The Applicant submits that even if I consider there to be an earlier deceptively similar trade mark, the Trade Mark should also be registered because of s 44(4). The earliest of the Opponent's Trade Marks is 1019902, with a priority date of 10 September 2004. For s 44(4) to be applicable the evidence must show that there had been use of a trade mark which is substantially identical to the Trade Mark since before the priority date of 1019902 continuously until the Relevant Date.
The closest invoice to the priority date of 1019902 appears to be that at Confidential Exhibit ICG-8A which is dated 18 October 2004. This was issued by SA Damm which I consider to be the abbreviated equivalent of the Applicant's name. This date is later than the priority date of 1019902. The other invoices at Exhibits ICG-8A To ICG-8H all also appear to be dated later.
The Applicant's written submissions also appear to rely on Garcia at paragraph [43] and Confidential Exhibit ICG-6 to Garcia. Much of this material is undated and it is not clear what specific trade mark has been used. Much of the material at Confidential Exhibit ICG-6 is also dated well after the priority date of 1019902. I recall the issues regarding the use of various trade marks across time in Australia, I also note that what is shown by the evidence is at its highest disparate use of different trade marks which I would not consider to demonstrate continuous use leading up to the Relevant Date.
For these reasons the activities shown in evidence do not establish use of a substantially identical trade mark which has been both prior to the priority date of 1019902 and continuous until the Relevant Date. Accordingly, I find that s 44(4) is not applicable in these circumstances.

Section 44(3)(b) provides the Registrar with the discretion to accept the Trade Mark if because of 'other circumstances' it is proper to do so. This discretion should be exercised with regard to the circumstances as at the time the discretion is exercised, rather than at the priority date of an application.[30]
At the hearing Mr Sykes pressed for an interpretation of the words 'other circumstances' such that I should take account of the alleged use of various elements contained in the Trade Mark across a lengthy period of time in Australia and overseas, even if not satisfied that the use has always been use of a trade mark which is substantially identical with the Trade Mark. I was taken to Singtel Optus Pty Limited v Optum Inc ('Singtel') where the Court applied s 44(3)(b) in part because of the prejudice that would be suffered by the applicant, should it be unable to use its trade marks in Australia.[31] The Opponent also took me to the fact of there being alleged registrations and coexistence overseas.[32] I emphasise that even on a wide interpretation of what the words 'other circumstances' may include, the circumstances on the evidence must regardless be so as to justify the application of the provision.
Firstly, I do not consider the volume of trade and use that is shown, even after the Relevant Date, to be persuasive. Many of the weaknesses in the evidence as to honest concurrent use already discussed would also impact the evidence when I consider whether s 44(3)(b) should apply. These weaknesses impact the assessment of the relevant commercial realities such as an alleged absence or low likelihood of confusion, which might have weighed in favour of registration being proper. I also consider that the trade marks and circumstances before me to have a comparatively higher likelihood of confusion by the shared prominent and important word element 'Estrella', which sets these circumstances apart from those in, for example, Singtel. I am satisfied that there would also be prejudice to the interests of the Opponent by registration of the Trade Mark.
The registration of trade marks in another jurisdiction under different trade mark legislation and potentially because of unknown circumstances, is not necessarily a reason for its registrability in Australia. I otherwise also note that only some of the circumstances relied on tend to be circumstances apart from those that would support a finding of honest concurrent use. In Ceramiche Caesar S.p.A v Caesarstone Ltd the Full Court of the Federal Court referred to the decision of the primary judge stating:

Although his Honour does not say so in terms, it is apparent that, having upheld Caesarstone's case based on honest concurrent use, he considered that it was not open to him, on the basis of what were essentially the same circumstances as were relied upon by Caesarstone for the purposes of that case, to permit the application to proceed to registration "... because of other circumstances". This is consistent with the language and structure of s 44(3) which requires there be other circumstances (apart from those that would support a finding of honest concurrent use) in order to justify registration under s 44(3)(b). Given his Honour's finding in relation to honest concurrent use, the decision not to find for Caesarstone on the basis of s 44(3)(b) is understandable.[33]

Overall, I am not satisfied that the alleged other circumstances demonstrate that the registration of the Trade Mark is proper. Accordingly, I find that s 44(3)(b) is not applicable in these circumstances.

Section 55 relevantly provides:

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note: For limitations see section 6.

The Opponent has established a ground of opposition under s 44. Accordingly, I refuse registration of trade mark 2247131.
The Opponent has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Applicant under s 221 in the amounts set out in Schedule 8 of the Regulations_._

Specification: Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages

Endorsements: The applicant has advised that the ENGLISH translation of the SPANISH word ESTRELLA appearing in the trade mark is STAR

Specification: Class 32: Beer; aerated waters; non-alcoholic beverages; mineral waters [beverages]; fruit beverages and fruit juices; preparations for making beverages; syrups for making beverages Class 41: Entertainment services; sporting and cultural activities

Endorsements: Colour Claimed: BLUE, WHITE, SILVER GRAY, BLACK, RED and AMBER; Parts Colour Claimed: BLUE background; WHITE letters; cover and background of label in SILVER GRAY; BLACK, RED, BLUE logo; AMBER bottle. The applicant has advised that the English translation of the words appearing in the trade mark is STAR GALICIA 0% JUST FOR BEER LOVERS.

Endorsements: White, black, red and gold.;White: "ESTRELLA GALICIA" and oval and circular lines. Black: background, oval and circular lines, star tips. Red: circle background where the star is depicted and bottom part under the designation"ESTRELLA GALICIA". Gold: star tips, oval-shaped line around the design. White, black, red and gold. White: "ESTRELLA GALICIA" and oval and circular lines. Black: background, oval and circular lines, star tips. Red: circle background where the star is depicted and bottom part under the designation"ESTRELLA GALICIA". Gold: star tips, oval-shaped line around the design.

Specification: Class 32: Beers with alcohol; alcohol-free beers; beers; non-alcoholic beverages.

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) ('Regulations').

[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[4] Trade Marks Manual of Practice and Procedure Part 51.2.5. See also, Trek Bicycle Corporation v Red Hawk Holdings Pty Ltd [2019] ATMO 88, [38] (Hearing Officer Richards).

[5] Sanchez-Harguindey, [31]-[32] and Exhibit 8.

[13] [1963] HCA 66, [12] (Windeyer J).

[14] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[15] Crazy Ron's Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

[16] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[17] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[18] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 (Dixon and McTiernan JJ) ('Australian Woollen Mills').

[19] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

[20] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592, 595 (Kitto J) ('Southern Cross'); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) ('Woolworths'); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ) ('Campomar').

[21] Woolworths ibid [50](ii); Southern Cross (n 20) 594-595 (Kitto J). See also, Australian Woollen Mills (n 18) 658.

[22] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J) ('Trident'); Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [147] (Lander J) ('Hills Industries'); Telstra (n 3) [238].

[23] Hills Industries ibid [177] (Lander J); Trident ibid [186] (Gleeson J).

[24] Alex Pirie & Sons Ltd's Application (1933) 50 RPC 147, 159-160 (Lord Tomlin); Re Fitton's Application (1949) 66 RPC 110, 112 (UK Reg) which have been widely adopted and applied in Australia.

[25] McCormick & Co Inc v McCormick [2000] FCA 1335 (Kenny J); Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226, 235 (CA); Joseph Rodgers & Sons Ltd v W N Rodgers & Co (1924) 41 RPC 277, 291 (Romer J).

[27] For example, Exhibits ICG-4 and ICG-5.

[30] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [83] (Reeves, Jagot and Rangiah JJ)

[31] [2018] FCA 575, [190]-[194] (Davies J).

[32] See the comments made in Campomar (n 20) [80]-[81].

[33] [2020] FCAFC 124, [80] (Nicholas, Burley and Thawley JJ).

Marks Regulations 1995

HIJOS DE RIVERA, S.A.=?UTF-8?Q?v_Sociedad_An=C3=B3nim?=a Damm [2025] ATMO 185 (9 September 2025)

HIJOS DE RIVERA, S.A.=?UTF-8?Q?v_Sociedad_An=C3=B3nim?=a Damm [2025] ATMO 185 (9 September 2025)

At a glance

Court

Decision date

Source

Judgment (41 paragraphs)

Legislation Cited (2)

Cases Cited (3)

HIJOS DE RIVERA, S.A.=?UTF-8?Q?v_Sociedad_An=C3=B3nim?=a Damm [2025] ATMO 185 (9 September 2025)