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Trademark Lawyer Sydney – Federal Court – PABLO

Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) [2021] FCA 1404 (12 November 2021)

Successful appeal by Freshfood from a decision by the Registrar of Trade Marks.

Registrar’s decision

Before the Registrar, Freshfood was unsuccessful in its opposition to an application for removal of its trademark registration for PABLO alleging no good faith use in relation to the registered goods for the 3 years period ending on 28 April 2019.

The trademark registration dated from 25 October 1961 and covered coffee in class 30.

Freshfood relied on residual reputation and an export sale, made on 23 July 2019, of 500kg of coffee to Papua New Guinea.

The delegate was not satisfied Freshfood had established any use of the PABLO mark for coffee during the relevant 3 years period. The export sale showed use of the mark applied to the shipper container and not coffee.

Given the paucity of evidence, the delegate was not prepared to exercise discretion to leave the PABLO mark on the Register.

Appeal

The appeal was heard on the papers. Pablo Enterprises did not participate in the appeal and the Registrar did not oppose the orders being sought by Freshfood.

Freshfood filed three affidavits and detailed submissions. It ceased Australian sales of PABLO coffee from about 2006, but thereafter asserted that it continued to export PABLO coffee on an ad hoc basis. There was no evidence of any export sales of coffee in the relevant period, although 500kg of PABLO coffee was exported mere months after the end of the relevant period. Freshfood contended that it used the PABLO mark in the course of trade during this period and remained ready, willing and able to fill any orders for export. It had conducted taste tests during the relevant period and there was a prominent sign at its manufacturing premises which included the PABLO mark which has been present since 2009.

Thawley J considered the evidence indicated sales of PABLO coffee had completely ceased by 2009 and, at least by 28 April 2016, no particular endeavour was being made to trade in PABLO branded coffee. Accordingly, his Honour was satisfied there had been no use of the PABLO mark in the course of trade for coffee during the relevant period.

Nonetheless, his Honour considered it appropriate to exercise discretion in favour of leaving the PABLO mark on the Register.

Freshfood had not abandoned the PABLO mark and, after the relevant period, had engaged in ongoing commercial conduct to resume use including refreshed artwork, ongoing commercial production and sales of PABLO coffee as well as a supply agreement with Foodbank NSW. Also, as Pablo Enterprises did not participate in the appeal, it did not adduce any evidence in relation to its interests or otherwise in relation to the exercise of discretion.

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