Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd & Anor  FCCA 1718 (30 June 2020)
Unsuccessful appeal by Di Lorenzo against the Registrar’s decision which dismissed their opposition to registration of the trade mark BLACK SHEEP for restaurant, café and bistro services in class 43.
Denversian applied, on 10 September 2015, for trade mark registration of BLACK SHEEP which was accepted with a s44(4) endorsement based on prior continuous use and limited to the State of Queensland.
Di Lorenzo asserted that they have, since September 2011, operated a mobile café business in New South Wales as a partnership under the name Black Sheep. They also have a trademark registration for the trade mark shown below dating from 16 March 2015 and covering coffee products in class 30 and coffee house services in class 43.
Denversian asserted that it has, since August 2013, operated a bistro restaurant in Oxenford, Queensland. It previously failed in its opposition to registration of Di Lorenzo’s trade mark in which it alleged a likelihood of confusion.
The Registrar’s decision is reported at https://www.selfmark.com.au/trademark-registration-atmo-decisions-july-2018/
The delegate found the applied for mark was deceptively similar to the opponent’s prior registered mark and covered similar services, so there was a valid ground of objection under s44. However, the delegate applied the s44(3)(a) honest concurrent use provision with the geographical limitation to the State of Queensland.
Denversian also relied on s58A, but it is only applicable where s44(4) is used to accept an application. Since the delegate applied s44(3)(a), it was not open to press the s58A ground.
Under the s58 ownership ground, Denversian relied on their use of Black Sheep since September 2011, but their evidence did not corroborate this bare assertion of use and this ground of opposition also failed.
Denversian also relied on the s42(b) contrary to law ground based on Di Lorenzo’s conduct being misleading or deceptive under the Australian Consumer Law, but the evidence did not support the higher onus to establish this ground.
Judge Baird dismissed Di Lorenzo’s appeal and directed the BLACK SHEEP trade mark proceed to registration.
Significantly, both parties were self-represented before the Registrar and the Federal Circuit Court.
Her Honour closely scrutinised the evidence relied upon by Di Lorenzo and commented “The material relied on by Di Lorenzo is an admixture of submission, claim, and assertion. There are substantial evidentiary gaps and serious deficiencies in the material relied on by Di Lorenzo.” In short, there was no reliable evidence of any actual trading activity and her Honour was not satisfied that Di Lorenzo had used the phrase “black sheep” in the course of trade before the relevant date of 10 September 2015 or had used its registered mark before this date. At most, the material relied upon supported mere preliminary, preparatory steps.
Denversian’s evidence was supported by corroborating materials and was more favourably received by Judge Baird. Her Honour was satisfied that Denversian had established continuous and consistent use in the course of trade from 2013 of the trading name Black Sheep Bistro and had established a good reputation at least in the Gold Coast area as at the relevant date of 10 September 2015. Further, her Honour was persuaded Denversian had demonstrated honesty of use. The evidence showed use of “Black Sheep Bistro” but her Honour considered this constituted used of the applied for BLACK SHEEP mark because the word ” bistro” was descriptive in the context of the relevant services and was an addition that did not substantially affect the identity of the BLACK SHEEP mark.
Given these findings, the s58 ownership ground of appeal necessarily failed. Di Lorenzo could not rely on prior trade mark use of Black Sheep or their registered mark (because the evidence did not support actual use). While they could rely on the presumption of intention to use their earlier registered mark as from 16 March 2015, Judge Baird disagreed with the Registrar’s delegate and found this registered mark was not substantially identical with the BLACK SHEEP plain word mark filed by Denversian. Her Honour considered the device element in Di Lorenzo’s registered mark was an essential feature and its linking function gives rise to a striking difference such that there is a total impression of dissimilarity. Her Honour also commented, by way of obiter, that Denversian’s claim to “café services” were the same kind of thing as “coffee shop services” in Di Lorenzo’s registered mark.
Also, the s58A ground of opposition (assuming it was available) could not be sustained because Di Lorenzo could not show prior and continuous use of a similar mark from before Denversian’s first use of its BLACK SHEEP mark in 2013.
Judge Baird then went on to construe s58A having regard to established principles of statutory interpretation. Since DeLorenzo’s appeal was directed to s58 and s58A, but not s44, her Honour was obliged to consider Denversian’s trade mark application as it stood after the opposition hearing decision where the delegate decided the application should be accepted under s44(3), not s44(4). Since s58A is only applicable to an application accepted under s44(4), the ground of appeal under s58A necessarily failed.
In case she was wrong on that issue, her Honour considered the applicability of s58A to Denversian’s application as originally accepted under s44(4) after examination. Sections 44 and 58A are separate and independent grounds of opposition. When considering s58A it is inappropriate to consider the threshold issue of substantial identity or deceptive similarity under s44. The similar mark for the purposes of s58A(2) is necessarily that mark which was cited against the applicant’s trade mark under s44(1) or (2) and an opponent cannot introduce a different trade mark under s58A(2).
Further, where the requirements of s58A are satisfied, a trade mark applicant may, in turn, seek to establish that the application should be registered under s44(3).
Her Honour concluded that, even on the assumption the BLACK SHEEP mark was accepted under s44(4), Di Lorenzo could not avail themselves of s58A. Although Di Lorenzo’s prior registered mark was cited as an objection to the BLACK SHEEP application (and was therefor a similar mark as contemplated under s58A(2)), Di Lorenzo could not establish relevant earlier use of that registered similar mark.
Hence, it is apparent that Di Lorenzo’s task was not assisted by their decision to represent themselves. That is not to say the end result might have been different if they retained legal representation and submitted better evidence, particularly as Denversian may still have been able to rely on honest concurrent use under s44(3)(a) to achieve registration of its BLACK SHEEP mark.
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