documents, said to show trade mark use of the word "Oro" in Australia, is, at best, very low. I am of the view that the probative value, such as it is, is substantially outweighed by the danger that it would be unfairly prejudicial to the applicant to admit them without giving it a full and proper opportunity to address the evidence, as admitted. That would occasion, most likely, a substantial adjournment. I am not prepared to grant an adjournment for that purpose, given the stage at which the hearing has reached. As I have said, the blame - if there is to be blame - for the late introduction of the evidence does not fall at the applicant's feet. 6 Secondly, given the equivocal nature of the documents - and also absent a more fulsome account as to the process by which they were authored, the purpose they actually served and, in particular, whether they were, in fact, sent to Australia - their probative value is substantially outweighed by the danger that, if admitted into evidence, they will be confusing and might be positively misleading. 7 Thirdly, even if I were to grant an adjournment to the applicant, the documents appear to have been created between 20 and 24 years ago. To require the applicant to investigate the documents, when the respondents themselves have not - they merely wish to tender them - is not only unfairly prejudicial to the applicant; there is a risk that the applicant will be put to expense on a possibly fruitless task. I am satisfied that the probative value of the documents is substantially outweighed by the danger that the evidence, if admitted, would cause or result in an undue waste of time. 8 For these reasons, I reject the tender of the documents under s 135 of the Evidence Act 1995 (Cth). I certify that the preceding eight (8) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Yates.