6.3.1 The 473 word mark and the 906 composite mark
287 The applicants submit that if the Court finds, as I have, that there was no relevant intention to use or actual use of its mark in relation to the general foodstuffs category, nevertheless the Register should be amended to include the ready made meal category in the 473 and 906 registered goods.
288 As I have noted, they submit that there are four broad reasons for so doing, as set out at [259] above. I have taken each of these, and, to the extent that they are different, the following matters into account in the exercise of discretion.
289 First, consideration of the policy and purpose underlying the Trade Marks Act indicates that a trade mark unused, and not intended to be used at the date of filing, ought not to have been registered and ought not to remain registered. That is because of the essential requirement that there be a connection in the course of trade between the trade mark and the goods in respect of which they are registered. In the absence of any real and definite intention, and any actual use, that connection is likely to be absent. That may explain why the onus lies on the applicants to satisfy the Court that the discretion should be exercised in their favour.
290 Secondly, the indefensible range of goods in respect of which LFFF obtained the registrations (see the annexure to these reasons) was not justified either by dint of use or intention. Its effect has been to serve as a deterrent to traders as diverse as the producers of chocolate, yoghurt and foodstuffs made of grain (with all of the width that that connotes) from using a mark substantially identical with or deceptively similar to LA FAMIGLIA. I have found in sections 4.4 and 4.5 above that no inference may be drawn in favour of the applicants arising from the fact of filing the applications to register the 473 word mark and 906 composite mark that it ever intended to use the marks on goods other than bread and bread products.
291 The ready made meal category falls within the scope of the 473 designated goods only because of the overly broad scope of the 473 original goods. Otherwise, such an amendment would fall foul of the requirement of s 83(1)(b) of the Trade Marks Act, which provides that the Registrar may only amend particulars entered in the Register if the amendment does not have the effect of extending the rights that, apart from the amendment, the owner has under the registration. Whilst this section does not limit the exercise by the Court of the discretion under s 101(2) or s 88(1), it evidently would be contrary to the policy underpinning the Trade Marks Act to permit an amendment that expands the scope of a registration. A similar policy is apparent from s 65(7) of the Trade Marks Act (which concerns amendments to trade mark applications), the purpose being to ensure that there is some certainty as to the nature and scope of the subject matter of a trade mark, once it has been applied for and registered: Woolworths Ltd v BP plc [2006] FCAFC 132; 154 FCR 97 (Heerey, Allsop and Young JJ) at [43]-[46]. In my view it is a relevant consideration for the exercise of discretion that this policy may be frustrated if, as here, a trade mark owner files an excessively broad application and then relies on that fact to justify a narrower class of goods that it did not intend to use at the date of filing and still has not used.
292 Thirdly, the evidence did not disclose any evidence of use of the marks within the ready made meal category, even by the time of the hearing. Furthermore, for the reasons that I have given, there is unconvincing evidence of an intention to use the 473 word mark or the 906 composite mark in relation to the ready made meal category, even at the date of trial.
293 Fourthly, it is necessary to consider the applicants' submission that the ready made meal category consists of goods of the same description as bread. The ready made meal category as proffered by the applicants was drafted, no doubt, with a view to formulating a defensible subset that is consistent with a successful prosecution of its infringement claim. It was proposed as part of the applicants' closing submissions. Little of the applicants' evidence addresses the nature of the products which fall within it.
294 The ready made meal category is "Italian-style ready made dishes being rice- and pasta-based meals such as risotto, lasagne and spaghetti bolognese". The words "ready made" indicate that little is required in the form of cooking, and that it is a "meal" in the sense that it constitutes one of the regular repasts of the day, being either breakfast, lunch or dinner (Macquarie Dictionary, (3rd ed, 2001, Sydney)).
295 Ms Fung gives evidence that "Italian ready meals" launched by the applicants would be able to be microwaved and ready to eat out of the packet. No evidence addresses the ingredients of lasagne, spaghetti bolognese or risotto, or how such ready made meals are cooked. However, it is not too much of a stretch to take judicial notice within s 144 of the Evidence Act 1995 (Cth) that lasagne and spaghetti bolognese are meals involving multiple ingredients, usually including mince meat, cheese, tomato, onion, garlic and spices. To fall within the ready made meal category, these must be cooked and packaged in a way that is capable of being supplied as "ready made".
296 In their submissions, the applicants provide a list of similarities shared by garlic bread and the ready made meal category, including as to their nature and character, and as to their presentation to consumers, and submit that they are goods of the same description.
297 Garlic bread is a baked product made substantially with wheat and including dairy product in the form of butter, together with garlic. It is a side dish that accompanies a meal. It is a chilled bread product, because the perishable dairy content of the butter requires refrigeration. It is displayed for sale in the refrigerated section of a shop. The evidence supports the proposition that similarly, ready made meals within the ready made meal category will be displayed for sale in the refrigerated section of a shop.
298 The uses made of garlic bread and ready made meals are similar at the level of generalisation that they are both eaten. However, the cases to which I have referred above indicate that this is not sufficient of itself to qualify them as goods of the same description. There are some obvious differences. Garlic bread is a side dish that is an adjunct to a meal. It supplies a source of carbohydrate. Ready made meals, one may infer, are dishes designed to supply a consumer's meal requirements, or possibly main course requirements. In that context, it is likely to be a source of protein as well as carbohydrate and vegetables. Whilst consumers may wish to consume both garlic bread and a ready meal together, they are consumed for different purposes.
299 However, I accept that there is a perception in the Australian market that garlic bread is an "Italian food" and that it is likely to be understood by a substantial number of consumers as being a natural accompaniment to Italian meals, such as those in the ready made meal category. In this regard, the evidence of Ms Fung and Ms Charleson in cross-examination tends to support that this is the consumer perception, and that as a result the applicants focus their large-scale advertising on promoting garlic bread together with pizza and pasta.
300 It is not difficult to conclude, as I do, that consumers would consider there to be a close relationship between different types of what they perceive to be Italian food. In this regard, the fact that Mr Chiavegatti, an Italian, says that garlic bread is not a product which Italians would traditionally consider eating as an accompaniment to pasta (to the extent that such a generalisation may be given weight) is not of material significance. Purists from abroad no doubt from time to time look with horror (or perhaps fascination) on the eating customs of Australians, as foreign customs and traditional habits brought to Australia evolve to suit local tastes. It may well be, as the respondents submit, that garlic bread developed not in Italy but in the United States. However, those matters of cultural and historical background are of less significance than the perceptions of consumers in Australia.
301 No evidence addresses the facilities required to prepare ready made meals, where they might be cooked, how they are prepared, or in what form they are delivered to shops. The evidence of Mr Thompson is, unsurprisingly, that a ready made meal would not be cooked in a bakery, from where garlic bread will originate. It is apparent that the means of making goods in the ready made meal category is different to that of garlic bread, although of course flour may be an ingredient common to both. Mr Chiavegatti gives evidence that he is not aware of any manufacturer or producer of pasta (whether fresh or dried) that also manufactures bread or garlic bread and that he is not aware of any manufacturer or producer of pasta that also manufactures bread or garlic bread. Mr Chiavegatti is not an Australian trader, but no evidence indicates that any company in Australia manufactures both garlic bread and goods in the ready made meal category, although in Aldi stores both have been supplied under the same brand, "Piatti Fresh". I accept that the manufacturers of goods in the ready made meal category are likely to be different to those that manufacture garlic bread. That is a factor pointing away from ready made meals being a good of the same description as the garlic bread or pizza goods.
302 In relation to trade channels, the evidence supports the proposition that ready made meals are likely to be sold in the refrigerated section of supermarkets, where they will be displayed near chilled bread products including garlic bread. In this regard I note the following evidence:
That the applicants, Coles and Woolworths have taken efforts over the years to promote garlic bread in conjunction with or in proximity to the sale of Italian style foods such as pizza and pasta dishes, often, but not exclusively, at the behest of the applicants;
The applicants have, however, also taken efforts to promote garlic bread in conjunction with other meals, including barbequed meals, salads, fondue and antipasto and dips, among other things;
That an Aldi supermarket has a "ready meals" section where chilled products are displayed on shelves;
That Woolworths on its website has promoted and offered for sale bundles of goods sold together at a single price, including LFFF chilled bread products, Leggos pasta sauce and Leggos pasta and that Coles and Woolworths supermarket catalogues in 2014, 2015, 2016, 2017 and 2018 had similar promotions; and
In a general sense, supermarkets typically display chilled bread products in close proximity to fresh pasta products, pasta sauces, pizza bases and ready made pizzas. Often, if not typically, these products are placed on shelves directly above or below each other.
303 These matters, which form but a fraction of the voluminous evidence of supermarket practices and displays, inform a view that is a matter of common sense: namely, that in modern shopping, almost any food product is to be found on the shelves of a large enough supermarket. Furthermore, when a product must of necessity be refrigerated, then, depending on the size of the store, it may well be located near any number of other refrigerated items. Sometimes, the collocation of products available will be mere happenstance. At other times, products are carefully arranged side by side in order to promote sales.
304 Nevertheless, after considering the circumstances in which garlic bread and ready made meals are offered for sale, in my view there is indeed a likelihood that they will be displayed in close proximity. Sometimes they may be side by side, sometimes a short distance apart. Sometimes the placement will be deliberate - whether orchestrated by the producer of the product or the supermarket - and on other occasions by happenstance.
305 Ultimately, as I have noted above, it appears that the policy underlying the Trade Marks Act directs particular attention towards the likelihood that consumers would be confused, were the same trade marks to be applied in relation to the different goods under consideration. If consumers are likely to be confused, then the goods are more likely to be considered "goods of the same description": Polo Textile Industries at 240.
306 In the present case, in my view the balance of considerations weighs in favour of a finding that garlic bread and the ready made meal category fall within the definition of goods of the same description.
307 Fifthly, the applicants submit that, in any event, garlic bread and goods in the ready made meal category are sufficiently closely related such that there is likely to be confusion if unrelated parties have fragmented ownership of deceptively similar marks for those goods. They rely on the fact that both the applicants and the respondents have plans to expand their current product ranges to the same products, and on the fact that Rana has obtained registrations in the European Union for trade marks including in respect of bread, pizza and pasta. The applicants submit that it is undesirable for there to be a fragmented ownership of LA FAMIGLIA trade marks.
308 To some extent, meeting the statutory definition of "goods of the same description" may be considered to be a proxy for a finding that the goods are sufficiently similar such that the two trade marks could not co-exist on the Register, because the use of one would impair the ability of consumers to distinguish between competing trade marks. The Trade Marks Act tolerates a degree of overlap between deceptively similar marks where they are not goods of the same description: see, for instance, s 44. Nevertheless, in considering the exercise of discretion, I take into account the prospect that there may be some degree of confusion between a trade mark for LA FAMIGLIA in respect of garlic bread and products within the ready made meal category bearing a deceptively similar mark. This is relevant to the exercise of discretion.
309 Sixthly, also relevant is the fact that the evidence of LFFF's intention to use the 473 word mark on goods within the ready made meal category was, at best, long term planning and at preliminary stages. In relation to the 2018 Goodman plan, Ms Fung's evidence was that the applicants did not at that point have the manufacturing capacity to produce such goods. Ms Fung's evidence as to the 2019 final brand plan indicates that even as at that date the applicants' plans were tentative, and designed to be carried out somewhat in the future. In this regard see also section 4.5.2 above.
310 Seventhly, the applicants rely on the parties' respective private commercial interests. They submit that their use of the Goodman marks goes back to the 1990s,with very significant sales, that new branded products are "continuing to be introduced", and that they have consistently considered introducing ready made meals because they believe in such products and think they should go to market. On the other hand, they contend that Rana has entered the Australian market with its "eyes wide open" to the registrations of the Goodman marks and their scope, and submit that Rana could have chosen to use a different trade mark, such as the Giovanni Rana mark, which it has used in overseas markets, and that any inconvenience to Rana caused by the registration of the Goodman marks must be assessed in light of Rana's failure to take such an alternative option.
311 There is a circularity to this argument. The applicants have been found to have registered trade marks in respect of goods which they had no intention to use, and have not used. The fact that an alleged infringer may have searched and been warned off from using a similar mark by reason of that registration does not provide an additional argument in favour of the retention of the applicants' mark on the Register. Indeed, the fact is that since 2007 the applicants have retained the registration of 473 word mark and 906 composite mark, which may have had the effect of deterring traders from legitimately using them. This is contrary to the policy and purposes of the Trade Marks Act, and I give this factor no weight in favour of the applicants.
312 Finally, I note the applicants' submission that they have not abandoned the 473 and 906 marks, that the 473 word mark and the 906 composite mark were previously used in relation to pizza bases, and that the applicants have repeatedly considered expanding their product range to include pizza products and ready made meals.
313 Taking all of these matters into consideration, I am not satisfied that it is an appropriate exercise of discretion to permit the ready made meal category to be retained on the Register for the 473 word mark or the 906 composite mark.
314 Finally, to the extent that I am incorrect in finding that there has, in effect, been use of the 473 and 906 marks in relation to pizza bases and pizza dough, having regard to the nature of the use of those marks in relation to bread and bread products, I would conclude that the discretion to retain pizza bases and pizza dough on the Register should be exercised in favour of the applicants. In this regard I find that each of these are goods of the same description as the bread products that I have found have been used by the applicants, and that otherwise the discretionary factors favour the retention of those goods on the Register.