What you need to know
- An owner of trade mark registrations for ATOMIC in respect of coffee machines has unsuccessfully opposed an application to register ATOMIC in respect of goods and services including ground coffee, coffee beverages and café services.
- The Court found that ground coffee, coffee beverages and café services were not similar goods or closely related services to coffee machines.
- The Court also found that any historical use by the opponent of ATOMIC in respect of ground coffee had been abandoned by the priority date of the application.
What you need to do
- When applying to register a trade mark, care should be taken to ensure that the application covers the full specification of goods and services in relation to which the applicant uses or intends to use the trade mark.
- Trade mark owners should ensure the continued use of their marks in relation to their goods and services, in order to maintain their registrations and avoid being deemed to have abandoned the trade mark at common law.
The parties and their trade marks
Ms Notaras owns two trade mark registrations of the word ATOMIC in class 21 for non-electric (ie stove top) coffee machines. Since the 1960s, Ms Notaras' company has sold coffee machines out of a Sydney retail store, including ATOMIC branded coffee machines manufactured in Italy.
In April 2015, Barcelona Pty Limited (Barcelona) applied to register the word ATOMIC as a trade mark in respect of goods and services including ground coffee, coffee beverages and café services. Barcelona runs a café in Western Australia named ATOMIC that sells take away coffee, ground coffee and food. Barcelona began trading under the ATOMIC name in September 2005.
In the Trade Marks Office, Ms Notaras unsuccessfully opposed Barcelona's trade mark application. Ms Notaras appealed to the Federal Court.
Grounds of appeal
Ms Notaras relied upon the following grounds of opposition under the Trade Marks Act 1995 (Cth) (TMA):
- Barcelona is not the owner of the ATOMIC trade mark (section 58 TMA);
- conflict between Barcelona's application and Ms Notaras' prior registered ATOMIC trade marks (section 44 TMA); and
- because of the reputation acquired by Ms Notaras' ATOMIC registered trade marks, Barcelona's use of ATOMIC in connection with coffee related goods and services would be likely to deceive or cause confusion (section 60 TMA).
Ms Notaras' evidence
The Court accepted Ms Notaras' evidence that her company had made sales of coffee machines under the ATOMIC mark in Australia, including Western Australia. This demonstrated the existence of a reputation in ATOMIC among persons interested in coffee machines before the priority date of Barcelona's application. However, the Court held that Ms Notaras' reputation did not extend beyond coffee machines.
Ms Notaras relied upon a number of instances of the alleged supply of ground coffee before the priority date. The Court accepted Ms Notaras' evidence that she had supplied ground coffee under the ATOMIC trade mark during the 1960s and 1970s. However, the Court rejected Ms Notaras' evidence that she continued to sell coffee after this time. The Court found that Ms Notaras' sales of coffee had ceased in 1972, and that she did not resume, nor intend to resume sales of coffee, either under the ATOMIC trade mark or otherwise.
Ms Notaras attempted to rely upon the supply of unbranded ground coffee samples that were supplied with ATOMIC coffee machines. The Court found that these ground coffee samples were only supplied to illustrate the grind of coffee to be used in the machines, and did not involve any use of ATOMIC as a trade mark.
Barcelona's evidence
Mr De Marte is the director and company secretary of Barcelona. The Court accepted his evidence that he was not aware of Ms Notaras' registrations when Barcelona adopted the ATOMIC name in September 2005.
The Court found that Mr De Marte chose the ATOMIC name because of his interest in the 1940s Atomic era of design, including the ATOMIC coffee machine design. The Court was satisfied that Mr De Marte was not aware that Ms Notaras was selling ATOMIC coffee machines when Barcelona began trading under the ATOMIC name.
The decision
Ownership of the ATOMIC mark
Having found that Ms Notaras had not used or intended to use ATOMIC with respect to ground coffee since the 1970s, the Court found that Ms Notaras had abandoned the ATOMIC trade mark with respect to ground coffee. This was inconsistent with Ms Notaras being the owner of the ATOMIC mark in respect of ground coffee at common law, and so the section 58 ground of her opposition was not established.
Prior conflicting trade marks
The section 44 ground failed as well. The Court found no conflict between Ms Notaras' prior ATOMIC registrations and Barcelona's application due to the dissimilarity of goods and services.
In relation to goods, the Court held that coffee machines are quite different from ground coffee and coffee beverages. Whilst there is some minor overlap in trade channels (eg some cafes sell coffee machines), the Court held that this was not sufficient to lead to a finding of similarity of goods.
In relation to services, the Court held that café services are not closely related to coffee machines. Again, minor overlap in trade channels did not lead to a conclusion that the services were closely related.
Ms Notaras' reputation in ATOMIC
Whilst the Court found that Ms Notaras had established a reputation in ATOMIC among persons interested in coffee machines, the Court found that Barcelona's use of ATOMIC would not be likely to cause deception or confusion. This was primarily because Barcelona's goods and services, including café services and the supply of ground coffee, are sufficiently different from coffee machines.
Authors: Zack Di Pasquale, Graduate; and Stuart D'Aloisio, Partner.
