This is an appeal from orders made on 17 November 2023 cancelling two trade mark registrations in the name of the appellant ("Cantarella") pursuant to s 88(1)(a) and s 58 of the Trade Marks Act 1995 (Cth) ("the Act"), and dismissing its application for relief for infringement of those marks. The respondents to the proceeding before the primary judge and to the appeal are Lavazza Australia Pty Ltd ("Lavazza Australia") and Lavazza Australia OCS Pty Ltd ("Lavazza OCS") (together "Lavazza"). The primary judge's reasons for judgment ("J") are found at Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258.
The trade marks in suit are Australian Trade Mark No. 829098 ("the 098 mark") and Australian Trade Mark No. 1583290 ("the 290 mark"), each of which is for the word ORO ("the ORO trade mark") registered in class 30 for "coffee; beverages made with a base of coffee, espresso; ready-to-drink coffee; coffee based beverages". The priority dates of the 098 mark and the 290 mark are 24 March 2000 and 30 September 2013 respectively. There is an unchallenged finding that Cantarella first used the ORO trade mark in Australia in relation to coffee on 20 August 1996.
At trial Lavazza accepted that it had supplied and advertised coffee in packaging bearing the word ORO, but contended that the 098 mark and the 290 mark were wrongly registered and sought to have the trade mark registrations cancelled. Lavazza also denied that it had used the word ORO as a trade mark. It also raised various statutory defences to infringement under ss 122 and 124 of the Act.
Cantarella challenges various findings made by the primary judge concerning what his Honour held to be prior third-party use of the ORO trade mark in Australia before the date of Cantarella's first use. In particular, Cantarella says that his Honour erred in finding that the ORO trade mark had been used in Australia prior to that date by Caffè Molinari SpA ("Molinari") ("Ground 1") and that his Honour should also have found that any such use, if it occurred, was not trade mark use ("Ground 2").
Other matters the subject of Cantarella's notice of appeal include a challenge to the primary judge's finding that ownership of the ORO trade mark the subject of the prior use findings had not been abandoned by Molinari by the priority date of the 098 mark or, alternatively, the priority date of the 290 mark ("Ground 3"). Cantarella also says that in the alternative to Grounds 1 - 3, this Court should conclude that the primary judge erred in failing to find that Cantarella was a "concurrent owner" of the ORO trade mark ("Ground 4"). Cantarella says that the primary judge erred in finding that the registrations for the 098 mark and the 290 mark were vulnerable to removal, and that each registration was and remains valid. Alternatively, Cantarella says the primary judge erred in failing to exercise the discretion not to cancel the trade mark registrations under s 88(1) of the Act ("Ground 5").
Lavazza has filed an amended notice of contention and cross-appeal. In circumstances where it does not seek to disturb the primary judge's orders, the reference to cross-appeal is a misnomer. In essence, Lavazza seeks to uphold the primary judge's findings on a number of grounds that were rejected by the primary judge. First, Lavazza says that the primary judge erred in holding that Lavazza's use of the ORO trade mark was trade mark use. Secondly, Lavazza says that the primary judge erred in rejecting its defence to the infringement case based on s 122(1)(b)(i) of the Act. Thirdly, Lavazza says that the primary judge erred in holding that the ORO trade mark was, at the date of its registration, distinctive within the meaning of s 41 of the Act. Finally, Lavazza contends that the primary judge erred in holding that various other alleged prior uses of the ORO trade mark on which it relied (in support of its argument that Cantarella was not the owner of the ORO trade mark) did not involve trade mark use in relation to the registered goods.
The primary judge ordered that Cantarella pay 50% of Lavazza's costs of and relating to the proceeding on a party/party basis: Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 4) [2024] FCA 419 ("J2"). Lavazza has filed an application for leave to appeal the costs order made by his Honour.
For reasons that follow, Cantarella's appeal against the primary judge's orders of 17 November 2023 and Lavazza's application for leave to appeal his Honour's costs orders should be dismissed.
[2]
THE MODENA PROCEEDING
Before considering Cantarella's grounds of appeal, it is necessary to refer to an earlier proceeding to which Cantarella was a party in relation the 098 mark, which was ultimately determined by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337 ("Modena"). It was common ground in the Modena proceeding (and before the primary judge in this case) that "oro" is an Italian word that means "gold". Modena Trading Pty Ltd has been Molinari's exclusive distributor in Australia since around 2009.
By majority (French CJ, Hayne, Crennan and Kiefel JJ, Gageler J dissenting) the High Court allowed Cantarella's appeal in Modena from a judgment of the Full Court of the Federal Court (Mansfield, Jacobson and Gilmour JJ) cancelling (inter alia) the 098 mark registration, on the ground that it was not capable of distinguishing the trade mark applicant's goods from those of other persons contrary to the requirements of s 41 of the Act: Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 215 FCR 16. The question before the High Court in Modena, which it decided in Cantarella's favour, was whether the ORO trade mark was "inherently adapted to distinguish" Cantarella's goods within the meaning of s 41(3) of the Act. As Lavazza noted in its submissions in the present case, there was no challenge to the validity of the ORO trade mark in Modena based on s 58 of the Act.
There are two matters of immediate significance arising out of the Modena proceeding. First, there is the High Court's finding that the ORO trade mark was inherently distinctive when used in relation to the registered goods. Lavazza (which was not a party to that proceeding) submitted to the primary judge that Modena should not be followed. That submission was rejected by the primary judge. Before this Court Lavazza contended that the primary judge should not have followed Modena and should instead have found that the ORO trade mark was not inherently distinctive when used in relation to coffee. The submission was made but not developed in this Court on the express basis that, if necessary, Lavazza would seek to argue in any subsequent appeal to the High Court that Modena was wrongly decided.
The Modena proceeding also provides historical context to some evidence relevant to Molinari's prior use of the ORO trade mark in Australia. The evidence before the primary judge included a copy of an affidavit made by Guiseppe Molinari on 13 September 2011 which was filed and read in the Modena proceeding ("the Molinari affidavit"). In his affidavit Mr Molinari indicates that he is a director and the general manager of Molinari and authorised to make the affidavit on its behalf. Mr Molinari states that Molinari was formed in 1964 and that it has produced various coffee products including the Caffè Molinari Oro blend continuously since 1965. The Molinari affidavit (redacted to take account of material rejected or not read) was exhibited to an affidavit read by Cantarella at the trial before the primary judge.
Copies of invoices exhibited to the Molinari affidavit were exhibited to a separate affidavit read by Cantarella at the trial. Those include copies of invoices issued by Molinari to CMS Coffee Machine Services Pty Ltd ("CMS") and to Saeco Australia Pty Ltd ("Saeco"). The first of those invoices is dated 18 September 1996 and addressed to Saeco. In a section of the Molinari affidavit headed "Molinari in Australia" Mr Molinari states that "Molinari began exporting products to Australia in or about July 1996" and that CMS (formerly known as Saeco) "distributed Molinari products in Australia in the period July 1996 to March 2001". The reference by Mr Molinari to CMS "formerly known as Saeco" appears to be an error. There is an unchallenged finding by the primary judge that in 2002 CMS changed its corporate name from CMS to Saeco. A company search in evidence shows that the change of name took effect on 3 January 2002.
[3]
GROUND 1
Against that background we now turn to the first ground of appeal. Under Ground 1, Cantarella challenges the primary judge's finding that Molinari shipped coffee beans in the Caffè Molinari Oro 3kg packaging, identified as Product Code 6093, to CMS in Australia on 18 September 1995, 17 October 1995 and 26 March 1996 ("the disputed shipments"), which were received at CMS's warehouse at 1/33 Acheson Place, Coburg, Victoria, approximately four to seven weeks after the invoice date, and which were displayed for sale in Australia.
The primary judge's consideration of this issue at J [117] - [208] focuses on the evidence of four witnesses called by Lavazza, Ms Maurizia Baraccani, Mr Fabrizio Mengoli, Mr Giorgio Ubertini and Ms Esther Toledano, together with relevant documentary evidence including the Molinari affidavit, an ASIC search in respect of CMS, and correspondence between Mr Mengoli and Mr Ubertini. The evidence of the four witnesses was central to Lavazza's case under s 58 based on Molinari's prior use of the ORO trade mark and, in particular, the disputed shipments.
The primary judge found at J [119] that in Molinari's sales records CMS was given the client code 110103453 ('453) and Saeco was given the client code 110103878 ('878). Consistent with the primary judge's finding, invoices exhibited to the first affidavit of Mr Mengoli include one addressed to CMS dated 24 July 1996 which bears the '453 client code, and another addressed to Saeco dated 15 October 1996 which bears the '878 client code. However, the invoice to Saeco predates the 2002 change in corporate name by more than five years. This and other discrepancies in the invoices were not the subject of any attention in the parties' submissions in this Court.
[4]
Ms Baraccani
Ms Baraccani is the head of Molinari's Data Processing Centre. She commenced working for Molinari in 1994 and took up her current position in 1997. Between 1994 and 1997 she worked as assistant to the head of Molinari's Data Processing Centre. According to Ms Baraccani's evidence, as summarised by the primary judge, before 1996 information relating to all Molinari coffee sales, both in Italy and abroad, was stored on a database managed by a computer system called "Olimpix". Olimpix was used by Molinari to issue invoices to customers and record sales data. The invoices were printed and sent to customers by post or facsimile transmission. Hard copies of the invoices were kept by Molinari in its archives. According to Ms Baraccani's evidence, much of Molinari's paper records have since been destroyed.
In March 1996, Ms Baraccani participated in the migration of data from the old Olimpix system to a new system called "Kronos". According to Ms Baraccani's evidence, which the primary judge accepted, there were limits to the type of information that was stored in the Olimpix database and, as a result, only some of the information relating to Molinari sales and products in existence before June 1996 was migrated to the Kronos system. Ms Baraccani also gave evidence, accepted by the primary judge, that while the Kronos system can reproduce sales invoices from 1996 onwards, it cannot do this for sales occurring before 1996.
According to Ms Baraccani's evidence, on around 21 April 2021, Mr Mengoli, the Sales, Marketing and Export Manager of Molinari, asked her to provide data stored in the Molinari computer system relating to sales to four client codes including '453 and '878. The primary judge accepted at J [118] that Ms Baraccani "interrogated Molinari's computer records and prepared two spreadsheets of sales data concerning Molinari coffee exported to Australia in the period 1995 to 2003".
Ms Baraccani exhibited to her affidavit a copy of the data in the form of two Excel spreadsheets which she downloaded from the Kronos system in respect of sales in the period 1995 to 2003. According to her evidence, the first 13 lines of the first Excel spreadsheet contain information relating to sales of Molinari coffee products to the customer identified by '453 client code, which have been transferred from the Olimpix system to the Kronos system. Ms Baraccani stated in her affidavit that the two Excel spreadsheets "are exact records of information stored in the Molinari Kronos system relating to sales to customers identified by customer codes" including the client codes '453 and '878.
Senior Counsel for Cantarella, Mr Bannon SC, referred us to parts of Ms Baraccani's cross-examination in which she accepted that she had no role in the issuing of invoices to customers or the recording of sales data. In its written submissions, Cantarella contended that Ms Baraccani's Excel spreadsheets should not have been received into evidence because they did not satisfy the requirements of the hearsay exception in s 69 of the Evidence Act 1995 (Cth) ("Evidence Act") or, alternatively, that they should have been excluded under s 135 or given little or no weight. In his oral submissions, Mr Bannon focused not on the admissibility of the spreadsheets, but on whether they constituted evidence capable of supporting the primary judge's findings concerning the disputed shipments. We will consider those and related submissions later in these reasons.
[5]
Mr Mengoli
Mr Mengoli is the Sales, Marketing and Export Manager of Molinari. He commenced employment with Molinari as an Export Manager on 18 March 1996. He was promoted to his current position in 2008. Mr Mengoli gave evidence that when he joined Molinari as Export Manager in March 1996, Molinari already exported coffee, including what he referred to as Caffè Molinari Oro, to Australia.
According to Mr Mengoli's evidence, the Kronos system was in the process of being installed when he started with Molinari, and it was used throughout the business from June 1996 onwards. Although some of the sales details of the invoices prior to June 1996 were kept in Molinari's electronic records on the Kronos system, the underlying hard copy invoices from that time were not retained by the business.
Mr Mengoli went on to interpret the first of the spreadsheets created by Ms Baraccani making reference to certain of the product codes appearing therein including, in particular, the product code 6093 for Caffè Molinari Oro 3kg and the product code 6091 for Caffè Molinari Oro 1kg.
Mr Mengoli also stated that he caused to be retrieved from the Kronos system invoices issued by Molinari for Caffè Molinari Oro dated between 24 July 1996 and 16 April 2003. As to the invoices dated 18 September and 17 October 1995, and 26 March 1996, for the disputed shipments, his evidence was that Molinari no longer had access to those invoices.
Mr Mengoli produced a copy of a letter signed by him from Molinari to CMS dated 23 July 1996 addressed to "Mr Ubaldini", which the primary judge accepted was a mistaken reference to Mr Ubertini at CMS. In the letter (which is in Italian, but has been translated), Mr Mengoli thanked Mr Ubertini for his order, referred to a telephone call on 18 June 1996, and discussed the development of the Australian market for Molinari coffee products.
In his third affidavit, Mr Mengoli stated that Molinari's shipments to Australia have always been sent by sea and that, depending on the shipping service used, these generally take between 25 to 50 days to arrive in Australia. To the best of his recollection, that period of time was the same in the mid-1990s. He also stated that "[i]nvoices are dated to align with the day the products leave Molinari's warehouse". Mr Mengoli also commented upon the Molinari affidavit stating that Molinari's computing systems were changed in June 1996, and that this may explain why Mr Molinari did not provide evidence of exports to Australia prior to July 1996.
Mr Mengoli was cross-examined at some length. His evidence was given with the assistance of an interpreter. The cross-examination demonstrated that evidence given by him concerning the availability of sales documents for the period before June 1996 and the data migration was not based on his personal knowledge, but what he had been told by Ms Baraccani. It also established that Mr Mengoli had some involvement in the compilation of the information that was included in the Molinari affidavit. He also accepted that he was unable to say which department had responsibility for keeping Molinari's physical records in 2011 when the Molinari affidavit was made.
Mr Mengoli said that he did not read the Molinari affidavit, but he provided some documentation to Mr Molinari for the preparation of the affidavit. His cross-examination included the following exchange:
MR BANNON: And you understood that Mr Giuseppe Molinari was relying on you for information for the purpose of the affidavit as to when Caffè Molinari first began exporting products to Australia?
THE INTERPRETER: Yes. He was relying on me just as much as he was relying on a lot of other people, maybe about 10 people, including his own father, the IT specialist, the secretary looking after the invoices. And so I was … one of them.
MR BANNON: And you looked at the documents which were gathered together for the purposes of identifying when sales were first made to Australia?
THE INTERPRETER: I honestly looked at documents starting from the time I was there.
The primary judge accepted (at J [125]) that at the time Mr Mengoli commenced working at Molinari in March 1996, Caffè Molinari Oro coffee was packaged as follows:
The primary judge also accepted Mr Mengoli's evidence that, based on an investigation conducted by him and others in his team, there was nothing to suggest that the products were packaged any differently in 1995. His Honour made a specific finding in relation to a sample of the Caffè Molinari Oro 3kg product packaged on 25 September 2007 ("Sample Product") that was in evidence, which he was satisfied exemplified the packaging used for that product in 1995.
The primary judge found Mr Mengoli's evidence to be credible and reliable at J [188].
[6]
Mr Ubertini
Mr Ubertini established CMS with his business partners in 1993. According to Mr Ubertini's affidavit evidence, CMS operated from various premises in Melbourne including, at first, premises situated at 1/33 Acheson Place, Coburg. His business partners were Mr Antonio Petrolito, Mr Vincenzo Nespeca and Mr Angelo Augello. Mr Nespeca and Mr Augello were also coffee roasters and they had their own business distributing coffee under the name "Monte Coffee". Mr Ubertini said in his affidavit that, in the early years of the CMS business, CMS's premises were next to the Monte Coffee warehouse, which was located at 31 Acheson Place. During that period, CMS provided promotional packets of Monte Coffee to customers who purchased coffee machines from CMS. In mid-1995 Mr Ubertini and Mr Petrolito bought Mr Nespeca's and Mr Augello's interest in CMS.
According to Mr Ubertini's affidavit evidence, when Mr Nespeca and Mr Augello were bought out, CMS had an opportunity to offer other brands of coffee to its customers. Mr Ubertini said while he was in in Italy on a buying trip and to visit his parents in his hometown of Modena in around September of 1995, he arranged to meet with Mr Guiseppe Molinari for the purpose of securing supplies of coffee to replace the Monte Coffee that CMS had previously supplied.
In his affidavit Mr Ubertini said he did not remember the precise date of his meeting with Mr Molinari, but he believed it was in around September 1995 because it was not long after Mr Nespeca and Mr Augello left CMS. He said it also coincided with the HOST trade show held every two years in Milan that he regularly attended. In the years when he attended the HOST trade show, Mr Ubertini would travel to Italy in late August or early September and return after the trade show concluded in October.
According to Mr Ubertini's affidavit evidence, at his first meeting with Mr Molinari, he placed an initial order with Molinari for Molinari Oro coffee to import into Australia. He also said that he was at this time purchasing many products from Italy and that these generally arrived by sea between three to six weeks after orders were placed. He said that he could not recall the precise date when the first shipment of Molinari Oro coffee arrived in Australia, but he did recall that it was shortly after he returned to Australia from the HOST trade show at the end of October 1995.
In his affidavit Mr Ubertini said that even though Mr Nespeca and Mr Augello were no longer involved in the CMS business, they were still operating from the premises adjacent to 1/33 Acheson Place. He said that he was careful to cover the first pallet of Molinari Oro coffee when it arrived because he did not want to upset them. Mr Ubertini also said that while he could not recall what was in the first shipment from Molinari, he remembered that Molinari supplied CMS with its Molinari Oro blend of coffee, mainly in 1kg bags. He also remembered that at the start of CMS's relationship with Molinari, CMS imported some larger 3kg bags of Molinari Oro. He said that from October 1995 onwards, the staff and directors of CMS used Molinari Oro coffee to make coffee for themselves and customers to promote Molinari Oro coffee.
Mr Ubertini was also cross-examined at some length. It is apparent from the transcript that Mr Ubertini was at times garrulous and non-responsive in his answers. Of course, it does not follow that his evidence was untruthful or unreliable. Mr Ubertini was clear in his answers that the first shipments from Molinari arrived at the 1/33 Acheson Place address before the end of 1995. It was put to him that the shipments did not arrive until after 25 July 1996. He disagreed. It was also put to him that he did not receive anything in 1995 from Molinari. He disagreed and said that he had two shipments from Molinari in 1995. Mr Ubertini also rejected the suggestion put to him that he had not spoken to Mr Molinari about importing coffee before 18 June 1996, though he agreed that he had not spoken to Mr Mengoli before that date. He also agreed that he recalled that the first delivery of Molinari Oro coffee came on a pallet.
It was put to Mr Ubertini that CMS did not commence operating from 1/33 Acheson Place until 24 July 1996. In that context he was taken to copies of various documents, including CMS's Annual Returns for the years ending 30 June 1994 and 30 June 1995. Both documents identify the principal business office as 31 Acheson Place, Coburg. The first of them is signed by Mr Petrolito on 31 December 1994 and the second by Mr Ubertini with no date shown. In his cross-examination Mr Ubertini was also shown the ASIC Extract for CMS/Saeco which also refers to the "start date" of 24 July 1996 for the principal place of business at 1/33 Acheson Place, Coburg.
The primary judge referred (at J [188]) to some "unsatisfactory aspects of Mr Ubertini's oral evidence". Nevertheless, his Honour considered Mr Ubertini to be a truthful witness. His Honour observed at J [166]:
In fairness, I should point out that Mr Ubertini gave his oral evidence by video-link from Italy at a difficult time (late evening/early morning). Mr Ubertini is elderly and giving evidence by this means at this time of the day was likely to have been challenging for him. I make allowance for that possibility in relation to his presentation as a witness. I do not think that Mr Ubertini was intending to be unhelpful. I do not think that he was attempting to evade answering questions. I consider him to be a truthful witness. Nevertheless, based on his presentation in cross-examination, I treat his evidence with circumspection.
His Honour went on (at J [188]) to accept Mr Ubertini's evidence notwithstanding the unsatisfactory aspects to which his Honour referred.
[7]
Ms Toledano
Ms Toledano (who is Mr Ubertini's ex-wife) was employed by CMS as a Finance and Administration Manager. In her affidavit she said that CMS first operated from 1/33 Acheson Place, Coburg, next door to the Monte Coffee warehouse.
Ms Toledano said in her affidavit that she could not recall the exact date CMS began importing coffee from Molinari but that it was not long after Mr Nespeca and Mr Augello left CMS. According to her evidence, this meant the date had to be some time after August 1995 and before the end of 1995. She said she remembered shipments of Molinari coffee arriving at CMS's warehouse at 1/33 Acheson Place. She also said that she recalled receiving 3kg bags of Caffè Molinari Oro coffee in the same packaging as that shown in the photograph reproduced at [30] above. She said in her affidavit:
I specifically recall providing and selling bags of Caffè Molinari Oro coffee to several of these customers when I was alone in CMS's showroom at 1/33 Acheson Place at the time when I was CMS's only employee (i.e. from around the end of 1995 but definitely before April/May 1996 when CMS hired an additional employee). I also recall accounting for those early sales of Caffè Molinari Oro in CMS's computer system during that time.
Ms Toledano was cross-examined briefly. As the primary judge recorded at J [179], her affidavit evidence was not directly challenged. As his Honour also noted, Ms Toledano said that CMS was trading at 1/33 Acheson Place before 1996. Her cross-examination included the following exchange:
Were you aware that the company records filed with ASIC indicate that that became the principle [sic] place of business of CMS on 24 July 1996, 1/33?---At Acheson Place?
Yes?---Acheson Place, we were there from '93.
… Were you aware that the ASIC records indicate that the principle [sic] place of business of a company did not become Unit 1/33 Acheson Place until 24 July 1996. Were you aware of that?---No, I don't know what the ASIC records show. I know we were trading there before '96.
And I want to suggest to you that the first shipment which was received was received at 1/33 Acheson Place. I think you agreed with that?---Yes.
And that was after 24 July 1996. Do you agree?---It's possible. I don't remember the actual arrival date. I just know that we were - before September '96, we had already moved premises. Exactly what date that was, I can't recall, but I just remember being there back in November - back into the office. I had taken two months off, so - yes, I'm not - - -
…
I didn't mean to interrupt you. Sorry?---Sorry. It's just that I don't know the specific dates. Either it was after July or before July. I just know that we did get one before I took maternity leave, which is in September, and we had just moved to the new premises. So yes, I can't - sorry -I can't give you a specific date .....
In her affidavit Ms Toledano said that CMS hired another employee in around April/May 1996, that her first daughter was born in September of that year, and that CMS moved to new premises at 86 Newlands Road, Reservoir, Victoria, in around August 1997.
The primary judge found Ms Toledano to be a credible and reliable witness. His Honour referred to Ms Toledano's oral evidence and accepted that it raised some doubt as to the reliability of her recollection. However, his Honour said at J [182]:
Ms Toledano's affidavit gives a more focussed recollection - namely, that CMS commenced ordering Molinari coffee shortly after Mr Nespeca and Mr Augello had left the CMS business, and that the first two shipments from Molinari arrived before the end of 1995. Although Ms Toledano's oral evidence throws some doubt on the reliability of this recollection, I do not take her to have resiled from what she had said in her affidavit. Moreover, her evidence must be considered as a whole and with the other evidence before the Court, which includes Mr Ubertini's evidence as to his first order on Molinari and the timing of the arrival of that order at 1/33 Acheson Place, and Molinari's available accounting records, which accord with Mr Ubertini's evidence on this topic.
It is apparent that his Honour accepted Ms Toledano's evidence that shipments of Molinari coffee arrived at CMS's 1/33 Acheson Place premises not long after Mr Nespeca and Mr Augello left CMS in around August 1995 (which is when they resigned as directors of CMS) and before the additional employee was hired in April or May 1996.
[8]
Consideration
Cantarella submitted that the primary judge made basic errors in his approach to fact finding. What these errors were said to be was not altogether clear, but at the core of Cantarella's submission was the suggestion that his Honour wrongly preferred witnesses' evidence that was based wholly on their recollections of events that took place many years ago in circumstances where those recollections were said by Cantarella to be inconsistent with, or at least not supported by, documentary evidence including the Molinari affidavit. Cantarella also submitted that there was no reliable evidentiary basis for the primary judge's finding that the packaging of the Caffè Molinari Oro 3kg product in 1995 was the same as the packaging of the Sample Product packaged in 2007.
It was submitted that the primary judge had insufficient regard to the gravity of the allegations made by Lavazza which raised a challenge to the validity of the trade mark registrations that had been on the Register of Trade Marks for "a very long time". In its written submissions in chief on the notice of appeal, Cantarella contended that this was particularly so where the size, colour, position and prominence of the word ORO, in relation to other packaging elements, was a determinative question in this matter. In support of this particular submission, we were referred to the judgment of the majority (Kiefel CJ, Gageler, and Jagot JJ) in GLJ v Trustees of the Roman Catholic Church for the Diocese of Lismore (2023) 414 ALR 635 at [57], and of Gleeson J at [167], as well as s 140(2) of the Evidence Act. However, it is apparent from Mr Bannon SC's oral submissions and Cantarella's written submissions in reply on the notice of appeal, that this submission was made in respect of the entirety of Ground 1. Mr Bannon submitted that proof of prior use in this case required what he described as "a level of higher satisfaction".
In our view, there can be no suggestion that the primary judge overlooked the fact that Cantarella's ORO trade mark had been registered for many years, or that he did not appreciate the significance of the findings that Lavazza asked him to make. Referring to the evidence of the Lavazza witnesses, specifically in relation to the computer records tendered through Ms Baraccani and Mr Mengoli, his Honour said at J [190] that he was fully cognisant of the significance of that evidence to Cantarella's rights of ownership.
Cantarella's attack upon the primary judge's prior use findings took as its starting point the Molinari affidavit, which was said by Cantarella to show that Molinari did not export any of its products to Australia until in or about July 1996. Cantarella submitted that it was apparent from the Molinari affidavit that the statements made were based on a comprehensive search of both electronic and hard copy records in order to determine the date of the first shipment to CMS, which is identified in the first of the invoices exhibited to the Molinari affidavit and dated 18 September 1996. Further, it was submitted that it should be concluded that the Molinari affidavit was:
… prepared by Molinari's most senior executive following a comprehensive inspection of Molinari's extant records and further…if Molinari could have proven first use and therefore ownership of the ORO word mark within the meaning of s 58 of the Act and wholly defend its distributor Modena from an otherwise successful infringement claim, it would have done so.
Cantarella's submissions approach the Molinari affidavit as if it was the only credible or reliable evidence directed to the prior use issue, when there was in fact a substantial amount of other evidence, including evidence of witnesses who were found to be credible and reliable, that was also considered and weighed by the primary judge.
It is important at this point to refer to this Court's role in reviewing factual findings made at trial. One area in which the primary judge's findings will be treated with considerable deference is where they comprise findings of fact likely to have been affected by impressions about the credibility of witnesses formed after seeing and hearing their evidence: see Fox v Percy (2003) 214 CLR 118 at [25] - [29] per Gleeson CJ, Gummow and Kirby JJ. In Lee v Lee (2019) 266 CLR 129, Bell, Gageler, Nettle and Edelman JJ (with whose reasons Kiefel CJ agreed) said at [55]:
A court of appeal is bound to conduct a "real review" of the evidence given at first instance and of the judge's reasons for judgment to determine whether the trial judge has erred in fact or law. Appellate restraint with respect to interference with a trial judge's findings unless they are "glaringly improbable" or "contrary to compelling inferences" is as to factual findings which are likely to have been affected by impressions about the credibility and reliability of witnesses formed by the trial judge as a result of seeing and hearing them give their evidence. It includes findings of secondary facts which are based on a combination of these impressions and other inferences from primary facts. Thereafter, "in general an appellate court is in as good a position as the trial judge to decide on the proper inference to be drawn from facts which are undisputed or which, having been disputed, are established by the findings of the trial judge".
(Footnotes omitted)
The critical question at trial was whether CMS imported into Australia Molinari coffee (including, in particular, Caffè Molinari Oro in the 3kg packaging) in 1995 or early 1996. The invoices annexed to the Molinari affidavit indicate that the earliest sale by Molinari to CMS occurred in September 1996. However, Mr Ubertini's evidence was very clearly to the effect that Molinari coffee (including Caffè Molinari Oro in the 3kg packaging) was imported by CMS into Australia in 1995, after he met with Mr Molinari in Italy in about September 1995 and placed an initial order. At the risk of stating the obvious, the allegation that the first importation occurred in 1995 was a disputed matter the subject of conflicting evidence that the primary judge was required to consider and weigh. That task necessarily involved forming a view as to the credibility of a number of witnesses who gave evidence before the primary judge, including Mr Ubertini. The primary judge's finding on the critical question should not be disturbed unless it is "glaringly improbable" or "contrary to compelling inferences".
Cantarella's notice of appeal and submissions relevant to Ground 1 engage in an analysis of the evidence as if this appeal were a new trial, without recognising or allowing for the advantages enjoyed by the trial judge in weighing up the whole of the evidence including the written and oral evidence of Lavazza's witnesses.
Cantarella placed considerable weight before the primary judge and in the appeal on the fact that the ASIC Extract for CMS/Saeco showed that the "start date" for the business address for CMS at 1/33 Acheson Place was 24 July 1996 (Ground 1 particular (ii)). In oral submissions to this Court, reference was also made to the CMS Annual Return for the year ending 30 June 1995, along with the Annual Return for the year ending 30 June 1994.
The ASIC Extract contains information derived from the ASIC database which, we would infer, reproduces information contained in (inter alia) the two Annual Returns. The 1994 Annual Return was signed by Mr Petrolito on 31 December 1994 and lodged by the accounting firm, N. Burchill & Co. As previously mentioned, the principal place of business is shown as 31 Acheson Place, Coburg, which was the address for Monte Coffee and immediately adjacent to 33 Acheson Place, Coburg. The 1995 Annual Return was prepared by the same firm of accountants and signed by Mr Ubertini. It continues to show CMS's principal place of business as 31 Acheson Place, Coburg.
Cantarella's submissions assume that the information in the Annual Returns is necessarily accurate or, at least, that it is more reliable than the evidence of Mr Ubertini and Ms Toledano. Both Mr Ubertini and Ms Toledano were clear in their evidence that CMS operated from 1/33 Acheson Place, Coburg from 1993. Neither witness resiled from that evidence. Acceptance of their evidence necessarily implies that the information in the ASIC Extract and the Annual Returns was incorrect. The possibility that the two addresses were confused by those who prepared the Annual Returns and that their error was then overlooked by those who signed them may well explain the discrepancy. In our view, this inference is readily made when one acknowledges the close business relationship between CMS and Monte Coffee. It was open to the primary judge to accept Mr Ubertini's and Ms Toledano's evidence on this topic.
Cantarella also relied on the letter from Molinari to CMS dated 23 July 1996, which Cantarella submitted was more consistent with a new business relationship that commenced in mid-1996 rather than one that began the previous year.
The 23 July 1996 letter was written by Mr Mengoli, who commenced employment with Molinari in March 1996 as Export Manager. There is nothing in the letter which implies that there was no business relationship between CMS and Molinari before mid-1995, or that the order referred to in the first paragraph of the letter was the first order placed by CMS. The letter of 23 July 1996 is consistent with an attempt by Mr Mengoli (relatively new to his then role) to develop and expand an existing business relationship with CMS. Cantarella's submission with regard to the 23 July 1996 letter was considered and rejected by the primary judge. Cantarella does not identify any error in the primary judge's analysis of the letter.
In his oral submissions to this Court, Mr Bannon SC indicated that he did not seek to revisit the correctness of the primary judge's decision to admit Ms Baraccani's Excel spreadsheets into evidence as a business record. However, he submitted that the Excel spreadsheets were not evidence of any sale or shipment of any product by Molinari to CMS in 1995. He submitted that properly analysed, the Excel spreadsheets, when viewed in light of the Molinari affidavit, and the absence of any witness employed by Molinari with any personal knowledge of relevant events, should have been given no weight by the primary judge.
Cantarella was particularly critical of the primary judge's use of the word "shipments" to describe entries in the Excel spreadsheets. It submitted that the spreadsheet was not evidence of any export, completed transactions, shipment, or delivery. Mr Bannon SC pointed out that the Excel spreadsheets did not include any reference to delivery or payment. He submitted that even though the document referred to invoice dates, invoice numbers and invoice amounts, it was not open to infer that any of those entries related to actual product sales or shipments. Asked whether each of the relevant entries was evidence of a transaction between Molinari and CMS, he submitted that the word was ambiguous in that a transaction may or may not comprise a sale or a shipment of product.
Mr Bannon SC was prepared to accept that the entries on the spreadsheets comprised evidence of the generation of invoices. His submission was, in effect, that the primary judge should not have been satisfied that the entries in the Excel spreadsheets (or at least those created before July 1996) were anything other than records of "pro forma" invoices, which were not proven to record actual sales. The submission was developed by reference to evidence given by Mr Mengoli in cross-examination who explained that Molinari will sometimes issue a pro forma invoice for the approval of the customers.
Mr Mengoli's cross-examination included the following:
MR BANNON: … So is this right; the company creates proforma invoices?
THE INTERPRETER: In the last few years, yes, this is how the company operates, but I cannot tell you for sure if that was the case years ago or if, maybe, we just send a fax or something else.
…
MR BANNON: Since the commencement of your time in the company, if an order was received, for example, by the telephone was a pro forma invoice sent to the client for their approval to let them know how much the goods would cost?
THE INTERPRETER: Okay. I'm not sure that we used to call it pro forma invoice or - but we did write when - when we received an order. We did write maybe an invoice or facsimile of an invoice to - to let them know - to send to - to send to the customers.
MR BANNON: And then, if they approved that invoice or facsimile, then the order would be shipped; is that right?
THE INTERPRETER: Yes
MR BANNON: And that type of invoice which you just referred: as far as you were aware, they were included on the computer system from your time in 1996?
THE INTERPRETER: No. I don't even think that now we keep the proforma invoice in the computer.
MR BANNON: Am I right in saying that the invoice you referred to, the proforma, was created on the Molinari systems from 1996? A computer was used to create these invoices?
THE INTERPRETER: I don't think so. I cannot be sure, but I - I - I believe that we used a manual system, not the computer.
MR BANNON: Well, do you know how any sort of invoice was generated in Caffè Molinari between 1996 and 2000? And was a computer used in the generation of any invoice? …
THE INTERPRETER: At this moment, this time in the company, I don't know. I - it's not my job, and it's - it's really not my - my- my job to know it. I don't know.
…
MR BANNON: Well, is this right: you don't know how invoices were generated from Caffè Molinari between 1996 and 2000, do you?
THE INTERPRETER: The invoices were generated by the computer - the system in our computer, but I don't know if the proforma invoice were also generated by the computer or they were just paper, handmade.
MR BANNON: And you don't know if any proforma invoices generated by - if it was generated by the computer, you don't know whether the computer retained a copy of it, do you?
THE WITNESS: No.
The cross-examination was expressly directed to the use of pro forma invoices in the period between 1996 and 2000. Leaving that aside, Mr Mengoli's evidence indicates that from time to time pro forma invoices may have been issued as a step along the way to arranging a sale and shipment of product. His evidence therefore gives rise to the possibility that the entries in Ms Baraccani's Excel spreadsheets for invoices dated 18 September 1995, 17 October 1995 and 26 March 1996 were only entries relating to pro forma invoices which do not represent actual sales or shipments of the specified product.
Even if the entries in the Excel spreadsheets do not themselves prove that Molinari shipped products to CMS in 1995 and early 1996, they at least indicate that there were commercial dealings between Molinari and CMS at those times, at which point invoices were issued to CMS. And even if these invoices were "pro forma" invoices that did not record any concluded sale, they at least show that Molinari was offering to supply CMS with the specified product at the specified prices on or about those dates.
Cantarella's submissions concerning Ms Baraccani's spreadsheet focus on the inconsistency between what it shows and what appears in the Molinari affidavit. However, the primary judge was required to consider Ms Baraccani's spreadsheet together with other evidence including Mr Ubertini's evidence of his September 1995 meeting with Mr Molinari in Italy, and evidence from both Mr Ubertini and Ms Toledano of CMS's receipt of coffee products from Molinari in the latter part of 1995. Having done this, his Honour accepted Mr Ubertini's evidence that he placed CMS's initial order with Mr Molinari in around September 1995 and that products the subject of that order and a second order were received by CMS later that year. We have already referred to the matters Cantarella pointed to in order to cast doubt on Mr Ubertini's evidence, including Mr Mengoli's letter of 23 July 1996 and the 24 July 1996 "start date" referred to in the ASIC Extract. These matters do not establish that Mr Ubertini's account of his dealings with Molinari in 1995 was glaringly improbable, or contrary to compelling inferences.
Cantarella also relied on what was said to be the improbability of Mr Ubertini placing a second order with Molinari on or about 17 October 1995, before the initial order had been received. Mr Ubertini's evidence was that products shipped from Italy to Australia generally arrived three to six weeks after an order was placed. However, as recorded above, the primary judge made a finding that shipments to CMS's warehouse from Molinari were received four to seven weeks after the invoice date. The time between 18 September 1995 and 17 October 1995 is approximately four weeks. If Mr Ubertini's evidence regarding shipment time is correct, it is highly likely that the first shipment was received after the date that CMS is said to have placed another order. Alternatively, the contents of the first order would only have been present at CMS's premises for about a week. Going by the shipment time the primary judge adopted, the contents of the first order could have been present at CMS's premises for, at most, a day or so before the second order was placed. According to Cantarella, these propositions are inconsistent with Mr Ubertini's evidence that he would not have ordered a second shipment of coffee before he had received the first shipment.
The primary judge was satisfied that each of the disputed shipments was shipped on the date of invoice as recorded in the Kronos system, and received approximately four to seven weeks after that date (J [193]). That finding appears to take into account Mr Ubertini's evidence that the first shipment arrived shortly after Mr Ubertini returned from Italy at the end of October 1995 (rather than the middle of October). It would follow from that finding that the second order was most likely placed before CMS received the first shipment. That may reflect a discrepancy in Mr Ubertini's evidence. He was adamant that he would not have placed a second order before the first order was fulfilled. Nevertheless, Mr Ubertini was clear in his oral evidence that CMS received two shipments from Molinari in the latter part of 1995. In the context of the rest of the evidence, the primary judge was entitled to accept that testimony despite the discrepancy.
We have previously referred to Mr Ubertini's evidence that he covered the first pallet of Caffè Molinari Oro because he did not want to upset Mr Nespeca and Mr Augello. In its submissions, Cantarella contrasted that evidence with Ms Toledano's evidence that she recalled displaying the Caffè Molinari Oro in the 1kg and 3kg packaging when CMS was located at 1/33 Acheson Place (recorded at J [178]). According to Ms Toledano's affidavit evidence:
I recall that during the period when I was CMS's only employee (before April/May 1996), I often made cups of coffee for walk-in customers using the 1kg and 3kg bags of Caffè Molinari Oro coffee. The bags were displayed next to the coffee machines and grinders we used in the warehouse, for customers to see and purchase.
Mr Ubertini's evidence was not specific as to when or for how long he covered the first pallet. Moreover, Ms Toledano referred to the display of bags of coffee, not a pallet. When asked whether the first pallet to arrive was covered by Mr Ubertini, Ms Toledano said she did not recall. We do not consider that the evidence of Ms Toledano on this topic is necessarily inconsistent with that of Mr Ubertini, or that it should have led the primary judge to reject as improbable Mr Ubertini's evidence as to when and where the first pallet was delivered.
Cantarella dismisses Mr Ubertini's evidence as glaringly improbable or contrary to compelling inferences drawn from other evidence including the Molinari affidavit. The Molinari affidavit was not uncontested or undisputed evidence. Lavazza's case was that the Molinari affidavit was wrong in stating that Molinari began exporting Caffè Molinari coffee to Australia in or about July 1996. The primary judge resolved the inconsistency between the Molinari affidavit and Mr Ubertini's evidence by finding that the Molinari affidavit was mistaken and inaccurate (at J [192]). In our opinion that finding, which depended on impressions formed by his Honour of Mr Ubertini and Ms Toledano as witnesses, was open to the primary judge and was neither glaringly improbable nor contrary to compelling inferences drawn from other evidence.
It was faintly suggested in Cantarella's submissions that an inference should have been drawn by the primary judge against Lavazza because it failed to call Mr Molinari. This is not a point raised in any ground of appeal. Nor were we taken to any submission made to the primary judge by Cantarella on the point. The fact that the primary judge does not refer to any such submission suggests that it was not made. Whatever else might be said about any failure to call Mr Molinari, the point is outside the scope of Cantarella's appeal.
The final issue raised by Cantarella under its first ground of appeal concerns the appearance of the packaging for the 3kg Caffè Molinari Oro product imported by CMS in 1995. As previously mentioned, the primary judge found (at J [127]) that the packaging of the 3kg product when Mr Mengoli commenced working for Molinari in March 1996 was as depicted in the photograph reproduced at [30] above. Cantarella submitted that there was "no reliable evidentiary basis" for that finding. In support of that submission, Cantarella referred to evidence as to the multiple iterations of packaging for Molinari products utilising the word ORO, and the frequency with which Lavazza (i.e. not Molinari) updated and altered the packaging of its coffee products (including the size and prominence of the word ORO) before, during and after the period 1995 to September 2007. Cantarella also submitted that no witness could independently recall the Caffè Molinari 3kg packaging.
Mr Mengoli was cross-examined on the form of the 3kg packaging. When it was put to him that he "did not attempt to remember what the packaging might have looked like", he responded "[i]t's the other way around. I remember [sic] the images, and I went to look for the documents that had the images as I remembered." He was not asked any further questions on that or any other topic. There is no substance to the suggestion that Mr Mengoli had no independent recollection of the 3kg packaging.
Mr Ubertini and Ms Toledano were both shown the same photograph of the 3kg Caffè Molinari Oro product that was identified by Mr Mengoli, at the time of preparing their affidavits. Both gave evidence that the 3kg product was packaged as depicted in the photograph. Mr Ubertini's evidence was that he could not recall any changes to the gold packaging between September 1995 and October 2003. Ms Toledano's evidence was that the packaging was consistent with her memory of the packaging and that she also could not recall any changes to the gold packaging during the period that CMS imported coffee from Caffè Molinari. Neither Mr Ubertini nor Ms Toledano was asked any question relating to the appearance of the 3kg packaging. There is no substance to Cantarella's submissions on this topic.
Ground 1 fails.
[9]
GROUND 2
The question that arises under ground 2 of the notice of appeal is whether the primary judge erred in holding that the use of the word ORO on the packaging of the 3kg Caffè Molinari Oro product constituted trade mark use of that word. Cantarella submitted that the primary judge should have found that there was no such use.
The following photographs of the 3kg product packaging are reproduced from the parties' written submissions:
The primary judge found at J [573] that Molinari used the word ORO as a trade mark in Australia on the 3 kg packs of Caffè Molinari Oro coffee that Molinari supplied to CMS as part of the disputed shipments. His Honour said at J [574]:
I reach this conclusion having regard to the size, colour, positioning, and prominence of the word "oro" on the packaging in relation to the other packaging elements. I observe that the word "oro" on that packaging is as conspicuous as the other trade mark used - CAFFÈ MOLINARI. I do not accept Cantarella's contention that the word "oro" is used only as an element in the composite mark MISCELA DI CAFFE ORO, and not as a trade mark its own right.
It is apparent from that paragraph that his Honour's conclusion was based on the use of the word ORO simpliciter as a trade mark, not that it was substantially identical to the words MISCELA DI CAFFÈ ORO as they appear on the packaging.
Cantarella submitted that the only trade mark used on the packaging of the 3kg product was the "Caffè Molinari" mark which appears toward the middle of the package. It drew attention to the prominent location of those words and their distinctive script in black and red. Cantarella submitted in the alternative that if the word ORO was used as a trade mark, it was only as part of the composite mark comprising the words MISCELA DI CAFFÈ ORO. In support of that submission Cantarella observed that those words appear on the packaging twice and always as a "discrete unit" albeit with different orientation.
Cantarella accepted that a product can bear more than one trade mark. This possibility is well-established in the authorities and was referred to by the High Court in the course of a wider discussion of the concept of trade mark use in Self Care IP Holdings v Allergan Australia (2023) 277 CLR 186 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) at [25].
The question is whether the word ORO (whether alone or together with the adjacent words MISCELA DI CAFFÈ) was functioning as a trade mark within the meaning of s 17 of the Act. As Allsop J (as his Honour then was) explained in Anheuser-Busch Inc v Budejovický Budvar (2002) 56 IPR 182 at [191]:
It is not to the point, with respect, to say that because another part of the label … is the obvious and important "brand", that another part of the label cannot act to distinguish the goods. The "branding function", if that expression is merely used as a synonym for the contents of ss 7 and 17 of the [Act], can be carried out in different places on packaging, with different degrees of strength and subtlety. Of course, the existence on a label of a clear dominant "brand" is of relevance to the assessment of what would be taken to be the effect of the balance of the label.
Given the prominence of the word ORO, whether it is considered as a mark in its own right, or as part of a composite mark, the word is used on the packaging of the 3kg product as a trade mark or as part of a trade mark. We reject Cantarella's submission to the contrary. The more difficult question is whether the word ORO was used as a trade mark in its own right.
A sign may be used as a trade mark even if it is used as a component of a larger composite mark: Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519 ("Sports Warehouse") (Kenny J) at [133]; Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139 ("GRBA v BBNT") (Nicholas, Katzmann and Downes JJ) at [117]. Whether or not a mark is used as a trade mark depends on the facts of the case and impressions formed based on the facts. The answer to this question is very much a matter of impression in relation to which the primary judge's conclusion should be given weight.
The packaging for the 1kg product with the product code 6071 was the impugned packaging in Modena. That packaging, as well as the packaging for product codes 6077 and 6021A/6021E is reproduced at J [204] and J [206]:
The High Court summarised the position in Modena as follows (product references have been interpolated) at [11]:
Modena imports coffee from Molinari, a company based in central northern Italy. Molinari has, since 1965, produced a blend of coffee using the marks "CAFFÈ MOLINARI" and "ORO". Molinari exports globally, and began exporting products to Australia in about July 1996 … During the period December 2009 to June 2011, Modena distributed various Molinari products, under and by reference to the abovementioned marks used by Molinari. Approximately 18 months before the trial Molinari ceased using the mark "ORO" on its own [see 6071 packaging above] on its coffee products and substituted the phrase "QUALITÀ ORO" [see 6077 packaging above], about which Cantarella has no complaint …
(emphasis added)
In Modena, Cantarella contended that the ORO trade mark was used on packaging for product 6071 and the High Court agreed. In this Court Cantarella submitted that in that case, the word ORO (as used on the 6071 packaging) stood apart from the phrase MISCELA DI CAFFÈ ESPRESSO and was in a different font, letter size and colour to the word ORO. It also submitted that products 6077 and 6021A/6021E which used the phrase QUALITÀ ORO were distinguishable, in that those two words did not stand apart from each other (unlike in the 6071 product) and were also in the same colour.
The arguments around the packaging in suit in Modena do not really advance the debate, except to emphasise the role that matters of impression play in deciding whether the word ORO has been used as a trade mark.
Cantarella relied on the Full Court decision in Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 ("Colorado") holding that the word "Colorado" was not separately used except as part of a composite mark including a mountain peak device. Allsop J (with whom Kenny and Gyles JJ agreed) said at [110]:
… the examples in evidence reveal an important, perhaps even dominant, effect of the word "Colorado", but always with a device. That device was part of the trade mark use; it had a capacity to distinguish. It did not, in my view, operate as a separate mark, nor as a mere descriptor. It operated as part of a combination with the word "Colorado", in part reinforcing it. In these circumstances, I agree with the primary judge's concluded view that though the word "Colorado" is important in the impression, it cannot be said to have been used alone, rather than as part of a composite mark (with the device) to show origin.
We were also referred to the more recent Full Court decision in RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (2024) 302 FCR 285 ("RB v Henkel") (Nicholas, Burley and Hespe JJ) upholding the finding of the trial judge that a registered mark for a red ball against a white flash was used only as part of a composite mark comprising the Finish Powerball logo. In addressing that issue the Full Court (at [117]) considered whether the use of the registered mark in the composite mark was use as a separate "badge of origin".
Cantarella submitted that in the present case there was nothing stylised about the use of ORO, that the word was far from the most prominent part of the overall packaging, and that it was only used in conjunction with the words MISCELA DI CAFFÈ. These matters were said by Cantarella to invite consideration of the words MISCELA DI CAFFÈ ORO as a composite expression.
We have had regard to the primary judge's finding, applying Modena, that the word ORO is inherently distinctive and capable of acting as a badge of origin when used in relation to coffee. We have had regard to the prominence given to the word ORO both in the context of the packaging as a whole, and relative to the words MISCELA DI CAFFÈ in the much smaller font. We have also had regard to the appearance of what Cantarella calls the composite expression as it appears on both the front and back of the 3kg packaging, where the relevant words are differently arranged. In each case the word ORO appears much more prominently than the words MISCELA DI CAFFÈ. We consider the word ORO simpliciter acts as a badge of origin. We therefore agree with the primary judge's finding on this topic.
Ground 2 fails.
[10]
GROUND 3
By Ground 3, Cantarella contends that the primary judge erred in finding that Molinari did not abandon the ORO trade mark in respect of coffee in Australia. The notice of appeal does not say when it was that Cantarella says Molinari abandoned the ORO trade mark, only that it did so by 24 March 2000 (the priority date of the 098 mark) or, alternatively, by 30 September 2013 (the priority date of the 290 mark).
Before considering the primary judge's reasons for rejecting Cantarella's allegation of abandonment, it is necessary to refer to some further findings made by the primary judge concerning the use of the ORO trade mark by Molinari, and packaging changes made to Molinari's products.
[11]
Packaging prior to Modena
The packaging for the 1kg product shown above in paragraph [30] is the packaging which the primary judge found to be in use as at the time of the disputed shipments (J 193). The primary judge was not persuaded that the use of "ORO BAR" on that packaging was use of the ORO trade mark (J [576]). The packaging for the 1kg product was changed as depicted below ("December 2003 1kg packaging"):
It is unclear when this change occurred. The best evidence recorded by the primary judge at J [199] - [202], given by Mr Mengoli, was that this change took place at some time after a similar change was made to the packaging for the 250g product with the code 1525E (shown above in paragraph [30]). That change was said to have taken place some time before December 2003. The updated packaging for that product is shown below ("December 2003 250g packaging"):
At J [583], the primary judge found that the ORO trade mark had been used on the packaging for the 250g product with the code 1525E, in the form it was in at the time of the disputed shipments and on the December 2003 250g packaging. The 250g product, in both forms of packaging, were found by the primary judge (at J [200]) to have been supplied by Molinari to CMS, and two other distributors, at various times from 1997 to 2007.
The primary judge also found at J [583] that the ORO trade mark had been used on the December 2003 1kg packaging. At J [203], the primary judge found that the product in the December 2003 1kg packaging had been supplied to at least one Australian distributor after December 2003. The primary judge referred to invoices dated 25 March, 27 May and 15 July 2004.
In oral submissions, Mr Bannon SC submitted that the December 2003 250g/1kg packaging was not use of the ORO trade mark, for the same reasons relied on in relation to the 3kg packaging. It follows from our findings in Ground 2 that Cantarella's challenge to this finding must fail. The front packaging of those products, and of the 250g product at the time of the disputed shipments, demonstrate a use of the ORO trade mark that is not relevantly distinguishable from that of the 3kg product supplied to CMS in 1995.
Mr Mengoli said that, to the best of his recollection, the 1kg product was exported to Molinari's Australian distributors in the December 2003 1kg packaging until that packaging was updated as follows (J [204] - [205]):
As shown above at [86], the codes for each of these 1kg products are 6071, 6077 and 6021A/6021E, respectively.
The primary judge found, at J [208], that Molinari supplied 1 kg packs with the product code 6071 to Modena and another distributor, from 25 March 2009 to 3 March 2011. Molinari also supplied Modena with 1kg packs with the product code 6077 from 6 May 2011 to 17 September 2013, and 1kg packs with the product code 6021A/6021E from 17 September 2013 to 17 September 2021. At J [584], the primary judge found that the ORO trade mark had been used on the packages for the 1kg products with codes 6071, 6077 and 6021A/6021E.
Cantarella accepts the use of ORO on product 6071 (the product in suit in Modena) was trade mark use of ORO simpliciter. Cantarella submits that the packaging for each of the 6077 and 6021A/6021E products involved use of a composite mark QUALITÀ ORO, rather than ORO simpliciter.
The primary judge found at J [584] that the word ORO was used a trade mark on the 6077 and 6021A/6021E products. His Honour said that he reached that conclusion having regard to the size, colour, positioning and prominence of ORO on the packaging in relation to each of the other packaging elements of the packs in question. His Honour said at J [585] - [586]:
[585] In reaching these conclusions, I have taken into account that, on the packaging for product codes 6077 and 6021A/6021E, the word "oro" appears below the word "qualità". In my estimation, the proximity of the word "oro" to the word "qualità" does not diminish the prominence given to "oro" (which, in each case, is rendered in larger font than "qualità") or its significance as a packaging element. Even if traders or customers were to associate the two words because of their proximity to each other on the packaging it does not follow that the word "oro" is not functioning, in its own right, as a trade mark. Once again, the existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark.
[586] That said, I would accept that the word "oro", as used on the packaging for product codes 6021A/6021E, is a clearer use of "oro" as a trade mark than the use of the word "oro" on the packaging for product code 6077. This is because "oro" is rendered in still larger font than "qualità" and is separated from "qualità" by the use of a horizontal line. Also, "oro" appears in the middle of the pack, which I consider to be somewhat more prominent positioning because of its central location on the pack. I do not regard the use of "oro" on the packaging for product codes 6021A/6021E as any less a trade mark use of "oro" than the use of "oro" on the LAVAZZA QUALITÀ ORO packaging which I have found to infringe the 098 mark and the 290 mark.
His Honour went on to hold at J [588] that, in light of those findings, Cantarella's case on abandonment could not be sustained as a matter of fact.
There are two distinct questions that arise. The first is whether the mark ORO has been used on the relevant products (i.e. with codes 6077 and 6021A/6021E) in its own right or only as part of a different mark comprising, or including, the words QUALITÀ ORO. If there has been no separate use of ORO then the next question is whether ORO simpliciter and QUALITÀ ORO were substantially identical marks. In that context, it is also necessary to mention s 7(1) of the Act which provides:
If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
We should also refer to s 100(2) and (3) in Pt 9 of the Act ("Removal of trade mark from Register for non use") which (like s 7(1) of the Act) refer to the use of a registered trade mark with additions or alterations not substantially affecting its identity. Those provisions enable the Court to find that a registered trade mark has been used notwithstanding differences between the mark used and the registered mark provided that those differences (being additions or alterations) do not substantially affect its identity. E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 ("Gallo") was a case in which the High Court found that the registered mark BAREFOOT had been used, notwithstanding the addition of a device comprising a drawing of a bare foot, which was found not to substantially affect the identity of the registered mark. The plurality (French CJ, Gummow, Crennan and Bell JJ) said at [69]:
…. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).
There may be a question as to whether s 100(2) and (3) (or s 7(1)) can ever apply in circumstances where the relevant marks (i.e. in the form used, and in the form registered) differ to the point that they are not substantially identical: RB v Henkel at [85]. Professors Burrell and Handler argue in Australian Trade Mark Law, (3rd ed, LexisNexis Butterworths, 2024) ("Australian Trademark Law") at pp 489 - 492 that while the relevant provisions sometimes involve a consideration of whether the marks in question are substantially identical, at other times (as was the case in Gallo), those provisions "merely clarify that a word mark does not cease to be used as a word mark when the word is used in proximity to decorative or 'non-trade mark' matter" that does not change the appearance or meaning of the word mark. It is not necessary in this case for us to explore the correctness of their view.
Lavazza did not contend that QUALITÀ ORO is substantially identical to ORO. Accordingly, the critical question is whether the primary judge erred in concluding that there had been trade mark use of the word ORO on the relevant products in spite of the presence of the word QUALITÀ immediately above it.
We have previously referred to the decision of the Full Court in Colorado holding that there was no separate use of the word "Colorado" as a trade mark when used as part of a composite mark including the mountain peak device. Important to that conclusion was the fact that the word Colorado was always used with a mountain device. As Allsop J observed, the device operated as part of a combination, reinforcing the word Colorado.
In GRBA v BBNT the Full Court upheld the primary judge's finding that there had been no use by the appellant of the words "BED & BATH" as a trade mark by its use of a mark that consisted of the word "House" and the words "Bed & Bath". The Full Court approved at [117] the following observations of Kenny J in Sports Warehouse at [133]:
… a sign may be registrable as a trade mark even though it is used together with another trade mark, and…there can still be use of a mark where it is a component of a larger composite mark…. Colorado … is not authority for the contrary proposition. Each case turns on its own facts and the trade mark in question viewed in the context of those facts. In Colorado Allsop J held that on the facts of that case the significant use as a trade mark was use as a composite mark and that there was no relevant use of the word "COLORADO" as a separate mark: at [110] (Allsop J); see also at [36] per Gyles J. Where an application for registration relies on use, the question is whether the particular sign for which registration is sought has itself been used as a trade mark so as to become capable of distinguishing the relevant goods or services…
(Some citations omitted)
The Full Court also said at [118]:
The question whether there has been trade mark use of multiple marks brought together in composite form will depend on the facts and circumstances of each case and the impression likely to be conveyed by their use. One matter of particular significance in this case is that the words "BED & BATH" were not shown to have ever been used by GRBA as a trade mark except as a component of the House B&B mark. Another matter of significance is the prominence given to the word "House" in the House B&B mark and what we consider to be the largely descriptive character of the words "BED & BATH" when used in relation to retailing services offering homewares.
The fact that the mark in question may appear as a component of a larger mark does not preclude a finding that it has been used as a trade mark. Whether or not there has been such use will depend on the circumstances and the overall impression conveyed.
In the case of both the 6077 and 6021A/6021E products, the word ORO is given prominence by the use of a larger font and, in the case of 6021A/6021E, ORO occupies a central position on the pack separated from the word QUALITÀ by the horizontal line immediately above the word ORO. We also note that the word ORO is given prominence across the relevant product range including on packaged coffee products 1525E, 6091 (as depicted in J [201], being the December 2003 1kg packaging) and 6071. The use across the range is consistent with the use of ORO as a sub-brand within the Molinari range of packaged coffee.
The primary judge's conclusion on this issue depended on matters of impression about which minds might reasonably differ. On balance, however, we agree that the word ORO on the 6077 and 6021A/6021E packages was functioning in its own right as a trade mark.
There was no dispute between the parties as to the correctness of the primary judge's summary of the principles with respect to the loss of ownership of a registered trade mark through intentional abandonment. His Honour accepted that ownership of a registered trade mark could be lost by an intentional abandonment. Whether an intentional abandonment is established in a given case is a question of fact to be determined having regard to all the circumstances of the case.
The primary judge said at J [588]:
… Cantarella's case on abandonment, insofar as it is based on non-use by Molinari of the ORO word mark in Australia in respect of coffee, cannot be sustained as a matter of fact. The evidence establishes that before Cantarella's first use of the ORO word mark in relation to coffee, before the priority date of the 098 mark, and before and after the priority date of the 290 mark, as well as at the commencement of the present proceeding (including the commencement of Lavazza's cross-claim), Molinari used the word "oro" as a trade mark in Australia in relation to coffee.
Cantarella's submissions to the primary judge, and in this Court, focused heavily on what was said to be Molinari's non-use of the trade mark ORO in Australia over many years. Cantarella submits that, had Molinari registered the ORO mark in Australia, the registration would have been liable to be removed under s 92(4)(a) or (b) of the Act for non-use. It relied on what was said to be "the paradoxical effect of elevating the 'rights' of the owner of an unregistered trade mark no longer in use, to a position superior to that of the owner of a registered trade mark no longer in use and so vulnerable to cancellation". However, Cantarella's argument has no application in circumstances where the primary judge's finding (which we have upheld) was that Molinari used the ORO mark in Australia in relation to coffee between 1995 and September 2021.
Cantarella also submitted that the primary judge's finding that the packaging for products 6077 and 6021A/6021E involved the use of the ORO trade mark was "tantamount to finding…that Modena did not comply with the injunction made in the [Modena] proceedings". In Modena, the majority explained that Cantarella had "no complaint" regarding Molinari's use of QUALITÀ ORO and set out in a footnote to that statement:
"It was noted in the primary judge's orders that nothing in them should be taken to
prevent Modena from using the phrase "QUALITÀ ORO" in respect of its products."
There was no finding in Modena that QUALITÀ ORO as used on the packaging for the 6077 or 6021A/6021E products was not a use of the ORO trade mark. The relevant qualification to the injunction (which may be the result of a forensic decision on the part of Cantarella, or compromise reached between the parties) does not preclude a finding in this litigation that the ORO trade mark was used by Molinari on the 6077 and 6021A/6021E packaging.
The primary judge's rejection of the case based on intentional abandonment was correct.
Ground 3 fails.
[12]
GROUND 4
Ground 4 is raised in paras 5 and 6 of the notice of appeal which state:
In the alternative to Grounds 1 to 3, having correctly found that the Appellant adopted the word mark ORO in Australia for coffee at or about the time of the Appellant's First Use on 20 August 1996 (PJ [537]), the primary judge erred in failing to consider that the common law doctrine of honest concurrent use meant that the Appellant could also claim ownership or concurrent ownership of the trade mark ORO in respect of coffee in Australia by virtue of the operation of s 44(3)(a) in the context of a hypothetical registration for ORO in respect of coffee owned by Molinari.
In the alternative to Grounds 1 to 3 and on the basis of the contention in paragraph 5 above, the primary judge ought to have found that the Appellant was at least an honest concurrent owner at common law in Australia and entitled to registration of the word mark ORO in relation to coffee, as at one or more of the following dates:
(a) 24 March 2000, being the priority date of the 098 Mark;
(b) 30 September 2013, being the priority date of the 290 Mark;
(c) 23 August 2019, being the date on which the current proceedings were commenced by the Appellant (then Applicant); and
(d) 20 October 2023, being the date on which the primary judge delivered judgment in the current proceedings.
and therefore that neither the 098 Mark nor the 290 Mark was vulnerable to removal pursuant to sections 58 and 88(1)(a) of the TM Act.
Section 43(3)(a) of the Act permits the Registrar to accept an application for registration if satisfied "that there has been honest concurrent use of the 2 trade marks" in circumstances where a person applies for registration of a mark (in respect of goods) that is substantially identical with, or deceptively similar to, an existing registration for similar goods or closely related services with an earlier priority date. The provision has no direct application in the circumstances of the present case.
Paragraph 6 of the notice of appeal, which was the focus of Mr Bannon SC's argument in this Court, was relied on as supporting an independent ground for resisting removal of Cantarella's registration of the ORO trade mark on the basis that Cantarella was an honest concurrent user and, therefore, an owner of the mark at common law. Cantarella submitted that in order for Lavazza to obtain an order for removal of Cantarella's registration under s 58 of the Act, it was necessary for Lavazza to establish that Cantarella was not an honest concurrent user of the ORO mark.
In essence, Cantarella says that what it refers to as its common law right of concurrent ownership may be relied on to resist removal of its trade mark registrations, on the ground that it was, at the time it applied for those registrations, a co-owner of the mark by reason of honest concurrent use post-dating Molinari's first use. In keeping with this formulation of the issue, Cantarella submitted that Lavazza had the onus of establishing that Cantarella was not an honest concurrent user at one or more of the dates specified in para 6 of the notice of appeal, because Lavazza bore the onus of demonstrating that Cantarella was not the owner of the ORO trade mark at the time of its registration under s 58 of the Act.
The failure of the primary judge to consider the matters referred to in Ground 4 is explained by the fact that no argument based on concurrent ownership (as opposed to concurrent use) of the ORO trade mark was pleaded or otherwise relied on by Cantarella at trial as providing a basis for resisting the making of an order for removal. To the extent that Cantarella advanced an argument on the basis of honest concurrent use, that argument was put only in support of the primary judge exercising his discretion under s 88(1) of the Act.
Cantarella's Amended Defence to Lavazza's cross-claim refers to honest concurrent use only in support of the assertion that Lavazza was not entitled to relief, and that the Court ought to exercise its discretion not to cancel the registrations. Nothing at all is said about co-ownership. The particulars Cantarella relies on in answer to Lavazza's claim under s 58 of the Act do not refer to co-ownership.
Cantarella accepts that it did not run the argument it now advances by Ground 4 below. Implicit in that is an acceptance that it required leave of this Court to advance this argument on appeal. Cantarella sought to characterise Ground 4 as introducing a new legal analysis of facts that were the subject of evidence and submission before the primary judge in the context of the discretion under s 88(1). On that basis, it was suggested that Ground 4 raised a question of law that it was open to this Court to consider, notwithstanding that it was not relied on before the primary judge: see Suttor v Gundowda Pty Ltd (1950) 81 CLR 418 (Latham CJ, Williams and Fullagar JJ) at 438.
There are considerable difficulties with Cantarella's argument. For one thing, ownership (or proprietorship) of a trade mark involves the origination or first adoption of a word or other sign as a trade mark. In a passage approved by the High Court on numerous occasions, including by Dixon J in Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601 at 628, Holroyd J said in Re Hicks's Trade Mark (1897) 22 VLR 636 at 640:
… 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 proposition that a person who is not the first to use a mark in Australia has a right of ownership based on honest concurrent use extending beyond the right to obtain registration under s 44(3) is inconsistent with a statutory scheme that contemplates that the owner of the mark referred to in s 58 will be the first person to either use the mark in Australia as a trade mark or apply for its registration with the intention of so using it: see Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9 (Keane CJ, Stone and Jagot JJ) at [49] - [55], Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 (Greenwood, Jagot and Beach JJ) at [18] - [19].
A broader view of s 58, advocated by Professors Burrell and Handler in Australian Trade Mark Law at pp 415 - 416, was accepted by the Hearing Officer (N Smith) in Australian Institute of Management v The Australian Institute of Music Ltd (2021) 162 IPR 555 at [48] - [50] who said at [50]:
… in circumstances where the Applicant had used the Trade Mark in an honest, concurrent manner for almost 25 years at the relevant date, in a manner that would ordinarily establish common-law ownership of the Trade Mark, it would be a seemingly inequitable outcome to find that the Applicant entirely lacked ownership rights in the Trade Mark, notwithstanding the Opponent's prior registration of the Word Mark for the Class 16 goods. By reason of the extensive evidence of the honest concurrent use of the Trade Mark I find that both the Opponent (by reason of its registration of the Word Mark) and the Applicant (by reason of its 25 years of use of the Trade Mark) are co-owners of the Trade Mark, under common law, for the Class 16 goods. As such I cannot be satisfied that the Applicant is not the owner of the Trade Mark for the Class 16 goods, the test under s 58.
(Footnote omitted)
In that case the application for registration, though opposed on (inter alia) s 58 grounds, was held to be registerable under s 44(3)(a) of the Act. The Hearing Officer was not satisfied that the applicant was not "a co-owner" of the relevant mark for the purpose of s 58, based on many years of honest concurrent use. The decision highlights a potential difficulty that may arise if s 58 is not interpreted as being subject to s 44(3) in that an honest concurrent user who establishes an entitlement to registration under s 44(3), may still not be able to overcome opposition based on s 58: see McCormick & Co Inc v McCormick (2000) 51 IPR 102 (Kenny J) at [90] - [96] in context of the relationship between s 44(3) and s 60 and Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company (2018) 262 FCR 76 (Nicholas J) at [291] - [293].
The preferable solution to this difficulty may be to read s 58 and s 44(3) together to form a harmonious legislative scheme in which s 58 is read subject to s 44(3): Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355 at [69] - [71] per McHugh, Gummow, Kirby and Hayne JJ citing (inter alia) Ross v The Queen (1979) 141 CLR 432 at 440 per Gibbs J. That would involve recognising that s 58 does not apply in the circumstances where s 44(3) has been satisfied. But it is not necessary to resolve this issue in the present case because even if s 58 operates subject to s 44(3), the requirements of s 44(3) were not shown to have been met in this case.
The right to register a mark under s 44(3)(a) is dependent on the concurrent use being honest. While honesty is often referred to as a factor to be considered in deciding whether or not to register a mark under s 44(3)(a), it is essential that an applicant relying on that provision to obtain registration show that their use was honest. In this context, "honest" refers to "commercial honesty, which differs not from common honesty": Re Parkington & Co (1946) 63 RPC 171 at 192. As Romer J (as his Lordship then was) also said at 181 - 182:
[T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use[r] of that mark has or has not been [an] honest user.
It was accepted by Cantarella that it led no evidence at all explaining why it adopted the ORO mark. If it is assumed that it was incumbent on Cantarella to establish facts entitling it to resist orders for removal of its registrations, on the basis that it was a common law owner of the ORO trade mark, then it seems to us that the absence of any such evidence from Cantarella may well have been fatal to its case. Even if, alternatively, it is assumed that Lavazza had the onus of establishing that Cantarella was not an honest concurrent user (which we doubt) it would have been open to Lavazza to explore the issue in discovery and in evidence with a view to showing that Cantarella adopted the ORO trade mark for use in relation to coffee with knowledge of Molinari's prior use of the trade mark in Australia and overseas.
Cantarella submitted that the possibility it adopted the ORO trade mark with knowledge of Molinari's prior use was fanciful given the slight use which Molinari was found to have made of the mark in Australia before August 1996 and Mr Ubertini's evidence that he "covered" the first pallet of coffee received from Molinari (J [149]). We do not accept that submission. The fact that Cantarella commenced using the ORO trade mark in Australia not very long after Molinari may have been entirely co-incidental. On the other hand, in the absence of evidence to the contrary, it is not open to dismiss the possibility that one led to the other as inherently improbable.
Cantarella should not be granted leave to rely on Ground 4 if evidence could have been given which by any possibility could have prevented the point raised from succeeding: Coulton v Holcombe (1986) 162 CLR 1 at 7 - 8 per Gibbs CJ, Wilson, Brennan and Dawson JJ. Even if the legal argument the subject of Ground 4 has merit, we are not persuaded that evidence could not have been given which could have prevented the point from succeeding.
Leave to rely on Ground 4 should be refused. It follows that the correctness of the view that s 58 encompasses the notion of "common law co-ownership" based on honest concurrent use by a person who is not the first to use the mark in Australia need not be determined in the present case.
[13]
GROUND 5
By Ground 5 Cantarella contends that the primary judge erred in not exercising the discretion under s 88(1) to not cancel the registrations for the ORO trade mark. It is accepted by Cantarella that the primary judge's decision not to exercise the discretion in Cantarella's favour involved a discretionary judgment which on appeal is to be assessed in accordance with the principles considered in House v The King (1936) 55 CLR 499 ("House") at 504 - 505 per Dixon, Evatt, McTiernan JJ.
The discretion conferred by s 88(1) is at large unless s 89 applies and is constrained only by the general scope and objects of the Act: Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514 ("Anchorage") (Nicholas, Yates and Beach JJ) at [146]. It is not suggested that s 89 applies in this case. Once the power to cancel is enlivened, the registration of the mark should be cancelled, unless sufficient reason appears for leaving it on the Register: Anchorage at [147] - [148], citing Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 (McLelland J) at 221. Ordinarily, it will be for the registered owner resisting cancellation of the registered mark to persuade the Court that there is sufficient reason not to order its cancellation: Anchorage at [158].
Various matters are relied on by Cantarella in support of its contention that the primary judge erred in the exercise of discretion. According to paras 7 and 8 of the notice of appeal:
… [T]he primary judge's discretion in s 88(1) of the TM Act miscarried such as to constitute appellable error by refusing to retain the Appellant's registrations for the 098 Mark and/or the 290 Mark (PJ [594] - [600]), including by regard to the following erroneous reasoning:
(i) the Appellant's claim to ownership as at the date the discretion is exercised, "cannot depend on the nature or scope of its reputation in the ORO mark" (PJ [597]), whereas the evidence plainly established extensive, uninterrupted and continuing use of both the 098 Mark and/or the 290 Mark;
(ii) the Appellant cannot, as at the date the discretion is exercised, legitimately hold ownership rights in the mark ORO (PJ [598]), which failed to recognise the Appellant's ownership at common law of the ORO mark in respect of coffee;
(iii) holding that to allow the registrations of either the 098 Mark or the 290 Mark would not be in the public interest (PJ [597]), whilst giving no reasons for so holding;
(iv) determining that it would be vexing to other traders that the owner of a trade mark registration might elect to enforce its statutory rights in that registration (PJ [597]), which determination is necessarily circular and misrecognises that the Appellant had other rights beyond its rights under the TM Act;
(v) if the Appellant were to re-apply to register the sign "ORO" as a trade mark, it would not necessarily obtain that registration (PJ [599]), which is falsely premised on the resetting of a priority date which ignores prior use and accumulated rights;
(vi) that there is an apparent conflict between the operation of s 44(3) of the TM Act and the operation of s 58 of the TM Act (PJ [647]) which the primary judge left unresolved in respect of the Appellant and is the subject of Ground 4 above;
(vii) although Molinari had never overtly claimed ownership of the ORO word mark, this nonetheless meant that the Appellant could not legitimately claim also to be the owner of the mark (PJ [591]), when as an honest concurrent user, the Appellant did so conduct itself and did so claim, in respect of which the Appellant refers to Ground 4.
The primary judge ought to have found on the available evidence and given weight to:
(i) the fact that [the] Appellant could not have known of the Alleged Shipments because at least the first shipment was deliberately concealed by CMS in its warehouse (PJ [149]);
(ii) the Appellant's honest adoption and continuous use of the ORO trade mark in respect of coffee since 20 August 1996 (PJ [537]);
(iii) the matters outlined at Ground 4 above in respect of honest concurrent ownership at common law;
(iv) the Appellant's registrations of the 098 Mark and the 290 Mark have never been challenged in respect of ownership, until the current proceedings;
(v) the Appellant has established a strong reputation and goodwill in the ORO word mark and that any other trader's use of the sign "oro" as a trade mark in Australia in relation to coffee and coffee products would lead to deception or confusion amongst consumers as to the source of the goods and that the impugned conduct of the Respondents infringed the Appellant's 098 Mark and the 290 Mark (PJ [382]).
The relevant paragraphs in the notice of appeal do not engage with the House principles. In this regard, we note that it is not contended that the primary judge's exercise of discretion was manifestly unreasonable or plainly unjust or that his Honour failed to take into account some material consideration. Paragraphs 7 and 8 of the notice of appeal are instead directed to what is said to be "erroneous reasoning" and a failure to make and give weight to particular findings.
The primary judge referred to the various matters on which Cantarella relied with regard to the s 88(1) discretion at J [595], where his Honour summarised various assertions appearing in para 3 of Cantarella's further amended defence to Lavazza's cross-claim. Having referred to each of those matters the primary judge said at J [597] - [598]:
[597] I am not persuaded that any of these matters, whether individually or together, stands as a sufficient reason not to cancel the registrations of either the 098 mark or the 290 mark. To allow these registrations to stand would not be in the public interest. Regardless of the registrability of the ORO word mark (at least at certain times), Cantarella is not, itself, entitled to be the owner of that mark. Its claim to ownership cannot depend on the nature or scope of its reputation in the mark: Anchorage at [164]. Other traders should not be vexed with the prospect that these registrations might be deployed by Cantarella to inhibit their trading activities, as has happened in the present case.
[598] In Anchorage (at [166]) the Full Court observed that if a registered owner has used a mark over a number of years without causing any deception then that is a consideration that may be relevant to the exercise of the discretion. However, the Full Court did not accept that such a consideration is of significant weight. I do not think it is of significant weight in the present case. If, through use, Cantarella has established a strong reputation and goodwill in the ORO word mark (as Cantarella alleges), and if another trader's use of the word "oro" in Australia in relation to coffee leads to deception or confusion, Cantarella will continue to hold the rights (if any) it has acquired by reason of its reputation. Those rights will not be lost if the registrations of the 098 mark and the 290 mark are cancelled. If, for some other reason, another trader's use of the ORO word mark leads to deception or confusion, then that will not be addressed appropriately by allowing the registrations to remain so that Cantarella can assert rights it cannot legitimately hold. Cantarella might well be "inconvenienced" if the registrations are cancelled, but that is, plainly, not a reason why the registrations should be maintained.
The matters relied on by Cantarella included an assertion that Cantarella had continuously used the ORO trade mark in respect of coffee honestly and in good faith since at least 20 August 1996. As previously noted, Cantarella called no evidence to explain why it adopted the ORO trade mark. In any event, it is apparent from J [597] that in the context of considering how the discretion should be exercised, the primary judge assumed, without deciding, that Cantarella had used the mark honestly and in good faith since at least August 1996. It cannot be suggested that this was a matter to which his Honour failed to have regard when exercising the discretion.
Further, neither para 3 of the further amended defence to the cross-claim, nor Cantarella's closing submissions to the primary judge refer to the concept of honest concurrent ownership at common law. As is evident from what has been said in respect of Ground 4, it does not appear the primary judge was invited by Cantarella to make a finding that it was a co-owner of the ORO trade mark, whether in the context of the discretion under s 88(1) or otherwise. The suggestion in paras 7(ii) and 7(vii) of the notice of appeal that honest concurrent use conferred on Cantarella what it now characterises as co-ownership would appear to be an afterthought that first emerged after trial with what is now Ground 4. That said, we accept that Cantarella relied on honest concurrent use, as was explicitly acknowledged by the primary judge at J [595].
With regard to para 7(i) of the notice of appeal, we are not persuaded that his Honour's reasoning was erroneous. The primary judge's reasoning reflects the orthodox view of ownership. As the Full Court stated in Anchorage at [164]:
Whether or not an applicant could properly be regarded as the owner of a mark does not depend on the nature or scope of its reputation in the mark, but whether it first used the mark in Australia or (if the mark had not already been so used) whether the appellant was the first to apply for the registration of the mark.
On the matter of discretion, the Full Court upheld the primary judge's decision in that case to cancel the relevant registrations, notwithstanding the appellant's use of the marks in question, adding at [166]:
If the appellant used the marks for a number of years without causing any deception then that is a consideration that may be relevant to the exercise of the discretion. But we do not accept the suggestion, which seems to us to be implicit in the appellant's submission on this topic, that such a consideration would be determinative, or even one that must be given significant weight.
The primary judge did not give Cantarella's use of the ORO trade mark significant weight. His Honour observed (correctly) that if Cantarella has established a strong reputation in the ORO trade mark, it may be open to it to exercise any rights it possesses by reason of such reputation. Whether a claim for passing off or contravention of s 18 of the Australian Consumer Law ("ACL") against another trader would succeed would depend on whether the use made of ORO in relation to coffee was in the circumstances likely to convey a false or misleading representation: GRBA v BBNT at [70] citing Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (Franki, Deane, Fitzgerald JJ) at 202. In circumstances where Cantarella did not seek any relief against Lavazza for passing off or contravention of s 18 of the ACL, the primary judge was not required to determine whether any such claim against Lavazza or any other trader would have been successful.
We can deal briefly with other matters relied on by Cantarella in support of Ground 5.
We do not accept that the primary judge gave no reasons for holding that it would not be in the public interest not to cancel the registrations (para 7(iii)). The primary judge noted at J [597] that Cantarella is not the owner of the ORO trade mark. It is apparent that his Honour was here referring to the public interest in ensuring that trade mark registrations only be granted in favour of applicants who are entitled to obtain them. As the Full Court in Anchorage observed at [163]:
There is a public interest in ensuring that marks the use of which are likely to give rise to deception or confusion are not registered as trade marks. But that is not the only public interest that is relevant in the context of an application for an order cancelling a mark made under s 88. There is also a public interest in ensuring that trade mark registrations only be made in favour of applicants who are entitled to obtain them. As the High Court explained in Health World Ltd v Shin-Sun Australia Pty Ltd [(2010) 240 CLR 590] at [27], the Act offers various facilities for "ensuring that the Register is pure in the sense that no mark is to be registered unless valid, and no registration of a mark is to continue if it is not valid".
As to para 7(v), the possibility of Cantarella re-applying for the ORO trade mark in the event of cancellation of the registrations was expressly considered by the primary judge. Given his Honour's findings in relation to the ownership of the ORO mark, his observation that Cantarella would not necessarily obtain registration if it were to re-apply was in our opinion correct.
Para 7(iv) appears to refer to the primary judge's statement that "other traders should not be vexed with the prospect that these registrations might be deployed by Cantarella to inhibit their trading activities". That statement reflects the primary judge's view that in circumstances where Cantarella was not the owner of the ORO trade mark when used in relation to coffee, it should not be allowed to restrain other traders from using that trade mark. We see no error in this reasoning.
With regard to para 8 of the notice of appeal, the primary judge was not bound to make any of the proposed findings referred to or to give those matters weight. Further, the evidence did not justify the proposed findings referred to in para 8(i)-(iii) or (v). As to the matter referred to in para 8(iv), it was referred to by his Honour and taken into account.
We are not persuaded that the primary judge's exercise of the discretion under s 88(1) was affected by any error. Ground 5 fails.
[14]
THE APPLICATION FOR LEAVE TO APPEAL
The principles governing the grant of leave to appeal from interlocutory orders are not in dispute. Lavazza's submissions assumed that these principles applied to the primary judge's costs orders, a view that is consistent with recent authority: Harvard Nominees Pty Ltd v Dimension Agriculture Pty Ltd (in liq) (2023) 299 FCR 224 (Colvin, Stewart and Feutrill JJ) [6] - [14].
The principles relevant to the grant of leave to appeal are referred to in many judgments of this Court including, in particular, Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397 (Sheppard, Burchett and Heerey JJ) at 398 - 400. To obtain leave to appeal Lavazza must show that the primary judge's decision is attended by sufficient doubt to warrant its reconsideration by this Court and that substantial injustice would result if leave to appeal was refused, supposing the decision to be wrong. It will usually be necessary for an applicant for leave to appeal to meet both of these requirements. Since the orders from which Lavazza seeks leave to appeal relate to matters of practice and procedure, the Court will exercise particular caution in determining whether to grant leave to appeal: Melbourne City Investments Pty Ltd v Treasury Wine Estates Ltd (2017) 252 FCR 1 (Jagot, Yates and Murphy JJ) at [41] - [42].
Further, the award of costs being a discretionary matter, the principles discussed in House at 504 - 505 apply. Accordingly, as observed by the Full Court in Kitchen v Director of Professional Services Review [2023] FCAFC 160 (Charlesworth, S C Derrington and Downes JJ) at [30]:
… to succeed in [the] proposed appeal, [the applicant] would need to demonstrate that the primary judge acted upon a wrong principle, mistook the facts, failed to take into account a material consideration or was guided by extraneous or irrelevant matters. Error may also be inferred from the overall result: House at 505. Whether the judgment at first instance is attended with sufficient doubt is to be determined in that context.
The first of Lavazza's proposed grounds of appeal relates to the primary judge's rejection of Lavazza's claim for indemnity costs. Lavazza submitted that the primary judge erred in rejecting its claim to indemnity costs from 9 July 2021 because his Honour should have found that Cantarella "persisted with its case" after that date in circumstances where it was unreasonable to do so. The significance of 9 July 2021 is that, on this date, the primary judge ordered Cantarella to file and serve its further amended defence to Lavazza's cross-claim.
In its written submissions Lavazza contended that Cantarella never had a proper basis to assert any use by Cantarella of the ORO mark earlier than 20 August 1996, yet it persisted in such allegations until 9 December 2020 (the third day of the trial). That submission is somewhat different to that put to the primary judge as recorded in detail at J2 [19] - [25]. What Lavazza ultimately put to the primary judge was that Cantarella should have known by the time Lavazza served a Calderbank offer on 9 September 2021 that Lavazza had very good prospects of demonstrating that Cantarella was not the owner of the ORO trade mark.
The Calderbank offer expired on 24 September 2021. At J2 [3], the primary judge recorded that Lavazza sought an order that Cantarella pay its costs of the proceeding until either 8 July 2021, or 23 September 2021, on a party/party basis, and from 9 July 2021 or 24 September 2021 on an indemnity basis. In this Court, Lavazza contended Cantarella should have, as at 9 July 2021, appreciated the difficulty created for Cantarella by the affidavit evidence filed by Lavazza concerning Molinari's use of the ORO trade mark in 1995 and 1996, and not persisted with the case against Lavazza.
In our view, it was not unreasonable for Cantarella to put Lavazza to proof of its case under s 58 of the Act. In this context we need only refer to what has previously been said in relation to the Molinari affidavit and some clear differences between what some of Lavazza's witnesses said in their written evidence and their cross-examination.
Further, the argument presented in this Court suggests that the injustice suffered by Lavazza, supposing the primary judge's decision to be wrong, is having to meet a case based on allegations of use by Cantarella prior to August 1996 that were abandoned on the third day of the trial. The evidence from Lavazza's solicitor relied on in support of the application for leave does not indicate to what extent what is now said to be Cantarella's unreasonable persistence in those allegations caused Lavazza to incur additional costs to the point where it could be said to have suffered a substantial injustice because it was not awarded costs on an indemnity basis in respect of its costs incurred after 9 July 2021 in relation to all issues.
The second of Lavazza's proposed grounds of appeal relates to the primary judge's decision to award it only 50% of its party/party costs of the proceeding. Lavazza's proposed notice of appeal and its written submissions suggest that no discount should have been applied. No alternative discount figure was submitted by Lavazza. Nor did its solicitor's affidavit or written submissions include any analysis that would assist this Court if it were minded to reduce the discount figure applied by the primary judge. Lavazza's position seems to be that its costs should not have been the subject of any discount.
There were three particular matters relied on by Lavazza in support of the second proposed ground of appeal:
The primary judge was said to have erred in finding that Lavazza ought not to have advanced the "Du Cros point" as a ground of cancellation of under s 41 in light of Modena, and that this warranted a discount: see J2 [55]; see also J [403] - [416]. Lavazza submitted that it was entitled to advance the argument notwithstanding binding High Court authority, both to preserve its position on any application for leave to appeal to the High Court and to provide that Court with the benefit of the primary judge's reasons on the point. It submitted that the "Du Cros point" involved a consideration of principle, not evidence, and did not unduly occupy the Court's time so as to warrant a discount.
The primary judge was said to have erred in finding that Lavazza was unable to rely on s 41 of the Act based on descriptiveness and that this also warranted a discount: see J2 [55], see also J [417] - [433], [455] - [468]. Lavazza submitted that the primary judge ought to have applied what was said to be "several binding authorities [sic] which 'advance the general principle that a successful party is entitled to its costs even though, in achieving success, it fails on some issues which it had advanced'" citing Cretazzo v Lombardi (1975) 13 SASR 4 (Bray CJ, Zelling and Jacobs JJ) at 16 per Jacobs J , Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd (No 2) [2015] FCAFC 155 (Middleton, Foster and Gleeson JJ) at [16] and Inn Leisure Industries Pty Ltd v DF McCloy Pty Ltd (No 2) (1991) 28 FCR 172 (French J) at 173 - 174.
The primary judge was also said to have erred in discounting Lavazza's costs on the basis that it "raised a large number of defences which, on proper analysis, had no reasonable prospects of success in the event that infringement was otherwise established": J2 [56]. Lavazza submitted that even if this Court was not persuaded that those defences were established, the primary judge's characterisation of them as having "no reasonable prospects of success" was unjustified.
As to the first of these arguments, it was open to the primary judge to have regard to the fact that Lavazza's legal argument based on the "Du Cros point" was foreclosed to it based on the majority decision in Modena. Whether or not Lavazza was entitled to advance a legal argument contrary to what it accepts was binding High Court authority (and therefore bound to fail), it was open to the primary judge to have regard to the fact that the argument was contrary to such authority in determining that a discount should be applied.
As to the second of Lavazza's arguments, the authorities to which Lavazza points reflect one available approach. They do not establish the existence of any general principle or rule from which the primary judge could not depart: EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Ltd [2011] FCAFC 92 (Emmett, Jagot and Nicholas JJ) at [9]. As stated by French CJ, Hayne, Bell, Gageler and Keane JJ in Gray v Richards (No 2) (2014) 315 ALR 1 at [2]:
The disposition of costs is within the general discretion of the court. Ordinarily, that discretion will be exercised so that costs are awarded to the successful party, but other factors may have a significant claim on the discretion of the Court [Stewart v Atco Controls Pty Ltd (In liq) (No 2) (2014) 252 CLR 331 at 334 [4]]. The disposition which is ultimately to be made in any case where there are competing considerations will reflect a broad evaluative judgment of what justice requires.
See also Sandoz Pty Ltd v H. Lundbeck A/S (No 2) [2021] FCAFC 47 (Nicholas, Yates and Beach JJ) at [30] - [34].
As to Lavazza's third argument, it is appropriate to recall some of the issues raised by Lavazza. According to Lavazza's third further amended defence, Lavazza raised defences under s 122(1)(b)(i), (e), (f) and (fa), and s 124 of the Act. Further, Lavazza contended that it did not use the ORO trade mark at all and that, if it did, such use was not use as a trade mark. Each of these defences was rejected by the primary judge.
The primary judge found at J [375] - [382] that Lavazza had engaged in trade mark use on various coffee products. Those products included coffee capsules packaged as follows:
Lavazza submitted that the primary judge should have found that the trade mark used by Lavazza was the composite mark LAVAZZA QUALITÀ ORO or QUALITÀ ORO. That submission, as recognised by Lavazza, is difficult to maintain in light of the primary judge's findings with regard to Molinari's use of the ORO trade mark on (inter alia) the 6077 product. In any event, in concluding that ORO was functioning as a trade mark on Lavazza's coffee products the primary judge had regard to the position, size and typeface of the word ORO which he regarded as a dominant feature of the packaging: see J [351] - [367] and J [375].
The primary judge's conclusion on this issue depended on matters of impression and should be given weight: Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424 at [28] - [29] per Allsop J, Drummond and Mansfield JJ agreeing, and GRBA v BBNT at [118] - [119]. Lavazza has not demonstrated that either his Honour's reasoning or conclusion was affected by error.
[15]
THE NOTICE OF CONTENTION
We have referred to some of the matters raised in Lavazza's notice of contention in the course of considering its application for leave to appeal. Given the rejection of Cantarella's appeal, it is not necessary to consider the notice of contention in any greater detail.
[16]
DISPOSITION
Cantarella's appeal should be dismissed with costs. Lavazza's application for leave to appeal should also be dismissed with costs.
I certify that the preceding one hundred and seventy-eight (178) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Nicholas, Jackson and Rofe.
Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514
Anheuser-Busch Inc v Budejovický Budvar (2002) 56 IPR 182
Australian Institute of Management v The Australian Institute of Music Ltd (2021) 162 IPR 555
Branir Pty Ltd v Owston Nominees (No 2) Pty Ltd (2001) 117 FCR 424
Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337
Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506
Coulton v Holcombe (1986) 162 CLR 1
Cretazzo v Lombardi (1975) 13 SASR 4
Decor Corporation Pty Ltd v Dart Industries Inc (1991) 33 FCR 397
Dunlop Aircraft Tyres Limited v The Goodyear Tire & Rubber Company (2018) 262 FCR 76
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Ltd [2011] FCAFC 92
Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9
Fox v Percy (2003) 214 CLR 118
GLJ v Trustees of the Roman Catholic Church for the Diocese of Lismore (2023) 414 ALR 635
Global Retail Brands Australia Pty Ltd v Bed Bath 'N' Table Pty Ltd [2024] FCAFC 139
Gray v Richards (No 2) (2014) 315 ALR 1
Harvard Nominees Pty Ltd v Dimension Agriculture Pty Ltd (in liq) (2023) 299 FCR 224
House v The King (1936) 55 CLR 499
Cases cited: Inn Leisure Industries Pty Ltd v DF McCloy Pty Ltd (No 2) (1991) 28 FCR 172
Kitchen v Director of Professional Services Review [2023] FCAFC 160
Lee v Lee (2019) 266 CLR 129
Marmax Investments Pty Ltd v RPR Maintenance Pty Ltd (No 2) [2015] FCAFC 155
McCormick & Co Inc v McCormick (2000) 51 IPR 102
Melbourne City Investments Pty Ltd v Treasury Wine Estates Ltd (2017) 252 FCR 1
Modena Trading Pty Ltd v Cantarella Bros Pty Ltd (2013) 215 FCR 16
Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379
Project Blue Sky Inc v Australian Broadcasting Authority (1998) 194 CLR 355
RB (Hygiene Home) Australia Pty Ltd v Henkel Australia Pty Ltd (2024) 302 FCR 285
Re Hicks's Trade Mark (1897) 22 VLR 636
Re Parkington & Co (1946) 63 RPC 171
Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158
Ross v The Queen (1979) 141 CLR 432
Sandoz Pty Ltd v H. Lundbeck A/S (No 2) [2021] FCAFC 47
Self Care IP Holdings v Allergan Australia (2023) 277 CLR 186
Shell Co of Australia Ltd v Rohm and Haas Co (1949) 78 CLR 601
Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 186 FCR 519
Suttor v Gundowda Pty Ltd (1950) 81 CLR 418
Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177
Burrell R and Handler M, Australian Trade Mark Law, (3rd ed, LexisNexis Butterworths, 2024)
The primary judge rejected the defences under s 122(1)(e), (f) and (fa) at J [619] - [654]. Lavazza did not challenge the primary judge's rejection of those defences. This is also true of the defence it raised under s 124, which the primary judge rejected at J [603] - [610].
As to the defence based on s 122(1)(b)(i) of the Act, Lavazza contended at trial that it used the word ORO in good faith to indicate the quality of coffee goods and/or to denote a variant within Lavazza's range of coffee products sold under the LAVAZZA trade mark.
Lavazza's argument based on s 122(1)(b)(i) was rejected by the primary judge at J [611] - [618]. It is apparent from those paragraphs of his Honour's reasons that he was of the clear opinion that the word ORO was not being used on the impugned products to describe the quality, or some other characteristic, of those products.
The primary judge found at J [617] that Lavazza:
…. has elevated its use of the word "oro" on the impugned packaging beyond anything that genuinely could be said to be a description of the quality or some other characteristic of the packaged coffee. The objective circumstances are consistent only with an endeavour…to elevate the word "oro" so that it now functions as a brand within the LAVAZZA range of coffee products.
The prominence given to the word ORO (including on the coffee capsules which appear in the photographs reproduced at [168] above) weighs heavily against a finding that ORO was fulfilling a purely descriptive function rather than acting as a brand. There is no reason to doubt the correctness of the primary judge's conclusion with which we agree.
As mentioned, Lavazza took issue with the primary judge's statement that Lavazza raised a large number of defences that had no reasonable prospects of success. However, the question in the proposed appeal is whether it was open to the primary judge to impose a discount on account of Lavazza's lack of success on a number of significant issues that were unrelated to the s 58 ground upon which it succeeded. The contention that it was not open to the primary judge to impose a discount in such circumstances is untenable. With regard to the amount of the discount applied by the primary judge, having presided over a lengthy and complex trial, his Honour was well placed to determine what was an appropriate discount to apply. In all the circumstances, the discount applied by the primary judge has not been shown to be manifestly unreasonable or otherwise inappropriate.
The primary judge's decision on costs is not attended by sufficient doubt so as to warrant the grant of leave to appeal, nor has Lavazza demonstrated that it will suffer a substantial injustice if leave to appeal is not granted, supposing the primary judge's decision to be wrong.