Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156

Federal Court of Australia Caporaso Pty Ltd v Mercato Centrale Australia Pty Ltd [2024] FCAFC 156 Appeal from:

File number:

Judgment of: KATZMANN, WHEELAHAN AND HESPE JJ

Date of judgment: 6 December 2024

TRADE MARKS — s 62(b) of the Trade Marks Act 1995 (Cth) – where an Examiner considered that a trade mark under examination was not inherently adapted to distinguish in respect of a certain class, and sought evidence or representations as to the trade mark applicant's prior use of the mark – where the representations as to prior use by the trade mark applicant were false – where the primary judge held that the trade mark in question was inherently adapted to distinguish, and so evidence of prior use was irrelevant to the registrability of the mark – whether the primary judge erred in holding that evidence or representations are not "false in material particulars" unless false in a way that affects the registrability of the trade mark – Colorado Group Ltd v Strandbags Group Pty Ltd [2006] FCA 160; 67 IPR 628 and Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184; 164 FCR 506, considered – held: the ground of opposition in s 62(b) can be established even where the evidence or representations in question are false in particulars that were not relevant to a proper assessment of the registrability of a mark, provided the requisite causal link with the acceptance of the mark for registration exists. Catchwords: TRADE MARKS — s 88(1) of the Trade Marks Act – where the primary judge found that the appellant (Caporaso) was not the owner of a registered trade mark in respect of certain services – where the primary judge ordered that the trade mark registration be narrowed to exclude those services – whether the primary judge erred in failing to exercise, or to consider exercising, the discretion not to order that the Register be rectified – held: if the issue arose, it would be appropriate to order that the Register be rectified. TRADE MARKS — deceptive similarity – where the respondent (Mercato Centrale) employed three trade marks – where Caporaso alleged that each of the Mercato Centrale marks infringed each of the Caporaso marks – where the primary judge held that the mark MERCATO CENTRALE was not deceptively similar to the mark MERCATO – where the primary judge proceeded on the basis that the word centrale had no ordinary signification in English – where it was accepted on appeal that the word centrale would be understood to mean central – held: if not cancelled, the MERCATO mark would have been infringed by the MERCATO CENTRALE mark – neither of the other Caporaso marks was infringed by any of the Mercato Centrale marks. HIGH COURT AND FEDERAL COURT — observations on the correct approach to appellate review of evaluative findings on an appeal by way of rehearing – Warren v Coombes (1979) 142 CLR 531, applied.