First published as part of Taryn Lovegrove, ‘Current Developments – Australia’ (2019) 116 Intellectual Property Forum 64
Coffee machines, coffee cups, coffee, coffee roasting, coffee bar… While coffee is a common theme, Justice Robertson decided this was not sufficient to make these items goods or services of the same kind or related, in recent Federal Court proceedings.
Ms Notaras imported and sold coffee machines under the ATOMIC brand since 1964 under exclusive licence from the Italian designer and inventor Giordano Robbiati. She subsequently also became the manufacturer of the ATOMIC coffee machines for the Australian market. For a short period of time she sold cans of coffee branded ATOMIC, but this ceased in 1972.
Ms Notaras had registrations for the word ATOMIC (since 2002) for coffee percolators, coffee makers and coffee machines in class 21, and (since 2009) for stove top coffee makers, also in class 21.
Barcelona Pty Ltd opened ATOMIC cafes in Western Australia in 2005, the name of which was inspired in part by the 1940s Italian ATOMIC coffee machines created by Giordano Robbiati but also the Atomic Age design era from the 1940s to 1960s. Cafe owner De Marte gave evidence that he only become aware that ATOMIC machines were still being sold in Australia a few years after he first opened his cafe when he walked past Ms Notaras’ Sydney shopfront. In 2015, Barcelona sought registration of its ATOMIC trade mark (application no 1686087) in classes 16, 21, 29, 30, 35, 40 and 43 for various goods and services including coffee cups, coffee, coffee grinding, coffee roasting, cafes and restaurant services.
Ms Notaras opposed Barcelona’s application to register the ATOMIC trade mark on the following grounds (among others):
- The applied for trade mark is substantially identical or deceptively similar to Ms Notaras’ prior registered trade marks in respect of similar or closely related goods (s.44 Trade Marks Act 1995).
- Barcelona is not the owner of the trade mark (s.58 Trade Marks Act).
- The use of Barcelona’s mark would be likely to cause deception or confusion in the marketplace because of Ms Notaras’ prior reputation in the ATOMIC trade marks in Australia at the date of filing (s.60 Trade Marks Act).
Ms Notaras was unsuccessful before the Trade Marks Office and appealed the decision to the Federal Court on the basis of the three grounds set out above.
Despite the marks containing the word element ATOMIC and relating in some way to coffee, Justice Robertson concluded that coffee cups, coffee, coffee roasting and cafe services were not goods and services of the same kind as coffee machines for the purposes of the s. 44 opposition, despite some minor overlap in trade channels. Irrespective of that finding, the Court found Barcelona would have been able to establish honest concurrent use. Further, while Barcelona was inspired by the Giordano Robbiati’s ATOMIC coffee machines when choosing the cafe name, this did not amount to dishonest adoption.
In considering whether Ms Notaras was the owner of the trade mark in relation to the goods and services covered by the Barcelona application for the purposes of s. 58, given that the evidence established that Ms Notaras ceased using the ATOMIC trade mark in relation to ground coffee in the 1970s, Robertson J concluded that Ms Notaras abandoned her common law rights in the mark in relation to those goods. Providing unbranded coffee samples with the purchase of a coffee machine to demonstrate the required consistency of the grind was held not to constitute use of the trade mark in trade or commerce for coffee.
Finally, turning to whether the use of Barcelona’s mark would be likely to cause deception or confusion for s.60 purposes, it was determined that although Ms Notaras had a reputation in the ATOMIC trade mark before the priority date, this related solely to coffee machines. Furthermore, considering the stark difference in retail price between coffee machines and coffee goods and cafe services, there was unlikely to be any deception or confusion arising out of Barcelona’s use of their ATOMIC trade mark in relation to their goods and services of interest. This was particularly given Notaras’ sales in Western Australia (the cafe’s locations) were minimal and no instances of confusion were identified.
Consequently, Ms Notaras’ appeal to the Federal Court was unsuccessful, the Barcelona ATOMIC trade mark was registered and the trade marks now co-exist not only in the marketplace (as they have for 14 years), but also on the Trade Marks Register.