Notaras v Barcelona Pty Limited  FCA 4 (10 January 2019)
Unsuccessful appeal by Notaras from the Registrar’s decision refusing her opposition to trademark registration of ATOMIC filed on 8 April 2015 for various bags and packaging in class 16, cups and containers in class 21, foods in classes 29 and 30, coffee grinding and roasting services in class 40 as well as food and beverage related services in class 43 with a geographical limitation to the State of Western Australia.
The Registrar’s decision is reported at here
The appeal was confined to grounds of opposition under s44, s58 and s60.
Ms Notaras owned prior trademark registrations for ATOMIC and ATOMIC & Device covering non-electric coffee making machines in class 21. She has, through her business Bon Trading Company imported, promoted and sold in Australia coffee machines under these ATOMIC trademarks since May 1964. This business had also sold spare parts and provided repairs, and had promoted and sold coffee and accessories such as t-shirts under these trademarks.
Barcelona had operated a café in South Perth under the name ATOMIC since September 2005. It became aware of the Atomic brand of stove top coffee maker prior to opening this café and acknowledged that the choice of the ATOMIC name in or around April 2004 was influenced by the 1940s Italian designed Atomic stove top coffee machine together with the whole Atomic era concept and 1940s European cafe atmosphere. However, it first became aware of the sale in Australia by Bon Trading of the Atomic coffee machines some several years after opening its café.
Robertson J was critical of Ms Notaras as a witness and did not accept her evidence where it was not supported by contemporaneous records or the underlying probabilities. His Honour accepted most the evidence of Mr De Marte for Barcelona and importantly that the choice of name was inspired by the Italian Atomic coffee machine, but it innocently commenced using the ATOMIC trade mark unaware of Ms Notaras’ rights in this mark.
The s58 ownership ground of opposition failed. Robertson J found that the supply of a small, free sample of ground coffee with instructions booklets for the Atomic coffee machines was solely to illustrate the grind of coffee required for those machines and not for the purpose of trade in coffee. However, the sale of coffee in half pound cans by Bon Trading was trade mark use of ATOMIC, but this was historical use and Ms Notaras did not have any intention to supply ground coffee to consumers between the early 1970s and April 2015. His Honour inferred an intention to abandon the ATOMIC trade mark for ground coffee. Consequently, it was unnecessary for his Honour to consider whether honest concurrent use provides an exception to the s58 ownership ground of opposition.
The s44 ground of opposition also failed. Although there is some minor overlap of trade channels, Robertson J did not consider any of Barcelona’s goods were similar to the coffee machines, or that any of Barcelona’s service were closely related to coffee machines. If wrong on this aspect, his Honour considered Barcelona had established honest concurrent use in respect of goods in classes 21 and 30, as well as services in classes 35 and 43. Further, use by Barcelona of the ATOMIC trade mark in Western Australia has not caused inconvenience to Ms Notaras.
The s60 reputation ground of opposition also failed. The evidence of Ms Notaras was sufficient to demonstrate her ATOMIC trade mark had acquired a reputation confined to coffee machines, including in Western Australia, as at 8 April 2015. Robertson J accepted MS Notaras’ characterisation of the relevant public. The Atomic coffee machine was a specialised product and that a significant number of persons interested in coffee machines knew the ATOMIC trade mark. However, his Honour considered that, given the differences in the respective goods and services, there is not likely to be a real risk of deception or confusion. His Honour noted that the present retail price of an Atomic coffee machine is high ($575) as against the much lower retail price of bags of coffee beans, cups of coffee and food. Also, the geographical limitation to Western Australia, where the evidence shows there is and has historically been a very limited number of sales of Atomic machines by Ms Notaras, further decreases the likelihood that consumers will be deceived or confused. The absence of any evidence of actual confusion is also telling.