This article discusses the recent trade marks office decision of Holdings of IP Pty Ltd AFT Intelligent Assets Trust v Joseph Buttita [2020] ATMO 169.
During Melbourne’s strict lockdown, my partner and I being avid coffee lovers, purchased a new coffee machine. Every couple of weeks we venture down to our local café around the corner and purchase some coffee beans so we can have our morning coffee. What does that have to do with trade marks? Well, a recent decision handed down by the Australian Trade Marks Office referred to this commonplace behaviour when discussing the concept of closely related goods and services.
Background
Joseph Buttita (the Applicant) applied to register the word mark ‘PRIMAL JOES COFFEE CO’ (the Trade Mark) in respect of “Cafe services; Coffee shop services” in Class 43.
Holder of IP Pty Ltd ATF Intelligent Assets Trust (the Opponent) unsuccessfully opposed the application before a Delegate of the Trade Marks Office pursuant to sections 42(b), 44, 58, 60 and 62A.
The Opponent is the registered owner of the following trade marks:
Trade Mark Registration No. 1629917 
Trade Mark Registration No. 1678128 
Opposition to Trade Mark Registration Under Section 44
The Opponent tried to argue that the Applicant’s trade mark was deceptively similar to the Opponent’s trade mark registrations.
To succeed in this ground of opposition, the Opponent had to establish that the trade mark was substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods. For the purpose of this discussion, we will be focusing on whether coffee beans and ground coffee are “closely related” to café services.
Closely Related Goods and Services
The Hearing Officer in his decision referred to Registrar of Trade Marks v Woolworths [1999] FCA 1020 at [37] where French J provided some guidance regarding the concept “closely related”:
The term “closely related” recognises that goods and services are different things…So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”… the ‘relationship may and in perhaps most cases will be defined by the function of the service with respect to the goods’.
For the purpose of this case, the question we need to ask ourselves is whether coffee products are closely related to cafes, coffee shop services and services relating to the provision of food and drink.
The Hearing Officer referred to past decisions, which, at times, provided differing outcomes. For example, in Aroma Coffee & Tea Co Pty Ltd v Aromas Pty Ltd [1997] ATMO 82 goods, including coffee, were considered closely related to, amongst other services, café and coffee shop services. In McDonald’s Inc v Future Enterprises Pte Ltd [2007] ATMO 22 coffee products were found not to be closely related to restaurant and café services. More recently in Kicking House Coffee Co Ltd [2018] ATMO 193 the delegate of the Registrar found coffee, coffee beans and other coffee goods specified in Class 30 to be closely related to café services.
The Hearing Officer made a comment regarding the change in the industry over the last few decades, in particular, it is now commonplace for consumers to source coffee products from the cafes and the cafes increasingly offer coffee beans for sale. The Hearing Officer also said that it would be reasonable for consumers to be aware of the brand of coffee a café is using to make their beverages. This would also suggest that consumers can reasonably expect that these goods and services often originate from the same source.
I myself know this to be true as we purchase our coffee beans from our local café who also provides café and coffee shop services. We purchased the coffee beans after purchasing take away coffees and simply liking the beans they used.
Some well-known examples of other brands doing the same thing include Starbucks and Gloria Jean’s Coffee. Some well-known cafes in Melbourne who roast and sell their coffee under the same brand name as the care include Duke’s Coffee, Seven Seeds, AXIL Coffee Roasters Café and ST. Ali to name a few.
As a result, the Hearing Officer was satisfied that the various coffee goods specified in the Trade Mark Registrations are closely related to café and coffee shop services.
In the end, the Opponent failed to establish Section 44 as the Hearing Officer found that as a whole the combination of visual, aural and conceptual differences between the marks were too great for there to be a real or tangible danger of confusion between the trade marks.
Key Takeaways
- It is commonplace for consumers to expect that the café industry coffee goods are often provided alongside café and coffee shop services, therefore, originating from the same source and weighing in favour of the goods and services being closely related.
- There is an ever-increasing likelihood that you will be aware of the brand of coffee beans that the café uses to make your morning flat white, latte or cappuccino.
Cafes will generally only sell and use one brand of coffee beans. This increases the likelihood of a consumer assuming a connection between the source of the goods and services.