Richards v Black Star Pastry Pty Ltd

Class 29: Milk based beverages (milk predominating); soya based dairy substitutes

Class 30: Additives for coffee; coffee

Class 33: Alcohol for drinking; alcoholic beverages

1. In around 2004 Mr Thé began to consider the idea of opening his own bakery. Although he completed a Bachelor of Arts degree in 1996, Mr Thé realised he had a passion for cooking. That led him to complete a Certificate III in Commercial Cooking in 2001; and from 1999 to January 2008 Mr Thé worked in a number of fine dining restaurants.[34]

1. In around 2004 Mr Thé "started to properly consider the idea of opening" his own bakery, and he researched and developed a business model on which to operate a bakery store. Mr Thé's "general concept was to bring high end cooking into a café setting so that it would be affordable and accessible to the broader community".[35] In early 2008 Mr Thé identified a property in Newtown he considered would be appropriate for his proposed business; and in about February 2008 he entered into a lease over those premises.[36]
2. In the course of designing and creating his store, and while listening to his favourite band who have a song called "Black Star", Mr Thé thought that "Black Star" would be a great name for his business.[37] Mr Thé attempted to register "Black Star" as a business name, but he was unable to do so because that name was registered to a mining company. Mr Thé, however, added the word "pastry" to "Black Star" and, on 21 July 2008, he registered "Black Star Pastry" as a business name.[38] Mr Thé did not undertake any trade mark searches.[39] In the meantime, and as I noted at the beginning of these reasons, in May 2008 Mr Thé engaged two of his friends to design a logo for use by him in the proposed business;[40] and they designed the logo which, in the circumstances I discuss later, became registered as a trade mark.

1. It took Mr Thé about six months to develop the Newtown store; and he opened the store for trading in about late October 2008 (this being the BSP Business I identified at the beginning of these reasons).[41]
2. The BSP Business sold a wide variety of baked goods, including bread, croissants, pastries, cakes, quiches, pies, and sandwiches. The BSP Business also sold coffee. According to Mr Thé:[42]

The business . . . sold coffee as an accompaniment to its baked goods. From the time it opened, the primary focus of the BSP Business was the sale of baked goods, which are my skillset. That focus remained for as long as I was involved in the business. . . .

From October 2008, I worked in the store from around 3:00am/4:00am most mornings until close. There was a small kitchen and I baked cakes, patisseries, pies and quiches with the assistance of one other pastry chef. I employed a barista to make coffee, who commenced work when the store opened at around 7.00am.

While not the primary focus of the BSP Business, coffee was always important to the local customers. As I could not make coffee well, I relied on the barista and one other shop person to make the coffee. I took over the coffee making once the barista left for the day at about 1.00pm or 2.00pm and I would make coffee until we closed at about 3.00pm or 4.00pm. As the business grew, I employed more staff, and I worked exclusively in the kitchen. By about February 2009, the business started trading 7 days a week from the Newtown store and had a full-time barista on duty on each of those days.

1. Mr Thé used coffee beans supplied by a business known as "The Little Marionette"; and he initially used a La San Marco coffee machine, which Mr Thé purchased at auction and which, in 2009, he replaced with a La Marzocco machine. Mr Thé also rented coffee grinders. [43]
2. From the time he opened his store, the BSP Business sold all types of espresso-based coffees using The Little Marionette coffee beans, including espresso, latte, long black, cappuccino, and macchiato, with cow or soy milk. The BSP Business also sold other beverages, such as tea, chai, soft drinks, and juices. Customers were able to buy coffee and other items for sale as dine-in or takeaway; and the BSP Business stamped coffee cups and paper bags with the Black Star Pastry logo.[44]
3. At around the time he opened the Newtown store, Mr Thé created the Strawberry Watermelon Cake which has the novel feature of a layer of watermelon. Mr Thé began offering Strawberry Watermelon Cake at the Newtown store in late 2008 or early 2009, and it became the BSP Business's most successful product.[45] The Strawberry Watermelon Cake gained an international reputation and recognition. In April 2019 the Australian Financial Review described the Strawberry Watermelon Cake as the "world's most Instagrammed cake"; and in May 2019 the New York Times described it as "Australia's most Instagrammed Dessert".[46]

1. In 2008 Mr Thé acquired the domain name "www.blackstarpastry.com.au" for use in connection with the BSP Business, but Mr Thé did not take steps to develop the webpage until August 2010, when he engaged a web designer to design the website. Mr Thé launched the BSP Business website in September 2010. The website's "about us" section described the BSP Business as follows:

BlackStar Pastry was established in October 2008 and now over seven hundred and fifteen four-am starts later Christopher Thé and his team are still baking delicious moments for us all.

A clear single vision and traditional techniques drive this dedicated team and you can taste the hard work that goes into their food. What comes out of the kitchen is real naturally beautiful and flavour is king.

The café has an eclectic vibe which feels instantly familiar. Fine coffee made from Little Marionette coffee beans, a DIY toast station, house-brewed iced tea in summer and fresh juices serve as perfect accompaniments to the glorious array of sweet and savoury offerings.

Good honest slow cooking enlivened with fresh experimentation is what BlackStar is all about. You can read more about Thé's musings and creative process in his Journal, and you may be lucky enough to find a free recipe!

Telephone conversation between Mr Richards and Mr Thé

1. In his first affidavit Mr Richards deposes that in 2011 some of his customers informed Mr Richards that a business in Newtown, Sydney, was using the name "BLACKSTAR". Mr Richards says that "[a]s a result", he rang Mr Thé after performing a Google search for Black Star Pastry. Mr Richards says he "wanted to establish that Mr Thé had no intention to use the BLACKSTAR name for any products for which" the Blackstar trade marks were registered".
2. Mr Richards does not set out his recollection of the conversation he had with Mr Thé; Mr Richards goes no further than stating the understanding he says he was left with after the conversation, this being that Mr Thé "was operating a single bakery, pastry outlet only", and that "coffee was not part of the overall direction as he was a qualified pastry chef and cakes, pastries and baked goods were his focus".[47] Mr Richards further deposes:

At no time in the conversation did Mr Thé say that he was applying for a trade mark to extend that trade mark application to "cafe services" and "providing drink services" which could have extended the goods or services to include coffee products for which my '976 and '833 marks were and are registered.

1. Mr Richards was cross-examined about his telephone conversation with Mr Thé, and the circumstances that led to his calling Mr Thé. Mr Richards said his customers told him there was a business in Sydney called "Blackstar"; that happened a "couple of times";[48] Mr Richards decided he would try and find out a bit more about the business, so he conducted a Google search for "Black Star Pastry";[49] Mr Richards does not recall visiting any website;[50] the Google search just revealed the name and telephone number of Black Star Pastry;[51] Mr Richards definitely does not remember reading anything about Black Star Pastry being a café; and he did not undertake any other research about Black Star Pastry.[52] Mr Richards further said that during the conversation he asked Mr Thé whether he owns coffee trade marks; and there had been some confusion. Mr Thé explained he was a pastry chef, that he was a bakery, and he sold very little coffee. Mr Richards said if Mr Thé is going to sell any coffee at all, it should be "my coffee because I am Blackstar Coffee";[53] and that Mr Thé made the "point that he was a bakery and a pastry chef", and that coffee "wasn't a focus".[54]
2. Mr Thé recalls having received a telephone call from Mr Richards; but he does not recall whether it was in 2009, 2010, or 2011. Mr Thé's recollection of the conversation, as set out in his affidavit, is as follows:[55]

(a) Mr Richards said that he had a Blackstar coffee business in Brisbane. I was not aware of Mr Richards' business prior to his call.

(b) Mr Richards asked me if I roasted coffee beans. I told Mr Richards that I was not a coffee roaster, I was a bakery patisserie and that I did not intend to start roasting coffee.

(c) Mr Richards asked me light heartedly if I was interested in buying his coffee. I told him that I was not. As I state above, I was close friends with the owner of Little Marionette, which roasted coffee beans and supplied coffee to me. Roasting coffee is not, and has never been, my skillset. Baked goods are my skillset. I told him that I served coffee but that my business was a pastry shop first and foremost.

(d) Mr Richards asked me if I had any plans to expand. I told him I had no present intention to expand but could possibly plan to expand in the future.

(e) I noted the differences between the businesses geographically - Mr Richards' coffee business was located in Queensland and my business was located in New South Wales. I also noted the differences between the nature of the businesses - Mr Richards' business was focussed on coffee and my business was a bakery patisserie.

(f) Mr Richards did not ask me to cease using the words 'Black Star' or 'Black Star Pastry' in connection with my business, nor did he suggest anything along those lines. I do not recall him mentioning how he had found out about my business.

Mr Richards asked me what would happen if he wanted to go to New South Wales or I wanted to go to Queensland. I said to him that it was very unlikely that I would open a shop in Queensland. I told him that our businesses were very different and that they could co-exist, as his focus was on coffee and mine was on pastry. I recall telling Mr Richards that I sold coffee based drinks.

1. In evidence given under cross-examination, Mr Thé said he was not aware of Mr Richards' business before he received the call from him.[57] Mr Thé also said that Mr Richards said he had a coffee business in Brisbane;[58] and that he had the name "Blackstar" in relation to his business;[59] Mr Richards offered to sell to Mr Thé wholesale coffee beans;[60] and Mr Thé said he was a pastry chef, and that was the focus of his business.[61] Mr Thé also gave the following evidence:[62]

. . . . You didn't say that you might expand in the future?‑‑‑I do recall that during that conversation, Mr Richards asked about, "What if you wanted to go to Queensland, and what if I" - what if he wished to go to New South Wales, and at the time I thought that was not an option, as I wasn't a sophisticated business owner. I ‑ ‑ ‑

Right?‑‑‑ ‑ ‑ ‑ couldn't see past 2011.

You saw that the businesses were different?‑‑‑I can recall saying that I said something to the like of, "I sell pastry and you sell coffee." Yes.

Right?‑‑‑Businesses are different.

1. For reasons that will appear later, it will be unnecessary to make any finding other than that, at around 2011, or perhaps 2010 or 2009, Mr Richards telephoned Mr Thé and had a conversation in the course of which Mr Richards came to understand that Mr Thé was a pastry chef who was using "Black Star Pastry" in connection with a business in which Mr Thé was selling pastries together with coffee; and Mr Thé came to understand that Mr Richards has a coffee business in Brisbane which used the name "Blackstar".

1. According to Mr Thé, he was not concerned, after his telephone conversation with Mr Richards, of the existence of the Blackstar Coffee Business because he believed the BSP Business and the Blackstar Coffee Business were different; and he so believed because the focus of the BSP Business was then, and has remained, on baked goods. Further, Mr Thé says he had registered "Black Star Pastry" as a business name, and he did not understand the difference between the registration of business names and the registration of trade marks.[63] Mr Richards did not again contact Mr Thé after their conversation. Mr Thé says he felt confident that he had registered "Black Star Pastry", he had a business name, and that was all he required at that time. Mr Thé believed the two business co-existed; and Mr Richards gave Mr Thé no reason to think otherwise.[64]
2. BSP relies on this evidence in support of its contention that Mr Richards had agreed or acquiesced in BSP's use of "Black Star Pastry"; and I will address the relevance of Mr Thé's evidence later in these reasons when I consider BSP's contention.

1. On 17 June 2011 Mr Thé arranged to incorporate BSP; and until around 31 July 2018 he was the sole director and shareholder of BSP. As sole director and shareholder, Mr Thé was solely responsible for the conduct and management of BSP.[65] Mr Thé says that he decided to incorporate the BSP Business because it had grown substantially, driven by the popularity of the Strawberry Watermelon Cake; and he also wanted to ensure that his personal and business assets were kept and managed separately.[66]

1. At the time Mr Thé arranged for BSP to take over the BSP Business, he instructed his lawyer to apply to register the BSP Logo as a trade mark. On 19 September 2011 BSP's lawyers applied for the registration as a trade mark the BSP Logo (which when registered became what I earlier identified as the BSP202 trade mark).
2. By letter dated 7 February 2012 a trade mark examiner provided an adverse examination report (First Examination report) in which the examiner identified the following problem:[67]

This problem applies to Class 43 only.

Your trade mark closely resembles the following trade marks. These trade marks have earlier priority dates and are for similar goods and services:

1172976, 1288833

• Your trade mark closely resembles the earlier trade marks because your trade mark and the conflicting trade marks contain the words BLACK STAR as an essential element. I note the additional words and devices in your trade mark and the conflicting trade marks however these are not sufficient to prevent confusion. This is because a consumer who is familiar with the earlier filed trade marks is likely to believe that the closely related goods and services would originate from the same trade source.

AND

• the conflicting trade marks have claimed coffee goods in class 30 which are closely related to your cafes and providing drink services in class 43.

1. The numbers 1172976 and 1288833 are the Blackstar trade marks.
2. The First Examination Report identified a way in which BSP "would" overcome the problem it identified, namely, by removing "cafes" and "and drink" from the Class 43 services in respect of which BSP sought registration of the BSP202 trade mark. The First Examination Report noted, however, that if BSP were to use the BSP202 trade mark on goods and services it excludes, BSP "may infringe the rights of the owner of the conflicting trade mark/s". The First Examination Report also noted that BSP "might" be able to overcome the problem if it could supply evidence under s 44(3) or s 44(4) of the TM Act.
3. On 8 May 2013 BSP's lawyers sent a letter by post to Mr Richards and Ms Andrews dated 8 May 2013, and a letter by post to Mr Richards, also dated 8 May 2013. The letters were identical, except the letter addressed to Mr Richards and Ms Andrews related to the Blackstar 833 trade mark, and the letter addressed to Mr Richards alone related to the Blackstar 976 trade mark.[68] On 21 May 2013 Ms Karras, BSP's lawyer, sent an email addressed to Mr Richards and Ms Andrews (addressed as Ms Richards), at "info@blackstarcoffee.com.au", to which Ms Karras attached "our letters to you of 8 May 2013", noting that there has been no response.[69] The letter stated matters that included the following:[70]

(a) BSP had lodged an application for the registration of the BSP202 trade mark, but encountered an adverse report based on the existence of the Blackstar trade marks.

(b) The Blackstar trade marks are restricted to coffee and other beverages.

(c) BSP's website is www.blackstarpastry.com.au and its brand, Black Star Pastry, "is predominantly associated with bakery products and services", noting further that BSP also operates a café under the same name which serves The Little Marionette coffee.

(d) The BSP202 trade mark and Blackstar trade marks "can co-exist without conflict, and the operations of both businesses can co-exist without confusion in the market place", for the following reasons:

(i) BSP202 trade mark's registration under class 43 for "bakery services; cafes; providing food and drink" is different from the Blackstar trade marks' registration in classes 29, 30, and 33, which is restricted to coffee and other beverages, and does not include café services, or the provision of food and drink.

(ii) The Blackstar Coffee Business is located in Brisbane while BSP operates in New South Wales, and does not intend to expand its operations in Queensland.

(iii) The composition of "black" and "star" in the Blackstar trade marks is as one work, whereas the BSP202 trade mark maintains the separation of the two words.

(iv) The coffee at BSP's café is provided under "The Little Marionette" branding.

1. On the basis of these matters, BSP's lawyer requested Mr Richards and Ms Andrews' consent to facilitate the registration of the BSP202 trade mark.
2. Mr Richards responded by emails sent to Ms Karras on 22 May 2013 and 6 June 2013. In the second email, Mr Richards said that the matter was currently with his lawyer, "and we are preparing a response".[71] Mr Richards did not, however, either by himself or by his lawyer, further respond to Mr Karras's letters dated 8 May 2013.
3. On 23 July 2013 BSP's lawyers responded to the First Examination Report by letter to IP Australia in which they proposed BSP would amend the BSP202 trade mark, not in the manner the First Examination Report suggested, namely, by the removal from the Class 43 goods and services "cafes" and "and drinks", but by adding after "cafes" the words "but not including the production of coffee".[72] BSP's lawyers relied on the following matters in support of BSP's proposed amendment:

(a) BSP's brand, "Black Star Pastry", is "predominantly associated with bakery products and services"; and BSP "operates a café in Sydney under the same name which serves The Little Marionette brand of coffee".

(b) The Blackstar trade marks are used in connection with coffee and beverage production; and while the Blackstar trade marks "are associated with a café of the same name which operates in Queensland, the registrations do not include café services or the provision of food or drink"; they "are restricted to coffee and other beverage production".

(c) BSP has no interest in producing coffee or other beverages, or trading in coffee, under the Black Star Pastry brand; BSP has an interest in "promoting its brand in association with bakery products and café services".

1. IP Australia responded with a report dated 9 August 2013 in which the examiner said that BSP's proposed amendment for the specification of services in Class 43 "does not overcome the section 44 objection because the exclusion does not remove the similarity between [BSP's] claims for cafés and providing drink under Class 43, and the coffee goods covered by the conflicting registrations [being the Blackstar trade marks] in Class 30".[73] The examiner concluded:

I am therefore satisfied that confusion between the applicant's trade mark and the conflicting marks is likely to occur, and that there is a real and tangible danger consumers will wonder whether the marks denote a common trade source for the closely related goods and services.

As the section 44 grounds for rejection is maintained, I cannot accept the applicant's trade mark for registration.

The applicant may wish to consider the amendment suggested in the first examination report or supplying evidence under sections 44(3) or 44(4) to address this matter.

1. By letter dated 20 August 2013 BSP's lawyers informed IP Australia that BSP agreed to amend its application for the BSP202 trade mark in the manner suggested by the examiner.[74] The application was accepted, and on 22 October 2014 the BSP202 trade mark was registered as a trade mark with effect from 19 September 2011.[75] The BSP202 trade mark was registered in respect of the following classes:

Goods & Services

Class 16: Recipes (printed matter); photographs

Class 30: Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries

Class 43: Bakery services; providing food

Expansion of Black Star Pastry stores, and change of ownership of BSP

1. In July 2018 JKPL BSP Pty Ltd (JKPL), a member of the JKLP Group of companies, purchased the majority of the shares Mr Thé held in BSP. Mr Jiyuan (Louis) Li, the "ultimate owner of the JKLP Group",[76] consequently became the sole director of BSP; and in September 2019 JKPL acquired the remainder of the shares Mr Thé held in BSP.[77]
2. By 31 July 2018, when JKPL acquired a majority interest in BSP, BSP was conducting four stores in Sydney, including the Newtown store. These were a store in Dunning Avenue, Rosebery, which opened in January 2014, another in the Kinokuniya Bookstore inside the Galleries complex in the Sydney CBD, which opened in 2015, and one at the Entertainment Quarter in Moore Park, which opened in November 2017. The Moore Park store included the production kitchen for BSP's New South Wales operations, which was on show to the public.[78]

Course of BSP Business after change in ownership

1. After JKPL acquired ownership of BSP, BSP opened stores at St Kilda, Melbourne (November 2019), Chadstone shopping Centre, Melbourne (December 2021), a Chinese flagship store in Shanghai, China (mid-January 2022), Driver Lane, Melbourne (April 2023), and Westfield Chatswood, New South Wales (October 2023).[79] In August 2020, the store at the Kinokuniya Bookstore was relocated to the ground floor of The Galeries shopping centre complex; and, on 9 April 2024, BSP moved the Newtown store to a new location in Newtown.[80] Further, BSP arranged Strawberry Watermelon Cake box pop ups at different locations in Melbourne and Sydney.[81]

1. Ms Makiv, the Chief Executive Officer of the JKPL Group of entities, has described the Black Star business as follows:[82]

The core business of BSP remains a speciality bakery business with large production facilities in Melbourne and Sydney. All baked goods including cakes, biscuits and other pastries are made fresh daily and distributed to our stores each morning. The Strawberry Watermelon Cake is the core product. Between 1,200 and 1,500 slabs of this cake are made every month between Victoria and NSW. Each slab equates to 60 individual slices. In 2023, BSP's NSW kitchen made 11,436 slabs of Strawberry Watermelon Cake and the Victorian kitchen made 4,351 slabs of Strawberry Watermelon Cake which equates to 947,220 individual slices of Strawberry Watermelon Cake produced in 2023. This does not include other cakes made by BSP during the same period or signature creation Strawberry Watermelon Cakes custom made for weddings or other special events. These production figures are derived from spreadsheets compiled by BSP's Head Pastry Chef, Arnaud Vodounou, who uses the spreadsheets to keep a running log of the production of Strawberry Watermelon Cake by day. . . . BSP produces on average over 400,000 slices of its other cakes per year, which is roughly half of the Strawberry Watermelon Cake production.

1. Ms Makiv also identified the following features of the BSP Business which were introduced after JKPL acquired BSP.[83]

(a) In October 2018 BSP recruited a head of pastry chef, and took steps to increase the expertise of the team of chefs to focus on improved quality of all cake and pastry products together with an expansion of the core range of cakes and pastries.

(b) In around September or October 2018 BSP engaged a creative agency to assist with rebranding; and the rebranding was officially launched in December 2021 to coincide with the opening of the Chadstone store in December 2021. The rebranding involved the introduction of the New BSP Logo, and the creation by a Japanese illustrator of the characters of "Star" (young boy), "Dough", a French bulldog, and "Black", a hedgehog.

(c) The signage of the stores was changed to reflect the new branding and new packaging, and a special pink cake box, specifically designed for BSP's "hero product, the Strawberry Watermelon Cake".[84]

(d) New uniforms bearing the new branding were introduced to BSP's staff.

(e) BSP launched a new website.

(f) BSP acquired coffee beans from ST. ALi, and ceased obtaining coffee beans from The Little Marionette.

(g) BSP closed its Moore Park retail shop in 2023, and moved the large kitchen facility to Alexandria.

(h) BSP introduced a merchandise range which features the new branding.

Application for and opposition to registration of BSP011 and BSP012 trade marks

1. On 2 September 2018 BSP lodged two applications for the registration of trade marks. One was for the registration of the Black Star Pastry Logo (this being what became the BSP011 trade mark I identified at the beginning of these reasons) in relation to the following classes:[85]

Class 16

Absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging

Class 35

Retail services (by any means)

Class 43

Restaurants; cafés; hospitality services; take away food services

1. The second application was the registration of the name "Black Star Pastry" in relation to the following classes (this being what became the BSP012 trade mark I identified at the beginning of these reasons ):

Class 16

Recipes (printed matter); photographs; absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging

Class 30

Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries

Class 35

Retail services (by any means)

Class 43

Bakery services; providing food; restaurants; cafés; hospitality services; take away food services

1. IP Australia responded with an adverse report in relation to each of these applications. In the examiner's report dated 12 October 2018, the examiner noted that the BSP011 trade mark closely resembled the Blackstar trade marks, but suggested that the problem would be overcome by the removal of "cafés" from Class 43.[86] In the examiner's report dated 22 October 2018, the examiner also noted that the BSP012 trade mark closely resembled the Blackstar trade marks; and similarly suggested the problem would be overcome if the word "cafés" was removed from Class 43.[87] By letter dated 28 November 2019 BSP, through its lawyers, informed IP Australia that it would remove "cafés" in class 43 of the trade mark applications, as suggested in the examiner's reports; and requested that BSP's trade mark applications be accepted for registration.[88] IP Australia accepted for possible registration BSP's applications for the registration of the BSP011 and BSP012 trade marks, and on 29 November 2019 advertised those trade marks for opposition.
2. On or shortly before 5 January 2019 Ms Makiv contacted Mr Richards to arrange to meet with him on Tuesday, 8 January 2019. On 5 January 2019, after she and Mr Richards arranged to meet, Ms Makiv sent an email to Mr Richards to provide "some background prior to our coffee on Tuesday morning".[89] After briefly describing the nature and history of the BSP Business, and noting that BSP is the owner of the BSP202 trade mark, Ms Makiv noted that BSP had applied for the registration of the BSP011 and BSP021 trade marks, but IP Australia had raised an objection on the basis of the Blackstar trade marks. Ms Makiv continued as follows:

I understand that you run a business in the Brisbane area, roasting and supplying coffee beans, and manufacturing and supplying cold pressed coffee. . . . According to your website at www.blackstarcoffee.com.au, you use your trade

mark in the form

By contrast, our trademarks BLACK STAR PASTRY and are used predominantly for pastry products, although we also provides [sic] take away and dine-in services for food and beverages, including coffee, which are generally made available to customers alongside the cakes, pastries and savoury items available for sale (see www.blackstarpastry.com.au).

Your trademarks and our registration 1449202 for have been coexisting since 2011 and both businesses have been concurrently active since at least 2008.

During this period, we have not been aware of any consumer confusion between your marks and our marks. Any such confusion would be unlikely given the difference in geographic location of both businesses, and the fact that whilst the goods and services provided by both business are in the general field of hospitality, they are sufficiently specific to not overlap in the market.

When we catch up on Tuesday I'm hoping to discuss a letter of consent for use and registration of our marks. Looking forward to meeting you.

1. Mr Richards and Ms Makiv met, and on 2 February 2019 Mr Richards sent to Ms Makiv a detailed email.[90] Mr Richards said he appreciated Ms Makiv having approached him because Mr Richards "wasn't aware that Blackstar Pastry had more than one store and also wasn't aware of [BSP's] growth plans". Mr Richards referred to his having been working on "BLACKSTAR since 2006" during which he has committed himself as "growing BLACKSTAR as a brand that is reflective of [Mr Richards'] vision and values", noting that he always wanted BLACKSTAR to be "a market leader in specialty coffee in Brisbane and beyond"; and that Mr Richards wanted "us to be known in Australia and the world, for the best cup of coffee", first, "for the coffee quality itself" and, second, for "how that coffee impacts the planet and the people involved in its production". Mr Richards also provided some information about the extent of the Blackstar Coffee Business, after which, under the heading "MY CONCERNS", Mr Richards said:

I mention all of this to explain, more personally, what BLACKSTAR means to me, and why I must ensure that I protect the name from dilution in the market place. I was not aware that Blackstar Pastry had more than one store until we met. I wasn't aware of the volume of coffee sold in NSW under the name "BLACKSTAR". And now I am aware that you are planning a new store in Melbourne, the coffee capital of the world in fact (also my home town and the city where I plan to grow BLACKSTAR COFFEE next) I am even more concerned about protecting our Trademark. I can see no way that our Brands can both grow separately without confusing consumers. That being said, there may yet be ways forward together, as you stated in our meeting.

I also expect to grow distribution of Blackstar Coffee into Sydney and surrounds in time. This is where we have an immediate issue, due to brand confusion already in Sydney and soon to be a similar problem in Melbourne. We have capacity at our East Brisbane roastery to grow our wholesale distribution exponentially. This is where we are heading and in future there may well be hundreds of cafe's using BLACKSTAR COFFEE throughout the country (as well as flagship stores in each city).

1. Mr Richards then identified what he considered to be two main issues:

a. On a practical level having two growing brands with the same name, in the hospitality industry, both involving and looking for all intents and purposes like retail cafes, will pollute and diminish the brand integrity of both businesses.

b. There are legal implications involved with the dilution of my registered Trademarks related to "BLACKSTAR" (as you are already aware given the objection raised by IP Australia). There are various legal problems such as the service of coffee related products and beverages under the name "BLACKSTAR". Also your use of the "BLACKSTAR PASTRY" trademark is deceptively similar to my BLACKSTAR COFFEE trademark.

1. After noting that he would do "what is necessary . . . to protect the name and its undiluted use", Mr Richards identified two possible options in relation to the use of "Blackstar".
   1. Your company procure (through agreement with me as owner) the rights and use of the name "BLACKSTAR" and the logo, as a Trademark in all relevant classes.
   2. Your company continues to retail and serve coffee (without procuring the Trademark) but ceases to use the name BLACKSTAR at your outlets (signage, menus, website etc) and you cease referring to any of your outlets serving coffee as "BLACKSTAR".
2. Mr Richards suggested a further meeting on 11 or 12 February 2019, but no further meeting took place. Instead, Mr Richards, on 27 February 2019 filed notices of intention to oppose BSP's applications to register the BSP011 and BSP012 trade marks.
3. On 4 January 2022 a delegate of the Registrar of Trade Marks (Registrar) made a decision which in part upheld the grounds of opposition on which Mr Richards relied, but decided that the applications in relation to the BSP011 and BSP012 trade marks may proceed to registration, subject to BSP removing from the class 43 services in each of the BSP011 and BSP012 trade marks the words "restaurant, café, hospitality services, [and] take away food services", and excluding from the class 35 services "specialty coffee retailing services".[91] The BSP011 and BSP012 trade marks were registered on 2 March and 24 February 2022 respectively, both with a priority date of 18 September 2018. It would be useful to reproduce the classes of goods and services for which each of the BSP011 and BSP012 trade marks were registered, noting the amendments that had been made to the classes of goods and services in respect of which BSP originally applied to register the trade marks.

BSP011 trade mark:[92]

Class 16

Absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging

Class 35

Retail services (by any means), other than specialty coffee retailing services

Class 43

Restaurants; cafes; hospitality services; take away food services

BSP012 trade mark:[93]

Class 16

Recipes (printed matter); photographs; absorbent paper or plastic for foodstuff packaging; articles made of cardboard for packaging; articles of paper for packaging; articles of plastic for use in packaging; bags made of paper for packaging; bags made of plastic for packaging

Class 30

Bakery products; foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries

Class 35

Retail services (by any means), other than specialty coffee retailing services

Class 43

Bakery services; providing food; restaurants; cafés; hospitality services; take away food services

Events leading to the commencement of proceeding

1. In December 2022 and January 2023 Mr Richards attended BSP cafés "with a view to collecting evidence which showed whether BSP was using the [BSP012 and BSP011 trade marks] for specialty coffee services . . . and in relation to goods for which [the Blackstar trade marks] are registered or to determine whether BSP offered and sold goods and/or services which were of the same description or closely related to the goods for which the [Blackstar trade marks] are registered".[94]
2. In her affidavit, Ms Makiv says that BSP "no longer uses the" BSP012 or BSP202 trade marks.[95] That means that BSP continues to use the BSP011 trade mark. BSP also continues to use the NEW BSP Logo.

IS THE BLACKSTAR 976 TRADE MARK LIABLE TO BE CANCELLED?

1. In its cross-claim BSP alleges that, by applying for the registration of the Blackstar 976 trade mark in his name only, Mr Richards claimed to be the sole owner of the trade mark; but Mr Richards was not the sole owner of the Blackstar 976 trade mark. For that reason, Mr Richards "was not entitled to apply, solely in his own name, for registration" of the Blackstar 976 trade mark pursuant to s 27(1) of the TM Act. Given those premises, and s 58 and 88(2)(a) of the TM Act, the Blackstar 976 trade mark should be cancelled pursuant to s 88(1) of the TM Act.
2. In its written submissions, BSP submits that the application for registration of the Blackstar 976 trade mark "could not have been made in [Mr Richards's] name only"; and that is because Mr Richards was not "the owner" of the Blackstar 976 trade mark, given it was a mark in which Mr Richards had a "joint ownership interest with Ms Andrews". BSP further submits that, as a mark with joint ownership interests, the application for the registration of the Blackstar 976 trade mark needed to be made under s 28 of the TM Act, naming both Mr Richards and Ms Andrews as applicants, not just Mr Richards.[96] In support of its submission that Mr Richards was the joint owner of the Blackstar 976 trade mark, BSP principally relies on admissions Mr Richards makes in his defence to BSP's cross claim.[97] In particular, BSP relies on Mr Richards's admission that he "was not the sole owner" of the Blackstar 976 trade mark;[98] Mr Richards was an owner of the Blackstar 976 trade mark together with Ms Andrews;[99] and Mr Richards and Ms Andrews together authored to use and did subsequently use the Blackstar 976 trade mark for the development of coffee and coffee related products through the Blackstar Coffee Business.[100]
3. In his defence to BSP's cross-claim, Mr Richards alleges he was entitled to apply for the registration of the Blackstar 976 trade mark on his own behalf as an owner of the Blackstar 976 trade mark, and on behalf of Ms Andrews, the other owner, or as trustee of Ms Andrews's beneficial interest in the Blackstar 976 trade mark.

1. Paragraph (a) of s 88(1) of the TM Act provides that, subject to s 88(2) and s 89, a "prescribed court, may on the application of an aggrieved person or the Registrar, order that the Register be rectified by . . . cancelling the registration of the trade mark". "Prescribed court" is defined in s 6 to mean a court that is under s 190 a prescribed court for the purposes of the TM Act. Section 190 includes as a prescribed court the Federal Circuit and Family Court of Australia (Division 2). The expression "aggrieved person" is not defined, but, as noted by BSP in its closing written submissions,[101] it has been construed to include at least three classes of persons: persons who are trade rivals of the persons who are the owners of registered trade marks;[102] persons who themselves rely on the use of the trade mark in question as a defence to a claim for infringement;[103] and persons who have been sued on the basis of the registration of the trade mark such persons are applying to have cancelled.[104] There is no question that BSP is an "aggrieved person" within the meaning of s 88(2).
2. Subsection 88(2) of the TM Act specifies the grounds on which an application may be made pursuant to s 88(1). These include the grounds specified in s 88(2)(a), being "any of the grounds on which the registration of the trade mark could have been opposed under this Act". That directs attention to Div 2 of Part 5 of the TM Act, which is headed "Grounds for opposing registration". Relevant to BSP's cross-claim is s 58, which provides that the "registration of the trade mark may be opposed on the ground that the applicant is not the owner of the trade mark".
3. Although s 58 provides as a ground for opposing an application for the registration of a trade mark that the applicant is not the owner of the trade mark, the TM Act does not require that a person who applies for the registration of demonstrate that he or she is the owner of the trade mark. Paragraph (a) of s 27(1) of the TM Act only requires that the person who applies for the registration of a trade claim that he or she is the owner of the trade mark. Further, although s 28 of the TM Act concerns applications for the registration of a trade mark in which two or more people have an interest, that section does not require that persons who hold such interest together apply for the registration of the trade mark. That is apparent from the text of s 28, which provides that such persons may together apply for its registration under s 27(1) of the TM Act (emphasis added):

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

(a) on behalf of all of them; or

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

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

1. There is another observation that may be made: s 28 of the TM Act does not capture all the circumstances in which two or more persons may have an interest in a trade mark. It is conceivable that one of two or more persons who hold an interest in the trade mark may be entitled to use the trade mark without having to do so on behalf of all of the other persons. That entitlement may arise from an express agreement; or it may arise from some other way, for example, the applicant's holding his or her interest in the trade mark on trust for one or more other persons which authorise the trustee to use the trade mark as the trustee sees fit, subject to the terms of the trust to which the trade mark is subject. It is also conceivable that one of two or more persons interested in the trade mark may be entitled to use the trade mark in relation to goods or services with which all of the persons with an interest in the trade mark them are not concerned. Thus, two or more persons who have an interest in a trade mark who do not fall within the circumstances specified by s 28 of the TM Act would not be permitted by that section to apply together for the registration of the trade mark.
2. The scheme of the TM Act, therefore, is only to require a person who applies for the registration of a trade mark to claim that he or she is the owner of the trade mark, but to leave it up to a person who disputes the claim to initiate the dispute, either by invoking the administrative mechanism provided for by s 58 of the TM Act before the trade mark is registered, or by invoking the jurisdiction of a prescribed court pursuant to s 88(1) of the TM Act, after the trade mark has been registered. That suggests, and in any event it has been held, that the onus lies on the person who disputes an applicant's claim that he or she is the owner of the trade mark that the applicant was not the owner of the trade mark the time he or she applied for its registration.[105]
3. Next, it is necessary to consider the meaning of the expression "the owner of a trade mark". The meaning of that expression is based on the meaning judges have given to the expression "the proprietor of a trade mark" that was used in earlier trade mark legislation, beginning with the Trade Mark Registration Acts 1875-1877 (UK). Initially there was doubt about whether those Acts "did no more than provide for the registration of marks already distinctive by reason of use and, as such, protected at common law, or whether it enabled a person who had coined a trade mark to obtain registration and treat the registration as equivalent to prior use".[106] That doubt was resolved in In re Hudgson's Trade-Marks, where Cotton LJ said:[107]

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

1. In Shell Company of Australia Ltd v Rohm and Haas Company, Dixon J reviewed the course of legislation and decisions in relation to the use and meaning of the expression "proprietor of a trade mark", and provided the following influential statement of what that expression means:[108]

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

1. Dixon J went on to explain the notion of "authorship" as follows:[109]

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

1. His Honour noted that this notion authorship was "well brought out" by the Victorian case of In re Hicks Trade Mark,[110] and Dixon J reproduced the following passage of what Holroyd J said in the course of argument in Hicks:[111]

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

1. Dixon J also reproduced the following passage from the judgment of Holroyd J:[112]

For the reasons given by us in the course of the argument, we think this application to expunge Hicks's name from the register of trade marks as the proprietor of the word 'Empress' as a trade mark applied to stoves ought to be granted. In order to substantiate his application to be placed on the register for this word he must have claimed to be the proprietor, and the word 'proprietor' must be taken to mean the person entitled to the exclusive use of that name. If there is anyone else who would be interfered with by the registration of the word 'Empress' in the exercise of a right which such person has already acquired to use the same word in application to the same kind of thing, then Hicks ought not to have been put on the register for that trade mark, and his name will be properly removed on the application of the person whose right of user was thereby disturbed.

1. The judgment of Dixon J in Shell, and his Honour's reference to Hicks, suggests that the notion of "proprietor" of a trade mark and, therefore, "owner" of a trade mark for the purposes of s 58 of the TM Act, is directed to whether some person other than the person claiming to be the owner of the trade mark used the trade mark before the person claiming to be the owner of the trade mark applied for its registration. That is the notion to which "the owner" in s 58 of the TM Act is directed is supported by the following passage from the judgment of the Full Federal Court Food Channel Network Pty Ltd v Television Food Network GP:[113]

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

The first user is the person entitled to claim to be the owner and if the applicant is shown not to be the first user, the ground of opposition will be established.

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

1. BSP claims that being one of two joint owners, Mr Richards was not entitled to apply for the registration of the Blackstar 976 trade mark in his name alone, but was only entitled to apply for the registration of that trade mark together with Ms Andrews. That, however, does not address the question that arises on an application to cancel the registration of a trade mark on the ground specified in s 58 of the TM Act; the question is whether the person who applied for the registration of a trade mark, in this case, Mr Richards, was not the owner of the trade mark at the time the person applied for its registration.
2. That being the question, and given the matters it alleges in its cross-claim and in its written submissions, BSP's case is that Mr Richards was not the owner of the Blackstar 976 trade mark at the time he applied for its registration because he was a joint owner of the Blackstar 976 trade mark, but only he, not Mr Richards and Ms Andrews, applied for its registration. BSP does not, however, explain how that translates into Mr Richards being an "applicant who is not the owner of the [976] trade mark" within the meaning of s 58 of the TM Act. Perhaps one way is to read "applicant" in s 58 to mean "applicants", so that s 58 will be made out if the applicants are not both the owners of the trade mark they have applied to be registered. Even if s 58 is so read, it could not be applied to the circumstances of Mr Richards's application for the registration of the Blackstar 976 trade mark, because only Mr Richards applied for its registration. Thus there were not two applicants of whom it could be said they both were not the owners of the Blackstar 976 trade mark at the time Mr Richards applied to have it registered.
3. Perhaps BSP implicitly submits that s 58 of the TM Act is to be construed to mean "the applicant is not the owner of the trade mark or, where there is more than one owner, the applicant is not the only owner of the trade mark". Apart from the general impermissibility of adding text to construe statutory provisions,[114] such a construction of s 58 would be inconsistent with s 28 of the TM Act in two ways. As I have already noted, s 28 does not require that two or more persons interested in a trade mark in the circumstances stated in that section must together apply for the registration of the trade mark; it provides that such two or more persons may together apply for the registration of the trade mark. Second, and as I have also noted, s 28 of the TM Act does not capture all the circumstances in which two or more persons may have an interest in a trade mark. If s 58 is construed to mean "the applicant is not the owner of the trade mark or, where there is more than one owner, the applicant is not the only owner of the trade mark", it would effectively prevent two or more persons who have an interest in a trade mark, but who do not fall within the circumstances provided in s 28, from being able to register the trade mark.
4. How, then, should the expression "the owner of the trade mark" in s 58 of the TM Act be construed where two or more persons have some interest in the trade mark? The simplest and most appealing construction is that "the owner of the trade mark" means a person who has used or has the ability to use the trade mark, with or without the authority of any other person who has an interest in the trade mark. This construction would leave open for inquiry, if another person so alleges, whether a person who is not the applicant for the registration of the trade mark has used the trade mark and, if so, whether that person was entitled to do so without the authority of, and otherwise without acting in concert with, the applicant. If the second question is answered in the affirmative, the applicant for the trade mark will not be the owner of it for the purposes of s 58 of the TM Act. It would also leave open for enquiry, if another party so alleges, whether there is another person who has an interest in the trade mark and, if so, whether that other person did not intend to use the trade mark with the applicant for registration. Again, if the second question is answered in the affirmative, the applicant for registration would not be the owner of the trade mark for the purposes of s 58 of the TM Act.
5. BSP's cross-claim appears to be premised on another assumption, namely, that two or more joint owners of a trade mark cannot each be "the owner of the trade mark". That assumption may overlook the nature of the interest joint tenants hold in the property of which they are joint tenants. The interest of joint tenants of property has been summarised as follows:[115]

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

1. Thus, if Mr Richards was the joint owner of the Blackstar 976 trade mark with Ms Andrews, each of Mr Richards and Ms Andrews was the owner of it. It is, of course, the case that a joint owner's interest as the owner of the trade mark could be severed if the joint owner purported to deal with the trade mark without the consent of the other joint owner. BSP does not allege, however, that Mr Richards applied for the registration of the Blackstar trade mark without the consent of Ms Andrews. If it were necessary to make any such finding, the evidence would not support such finding; on the contrary it would support a finding that Mr Richards applied for the registration of the Blackstar 976 trade mark with the consent of Ms Andrews.
2. Another incident of joint ownership of personal property, at least where the personal property is a chose in possession, is that the joint owners may agree that one of them would have possession of the property, with the consequence that the joint owner in possession could, in his or her own name, maintain an action in detinue.[116] That is a basis for concluding that the joint owners or any personal property, tangible or intangible, could agree that one of them could deal with the property solely in his or her own name. If that principle is correct, the onus would be on BSP to show that Mr Richards registered the Blackstar 976 trade mark in his own name without the agreement of Ms Andrews. BSP has not alleged or sought to prove any such thing. In any event, as I have already noted, the evidence would support a finding that Mr Richards applied for the registration of the Blackstar 976 trade mark with the authority of Ms Andrews.
3. I am not satisfied that Mr Richards was not the owner of the Blackstar 976 trade mark within the meaning of s 58 of the TM Act. BSP's cross-claim, therefore, fails. On the contrary I am satisfied that Mr Richards was entitled to apply for the registration of the Blackstar 976 trade mark in his own name; and he was so because he was the joint owner of the Blackstar 976 trade mark, and Ms Andrews consented to his applying for the registration of the Blackstar 976 trade mark in his own name.

1. To establish the Infringement Claims based on s 120(1) of the TM Act, Mr Richards must:[117]

(a) identify the goods and services BSP supplies or promotes in the course of the BSP Business (which at the beginning of these reasons I identified as the BSP goods or the BSP services);

(b) prove that one or more of the BSP goods or services fall within the meaning of the words that describe the goods or services in respect of which the Blackstar trade marks are registered;

(c) prove that BSP has used any one or more of the BSP trade marks in relation to the BSP goods or services identified pursuant to (b), and that it used those marks as a trade mark; and

(d) prove that one or more of the BSP trade marks is or are substantially identical with, or deceptively similar to, either or both of the Blackstar trade marks.

Goods and services BSP supplies in the course of the BSP Business

1. I have set out earlier in these reasons the general nature of the BSP Business. In this section of my reasons I will identify the evidence that is relevant to identifying the goods and services BSP supplies in the course of that business; and then make findings on the basis of that evidence.

1. As I have already noted, Ms Makiv is the chief executive officer of the JKLP Group of companies, the owner and operator of BSP; and I have reproduced earlier in these reasons Ms Makiv's general description of the BSP Business. Ms Makiv, however, has also given other evidence about the BSP Business.

1. The core business of the BSP Business is "specialty bakery", having large production facilities in Melbourne and Sydney. All baked goods, including cakes, biscuits, and other pastries, are made fresh daily, and distributed to BSP's stores each morning. The Strawberry Watermelon Cake is the core product. BSP produces on average over 400,000 slices of its other cakes, which is roughly half of the Strawberry Watermelon Cake production.[118]

1. BSP has sold coffee in its stores using beans supplied by other companies. When JKLP acquired the business, and until around 2019, BSP sold coffee using coffee beans supplied by The Little Marionette. Ms Makiv exhibits to her affidavit what she describes as "images of The Little Marionette".[119] The images depict boxes and packages of coffee having the name "The Little Marionette". In November 2021, in its St Kilda store, BSP started to use coffee beans supplied by ST. ALi; and since June 2021 BSP sells coffee from all of its stores using beans supplied by ST. ALi.[120] Ms Makiv annexes to her affidavit images of ST. ALi coffee machines at BSP's Chadstone store.[121] Ms Makiv says she likened BSP's current collaboration with ST. ALi "to a retail concession, which is like a store within a store".[122]
2. In her affidavit Ms Makiv refers to a presentation Mr Meates, an operations manager for BSP NSW, prepared and which was attached to an email he sent to Mr Li and Ms Makiv on 16 March 2021.[123] The document that is attached to the email is headed "Black Star Pastry Coffee Program 2.0" (BSP Coffee Program); and addresses the question of whether BSP should change coffee roasters. [REDACTED]
3. In her affidavit Ms Makiv gives the following evidence about BSP's decision to change its coffee bean supplier, and in relation to the BSP Coffee Program:[124]

ln about early 2021, BSP considered changing its supplier of coffee in NSW. I understood from discussions with Louis that his favourite coffee was ST. Ali and he saw an opportunity to collaborate with a likeminded brand who focused on mastery and quality in its specialist field. ST. ALi's strong brand presence with a large Instagram following was very appealing as it presented a great opportunity for both brands to collaborate using their strong social media followings. BSP's purpose in selecting ST. Ali as a single supplier was also to:

(a) control quality and consistency across both states;

(b) ensure the best price available for the highest quality;

(c) ensure consistency in equipment across all states with a unified national training system.

As a professional development opportunity for him, Louis and I requested Michael Meates, an Operations Manager for BSP NSW, put together a presentation analysing the proposals from potential new coffee suppliers in NSW. CONFIDENTIAL Annexure EJM-3 Pages 505-514 is this presentation from March 2021. Although this document was prepared by Mr Meates, Louis and I had already decided to accept ST. Ali's proposal before the presentation was made to us. This document did not form part of our decision making process. I am not aware of the basis for Michael's projections in the presentation.

1. Counsel for Mr Richards asked Ms Makiv questions about the BSP Coffee Program; but the cross-examination did not go beyond asking Ms Makiv to acknowledge the sections of the document to which counsel drew Ms Makiv's attention; and counsel did not otherwise challenge any part of the evidence Ms Makiv gave in her affidavit. Ms Makiv's evidence, however, is expressed in general terms.

(a) Ms Makiv refers to "proposals from potential new coffee suppliers in NSW", which implies that BSP invited proposals from a number of coffee makers, but Ms Makiv does not say anything about why or when BSP invited such proposals, or how such invitations were made; and Ms Makiv does not identify when BSP received the proposals or whether the proposals were in writing.

(b) Ms Makiv's saying that she and Mr Li accepted ST. ALi's proposal before Mr Meates made his presentation implies that, in so deciding, she and Mr Li decided not to accept other proposals; but Ms Makiv does not say that she and Mr Li accepted ST. ALi's proposal over the other proposals, and therefore, does not explain why BSP decided to choose ST. ALi rather than one of the other coffee makers.

(c) Although Ms Makiv says that the BSP Coffee Program "did not form part of our decision making process", she does not say that matters of the sort Mr Meates identified in the BSP Coffee Program as being relevant to determining which coffee suppliers BSP should accept were not matters that she or Mr Li considered in deciding to accept ST. ALi's proposal. For example, Ms Makiv does not say that BSP's ability to cobrand with ST. ALi was a factor in favour of BSP deciding to use ST. ALi coffee and if so, what she understood by "cobranding", or how "cobranding" would financially or otherwise benefit BSP.

(d) Ms Makiv does not say that in determining whether in accepting ST. ALi's proposal over other proposals, BSP applied any financial criteria, such as expected direct revenues to BSP from the sale of coffee or coffee beverages expected financial benefits to BSP that may indirectly arise from the sale of coffee beverages and coffee, as in the availability of quality coffee increasing the probability of sales of cakes and pastry products.

(e) Ms Makiv does not say when she and Mr Li decided to accept ST. ALi's proposal.

(a) BSP does not sell "Black Star Pastry" branded coffee products, although it does sell ST. ALi branded coffee beans.[125]

(b) BSP started selling coffee drinks using beans supplied by ST. ALi using coffee cups with images of "Black" the hedgehog, being part of the rebranding BSP launched in December 2021.[126]

(c) During the time the Shanghai store was open from January 2021 to March 2023, BSP used the name "Black Star Pastry" on packaging of coffee and coffee products in its Shanghai store, "consistent with its rights to use those trade marks in China".

1. Ms Makiv does not address evidence Mr Richards gives to which I refer below of photographs of bags of coffee which appear to have the ST. ALi name on them, but most of the name is covered by packaging that includes either the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo. An example is the following photograph from the Chadstone BSP store.[127]

1. Ms Makiv says that BSP has invested significant amounts of money to promote BSP bakeries. BSP has never bid on coffee or café terms; BSP has focused on promoting cake.[128] BSP prepares internal monthly reports that set out its highlights for the month in addition to data on its marketing approaches, including commercial, organic social, and paid social results, Data Sauce Dashboard, Google Traffic, and marketing activity for the following month. Ms Makiv annexed a confidential document titled "Black Star Pastry Marketing Dashboard February".[129] Although the content of BSP's marketing has always focused on the Strawberry Watermelon Cake there is an increasing focus on promoting other specialty cakes and pastries.[130] Only about 1% of the amount BSP spends on marketing goes towards promoting coffee; and the marketing BSP undertakes in relation to coffee includes designing and printing loyalty cards (which can be used for all drinks) for all stores; and photos of coffee or coffee related photos for social media, or an in-store digital or printed poster, but with coffee, for the most part, being included as background to the photo where "the cake or pastry is the hero".[131]

1. Ms Makiv also gives evidence about the revenues BSP has generated in 2023 from its various products, and the average price of products it sold in that year, including regular and large coffees. The evidence reveals that the proportion of revenues BSP derived from the sale of coffee compared with the revenues it derived from other products is relatively small.

Evidence Ms Makiv gave under cross-examination

1. In evidence given under cross-examination,[132] Ms Makiv was taken to an advertisement BSP had published for the position of "Barista/Front of House All-Rounder".[133] The advertisement appears on the web page "blackstarpastry.com/pages/career"; and it includes the following:

About the Role

Black Star Pastry is going from strength to strength and we are looking for a new team members [sic] for our beautiful St Kilda store located in the iconic Prince of Wales precinct.

This gorgeous space offers the full-range of Black Star Pastry's signature cakes, together with savoury offerings, and first class coffee from our partner St Ali.

We are on the look for a full-time and casual Barista/Front-of-House All Rounder to become valued members of the team.

This role will be assisting making coffee as well as serving our customers. We are looking for a people focused person who loves working in a team and delivering the best experience to our guests.

1. Ms Makiv said gave the following evidence:[134]

Yes. So you would associate specialty coffee with superior quality coffee? - Correct.

And you believe that ST. ALi provides superior quality coffee beans? - Yes.

And you believe that your baristas provide the quality service to convert those beans into a good quality coffee?‑‑‑Yes.

1. Ms Makiv was also taken to a number of photographs of BSP stores; but the evidence she gave went no further than confirming the identity of the stores the photographs purported to depict.

1. In his affidavit made on 9 May 2023 Mr Richards gives extensive evidence of his observations of a number of BSP stores he visited; and he supported his observations with a number of photographs.

1. Mr Richards attended the Rosebery BSP store between 9.50 am and 11.05 am on 13 December 2022.
2. There is a photograph of the entrance to the store. It has two large glass doors, the right door (facing from the street) being hinged on a brick wall. The brick wall has the words "Black Star Pastry". On the left side of the door there is a glass wall that has the "Star boy" logo on it, as follows:[135]

1. Second, there are photographs of a menu board, two of which are as follows:[136]

1. Third, there are photographs of staff members. One is at a point of sale behind which part of the menu board is depicted. The staff member is wearing a uniform, at the neckline of which appear the words "Black Star Pastry". The other staff member is behind a counter on which there is situated a coffee machine, milk, and milk substitutes. [137]

1. Mr Richards says that between 10.25 am and 10.55 am he recorded 17 orders for coffee beverages, ten of which were for coffee only, three for coffee together with a cake or savoury food, and four orders for cake or salad without any coffee.[138]

1. Mr Richards attended the Moore Park BSP store from 11.29 am to 12.40 pm on 13 December 2022.[139]
2. There are photographs of the exterior of the store. It has glass walls on which the words "BLACK STAR PASTRY" appear:[140]

1. There is the following photograph of a shelf on which there is coffee and coffee cups, some for take away, and the others for use at the store; and in the background there is a person making coffee:[141]

1. There are also photographs of employees at the point of sale:[142]

1. The employees are wearing uniforms. One of them is wearing an apron with the words "Black Star Pastry" prominently displayed.

1. The store consists of what Mr Richards describes as an "island service counter and customer seating". On the customer seating there appear the words "BLACK STAR PASTRY" on a vertical sign, as depicted in the following photographs:[143]

1. At the service counter, along the main menu, there are the words "BLACK STAR PASTRY". The first item of "coffee" underneath of which there are a number of options, these being large decaf, Xtra Shot, Alt Milk options, Cold Brew, Latter, and Watermelon latte:[144]

1. The following is a photograph of the store as seen from the point of sale:[145]

1. The Newtown BSP store is contained in a building, on the left of the entrance of which there appear the words "BLACK STAR PASTRY", as follows:[146]

1. Below are photographs of a coffee machine and a staff member making coffee.[147]

1. Finally there is a menu board as follows:[148]

1. It is difficult to obtain from the photographs a precise sense of the type of store the Chadstone store is. Mr Richards describes it as a kiosk, on which the words "BLACK STAR PASTRY" are displayed. The following is a photograph of two employees near coffee machines:[149]

1. The following is an image of what Mr Richards calls the "the storage area behind the central counter".[150]

1. The photograph depicts a black back with a green sticker that has been placed over what appear to be the words ST. ALi. The green sticker contains the words "KABUFA - PAPUA NEW GUINEA WASHED".
2. Mr Richards says that, written "at the BSP Chadstone location was the following notice to the BSP public/customers":

Numerous retail coffee on display. Including BSP's own blend "Milky Way" and their new blend "Stardust".

1. There is no photograph of this notice in evidence; but there are photographs of packages which appear to contain the "Milky Way" and the "Stardust" blends:[151]

1. Mr Richards says that from approximately 12.07 pm to 1.04 pm on 28 February 2023 he observed a total of 15 orders, 12 of which were for coffee only, and 3 orders for cakes or pastry only.[152]

1. Mr Richards attended the St Kilda BSP store from around 9.08 am and 10.25 am on 4 March 2023.[153]
2. At the entrance the words "BLACK STAR PASTRY" are exhibited:[154]

1. Located at the curb in the public space outside the St Kilda BSP store was an A-frame sign stating: "Hello! Come on in Brekky Coffee Cakes Pastries ...More Black Star Pastry" as follows:[155]

1. There are photographs of persons wearing BSP uniforms holding cups of coffee to be served to customers; and there are the following photographs of the BSP store.[156]

1. BSP submits that the evidence Mr Richards gave, and in particular the photographs he took, of the BSP stores he visited was selective, and therefore "does not provide the Court with a proper and objective view of the nature of the business conducted by BSP at those stores".[157] BSP provides the following examples, based on the evidence Mr Richards gave under cross-examination:[158]

By way of non-limiting examples, in his evidence, Mr Richards did not take any photographs of the large cake and pastry display area at the Rosebery store, his photograph of the menu at the Rosebery store was incomplete, he did not mention in his affidavit the presence of "ST ALI" above the coffee listed on the menu at the Rosebery store, he did not include any photographs of the publicly viewable production area at the Moore Park store (which Mr Thé later observed was a stipulation under the lease so that BSP's production was "visible to the public as a draw card to [the] site"), he sought to diminish the prominence of the cake display cabinet at the Moore Park store, he did not take any photographs at the Sydney CBD store which displayed the full pastry display cabinet at the front of the store, he inaccurately described in his first affidavit the menu at the new Newtown store by suggesting "the menu clearly displays the words BLACK STAR PASTRY on the top of the menu, followed by the title "COFFEE"", and the photographs of the Chadstone store he annexed to his affidavit did not include any images showing the store from a distance, nor any photographs showing the prominent pastry display cabinet at the front of the store. cabinet at the front of the store, he inaccurately described in his first affidavit the menu at the new Newtown store by suggesting "the menu clearly displays the words BLACK STAR PASTRY on the top of the menu, followed by the title "COFFEE"", and the photographs of the Chadstone store he annexed to his affidavit did not include any images showing the store from a distance, nor any photographs showing the prominent pastry display cabinet at the front of the store.

1. BSP also relies on the evidence Mr Richards gave under cross-examination that is reproduced at paragraphs 17 and 18 of the BSP's closing submissions, and in particular, Mr Richards's evidence that he "was focused on the coffee aspects, that's all".
2. Mr Richards's having focused on the coffee aspects of the BSP stores does not count against giving weight to the photographs Mr Richards took of the various BSP stores he visited. Mr Richards's case is that BSP has used the BSP trade marks in the course of selling and promoting goods in respect of which the Blackstar trade marks are registered, those goods being (among other things) "beverages made from coffee", "coffee", "coffee beans", and "ground coffee"; and that BSP has been providing services that are closely related to the goods in respect of which the Blackstar trade marks are registered, those services being "café services" or "specialty coffee retailing services". BSP does not submit that the photographs Mr Richards took do not accurately depict what they purport to depict, namely, the existence within each BSP store of coffee making equipment, persons making coffee, persons serving coffee, and packets of coffee available for sale.

1. The statement of claim alleges BSP has been advertising, promoting, and offering for sale what it describes as the "Applicant's goods", although the statement of claim does not define that expression. The statement of claim, however, identifies the products as coffee, coffee-based products, and the provision of café services and specialty coffee retailing services.[159] In its defence BSP admits it has offered for sale and sold coffee, but otherwise denies it provides café services and specialty coffee retailing services.
2. The evidence, and in particular the photographs Mr Richards took of the BSP stores, reveals that which BSP admits in its defence: BSP sells a number of classes of goods, and provides a number of services in connection with the sale of those goods at its stores. BSP sells cakes and pastries; it sells coffee beverages and other beverages; it sells coffee in packages, some of which bear the name "ST. ALi", and some of which are covered by packaging that includes either the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo; BSP provides the service of making coffee (and other) beverages on order for immediate consumption; and it provides space and facilities at and by which customers may sit down, have served to them, and consume coffee (and other) beverages, and products they have purchased from in or around the same space.

Has BSP used the BSP trade marks and New BSP Logo in relation to the goods in respect of which the Blackstar trade marks are registered?[160]

1. In his opening written submissions, Mr Richards submits that BSP has used the BSP trade marks and the New BSP logo as a badge of origin in relation to goods and services in respect of which the Blackstar trade marks are registered.[161] In his oral opening, counsel for Mr Richards referred to the baristas and persons serving coffee in the BSP stores wearing a BSP uniform. In his closing written submissions counsel for Mr Richards submits that BSP uses the BSP trade marks and New BSP Logo in relation to coffee and coffee based products through the skill of its baristas, and BSP's equipment, such as grinders, coffee machines, and cold drip processes.[162] Mr Richards also relies on photographs showing BSP stores, and employees of BSP wearing the BSP uniform.[163] Counsel for Mr Richards repeated the substance of these submissions in closing address.
2. BSP submits as follows:

(a) A distinction needs to be drawn between the sale of coffee as a "good", and the provision of coffee to customers as a "service".[164]

(b) There is no principle of general application in Australian trade mark law that use of a mark in relation to services for goods is use in relation to the goods themselves.[165]

(c) The distinction between claims for foods or beverages as "goods", and claims for restaurants or outlets which supply meals or refreshments has been observed in several cases. BSP refers to the judgment of Spender J in Winton Shire Council v Lomas, where his Honour said he was "not satisfied that the operational outlets for the supply and provision of meals and refreshments should be considered as 'closely related' to the Registered Goods, namely beverages".[166] BSP also refers to the following passage from the judgment of Kennett J in Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods:[167]

[A]lthough a "restaurant" or "fast food outlet" is highly likely to use at least some of the products in relation to which the Aachi mark is registered in the preparation of its offerings (eg "meat, fish, poultry and game"; "dairy products"; "edible oils"; "spices"), I do not think it follows that those goods are "closely related" to the service of operating a restaurant. Nor do I consider that the goods and the services are "closely related" on the footing that specific subsets of the goods ("pickle"; "sauces") describes things that may be served in a restaurant.

(d) BSP further relies on the decision of a hearing officer in Sizzler Restaurants International Inc v Sabra International Ltd,[168] and of a delegate of the Registrar in The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd.[169]

(e) Mr Richards has not identified any particular conduct of BSP which he says constitutes use of any of the BSP trade marks "as a trade mark"; the mere fact that BSP has supplied coffee beverages is not enough.[170]

(f) There is no evidence BSP has used any of the BSP trade marks as a trade mark. BSP "is a specialty bakery business whose predominant goods are baked goods, including cakes, biscuits and other pastries". That remains the case, even though BSP sells or serves coffee beverages; and that is because "the evidence establishes that the service of coffee is and always has been ancillary to the sale of baked goods".[171]

(g) As was the case in Hoyts, BSP is not using the BSP marks as a trade mark in connection with "coffee" goods; to the extent it sells coffee beverages, these beverages are supplied for immediate drinking as part of a service.[172]

(h) BSP is not, and has never been, a coffee roaster. BSP's "current collaboration with ST. ALi is akin to a retail concession whereby consumers can experience ST. ALi coffee within a BSP store as an accompaniment to BSP's specialty cakes".[173] This submission is said to be supported by the evidence Mr Westlake, an expert Mr Richards called, gave, namely, that BSP "clearly reference their relationship, supply, sale and use of ST. ALi Coffee Roaster's".[174]

Determination in relation to BSP's use the BSP012 trade mark and New BSP Logo

1. The cases on which BSP relies were not concerned with whether the trade marks in question were used as trade marks; they were concerned with whether goods or services in relation to which trade marks were used or intended to be used were closely related to services or goods in respect of which trade marks had been or were intended to be registered. The question whether goods or services are closely related to services or goods in respect of which a trade mark is registered, is different from the question whether a trade mark is, or is intended to be used, as a trade mark; the former question assumes that a trade mark has been or is intended to be used as a trade mark in relation to a class of goods or services that are not registered goods or services, but which are said to be closely related to the registered goods or services.
2. Further, BSP's submissions rely on what is submits is the nature of the BSP Business as an answer to whether it uses as a trade mark the BSP trade marks in connection with the coffee beverages and coffee it sells. BSP submits that, given (as BSP contends) the evidence establishes that BSP is a specialty bakery business whose predominant goods are baked goods, where the sale and serving of coffee is ancillary to that business, it follows that BSP has not used any of the BSP trade marks as a trade mark in relation to the sale of coffee beverages or coffee. That submission, however, cannot be accepted; and that is because a business may use a trade mark as a trade mark in relation to all aspects of its business, the significant and the insignificant, the principal and the ancillary. And the fact that a substantial proportion of the sales or activities of a business is accounted for by one of a number of distinct goods or services the business supplies does not by itself imply that any trade mark the business uses is restricted to the supply of the goods or services that constitutes the substantial proportion of its sales or activities.
3. Moreover, BSP's submissions do not address the two questions that must be addressed to determine whether BSP has used any of the BSP trade marks as a trade mark in relation to, among other things, "coffee beverages", "coffee beans", and "ground coffee", being goods in respect of which the Blackstar 976 trade mark is registered. The first is whether BSP has used any of the BSP trade marks in relation to the sale of coffee beverages or coffee, these being goods I have found BSP sells, and which are goods in respect of which the Blackstar 976 trade mark and (in relation to coffee) the Blackstar 833 trade mark are registered. Assuming that question is answered in the affirmative, the second question is whether BSP has used any of those trade marks in relation to coffee beverages or coffee as a trade mark. Usually these questions are considered together, although they are distinct.
4. A trade mark is used in relation to goods when it is used "upon, or in physical or other relation to goods".[175] That includes using the trade mark, not only by applying the trade mark to goods, but by applying the trade mark to some other medium which is used in connection with the sale or promotion of the goods, such as labels, advertisements, and marketing material on a website.[176] A trade mark is used in relation to goods "as a trade mark" when it is used "as a 'badge of origin', in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods";[177] and the question whether a trade mark is used as a trade mark is to be "assessed objectively without reference to the subjective intentions of the user".[178] Given that the question whether a sign is used as a trade mark is a question about the purpose for which the sign is used, whether in any given case a trade mark has been used as a trade mark is to be determined by reference to the context in which the sign is used. Where the sign is a word, the context includes the "relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote".[179]
5. I turn to the use of the words "Black Star Pastry". The evidence reveals two uses. The most significant use is BSP's displaying, and prominently displaying, the words "Black Star Pastry" at or near each of BSP's stores. Persons are likely to notice the "Black Star Pastry" in one of two ways: they may first notice the words "Black Star Pastry", in which case they will cast their eyes towards the BSP store at or near which the words "Black Star Pastry" appear; or persons may first observe the BSP store at or near which the words "Black Star Pastry" appear, in which case they will then notice the words "Black Star Pastry". Either way, most persons are likely to observe both the words "Black Pastry Star", and the objects and activities that are contained or occur in the BSP store.
6. The objects in the BSP store persons will observe will include a menu or display board describing items that are available for sale, such as coffee and other beverages, cakes, and pastries, and the prices at which such items are available for sale; a point of sale; display cases containing cakes and pastries; coffee making machines; coffee cups; and tables with chairs or other objects on which persons may sit to consume items they purchase from the store. A closer look will reveal other items, such as packages which appear to contain ground coffee or coffee beans, and perhaps some merchandising. The activities in the BSP store a person will observe will include persons behind a counter or other point of sale taking orders for the supply of items that are included in the menu or display board, and in particular, cakes, pastries, and coffee beverages, and delivering these items across the counter; persons using a coffee machine to make coffee beverages; persons making non-coffee beverages; and, in some stores, persons serving to a place where persons who have ordered cakes, pastries or coffee or other beverages are seated.
7. Having observed the words "Black Star Pastry", and the activities that occur in the BSP store at or near which the words are displayed, most persons would conclude that the goods or services provided in or around the BSP store are provided by the person or entity who arranged to display "Black Star Pastry" at or near the store. The basis of that conclusion are commonly understood facts, facts that premise the trade mark system: that most persons who supply or offer to supply goods or services seek to differentiate them from goods or services other persons supply or offer to supply; persons seek to do differentiate their goods or services by using a distinctive name or other distinctive mark in connection with the supply of the goods or services; and, where persons supply goods or services at particular place, they display the distinctive name or mark at or near the areas in which they supply their goods or services. In short, most persons who observe the words "Black Star Pastry" at or near a BSP store will understand that "Black Star Pastry" is a "badge of origin", in the sense that it indicates a connection in the course of trade between the goods and services supplied and provided in the BSP store, and the person or entity who arranged to display the words "Black Star Pastry" at or near the BSP store.
8. There is another point to note. Although the words "Black Star Pastry" include the word "Pastry", the display of all three words at or near the BSP store would not direct attention only to the pastries that are sold or are available for sale in the BSP store; the words would direct attention to all of the objects, and to all of the activities that occur, in the BSP store. It is that fact that would lead persons who read the words "Black Star Pastry", and who observe the activities within the BSP store, to conclude that the owner or entity who operates the BSP store has arranged to display the words "Black Star Pastry" at or near the BSP store to indicate a connection between all of the goods and services supplied and provided in the BSP store, and the person or entity who arranged to display the words "Black Star Pastry" at or near the BSP store.
9. The second use of the words "Black Star Pastry" the evidence reveals occurs is on the collar area of the uniform BSP's employees wear. The evidence shows that employees wear the same uniform in relation to the discharge of all of their functions. These include taking orders for pastries, coffee beverages, coffee, and other products; accepting payment for such orders; providing the pastries so ordered, making coffee (and other) beverages so ordered; and in some cases serving the pastries and coffee (and other) beverages to the persons who have ordered and paid or will pay for the pastries or beverages. The ordering, payment, delivery, and serving of pastries and coffee (and other) beverages involve a direct contact or transaction between a customer and an employee of BSP. On each such contact or transaction, the customer will likely notice that the employee is wearing a uniform, near the collar of which appear the words "Black Star Pastry". Most customers are likely immediately to conclude that the person or entity who employs the person wearing the uniform has decided to use the words "Black Star Pastry" to identify the goods and services that are the subject of the contact or transaction between the BSP employee and the customer. Further, even though the expression "Black Star Pastry" contains the word "Pastry", the activities of BSP employees who wear the unform that contains the words "Black Star Pastry" is not restricted to transactions or other activities involving pastries. They extend to the provision of all other goods and services, including making and serving coffee (and other) beverages, and selling coffee.
10. For these reasons, I am satisfied BSP has used the words "Black Star Pastry" in relation to coffee beverages; and BSP has used those words in relation to coffee beverages as a trade mark.
11. What of the coffee BSP sells? The evidence reveals that BSP sells or offers for sale packets of coffee that is made and packaged by ST. ALi, but over which BSP has placed packaging that includes either the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo (BSP branded coffee). What would consumers make of that? There are two things to note. First, the customer is likely to be aware of the name "Black Star Pastry", and its use to link the sale or supply of all goods and services sold and supplied in the BSP store with the person who arranged to display the words "Black Star Pastry". Second, there is no writing or other mark to indicate that the BSP branded coffee is supplied by a person or entity other than the person or entity who arranged to display the words "Black Star Pastry". In these circumstances, the BSP branded coffee would be among the goods and services in relation to which the display of the words "Black Star Pastry" at or near the BSP store would constitute a use; and customers would understand that BSP branded coffee would be among the goods in relation to which the owner or entity who operates the BSP store has arranged to display the words "Black Star Pastry" to indicate a connection between that person and entity and the goods and services sold or supplied by the BSP store.
12. For these reasons, I am satisfied that BSP has used the words "Black Star Pastry" in relation to coffee, being the BSP branded coffee; and BSP has used those words in relation to the BSP branded coffee as a trade mark.

Evidence of use of BSP202 and BSP011 trade marks?

1. Although it appears to be accepted that BSP has used the BSP202 and BSP011 trade marks, evidence of its use in the material before the Court is minimal. I am therefore unable to make any findings about the particular manner in which BSP has used those trade marks.

Are the BSP trade marks substantially identical with either of the Blackstar trade marks?

1. In determining whether the BSP012 and New BSP Logo are substantially identical with either of the Blackstar trade marks, it is necessary to compare the trade marks side by side, note their similarities and differences, and the importance of the similarities and differences having regard to the essential features of the Blackstar trade marks, and the total impression of resemblance or dissimilarity that emerges from the comparison.[180] "Substantial identity" requires "a total impression of similarity to emerge from a comparison between" the Blackstar trade marks, on the one hand, and the BSP012 trade mark and New BSP Logo, on the other.

Comparison of Blackstar 833 trade mark and BSP trade marks

1. A comparison of the Blackstar 833 trade mark with each of the BSP012 and New BSP Logo does not produce a total impression of similarity. The Blackstar 833 trade mark is a composite mark which contains a star, while the BSP012 trade mark and the New BSP Logo are each composed entirely of words. A comparison of the Blackstar 833 trade mark and each the BSP202 and BSP011 trade marks also does not produce a total impression of similarity. The BSP202 and BSP011 trade marks contain the words "Black Star" along with the word "Pastry", and the words appear in a logo that is very different from the star that forms part of the Blackstar 833 trade mark.

Comparison of Blackstar 976 trade mark and BSP trade marks

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

Are the BSP trade marks deceptively similar to either of the Blackstar trade marks?

1. BSP's use of any one or more of the BSP trade marks in relation to goods in respect of which the Blackstar trade marks are registered will constitute an infringement of either of the Blackstar trade marks if any of the BSP trade marks so nearly resemble either of the Blackstar trade marks that the resemblance is likely to cause confusion. [181] That will be the case if there is a "real, tangible danger of deception or confusion occurring"; and that, in turn, will be the case if a "notional buyer" of coffee beverages or coffee beans or ground coffee (these being goods in respect of which the Blackstar trade marks are registered) "would entertain a reasonable doubt as to whether, due to the resemblance between" the Blackstar trade marks, on the one hand, and the BSP trade marks, on the other, the coffee beverages and coffee each of Mr Richards and BSP supplies "come from the same source."[182] Put another way, there must be "a real likelihood that some people will wonder or be left in doubt about whether the two sets of products come from the same source".[183]
2. The deception or confusion must arise from the BSP trade marks resembling the Blackstar trade marks. Whether there is any resemblance between the Blackstar trade marks, on the one hand, and the BSP trade marks, on the other, and the extent and nature of the resemblance, is not to be determined by comparing side by side the Blackstar trade marks and the BSP trade marks; it is to be determined by comparing "the impression (allowing for imperfect recollection) that the notional buyer would have of" the Blackstar trade marks "(as notionally used on all of the goods covered by the registration), with the impression that the notional buyer would have of [the BSP trade marks] (as actually used)".[184] Moreover, reputation (or lack of reputation) of the registered trade mark "should not be taken into account when assessing deceptive similarity under s 120(1)".[185]

Resemblance of BSP trade marks with Blackstar 976 trade mark

1. There is a very strong resemblance between the BSP012 trade mark and the New BSP Logo, on the one hand, and the Blackstar 976 trade mark, on the other; and that resemblance lies in all marks containing two differently composed names, but both of which contain two syllables which, when uttered, convey the same sound, namely, "Blackstar" and "Black Star". It is the case, as BSP submits, that "Black Star Pastry" has the additional word "pastry"; but "pastry" is liable to register a significantly lesser impression on the reader than the words "Black Star" when read with "Black Star". "Black Star" is not a descriptive term and for that reason is more liable to attract attention and be remembered than "pastry", which is a descriptive term.
2. The resemblance between the Blackstar 976 trade mark and the BSP202 and BSP011 trade marks is not as strong as the resemblance between the Blackstar 976 trade mark, the BSP012 trade mark and New BSP Logo; and that is because each of the BSP202 and BSP011 trade marks contains features additional to the words "Black Star Pastry". The words are written in fancier letters than the letters that comprise the New BSP Logo; the three words are written in the order of top to bottom, rather than left to right; and the letters are contained in a box with a grey background. Notwithstanding these additional features, however, the words "Black Star" predominate, both visually (the letters in which the words are written appear to be larger than the letters with which the word "pastry" is written), and aurally.
3. BSP submits that "pastry" conveys the idea of pastries or baked goods, noting that it "is unlikely that consumers with an imperfect recollection would disregard or forget the presence of these words".[186] This submission appears to confuse which of the trade marks are required to be compared on the basis of a buyer's memory. The relevant trade mark that is to be compared on the basis of the buyer's memory is the registered trade mark that is alleged to have been infringed, in this case, the Blackstar 976 trade mark; and, moreover, whether a buyer would be deceived or confused must be determined by comparing the buyer's memory of the Blackstar 976 trade mark with the BSP trade marks as the BSP trade marks are in fact used in connection with coffee beverages, and coffee, being among the goods in respect to which the Blackstar 976 trade mark is registered. The relevant question is: would a person who buys a coffee beverage or coffee in relation to which any of the BSP trade marks have been used as a trade mark entertain a reasonable doubt as to whether the coffee beverages and coffee "come from the same source" as the coffee beverages in relation to which the Blackstar 976 trade mark has been used as a trade mark? Given the strong resemblance I have found exists between the Blackstar 976 trade mark and the BSP trade marks, that question is to be answered in the affirmative.
4. I am satisfied there is a real, tangible danger that, due to the resemblance between the Blackstar 976 trade mark, on the one hand, and each of the BSP trade marks, on the other, a notional buyer of a coffee beverage or coffee in relation to which the BSP trade marks have been used would entertain a reasonable doubt as to whether the coffee beverages and coffee each of Mr Richards and BSP supplies "come from the same source". The BSP trade marks, therefore, are deceptively similar to the Blackstar 976 trade mark.

Resemblance of BSP trade marks with Blackstar 833 trade mark

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

1. Subject to the defences on which BSP relies, Mr Richards has established the Infringement Claim based on s 120(1) of the TM Act.

1. In his statement of claim Mr Richards alleges that BSP used the BSP trade marks in providing café services and specialty coffee retailing services. The statement of claim does not allege these are services that are closely related with goods in respect to which the Blackstar trade marks are registered; but BSP has taken the statement of claim to so allege.
2. To succeed on his Infringement Claim based on s 120(2) of the TM Act Mr Richards must prove that:[187]

(a) BSP provides services that may properly be characterised as "café services" or "specialty coffee retailing services", or both;

(b) the services referred to in (a) are closely related to the sale of coffee beverages or coffee or both, being goods in respect of which the Blackstar 976 trade mark and the Blackstar 833 trade mark (in relation to coffee only) are registered;

(c) BSP has used one or more of the BSP trade marks in relation to the services referred to in (a); and

(d) one or more of the BSP trade marks is or are substantially identical with, or deceptively similar, to the either or both of the Blackstar trade marks.

1. "Café services" may be taken to mean services that are provided in cafes. The Macquarie Dictionary defines "café" as "a room or building where coffee and light refreshments are served", or a "restaurant, usually low priced"; and the Oxford English Dictionary defines "café" as a "coffee-house, a restaurant". "Café services" would therefore capture activities such as the preparation and serving of coffee and food. I have found that at its stores BSP provides the service of making coffee (and other) beverages on order for immediate consumption; and it provides space and facilities at and by which customers may sit down, have served to them, and consume, coffee beverages and other products they have purchased from in or around the same space. Given these matters, it would be open to find that BSP does provide café services.
2. Although BSP accepts that "café services" and "specialty coffee retailing services" are closely related to "coffee" goods in class 32, it submits that it does not provide "café services" "per se" or, to the extent it does, it submits that it provided such services as ancillary to the "bakery services" it provides.[188] BSP submits that it is necessary to consider the nature or character of the underlying business when defining what services are being provided by the business. The character of the services provided by a business will depend on the overall nature of the business conducted by that business.[189] BSP further submits that, when the overall nature of BSP's business is considered, it is apparent that the business is "properly characterised as a specialty bakery business"; and that the sale or servicing of coffee beverages "ought to be regarded as an integral but incidental part of operating the bakery business". BSP relies, among other things, on the background and experience of Mr Thé, the employment of staff with significant cake and pastry experience, the prominence with which BSP's cakes and pastries are displayed in-store, the fact that BSP's "hero product" is the Strawberry Watermelon Cake, and the operation of production kitchens to create baked goods.
3. BSP also relies on the Full Federal Court's judgment in MID Sydney Pty Ltd v Australian Tourism Co Ltd.[190] One question in that case was whether the services that were to be provided pursuant to a hotel management agreement (hotel management services) fell within the meaning of "property management services", being services in respect of which a trade mark was registered. The Full Federal Court answered that question in the negative, holding that hotel management services cannot ordinarily be described as "property management services":[191]

To elaborate on what might be thought an obvious proposition about the ordinary use of language is often not profitable. But the ordinary meaning of property management services - and this is supported by Mr Garnett's evidence about his own business activities - would not encompass the occupation of a property under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that property.

1. It was submitted in MID Sydney, however, that if, pursuant to the hotel management agreement, a hotel manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. The Full Federal Court did not accept that submission, not because the hotel manager would not be providing property management services, but because the provision of those services would be an integral, though relatively minor or incidental, part of the conduct of the hotel management business; and, for that reason, the hotel manager would not be using the word that formed part of the registered trade mark in relation to property management services:[192]

Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. If Touraust arranges tenancies for retail shops within an hotel and collects rent, it does not thereby provide property management services: those activities are not to be characterised as the provision of a separate service in relation to the property but simply as an integral, if relatively minor, part of operating the hotel. Nor, we think, does it help to identify a number of discrete aspects of the hotel business which, if carried on in other circumstances, might be characterised as the provision of property management services. In this context, each will take its character from the overall nature of the business which Touraust intends to conduct.

1. It will be seen that this part of MID Sydney concerned a particular question, namely, how to characterise a service or set of services (overlapping services) that fell within the denotation of two separately described services, namely, "property management services", and "hotel management services". The Full Federal Court in effect held that this question was to be determined by reference to two considerations. The first was the overall nature of the businesses in which the overlapping services were being provided or were intended to be provided. The second is, given the overall nature of the businesses, whether the overlapping services formed an integral, if relatively minor, part of one of the businesses. MID Sydney does not stand for any broader principle. In particular, it does not stand as authority for the proposition that, in determining whether a particular good or service a person provides falls within the meaning of a good or service in respect of which a trade mark is registered, it is relevant to consider whether the service is ancillary or integral to other goods or services the person supplies. Whether goods or services are goods or services with respect to which a trade mark is registered turns on the proper construction of the text that describes the registered goods or services.[193]
2. For the reasoning in MID Sydney to apply in this case, therefore, BSP would have to show, first, that to the extent it provides café services, those services fall within the denotation of both "café services" and "bakery services"; and, second, the café services BSP provides form an integral, if relatively minor, part of the "bakery services" the BSP Business provides. I am not satisfied BSP has shown either.

(a) First, in support of its defence based on s 122(1)(e) of the TM Act, BSP submits that the "ordinary meaning of "bakery services" includes the sale of coffee or other beverages as products ancillary to the provision or sale of baked goods". For reasons I give later, however, I do not accept that submission.

(b) Second, although it may be accepted that BSP's sale of coffee beverages is, in a business sense, an integral part of the BSP Business, it is not integral to its providing bakery services. Baking goods and selling and serving baked goods are activities that are distinct from the selling, making, and serving of coffee beverages; each may be and is provided without the other being provided. That is no less the case in the context of the BSP Business. The evidence shows that BSP offers to make and serve coffee beverages to customers without customers being required to buy cakes or pastries, and where BSP does make and provide coffee to customers who do not also buy cakes and pastries. This may without difficulty be properly characterised as the BSP Business providing café services "per se". Similarly, BSP offers to sell, and does sell, baked goods without requiring customers to buy coffee beverages.

1. I am satisfied BSP provides café services; and, as BSP accepts, the provision of café services is closely related to coffee beverages and coffee, being goods in respect of which the Blackstar 976 trade mark and the Blackstar 833 trade mark (in relation to coffee) are registered.

Does BSP provide "specialty coffee retailing services"

1. There is some evidence that the expression "specialty coffee" has a technical meaning; and that evidence is contained in the report of Mr Westlake, whom Mr Richards called.[194] Mr Westlake may loosely be described as a consultant in the coffee industry. Mr Westlake gives evidence of the establishment of The Australian Specialty Coffee Association; and he provides what purports to be definitions of certain words and expressions, which include "specialty coffee". Mr Westlake then provides opinions in relation to a number of questions, one of which is whether "specialty coffee retailing services" and "café services" are different from each other. Mr Westlake does not define either of these expressions; but he says that "specialty coffee retailing services" is a subset of the broader "café services"; and Mr Westlake equates "specialty coffee retailing services" with the manner in which coffee beverages are made.
2. I am not satisfied that Mr Westlake's opinions reflect any technical meaning, or uniformly understood meaning within the coffee industry, of what is denoted by the expression "specialty coffee retailing services". The meaning of the expression, therefore, is to be determined by reference to the ordinary meaning of each word that comprises the expression, and the combined meaning of the words that constitute the expression itself.
3. "Coffee" may be taken to mean the essential ingredient with which coffee beverages are made. This would include ground coffee and coffee beans. Among the definitions Macquarie Dictionary gives of "specialty" is: "an article particularly dealt in, manufactured, etc. or one to which the dealer or manufacturer professes to devote special care". Among the definitions the Oxford English Dictionary gives is "a special or distinctive quality, property, characteristic, or feature". As for "retailing services", that expression may be taken to mean the offering for sale of an article or articles to persons for final consumption or use.
4. Considered as a whole, therefore, the expression "specialty coffee retailing services" means the making available for sale to end users of ground coffee or coffee beans that are represented to have a special or distinctive quality or characteristic. This construction is narrower than what BSP submits is the proper construction of "specialty coffee retailing services", namely, services provided by a business whose primary trade is coffee and coffee related product, and in particular high quality or "specialty" coffee products.[195] On my construction, a person may provide "specialty coffee retailing services" even if that service forms a small part of the person's business.
5. As I have already found, BSP offers for sale BSP branded coffee, that is, coffee in ST. ALi bags covered by packaging that depicts the word "Stardust" with the Star boy logo, or the word "Milkyway" with the hedgehog logo. By selling coffee in those packages, BSP represents that the coffee it is offering for sale has a special and distinctive quality.
6. I therefore find that BSP provides "specialty coffee retailing services"; and that those services are closely related to "coffee", being goods in respect of which the Blackstar trade marks are registered.

Whether BSP has used the BSP trade marks as a trade mark in relation to café's services and specialty coffee retailing services

1. For the reasons I have found BSP has used the BSP012 and uses the New BSP Logo as trade marks in relation to coffee beverages and coffee, I find that BSP has used the BSP012 and uses the New BSP Logo as a trade mark in relation to the sale of ground coffee and coffee beans in packaging that does not display in full the name "ST. ALi".

1. For reasons I have already given, none of the BSP trade marks are substantially identical with either of the Blackstar trade marks; but they are deceptively similar to those trade marks.

1. Subject to any defence BSP may have, it has infringed the Blackstar trade marks within the meaning of s 120(2) of the TM Act by using the BSP trade marks in relation to café services and the provision of specialty coffee retailing services, being services that are closely related to coffee beverages and coffee, being goods in respect of both of which the Blackstar 976 trade mark is registered, and in respect of coffee, being goods in respect of which the Blackstar 833 trade mark is registered.

1. BSP relies on the proviso under s 120(2) (Proviso), namely, that a person who has otherwise infringed a trade mark within the meaning of s 120(2) of the TM Act "is not to be taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion".
2. BSP contends that, given the manner in which it has used the BSP trade marks, it is not likely to deceive or cause confusion. In support of that contention BSP submits that:[196] it operates a specialty bakery business; it sells coffee for immediate consumption as a product that is ancillary to its business; it has never been a coffee roasting or specialty coffee business; it does not have a reputation in relation to coffee; it sources it coffee from a third party; the evidence establishes it is common for bakery business to sell or serve coffee beverages using high quality coffee as an accompaniment to their baked goods;[197] and although there is evidence demonstrating the common industry practice of bakery businesses selling coffee, there is no evidence there would be an expectation amongst consumers that a bakery or patisserie business would roast its own beans. BSP further submits that BSP has a substantial reputation in "BLACK STAR PASTRY" which is associated with BSP's specialty bakery business; and consumers know of BSP because of its cakes and bakeries.[198]
3. The Proviso requires the Court to undertake the same analysis, and on the basis of the same assumptions, it is required to undertake when determining whether an alleged infringing mark is deceptively similar to a registered trade mark, except that the Court is to consider the particular way in which the claimed infringer has in fact used the claimed infringing trade mark.[199] In determining whether the Proviso applies to the circumstances of BSP's use of the BSP trade marks, the following question must be asked: would a person who buys a coffee beverage or BSP branded coffee from a BSP store who:

(a) has a memory of the Blackstar 976 trade mark or the Blackstar 833 trade mark;

(b) observes the words "Black Star Pastry" at or near the BSP store and the objects and activities that occur in the BSP store, which include persons making and serving coffee, and offering for sale BSP branded coffee; and

(c) observes the person who makes and serves the coffee beverage or BSP branded coffee to the person buying the coffee beverage or BSP branded coffee wears a uniform bearing the words "Black Star Pastry",

be likely not to entertain a reasonable doubt as to whether the services of making and serving of the coffee beverage or the offering for sale of the BSP branded coffee come from the same source as the coffee beverages and coffee in relation to which the Blackstar trade marks are used? Given the similarities between the Blackstar trade marks and the BSP trade marks I have already found to exist, and the fact that the provision of café services are closely associated with the provision of coffee beverages and coffee, the question is to be answered in the negative.

1. Thus, BSP fails on its contention that the Proviso applies to its supply of café services or specialty coffee retailing services.

1. Paragraph (e) of s 122(1) of the TM Act provides that, in spite of s 120, "a person does not infringe a registered trade mark when . . . the person exercises a right to use a trade mark given to the person under this Act".
2. In its defence BSP pleads that each of the BSP202, BSP011, and BSP012 trade marks is registered in class 43 for services that include "bakery services"; and that the "ordinary meaning of "bakery services" includes the sale of coffee or other beverages as products ancillary to the provision or sale of baked goods". BSP submits that its use of the New BSP Logo constitutes a use of the BSP012 trade mark with additions or alterations that do not substantially affect the identity of the BSP012 trade mark, with the consequence that BSP's use of the New BSP Logo constitutes the use of the BSP012 trade mark. BSP further submits as follows:[200]

Insofar as BSP relies upon its rights in the '202 mark and the '012 mark, the essential question for this defence is whether the ordinary meaning of "bakery services" includes the sale of coffee or other beverages as products ancillary to the provision or sale of baked goods. BSP submits that it does. As discussed earlier in these submissions, there is ample evidence demonstrating a common practice of bakery businesses in selling or serving coffee beverages as an accompaniment to their baked goods. That is precisely what the Black Star Pastry business has done since it first opened in late-2008.

1. The "ample evidence" to which this part of BSP's submissions refers is largely contained in the affidavit of Ms Atkinson made on 9 April 2024. The affidavit consists of photographs Ms Atkinson took of a number of bakeries she attended which show the making and serving of coffee at those bakeries.
2. Ms Atkinson's evidence does afford a basis for finding that it is a common practice of bakery businesses to sell coffee together with baked goods. But that fact alone is incapable of supporting a finding that the meaning of the words "bakery services" includes the making, offering for sale, selling, and delivering of coffee beverages. The fact that a person supplies service X as an incident to supplying service Y does not by itself imply that services X and Y fall within a description of services, broader than each of the descriptions of services X and Y, that covers both services X and Y. Whether services X and Y fall within some broader services depends on whether there is a word or set of words which, properly construed, has a meaning that includes both services X and Y.
3. Whether the making and serving of coffee beverages are services that fall within the meaning of the words "bakery services", therefore, turns on the proper construction of "bakery services", being among the services in respect of which the BSP202 and BSP012 trade marks are registered. As noted by the Full Federal Court in Killer Queen LLC and Others v Taylor, unless "it is shown that the words used to define the goods or services have a particular or special meaning to those to whom they are taken to be addressed, they should be construed as ordinary English words, the definition of which will be a matter for the Court".[201]
4. What are "bakery services"? "Bakery" delineates a class of services, being services that are associated with a bakery. That directs attention to the meaning of "bakery". The Macquarie Dictionary defines "bakery" as "a building or room to bake in", or a "baker's shop"; and one of the meanings the Oxford English Dictionary provides is a "place or establishment in which bread and similar food products are prepared and baked"; and that at a later time, a "bakery" was taken to mean "a commercial establishment in which bread and other baked goods are made and sold, sometimes with seating for customers to consume the food on the premises".
5. It is doubtful, however, that BSP intended "bakery" to be restricted to mean a place where goods are baked. BSP nominated "bakery services" in class 43 which consists of "services for providing food and drink; temporary accommodation". A more reasonable construction of "bakery services" would be services by which goods are made at a bakery and offered for sale and sold to consumers, directly or indirectly, either at the bakery, or at some place other than the place at which the goods were made. In any event, neither of the dictionary definitions of "bakery" includes goods other than goods that are made at a bakery, namely, baked goods. That would mean that "bakery services", on those definitions, would be limited to services associated with the baking of goods, and their sale; and, perhaps, providing facilities to persons who buy the baked goods to consume them at or near the place at which the goods are baked or sold.
6. BSP's defence based on s 122(1)(e) of the TM Act, therefore, fails; and that is because the making and serving of coffee beverages are not "bakery services".

1. In its defence BSP alleges that Mr Richards acquiesced in BSP's conduct or engaged in inexcusable and unreasonable delay so as to entitle him to any relief in respect of BSP's conduct. BSP relies on the fact that, since in or about 2009 or 2010, Mr Richards has known that BSP or BSP's predecessor in title has been using the words "Black Star Pastry" and the BSP Logo in connection with the BSP Logo; and that during the period BSP and its predecessor have developed a very substantial reputation and significant goodwill in the name "Black Star Pastry" and the BSP Logo in connection with the BSP Business.
2. In its written submissions, BSP relies on the following matters:

(a) Mr Thé adopted the name "Black Star Pastry" honestly.[202]

(b) By 2011 Mr Richards had become aware of the BSP Business.[203]

(c) After his telephone conversation with Mr Richards in 2011, Mr Thé was not concerned by the existence of the Blackstar Coffee Business because he believed the BSP Business and The Blackstar Coffee Business were different because the focus of the BSP Business was then, and has remained, on baked goods. Further, Mr Thé had registered "Black Star Pastry" as a business name, and he did not understand the difference between the registration of business names and the registration of trade marks.[204]

(d) Mr Richards did not again contact Mr Thé after their conversation. Mr Thé says he felt confident that he had registered "Black Star Pastry", he had a business name, and that was all he required at that time. Mr Thé believed the two business co-existed; and Mr Richards gave Mr Thé no reason to think otherwise.[205]

(e) The correspondence from BSP's lawyers and Mr Richards in 2013 referred openly to the fact that BSP sold coffee, and directed the reader to BSP's website. There could therefore be no suggestion that Mr Richards "was not fully aware of the nature of the BSP business by at least that time".[206]

(f) When JKPL acquired BSP, Ms Makiv "was unaware of any issues relating to the '202 mark".[207]

(g) Mr Richards did not issue any letter of demand before he commenced this proceeding.[208]

(h) BSP has used the "Black Star Pastry" brand for over a decade during which time it had invested heavily, and generated significant goodwill, in the brand.[209]

1. It is unnecessary to refer to the submissions Mr Richards makes in response to this part of BSP's case; and that is because, whatever BSP submits Mr Thé believed, and whatever BSP submits Mr Richards knew about the BSP Business, after their conversation in around 2010 or 2011, the evidence is incapable of supporting a finding that BSP believed, or could reasonably have believed, that Mr Richards agreed or had otherwise acquiesced in BSP using the words "black star" in connection with the sale of coffee beverages or coffee in the BSP Business.
2. As I have related earlier in these reasons, on 17 June 2011, not very long after Mr Thé and Mr Richards had their conversation, BSP applied to register the BSP Logo. BSP did so, not only for goods forming part of its bakery business, but also for "cafés" and "providing drink services" in class 43. On 7 February 2012 IP Australia informed BSP that the BSP Logo conflicted with the Blackstar trade marks in relation to the class 43 services of "cafes" and "providing drink services". By letter dated 8 May 2013 BSP, through its lawyers, requested the consent of Mr Richards and Ms Andrews to BSP registering the BSP202 trade mark in respect of café services. Although Mr Richards did not refuse, neither did he or Ms Andrews consent. BSP, however, must have understood that Mr Richards and Ms Andrews did not consent because BSP proceeded with the registration of the BSP Logo by removing "cafes" and "providing drinks" from the services in respect of which it sought to register what became the BSP202 trade mark; and, moreover, BSP did not send any written confirmation to Mr Richards or Ms Andrews that BSP understood that Mr Richards had so consented, or otherwise did not object.
3. Further, BSP could have insisted on seeking to register the BSP Logo in respect of "café services" and "providing drink services", and, if unsuccessful, exercise the right of appeal conferred by s 35 of the TM Act, if there was a legally justified basis for doing so. BSP did neither of these things. BSP does not submit, and in any event, there is no evidence on the basis of which it could reasonably submit, that it did not insist on seeking the registration of the BSP Logo in respect of "café services", and appeal any refusal for an order that it be permitted to do so, because it believed the owners of the Black Star trade marks had agreed or otherwise had acquiesced in BSP's use of "Black Star", or because it was unaware of any legal right it might have had to appeal.
4. An additional reason for not being able to find that BSP believed that Mr Richards had agreed or otherwise acquiesced in BSP using the words "Black Star" in its business is BSP's applying, on 2 September 2018, to register the BSP011 and BSP012 trade marks in respect of services that included "café services"; and, after BSP was notified of an adverse examiner's report, Ms Makiv, on 5 January 2019, approaching Mr Richards to discuss his consenting to BSP's using the words "Black Star" in the BSP business. Ms Makiv did not suggest to Mr Richards that in some way BSP had relied on Mr Richards's agreement or acquiescence in its continued use of "Black Star" since 2011. It is true that BSP submits that Ms Makiv "was unaware of any issues relating to the '202 mark"; but BSP does not identify the issues relating to BSP '202 of which Ms Makiv was unaware, and BSP does not explain why Ms Makiv approached Mr Richards for his consent in the first place.
5. Mr Richards made his position clear to BSP in the email he sent to Ms Makiv on 2 February 2019, to which I have already referred. [210] Mr Richards said he was "not aware that Blackstar Pastry had more than one store until we met", or "of the volume of coffee sold in NSW under the name "BLACKSTAR"". Mr Richards said that he had become aware that BSP was planning a new store in Melbourne; and that in no way could "our Brands . . . both grow separately without confusing consumers". Mr Richards put forward a proposal on the basis of which an agreement relating to the use of the words "Black Star" could be made, but that came to nothing. Mr Richards filed a notice of opposition to BSP's application to register the BSP011 and BSP012 trade marks, and BSP contested Mr Richards' opposition. BSP succeeded in part in the opposition proceedings; but not to the extent that it was permitted to register the BSP011 and BSP012 trade marks in class 43 "restaurant, café, hospitality services, [and] take away food services", and on the basis BSP excluded from the class 35 services "specialty coffee retailing services".[211] BSP did not exercise it rights under s 56 of the TM Act in relation to that decision.
6. Further, in his email to Ms Makiv of 2 February 2019, Mr Richards said he mentioned the history of Blackstar "to explain, more personally, what BLACKSTAR means to me, and why I must ensure that I protect the name from dilution in the market place". That was an unequivocal statement of intention by Mr Richards that he would assert his rights in his registered trade marks. BSP, however, was not deterred. BSP embarked on a major expansion of its business by opening stores at St Kilda, Melbourne (November 2019), Chadstone shopping Centre, Melbourne (December 2021), Driver Lane, Melbourne (April 2023), and Westfield Chatswood, New South Wales (October 2023).[212] In other words, BSP embarked on an expansion of its business in the face of Mr Richards's statement that "I must protect the name from dilution in the market place".
7. Mr Richards did not agree or otherwise acquiesce in BSP's use of "Black Star" in its business; and he otherwise did not engage in any unconscionable conduct in relation to the Blackstar trade marks. BSP has been using the words "Black Star" in the BSP Business knowing it had sought, but failed, to obtain Mr Richards's consent to do so; knowing that it had applied, but failed, to register the BSP202, BSP011, and BSP012 trade marks in respect of "café services"; knowing that it failed to secure registration of these trade marks in respect of café services, but not pursue rights of appeal under s 35 or s 56 of the TM Act it is reasonable to suppose BSP (being legally represented) knew it had; and knowing, after 2 February 2019, that Mr Richards had stated he "must ensure that [he] protect the name from dilution in the market place". If, as it submits it did, BSP has used the "Black Star Pastry" brand for over a decade during which time it had invested heavily, and generated significant goodwill, in the brand, it did, and continued to do so while being aware of each of these matters from the time it became aware of them.
8. There is another point that should be made about BSP's submissions. BSP appears to equate the assertion of trade mark rights with the commencement of legal proceedings for trade mark infringement. That is an unduly narrow conception of assertion of rights. Each of Mr Richards' not consenting to BSP's use of "Black Star Pastry", the adverse examiner's report and delegate's adverse decision, and Mr Richards's stating in his email of 2 February 2019 to Ms Makiv that he "must ensure that I protect the name from dilution in the market place", constituted an assertion of the rights that attach to the Blackstar trade marks under s 20 of the TM Act.
9. BSP's defence based on delay, acquiescence, and unconscionable conduct, therefore, fails.

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

1. The BSP974 trade mark is registered in class 30 (among other things) for "bakery products, bread, foodstuffs made from dough; foodstuffs made with flour; biscuits; cakes; pastries; donuts; croissants; pastry; sandwiches; coffee; tea; chocolate".
2. In the statement of claim Mr Richards alleges that the BSP974 trade mark is substantially identical with or deceptively similar to the Blackstar trade marks.
3. In its final closing submissions, BSP submits that Mr Richards, by his counsel, did not open any case in relation to the claims made in the statement of claim regarding the cancellation of the BSP974 trade mark pursuant to s 44 or s 60 of the TM Act.
4. In opening submissions, counsel for Mr Richards said that the BSP974 trade mark "will not take a high role in the proceeding because our evidence is it's not widely used; it is used in some shops in the merchandising section, predominantly".[213] In his counsel's closing written submissions, Mr Richards submitted as follows:[214]

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

1. And in closing submissions, counsel for Mr Richards said:[215]

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

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

APPLICATION TO CANCEL BSP202, BSP011, AND BSP012 TRADE MARKS

1. BSP's case in support of the cancellation of the BSP trade marks essentially rests on the submission that before Mr Thé caused to incorporate BSP he was the owner of the BSP Logo and the words "Black Star Pastry", but there is nothing to suggest that he assigned his rights in those trade marks to BSP.
2. The question that is to be addressed is whether BSP was not the owner of the trade mark, within the meaning of s 58 of the TM Act, of "Black Star Pastry" and the BSP Logo at the time it applied for the registration of the BSP trade marks. Earlier in these reasons I concluded that, on its proper construction, "the owner of the trade mark" in s 58 of the TM Act means a person who has used or has the ability to use the trade mark, with or without the authority of any other person who has an interest in the trade mark. On that construction, BSP is the owner. Mr Thé was the only person who managed and was otherwise involved with BSP at the time it applied for the registration of the BSP Logo; and he was the only person who was involved in the operations with BSP up to the time JKPL acquired it. The only reasonable inference that is available to be drawn is that at the very least Mr Thé authorised BSP to apply for its own benefit to register the BSP Logo as a trade mark, and to use the words "Black Star Pastry" in connection with the BSP Business.
3. Mr Richards's application to cancel the BSP trade marks, therefore, fails.

(a) dismiss BSP's cross claim;

(b) dismiss Mr Richards' application to the extent it seeks to cancel the BSP trade marks and the BSP974 trade mark;

(c) make declarations that, by using the words "Black Star Pastry" in relation to coffee beverages and the BSP branded coffee, BSP has infringed the Blackstar trade marks; and

(d) list the matter for directions at 9.30 am 11 September 2025 (or at such other time as may be convenient to the parties and to the Court) to give the parties an opportunity to consider and confer on the form of injunction I should grant, and what directions I should make for the further conduct of the matter.

1. I also propose to make a suppression order in relation to paragraphs 105(a)-(e) of these reasons to the extent that the contents of those paragraphs may be released only to the legal representatives of the parties.

I certify that the preceding two hundred and twenty-five (225) numbered paragraphs are a true copy of the Reasons for Judgment of Judge Manousaridis.

SCHEDULE - INFRINGEMENT OF TRADE MARKS - PROVISIONS AND PRINCIPLES[216]

1. Subject to the provisions of the Trade Marks Act 1995 (Cth) (TM Act), a registered owner of a trade mark has the exclusive rights to use the trade mark, and to authorise other persons to use the trade mark, "in relation to the goods and/or services in respect of which the trade mark is registered".[217]
2. The registered owner also has the right to obtain relief under the TM Act if the trade mark has been infringed.[218] The relief provided under the TM Act consists of the granting of injunctions, and damages or an account of profits.[219]

1. Section 120 of the TM Act identifies three sets of circumstances in which a registered trade mark may be infringed, two of which are relevant to this proceeding. The first set of circumstances are stated in s 120(1) of the TM Act:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

1. The second set of circumstances are stated in s 120(2) of the TM Act:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

(b) services that are closely related to registered goods; or

(c) services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

(d) goods that are closely related to registered services.

1. A person who uses as a trade mark a sign in the second set of circumstances, however, will not be taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

1. To infringe a trade mark a person (claimed infringer) must use a "sign" (claimed infringing mark). "Sign" is defined to include any combination of "any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent".[220]

Use of a sign "in relation to" goods or services

1. The claimed infringing mark must be used in relation to goods or services. Subsection 7(4) of the TM Act provides that "use of a trade mark in relation to goods" means "use of the trade mark upon, or in physical or other relation to goods (including second-hand goods)". Subsection 7(5) of the TM Act provides that "use of a trade mark in relation to services" means "use of the trade mark in physical or other relation to the services". Subsection 7(4) (and, by extension, s 7(5)) of the TM Act:[221]

defines use of the trade mark as not only the application of the mark to the goods themselves, but also the application of the mark to other items relating to the goods, such as labels, advertisements, invoices or other documents relating to goods: see Shanahan's Australian Law of Trade Marks and Passing Off at [5.1430]; Pioneer Kabushiki Kaisha v Registrar of Trade Marks [1977] HCA 56; (1977) 137 CLR 670 at 686 per Aickin J; Angoves Pty Ltd v Johnson (1982) 66 FLR 216 at 227-228; 43 ALR 349 at 359-360 per Deane J; and Brother Industries Ltd v Dynamic Supplies Pty Ltd [2007] FCA 1490; (2007) 163 FCR 530 at [54] per Tamberlin J. Thus, in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592 at 600, Jacobs J accepted that use of the mark in relation to the goods in question (which was a boat) was constituted by the use of the mark in relation to the goods on invoices, correspondence, shipping documents and brochures.

1. Use of a trade mark may also include on "marketing such as on a website".[222]
2. The TM Act does not define the word "services", but as Lockhart J noted in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co:[223]

[i]n the absence of a statutory definition of "services" in the Act it will fall to the courts to give meaning to the word. Some guidance may be obtained from the Mathys Committee's recommendation (para 67) that any definition of "services" in the Trade Marks Act 1938 (UK) should be broad enough to include the following types of service:-

"(i) consultancy and advisory services which involve no goods;

(ii) similar services which involve goods and can be provided either with or without the promotion, or sale, of goods; and

(iii) services which necessarily involve the use, or sale, of goods."

The definition of "services" in the Trade Practices Act 1974 (sub-s. 4(1)) may also be a useful guide. The breadth of the notion of services is illustrated by the eight classes of services which have been adopted by the Trade Marks Regulations - Statutory Rules 1979 No. 11. That classification corresponds to the classification of "services" used under the Nice Agreement of 1957, as subsequently revised, to which Australia has acceded.

1. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd, Gummow considered the meaning of "use of a trade mark in relation to services".[224] His Honour did so after referring to the following passage from the judgment of Windeyer J in Estex Clothing Manufacturing Pty Ltd v Ellis and Goldstein Ltd:[225]

The concepts upon which the case turns are economic, commercial, business concepts concerning the marking and marketing of goods, rather than the provisions of the Sale of Goods Act concerning the passing of property.

This, like many of the other authorities, was concerned with user in relation to goods, rather than services. In adapting what was said by Windeyer J to user of a service mark, it has to be remembered that whilst the same may be true of contracts for supply of future or unascertained goods, a service will not exist before its supply. Thus, the use of a trade mark in relation to services may readily be understood as a use in and about the soliciting and conclusion of contracts for the supply thereafter of services.

1. Also relevant is s 7(2) of the TM Act, which provides:

To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

Use of a sign in relation to goods or services "in respect of which the trade mark is registered"

1. In relation to the infringement identified in s 120(1) of the TM Act, the claimed infringer must not only use the claimed infringing mark in relation to goods or services (claimed infringing goods or claimed infringing services); the claimed infringing goods or services must be goods or services in respect of which the trade mark is registered (registered goods and registered services). More precisely, the claimed infringing goods or services must be goods and services that fall within the meaning of the words that describe the goods or services in respect of which the trade mark is registered. Thus, if the goods in respect of which a trade mark has been registered are described by the words "coffee beans", and the claimed infringing goods fall within the description of "coffee beans", the claimed infringing goods will be goods in respect of which the trade mark has been registered.
2. Whether the claimed infringer's goods or services are registered goods or services turns on the proper construction of the text that describes the registered goods or services. The Full Federal Court in Killer Queen LLC and Others v Taylor identified principles relevant to the construction of such descriptions:[227]

It is within this legislative scheme that the task of construing the goods and/or services in respect of which a trade mark is registered must be undertaken. Without being exhaustive, in our view the following approach accords with the authorities and the legislative scheme:

(1) Parliament can be taken to have intended the Register to speak for itself: Nikken Wellness at [44] (per Wilcox J). In most cases people who peruse an extract from the Register should be able to understand what it says without being obliged to make inquiries about the business history or previous conduct of the registered owner of the mark: Nikken Wellness at [44] (per Wilcox J); Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44; 407 ALR 473 (Energy Beverages FC) at [132] (per Yates, Stewart and Rofe JJ); Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8; 277 CLR 186 at [39] (per the Court).

(2) The Register is a public document that defines the scope of a statutory monopoly. It should be taken to be expressed in a manner that is not reasonably capable of being misunderstood: see Décor Corporation v Dart Industries [1988] FCA 682; 13 IPR 385 at 400 (per Sheppard J). In this respect it is analogous to the definition of an invention claimed in a patent.

(3) It may be taken, in construing the specification of goods or services, that it is a considered statement by the applicant which should be read as a whole to determine its meaning and effect: Reliance Water Controls Ltd v Altecnic Ltd [2001] EWCA Civ 1928; 12 WLUK 261 at [42] (per Mummery LJ, Kennedy and Sedley LJJ agreeing); Décor at 400 (per Sheppard J); see also Burrell R and Handler M, Australian Trade Mark Law, (3rd ed, LexisNexis Butterworths, 2024) at [6.30].

(4) The Register should be understood through the eyes of persons interested to know the scope of the monopoly. This is likely to include other traders who may be interested in using or licensing the trade mark (Woolworths Limited v BP plc (No 2) [2006] FCAFC 132; 154 FCR 97 at [58] (per Heerey, Allsop and Young JJ)) and also persons interested in dealing with the trade mark, for instance by seeking a licence or taking an assignment of it. Generally, such persons can be expected to be familiar with the language and expressions used in the trade concerned.

(5) Unless it is shown that the words used to define the goods or services have a particular or special meaning to those to whom they are taken to be addressed, they should be construed as ordinary English words, the definition of which will be a matter for the Court. On occasion, the construction of the words used may be the subject of evidence: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205 at [185]-[195] (per Greenwood, Besanko and Katzmann JJ); Bauer Consumer Media Ltd v Evergreen Television Pty Ltd [2019] FCAFC 71; 367 ALR 393 (Bauer Consumer Media FC) (per Burley J at [244], Greenwood J agreeing at [18]).

(6) The classification of goods and services according to classes is primarily a matter of convenience in administration (for example, to facilitate searches). The nomination of a class for particular goods is not decisive as to the scope of a given registration: Re Australian Wine Importers Ltd [1889] UKLawRpCh 46; (1889) 41 Ch D 278 at 291 (per Lindley LJ); Reckitt & Coleman (Australia) Ltd v Boden [1945] HCA 12; 70 CLR 84 at 90 (per Latham CJ); Nikken Wellness at [43]-[44] (per Wilcox J); Energy Beverages FC at [132] (per Yates, Stewart and Rofe JJ). It would appear that, in Flexopack and Trident, the Court was not taken to Australian Wine Importers or Reckitt & Coleman. Both cases were also decided before Energy Beverages FC.

Use of a sign in relation to goods or services "that are closely related to" the registered services or the registered goods

1. As for the classes of infringement identified in s 120(2)(b) and (d) of the TM Act, the goods or services in relation to which the claimed infringer uses the claimed infringing mark must be services (related services) that are "closely related to" the registered goods, or goods (related goods) that are "closely related to" the registered services. In Registrar of Trade Marks v Woolworths Ltd, French J, when a judge of the Federal Court of Australia, considered the meaning of "closely related to" as that expression appears in s 44(2) of the TM Act.[228]
2. Woolworths concerned an appeal from a judgment of the Federal Court setting aside a decision made by the Registrar of Trade Marks (Registrar) refusing an application to register a composite mark in respect of retailing and wholesaling services for two reasons. The Registrar refused the registration because he was satisfied that the trade mark was said to be deceptively similar to trade marks that had been registered in respect to a variety of goods. That required the Full Federal Court to consider the meaning of "closely related goods". French J first explained why s 44(2) used the expression "closely related" to describe the relationship between goods and services:[229]

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related". As its use in the Mathys Committee Report indicated however, it is a term of wider import than "similar" and can apply to the relationships between competing services as well as between goods and services -

1. His Honour then considered the nature of the relationship that should exist between goods and services before they may be considered to be "closely related":[230]

The range of relationships between goods and services which may support the designation "closely related" will be limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting trade marks which attach to them. The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 143; (1983) 77 FLR 139; 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks "...of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone". His Honour observed that:

"Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy services) involve goods but can be provided either with or without the sale or promotion of goods." (at 522)

1. French J said that determining whether services and goods are "closely related", requires a "practical judgment to be made":[231]

Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or to cause confusion.

Mr F.J. Smith, a former Commonwealth Registrar of Trade Marks and Designs and Commissioner of Patents, observed at the time of the 1978 amendment that:

"It will be an exercise of the Registrar's judgment and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely."

(Smith, p. 120) That observation is consistent with a proper focus upon the core question whether the resemblance between the marks is likely to deceive or confuse.

1. French J also referred to the judgment of Needham J in Rowntree plc v Rollbits Pty Ltd.[232] In that case the registered owner of trade marks for confectionary goods opposed the registration of trade marks that included a trade mark in relation to services. Needham J held that the goods in respect to which the opponent's trade mark was registered were closely related to the services in respect of which one of the trade marks sought to be registered; and that is because his Honour found that the goods in respect of which registration was sought were of the same description as the goods in respect of which the opponent's trade marks were registered; and that the services in respect of which registration was sought "would feature the goods already held to be goods of the same description as those of" the goods in respect of which the owners trade mark was registered.[233]

Use of a sign in relation to goods or services "of the same description" as the registered services or the registered goods

1. As Kenny J noted in McCormick & Co Inc v McCormick, whether "the relevant goods are of the same description is essentially a question of fact". Her Honor continued:[234]

The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek's Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd's Application (1948) 65 RPC 369 ("Crowther's Application") at 372; In Re Frank George Whiting's Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94.

1. The expression "trade mark" is defined in s 17 of the TM Act as follows:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

1. For a claimed infringing trade mark to be a trade mark within the meaning of s 17 of the TM Act, and be used as a trade mark, at least three matters must be present. First, there must be goods or services that are intended to be dealt with or provided, or which are being dealt with or provided, "in the course of trade". This "encompasses the idea . . . of "vendible" articles";[235] or more simply, "the selling or trading in goods" and services, "merchanting, selling, and the like".[236] Second, the claimed infringing trade mark itself must be "used", or intended to be "used", in the course of trade, that is, in the selling or trading of goods or services. Although not expressly stated in s 17, but expressly stated in s 120(1) and s 120(2) of the TM Act, the use of the claimed infringing trade mark must be "in relation to goods" or "in relation to services", expressions which, as I have already noted, are defined in s 7(4) and s 7(5) respectively.
2. Third, the claimed infringing trade mark must be used, or intended to be used in the course of trade, that is, in relation to the sale or supply of goods or services, for a particular purpose, namely, to distinguish goods or services in relation to which the claimed infringing trade mark is used from goods or services dealt with or provided by another person. As the plurality in E & J Gallo Winery v Lion Nathan Australia Pty Ltd noted:[237]

The concept of "use" of a trade mark which informs ss 92(4)(b), 100(1)(c) and 100(3)(a) of the Trade Marks Act must be understood in the context of s 17, which describes a trade mark as a sign used, or intended to be used, to "distinguish" the goods of one person from the goods of others.

Whilst that definition contains no express reference to the requirement, to be found in s 6(1) of the Trade Marks Act 1955 (Cth), that a trade mark indicate "a connexion in the course of trade" between the goods and the owner, the requirement that a trade mark "distinguish" goods encompasses the orthodox understanding that one function of a trade mark is to indicate the origin of "goods to which the mark is applied". Distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner are essential characteristics of a trade mark. . . .

In Coca-Cola Co v All-Fect Distributors Ltd a Full Court of the Federal Court of Australia said:

"Use 'as a trade mark' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods ... That is the concept embodied in the definition of 'trade mark' in s 17 - a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else."

1. In Woolworths Ltd v BP plc (No 2) the Full Federal Court said the following about determining whether a sign has been used as a trade mark:[238]

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin:

1. Thus, in determining whether a sign has been used as a trade mark for the purposes of s 120(1) of the TM Act, "it is necessary to examine the use" by the alleged trade mark infringer "to assess whether, objectively, the use" of the sign "would be understood in the context of the trade and the surrounding circumstances to have been used so as to indicate a connection in the course of trade between the product or service and the person using the mark".[239]
2. In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd the High Court made the following observations about how to determine whether a trade mark has been used as a trade mark:[240]

Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.

1. Section 120 of the TM Act identifies two classes of claimed infringing trade marks which, if used as a trade mark will infringe a registered trade mark. One class are marks that are "substantially identical with" the registered trade mark; the other are marks that are "deceptively similar to" the registered trade mark. A claim that a mark infringes a registered trade mark because it is substantially identical with the registered trade mark, and a claim that a mark infringes a registered trade mark because it is deceptively similar, "are to be judged in different ways".[241]

Substantially identical with registered trade mark

1. The method by which whether the claimed infringing mark is substantially identical with the registered trade mark was described by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd:[242]

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106 . Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100 , per Latham C.J. (1945) 70 CLR, at pp 114, 115 , and Ex parte O'Sullivan; Re Craig [1944] NSWStRp 28; (1944) 44 SR (NSW) 291 , per Jordan C.J. (1944) 44 SR (NSW), at p 298 , where the meaning of the expression was considered.

1. In Carnival Cruise Lines Inc v Sitmar Cruises Ltd, Gummow J explained the expression "substantially identical" as follows:[243]

The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407at 414. It requires a total impression of similarity to emerge from a comparison between the two marks.

1. Section 10 of the TM Act defines when a trade mark is to be taken to be "deceptively similar to another trade mark"; and that is where "it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". This definition is silent about a number of matters. In particular, s 10 does not:

(a) identify the matters about which a person or class of persons is required to be deceived or confused;

(b) define what is meant by "deceived" or "confused";

(c) identify what is required to be the source of deception or confusion;

(d) identify:

(i) the person or classes of persons who must be deceived or confused (target persons);

(ii) the characteristics target persons must have or be assumed to have; or

(iii) the information that is or must be assumed to be available to the target persons by reference to which the question whether the target persons are deceived or confused is to be assessed;

(e) identify the matters that are relevant to determining whether a claimed infringing mark is deceptively similar to a registered trade mark; or

(f) the degree of probability that the use of the alleged infringing mark will deceive or confuse a member of the target audience before it may be concluded the use of the alleged infringing trade mark is likely to deceive or cause confusion.

1. These omitted details are supplied by the cases.

Matters about which target persons must be deceived or confused

1. The matter about which target persons are required to be deceived or confused for the purposes of s 10 of the TM Act is whether the goods or services in relation to which the claimed infringer uses the claimed infringing mark (these being what I have already defined as the claimed infringing goods or services) come from the same source as the goods or services in relation to which the registered trade mark has been used (non-infringing goods or services). That is, a person will be deceived within the meaning of s 10 of the TM Act if he or she believes the claimed infringer's and the non-infringer's goods or services share a common source; and a person will be confused if he or she is confused about whether the claimed infringer's goods or services have the same source as the non-infringer's goods or services.
2. That this is the matter about which persons are required to be deceived or confused is apparent from the cases. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, for example, Kitto J, in the course of determining whether a trade mark that was sought to be registered was likely to deceive,[244] stated a number of propositions, one of which was as follows:[245]

While a mere possibility of confusion is not enough . . . it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source.

1. In Registrar of Trade Marks v Woolworths Ltd, after referring to Kitto J's propositions in Southern Cross Refrigerating Co French J said:[246]

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

1. And in Vivo International Corporation Pty Ltd v Tivo Inc, Keane CJ said:[247]

It must be emphasised that the issue is not whether the marks were substantially identical, but whether they were apt to cause confusion. In this regard, as has been repeatedly said in the authorities the issue is not whether consumers might think that the trade marks are the same, but whether a number of persons will be caused to "wonder whether it might not be the case that the two products or closely related products and services come from the same source . . . [or to] wonder or be left in doubt about whether the two sets of products . . . come from the same source."

1. As these passages indicate, the state of mind denoted by the word "confusion" is that of "wonder" or "doubt"; there must be a doubt or wonder about whether the claimed infringer's goods or services and the non-infringer's goods or services come from the same source.

1. Section 10 of the TM Act implies that the deception or confusion produced by the claimed infringing mark in the mind of actual or potential customers of the claimed infringer's goods or services must arise from the resemblance the claimed infringing mark bears to the registered trade mark. In the words of Windeyer J, the "deceptiveness that is contemplated must result from similarity".[248]

1. The persons who must be deceived or confused are the actual and prospective purchasers of the goods or services in relation to which the registered trade mark is registered. The substance of this principle has been stated in cases arising out of the refusal to register, or challenges to the registration of a trade mark on the ground that the use of the trade mark in relation to the goods or services for which it is intended to be used would be likely to deceive or cause confusion,[249] as well as in cases of claimed infringement of a trade mark. In Australian Woollen Mills Ltd v F S Walton & Co Ltd, Dixon and McTiernan JJ said:[250]

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.

1. And in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J said:[251]

Of course, it is in relation to commercial dealings with goods that the question of confusion has to be considered, and the persons whose state of mind is material are the prospective or potential purchasers of goods of the kind to which the applicant may apply his mark.

1. The effect or impression produced on the mind of the actual or potential customers by the mark or device for which the protection of an injunction is sought, must be assessed on the assumption that the customers are "persons of ordinary intelligence and memory".[252] The "usual manner in which ordinary people behave must be the test of what confusion or deception may be expected".[253] Potential consumers "are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded."[254]

Assumed information available to the target persons when assessing deceptive similarity

1. There are at least two classes of information that is assumed are not available to the target persons when determining whether the claimed infringing mark is deceptively similar to a registered trade mark. The first is the registered trade mark itself. Although the "deceptiveness that is contemplated" by s 10 of the TM Act "must result from similarity",[255] what resemblance the claimed infringing mark bears to the registered trade mark is not to be assessed by comparing the two marks side-by-side; the extent and significance of the resemblance are to be assessed by comparing the actual or potential customers' impressions of the claimed infringing mark, with the customers' impressions of the registered trade mark based on their memory of the features of the registered trade mark. Windeyer J stated this principle in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd:[256]

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

1. The reason for this approach has been expressed in a number of authorities. In Jafferjee v Scarlett, for example, Latham CJ said:[257]

. . . it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived.

1. The High Court recently reaffirmed these principles in Self Care (italics in original):[258]

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

1. A second class of information that must be assumed is not available to the target persons is the actual use of the registered trade mark or any reputation associated with the registered trade mark. This principle was also affirmed by the High Court in Self Care:[259]

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

1. The High Court explained the reasons for this limitation of the information available to the target persons as follows:[260]

As has been explained, the TM Act provides for the registration of trade marks and sets out and protects the rights deriving from registration. A registered trade mark is personal property and it is the Act that defines the rights that constitute that property, when the rights will come into existence (the date of registration), and what conduct will infringe those property rights. Of particular significance is that the rights that constitute the property - a monopoly - are limited to use of a mark on the particular goods in a particular class, being the goods for which registration was sought and then obtained. It is that registered mark, and that mark alone, which constitutes the property and against which allegedly infringing conduct is assessed. Registration of the trade mark alone confers the right of its exclusive use on the registered owner or, in the case of a defensive trade mark, the right to exclude use. If reputation was considered after registration other than where expressly provided for in the Act, the level of protection afforded to that right would vary and be inherently uncertain.

1. When determining whether a claimed infringing mark is deceptively similar to a registered trade mark, a court may take into account a number of matters. First, and most importantly, is the extent to which the registered trade mark and the claimed infringing mark share similar features, and the nature of the features that are similar. And here, the cases have identified a number of "signposts"[261] or "rules of comparison"[262] that are available to be applied to assist in that task. Three of these signposts were referred to by Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd:[263]

(i) when comparing names one must judge them by look and sound . . . and by the idea they convey . . . (ii) one must take account of the way in which the mark is likely to be referred to or heard . . . (iii) particular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks . . . save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.

1. Other signposts or rules of comparison have been identified in the cases. One is whether the feature that is shared by the two marks is "prominent or distinctive"[264] or "distinguishing"[265] or an "essential"[266] feature of the registered trade mark. Such features are relevant because they are likely to strike the eye and fix themselves in the recollection;[267] and it is the prominence of such features in a person's otherwise imperfect memory of the registered trade mark that may lead him or her to be deceived or confused by the presence of the same feature in the claimed infringing mark about whether the claimed infringing goods or services come from the same source as the non-infringer's goods or services.
2. A second matter the court may take into account when considering the impressions the claimed infringing mark is likely to create is "the background of the usages in the particular trade".[268] There are significant limits, however, to what a court may consider as background. This was explained by Gummow J in Wingate Marketing Pty Limited v Levi Strauss & Co.[269] After quoting a passage from the judgment of Graham J in Textron Inc and Textron Ltd v Henry C Stevens Ltd and Blick Office Equipment Ltd,[270] which included the statement that "in infringement proceedings one is concerned for practical purposes only with the two marks themselves", Gummow J said:

The statement that in infringement proceedings the concern "for practical purposes" is only with the marks themselves requires some elaboration . . . . In particular - (i) The comparison is between any normal use of the plaintiff's mark comprised within the registration and that which the defendant actually does in the advertisements or on the goods in respect of which there is the alleged infringement, but ignoring any matter added to the allegedly infringing trade mark; for this reason disclaimers are to be disregarded, price differential was considered irrelevant by Kearney J[[271]] and Cross J,[[272]] his Lordship also disregarded the differences in use by the parties of colour and display panels, and his Honour discounted the differences in the respective sections of the public to whom the goods were sold. (ii) However, evidence of trade usage, in the sense discussed above, is admissible but not so as to cut across the central importance of proposition (i). (iii) In particular, in making an aural comparison of the marks, whilst ordinarily one is concerned with what appears to be the natural and ordinary pronunciation, evidence in my view is admissible that those in the trade pronounce the defendant's mark in a manner which otherwise might be thought to vary from the normal fashion. (iv) Evidence of cases of deception or confusion may be taken into account . . . . (v) Although . . . it is not decisive, evidence is admissible that the defendant's mark was adopted with a view to "sailing close to the wind", in the sense of the adverse finding made by the primary judge in this case.

1. The last proposition stated by Gummow J in this passage leads to a third matter a court may have regard to in assessing whether a claimed infringing mark is deceptively similar to a registered mark; and that is the intention of the claimed infringer. The principle is that if the court finds that the claimed infringer has adopted a mark "for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse".[273] The rationale for accepting this type of reasoning was stated by Dixon and McTiernan JJ to be as follows:[274]

In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

1. A finding of an intention to deceive, however, is not conclusive of the question whether the claimed infringing mark is likely to deceive; whether or not a claimed infringing mark is deceptively similar to a registered trade mark is a matter for the court to determine.[275] This was emphatically stated by Lord Evershed MR in Electrolux Ltd v Electrix Ltd:[276]

The question of infringement, the question whether one mark is likely to cause confusion with another, is a matter upon which the judge must make up his mind and which he, and he alone, must decide. He cannot, as it is said, abdicate the decision in that matter to witnesses before him.

1. And in Australian Woollen Mills Ltd v F S Walton & Co Ltd, [277] Dixon J and McTiernan JJ said that whether one mark is deceptively similar to another:

is a question never susceptible of much discussion. It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

1. In Self Care the High Court referred to the following principles relating to the required degree of probability to support a finding that the use of the alleged infringing mark is likely to deceive or cause confusion:[278]

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

1. Subsection 120(2) of the TM Act provides that where a person has used a trade mark in one of the ways provided for in s 120(2) and, therefore, without any further analysis, the person will have infringed a registered trade mark, the person "is not to be taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion" (Proviso).
2. The nature of the defence provided for by the Proviso was explained in the judgment of Lord Evershed M. R. in Tavener Rutledge Ld v Specters Ld (emphasis added);[279]

Now, of course, in order to raise effectively the right given to the defendant by Subsec. (2), the onus clearly is on the defendant to show that the use to which he is putting the mark is not likely to deceive or cause confusion. You may get, therefore-and this case has been suggested as being such a case - a clearly narrow point: the plaintiff has first to prove in general that the defendant's mark is likely to cause confusion. But then the defendant may come along and say, "The actual use I am making of this mark is not in fact likely to deceive or cause confusion." . . . before you get to the stage where an onus is put on the defendant, the plaintiff, if the mark used is not identical with his own mark, has got to prove in general of the defendant's mark that it is as a mark likely to cause confusion: and I add by way of exposition, if used in circumstances which would give rise to such confusion. If the plaintiffs establish that then, as I have said, the defendants may still have another line of defence and may say, "Though it may generally be as you say a mark likely to cause confusion, in fact in the way I have used it and in the circumstances and environment in which I have used it, it is not likely to cause confusion."

1. The Full Federal Court considered the nature of the defence provided for by the Proviso in E & J Gallo Winery v Lion Nathan Australia Pty Ltd:[280]

The words "as the person did" direct attention to the way in which, as a matter of fact, the alleged infringer has used the allegedly infringing trade mark. These concluding words pose a different question to that raised by the opening words of s 120(2) which, in the context of deceptive similarity, direct attention only to a comparison of the marks in the way already discussed. However, any conclusion about deceptive similarity would usually inform consideration of whether the actual use was likely to deceive or cause confusion. In a sense, an affirmative answer to the question of whether the alleged infringing mark was deceptively similar would be the starting point. If it was, then it would, in many instances, render it more likely (though not inevitable) that the actual use of the allegedly infringing mark was likely to deceive or cause confusion. Also relevant, in our opinion, would be the matters considered in determining whether the alleged infringer's goods are of the same description as the goods in respect of which the registered mark is registered.

1. The defence the Proviso makes available is limited. It calls for the same comparison as is required under s 120(1) of the TM Act, except the Court must take into account the manner in which the claimed infringer has in fact used the alleged infringing trade mark. All of the other assumptions that are involved in making the comparison remain. These include the irrelevance of the reputation of the trade mark that is alleged to have been infringed.

Summary of elements of a cause of action based on s 120(1) of the TM Act

1. Thus, to succeed on a cause of action for infringement of a registered trade mark under s 120(1) of the TM Act, the owner of the registered trade mark must allege and prove the following:

(a) the person who is alleged to have infringed the trade mark (this being the claimed infringer defined earlier in this Schedule) has sold or promoted or taken steps to sell or promote goods and services (these being the claimed infringing goods or claimed infringing services defined earlier in this Schedule);

(b) one or more of the claimed infringing goods or services are denoted by - that is, fall within the meaning of - the words that describe the goods or services in respect of which the registered trade mark is registered (these being the registered goods or registered services defined earlier in this Schedule);

(c) the claimed infringer has used a sign (this being the claimed infringing trade mark defined earlier in this Schedule) in relation to the claimed infringing goods or claimed infringing services;

(d) the claimed infringer has used the claimed infringing trade mark as a trade mark; and

(e) the claimed infringing mark is substantially identical with, or deceptively similar to, the registered trade mark.

Summary of elements of a cause of action based on s 120(2) of the TM Act

1. To succeed on a cause of action based on infringement of a registered trade mark under s 120(2) of the TM Act, the owner of the registered trade mark must allege and prove the following:

(a) the claimed infringer has sold or promoted or taken steps to sell or promote the claimed infringing goods or the claimed infringing services;

(b) in relation to the claimed infringing goods:

(i) they are goods of the same description as the registered goods, or

(ii) closely related to the registered services;

(c) in relation to the claimed infringing services:

(i) they are services of the same description as the registered services, or

(ii) closely related to the registered goods;

(d) the claimed infringer has used the claimed infringing trade mark in relation to the claimed infringing goods or claimed infringing services;

(e) the claimed infringer has used the claimed infringing trade mark as a trade mark;

(f) the claimed infringing trade mark is substantially identical with, or deceptively similar to, the registered trade mark; and

(g) the claimed infringer does not establish that using the claimed infringing trade mark as the claimed infringer used it is not likely to deceive or cause confusion.

[1] BSP is also the owner of a fourth registered trade mark (BSP974). I will discuss in separate section of these reasons the issues that arise in relation to that trade mark.

[2] Affidavit M Richards 01.03.2024, MR-1, [9] (CB 634).

[3] Affidavit M Richards 01.03.2024, MR-1, [7] (CB 633).

[4] Affidavit M Richards 01.03.2024, MR-1, [8] (CB 634).

[5] Affidavit M Richards 01.03.2024, MR-1, [11]; MR-G (CB 634).

[6] CB737: "Social Ventures Australia in partnership with Brisbane City Council and PriceWaterhouse Coopers have funded the Brisbane Social Enterprise Hub (known as 'The Hub') to support social enterprises, which are businesses with a primary social goal of creating employment for people marginalised from mainstream employment due to disability, mental health conditions, or cultural background."

[7] Affidavit M Richards 01.03.2024, [12]; MR-H.

[8] Affidavit M Richards 01.03.2024, MR-1, [12]; MR-H (CB720).

[9] Affidavit M Richards 01.03.2024, MR-1, [12]; MR-H (CB720).

[17] Affidavit M Richards 29.04.2024; MR-1, [45].

[18] Affidavit M Richards 29.04.2024; MR-1, [49].

[19] Affidavit M Richards 29.04.2024; MR-1, [46].

[20] Affidavit M Richards 29.04.2024; MR-1, [47].

[21] Affidavit M Richards 29.04.2024; MR-1, [48].

[22] Affidavit M Richards 29.04.2024; MR-1, [49].

[23] Affidavit M Richards 29.04.2024; MR-1, [51].

[24] Affidavit M Richards 29.04.2024; MR-1, [52].

[25] Affidavit M Richards 29.04.2024; MR-1, [43] MR-1C (CB3042).

[26] Affidavit M Richards 01.03.2024, MR-1, [15].

[27] Affidavit M Richards 01.03.2024, MR-1, [16].

[29] Affidavit M Richards 01.03.2024, MR-1, [17].

[30] Affidavit M Richards 01.03.2024, MR-1, [18].

[31] Affidavit M Richards 01.03.2024, MR-1, [21]-[22].

[32] Affidavit M Richards 01.03.2024, MR-1, [23]-[25].

[33] Affidavit M Richards 01.03.2024, MR-1, [28].

[34] Affidavit C P Thé 03.04.2024, [6]-[9].

[35] Affidavit C P Thé 03.04.2024, [11].

[36] Affidavit C P Thé 03.04.2024, [12].

[37] Affidavit C P Thé 03.04.2024, [13].

[38] Affidavit C P Thé 03.04.2024, [14].

[39] Affidavit C P Thé 03.04.2024, [15].

[40] Affidavit C P Thé 03.04.2024, [17]-[18].

[41] Affidavit C P Thé 03.04.2024, [20].

[42] Affidavit C P Thé 03.04.2024, [21]-[23].

[43] Affidavit C P Thé 03.04.2024, [24].

[44] Affidavit C P Thé 03.04.2024, [25].

[45] Affidavit C P Thé 03.04.2024, [29].

[46] Affidavit C P Thé 03.04.2024, [30].

[47] Affidavit M Richards 29.04.2024; MR-1, [48].

[55] Affidavit C P Thé 03.04.2024, [41].

[56] Affidavit C P Thé 03.04.2024, [46].

[63] BSP's closing submissions, [209].

[64] BSP's closing submissions, [210]-[211].

[65] Affidavit C P Thé 03.04.2024, [37].

[66] Affidavit M Richards 29.04.2024; MR-1, [37].

[76] Affidavit E J Makiv 10.04.2024, [8].

[77] Affidavit E J Makiv 10.04.2024, [9], [10].

[78] Affidavit E J Makiv 10.04.2024, [12].

[79] Affidavit E J Makiv 10.04.2024, [13(a)].

[80] Affidavit E J Makiv 10.04.2024, [13(b)]-[13(c)].

[81] Affidavit E J Makiv 10.04.2024, [14].

[82] Affidavit E J Makiv10.04.2024, [16].

[83] Affidavit E J Makiv10.04.2024, [17].

[84] Affidavit E J Makiv 10.04.2024, [17(c)].

[94] Affidavit M Richards 01.03.2024, [53].

[95] Affidavit E J Makiv10.04.2024, [22].

[96] BSP's closing submissions, [111].

[97] BSP's closing submissions, [110].

[98] Response to statement of cross-claim, [6(a)].

[99] Response to statement of cross-claim, [2(a)].

[100] Response to statement of cross-claim, [2(b)].

[101] BSP's closing submissions, [104].

[102] Health World Ltd v Shin-Sun Australia Pty Ltd [2010] HCA 13, at [43]-[44].

[103] For example, by relying on s 122(1)(e) of the TM Act: McD Asia Pacific LLC v Hungry Jack's Pty Ltd [2023] FCA 1412, at [133] (Burley J).

[104] Cantarella Bros Pty Ltd v Lavazza Australia Pty Ltd (No 3) [2023] FCA 1258, at [471] (Yates J).

[105] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, at [26], [36]. In Shell Company of Australia Ltd v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, at page 624, Dixon J said: "[T]he title of a mark to registration is to be determined on the state of facts existing when the application [for a trade mark] is lodged".

[106] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375, at page 385 (Gummow J).

[107] In re Hudgson's Trade-Marks [1886] UKLawRpCh 79; (1886) 32 CH D 311, at page 320.

[108] Shell Company of Australia Ltd v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, at pages 627-628.

[109] Shell Company of Australia Ltd v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, at page 628.

[110] In re Hicks Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

[111] Shell Company of Australia Ltd v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, at page 628, quoting from In re Hicks Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, at page 639.

[112] In re Hicks Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, at page 640.

[113] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, at [55].

[114] See my discussion in Henry v Leighton Admin Services Pty Ltd & Anor [2015] FCCA 1923, at [55]-[57].

[115] M Smith Q.C. and N Leslie, The Law of Assignment , second edition, OUP 2012, at [2.23] (emphasis in original; references omitted).

[116] Nyberg v Handelaar [1892] UKLawRpKQB 91; [1892] 2 QB 202 (Court of Appeal).

[118] Affidavit E J Makiv 10.04.2024, [16].

[119] Affidavit E J Makiv 10.04.2024, [29] Annexure EJM-2, pages 410-414 (CB2736-2740).

[120] Affidavit E J Makiv 10.04.2024, [29].

[121] Affidavit E J Makiv 10.04.2024, [30] Annexure EJM-2, pages 415-419 (CB2740-2744).

[122] Affidavit E J Makiv 10.04.2024, [30].

[123] Affidavit E J Makiv 10.04.2024, [32] CONFIDENTIAL Annexure EJM-3, pages 505-514 (CB2831-2838).

[124] Affidavit E J Makiv 10.04.2024, [31]-[32].

[125] Affidavit E J Makiv 10.04.2024, [33]-[34].

[126] Affidavit E J Makiv 10.04.2024, [35].

[127] Affidavit M Richards 01.03.2024, MR-M, CB484.

[128] Affidavit E J Makiv 10.04.2024, [41], [44].

[129] Affidavit E J Makiv 10.04.2024, [45], CONFIDENTIAL ANNEXURE EJM-3, pages 529-548.

[130] Affidavit E J Makiv 10.04.2024, [46].

[131] Affidavit E J Makiv 10.04.2024, [48].

[135] Affidavit M Richards 01.03.2024, MR-H CB423.

[136] Affidavit M Richards 01.03.2024, MR-H CB424, CB425.

[137] Affidavit M Richards 01.03.2024, MR-H CB432, CB433.

[138] Affidavit M Richards 01.03.2024, [44].

[139] Affidavit M Richards 01.03.2024, [47].

[140] Affidavit M Richards 01.03.2024, MR-I CB439, CB441.

[141] Affidavit M Richards 01.03.2024, MR-I CB442.

[142] Affidavit M Richards 01.03.2024, MR-I, CB443-444.

[143] Affidavit M Richards 01.03.2024, MR-J, CB453-454.

[144] Affidavit M Richards 01.03.2024, MR-J, CB456-457.

[145] Affidavit M Richards 01.03.2024, MR-J, CB455.

[146] Affidavit M Richards 01.03.2024, MR-K, CB460.

[147] Affidavit M Richards 01.03.2024, MR-K, CB462-463.

[148] Affidavit M Richards 01.03.2024, MR-K, CB466.

[149] Affidavit M Richards 01.03.2024, MR-M, CB479.

[150] Affidavit M Richards 01.03.2024, MR-M, CB481.

[151] Affidavit M Richards 01.03.2024, MR-M, CB482, CB484.

[152] Affidavit M Richards 01.03.2024, [74].

[153] Affidavit M Richards 01.03.2024, [77].

[154] Affidavit M Richards 01.03.2024, MR-N, CB486.

[155] Affidavit M Richards 01.03.2024, [95[(h)(vi)]; MR-N, CB506.

[156] Affidavit M Richards 01.03.2024, MR-N, CB489, CB492.

[157] BSP's closing submissions, [15].

[158] BSP's closing submissions, [16] (transcript references omitted).

[160] In Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [23], the High Court noted "[t]here is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark." The parties have not in their submissions separately addressed whether BSP has used the BSP trade marks or the New BSP logo in relation to goods in respect of which, or which are closely related with, the goods in respect of which the Blackstar trade marks are registered, and, if so, whether BSP has used those trade marks as trade marks.

[161] The Applicant's Outline of Opening Submissions, [39].

[162] The Applicant's Written Outline of Closing Submissions, [32].

[163] The Applicant's Written Outline of Closing Submissions, [35].

[164] BSP's closing submissions, [144].

[165] BSP's closing submissions, [144].

[166] Winton Shire Council v Lomas [2002] FCA 288, at [57].

[167] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, at [42].

[168] Sizzler Restaurants International Inc v Sabra International Ltd (1990) 20 IPR 331, at pages 344-345.

[169] The Hoyts Corporation Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd [2003] ATMO 61; (2003) 61 IPR 334, at [66].

[170] BSP's closing submissions, [152].

[171] BSP's closing submissions, [153].

[172] BSP's closing submissions, [157].

[173] BSP's closing submissions, [158].

[174] BSP's closing submissions, [159].

[177] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107, at page 115, referred to with approval in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [42] (see Principles, [24]).

[178] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [24] (see Principles, [27]).

[179] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [24] (see Principles, [27]).

[180] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 415.

[182] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [32].

[183] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at page 382, quoted with approval in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [32].

[184] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [29] (emphasis in the original).

[185] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [36] (emphasis in original).

[186] BSP's closing submissions, [35].

[188] BSP's closing submissions, [166].

[189] BSP's closing submissions, [167].

[190] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCAFC 1616; (1998) 90 FCR 236.

[191] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCAFC 1616; (1998) 90 FCR 236, at page 242D.

[192] MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCAFC 1616; (1998) 90 FCR 236, at page 243B (emphasis added).

[193] Killer Queen LLC and Others v Taylor [2024] FCAFC 149, at [57].

[194] Mr Westlake prepared two reports, one dated 3 January 2024, which is annexed to his affidavit made on 1 March 2024 (CB308), and a supplementary report dated 29 September 2024, which is annexed to his affidavit made on 29 April 2024 (CB3130). After hearing submissions on the admissibility of Mr Westlake's reports, I admitted them into evidence on the basis that counsel for Mr Richards said he would not press the answers Mr Westlake gave in his reports to questions 1-4, and 10-14.

[195] BSP's closing submissions, [175].

[196] BSP's closing submissions, [181].

[197] The evidence is contained in the affidavit of J S Atkinson 09.04.2024. BSP also relies on the following statement Mr Westlake made: In my experience, most of the bakeries in Australia serve coffee as well as their own baked goods".

[198] BSP's closing submissions, [181(d)].

[200] BSP's closing submissions, [189].

[201] Killer Queen LLC and Others v Taylor [2024] FCAFC 149, at [57].

[202] BSP's closing submissions, [199]-[202].

[203] BSP's closing submissions, [203]-[208].

[204] BSP's closing submissions, [209].

[205] BSP's closing submissions, [210]-[211].

[206] BSP's closing submissions, [213]-[214].

[207] BSP's closing submissions, [218].

[208] BSP's closing submissions, [220].

[209] BSP's closing submissions, [221].

[212] Affidavit E J Makiv 10.04.2024, [13(a)].

[214] The Applicant's Outline of Opening Submissions, [174].

[216] This Schedule substantially reproduces what I said in Korolak v Campbell (No 2) [2023] FedCFamC2G 1222, at [125]-[162], but contains additional material.

[221] Bing! Software v Bing Technologies [2009] FCAFC 131, at [68] (Kenny J). In Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143; (1983) 48 ALR 511, at page 521, Lockhart J noted on 1 February 1979 the Trade Marks Act 1955 (Cth) was amended to extend its protection to services; and it did so by broadly applying "the provisions relating to goods marks so far as feasible to service marks".

[222] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [23].

[223] Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 143; (1983) 48 ALR 511, at page 522. His Honour was referring to the Trade Marks Act 1955 (Cth).

[224] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375.

[225] Estex Clothing Manufacturing Pty Ltd v Ellis and Goldstein Ltd (1967) 116 CLR 254, at page 267.

[226] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375, at page 388.

[227] Killer Queen LLC and Others v Taylor [2024] FCAFC 149, at [57].

[228] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365.

[229] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, at page 378.

[230] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, at page 378.

[231] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, at pages 379-380.

[232] Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 365.

[233] Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 365, at page 379.

[234] McCormick & Co Inc v McCormick [2000] FCA 1335, at [17], [18].

[235] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [44] (French CH, Gummow, Crennan, and Bell JJ).

[236] Aristoc Ltd v Rysta Ltd [1945] AC 68, at page 102 (Lord Wright). Lord Wright did not include "services" because, at that time, trade marks could not be registered in respect of services.

[237] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [42] (French CH, Gummow, Crennan, and Bell JJ).

[238] Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97, at page 117 (Heery, Allsop, and Young JJ).

[239] Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97, at [78] (Heery, Allsop, and Young JJ).

[240] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [24] (footnotes omitted).

[241] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407, at page 415.

[242] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 415.

[243] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375, at page 391

[244] Within the meaning of s 114 of the Trade Marks Act 1905-1948 (Cth).

[245] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

[246] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, at page 382 ([50]).

[247] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; (2012) 294 ALR 661, at page 674 ([77]).

[248] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 416.

[250] In Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 658.

[251] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, at page 595.

[252] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 415 (Windeyer J).

[253] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 658.

[254] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 658.

[255] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 416.

[256] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407, at page 415.

[257] Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115, at page 122.

[258] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [29] (footnotes omitted).

[259] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [28] (footnotes omitted).

[260] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [37] (footnotes omitted).

[261] That is the expression of Finn J in CA Henschke & Co & Anor v Rosemount Estates Pty Ltd [1999] FCA 1561; (1999) 47 IPR 63, at page 74 ([35]).

[262] Shanahan's Australian Law of Trade Marks and Passing Off 6th ed., Lawbook Co, 2016, page 285.

[263] CA Henschke & Co & Anor v Rosemount Estates Pty Ltd [1999] FCA 1561; (1999) 47 IPR 63, at page 74 ([35]) (cases omitted).

[264] Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd [2006] FCA 767; (2006) 69 IPR 243, at page 251 ([36]) (FCA, Moore J).

[265] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 174 (Viscount Maugham).

[266] Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 162 (Greene MR); De Cordova and Others v Vick Chemical Company (1951) 1B IPR 496 (Privy Council), at page 498 (Lord Radcliffe).

[267] This is a paraphrase of what Greene MR said in Saville Perfumery Ld v June Perfect Ld and F.W. Woolworth & Co. Ld. (1941) 58 RPC 147, at page 162 where his Lordship, speaking of a particular trade mark said that "the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection."

[268] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407, at page 410 (Windeyer J).

[269] Wingate Marketing Pty Limited v Levi Strauss & Co (1994) 49 FCR 89, at page 128.

[270] Wingate Marketing Pty Limited v Levi Strauss & Co [1977] RPC 283, at page 286.

[271] In Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491, at 497 to which Gummow J referred to at page 126, noting that "Kearney J held that in assessing whether "Solaroid" was deceptively similar to "Polaroid" . . . so that there was an infringement, it was no answer in determining deceptive similarity that the products the plaintiffs were more expensive and provided to a different class of customer."

[272] In British Petroleum Co Ltd v European Petroleum Distributors Ltd [1968] RPC 54, at page 64 to which Gummow J referred at page 126.

[273] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 657 (Dixon and McTiernan JJ).

[274] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 657.

[275] Adidas AG v Pacific Brands Footwear Pty Ltd (No 3) [2013] FCA 905; (2013) 103 IPR 521, at page 541 ([102] and [103]) (FCA, Robertson J).

[276] Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23, at page 31. This passage was quoted with approval by the Full Federal Court in Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32; (1990) 24 FCR 370, at page 377.

[277] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, at page 659.

[278] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [32] (footnotes omitted).

[279] Tavener Rutledge Ld v Specters Ld [1959] RPC 355, at pages 359-360. His Lordship was concerned with the Trade Marks Act 1938 (UK).

[280] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27 (Orders of the Full Federal Court set aside by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, but not on this point.)