Notaras v Barcelona Pty Limited [2019] FCA 4

FEDERAL COURT OF AUSTRALIA

Notaras v Barcelona Pty Limited [2019] FCA 4 Appeal from: Irene Notaras v Barcelona Pty Limited [2018] ATMO 12

File number: NSD 215 of 2018

Judge: ROBERTSON J

Date of judgment: 10 January 2019

Catchwords: TRADE MARKS – appeal from decision of delegate of the Registrar of Trade Marks – delegate held that appellant had failed to establish any of her grounds of opposition and that the respondent's trade mark application could proceed to registration – appellant's registered ATOMIC Word Mark in respect of coffee machines – appellant's registered ATOMIC Device Mark in respect of stove top coffee makers – respondent's application for registration of ATOMIC in respect of goods, including coffee cups, coffee, coffee beans, ground coffee and in respect of services, including retailing and wholesaling of coffee, coffee grinding, coffee roasting and cafes – whether respondent not the owner of the trade mark for the purposes of s 58 of the Trade Marks Act 1995 (Cth) – whether appellant abandoned property in common law trade mark – whether respondent's trade mark substantially identical with, or deceptively similar to, appellant's trade mark in respect of similar goods, being goods of the same description for the purposes of s 44 – whether respondent's trade mark in respect of services substantially identical with, or deceptively similar to, appellant's trade mark in respect of closely related goods, being goods closely related to the respondent's services for the purposes of s 44 – whether honest concurrent use for the purposes of s 44 – whether appellant's mark had acquired a reputation in Australia such that use of respondent's mark would be likely to deceive or cause confusion for the purposes of s 60 – whether Court should allow registration of respondent's mark subject to a geographical limitation to Western Australia