Trade Mark Disputes – Not all Sheep are the same

On 30 June 2020, Chris and Dora Di Lorenzo unsuccessfully appealed for a decision against the Registrar of Trade Marks regarding the registration of the proposed trade mark BLACK SHEEP by Denversian Pty Ltd.

The Di Lorenzo’s were the registered owners of the stylised logo ‘BLACK SHEEP’ for coffee related services in class 43 (De Lorenza Mark). Denversian Pty Ltd applied to register the word ‘BLACK SHEEP’ for restaurant related services in class 43 (Denversian Mark).

What was the reasoning for the decision?

First Use

The De Lorenzo’s attempted to oppose the Denversian Mark on the basis that they had been using the De Lorenza Mark since September 2011, a full two years prior to the registration of the Denversian Mark. In establishing ‘first use’, the De Lorenzo’s needed to show that the mark was used ‘in the course of trade’.

The court was not satisfied that the De Lorenzo’s had in fact been using their mark since 2011 in the course of trade, because there was no evidence in the form of receipts, menus’ brochures, or other offerings to suggest this. They only had the registration of a domain name, business cards and a bank statement which noted in the name of ‘Black Sheep’.

In contrast, Denversian Pty Ltd had evidence to show they had continuous and consistent use in the course of trade of the Denversian Mark from 2013 under the business name ‘Black Sheep Bistro’.

Substantially identical

The court also held that the two Marks were not substantially identical for the purpose of s58 of Trade Marks Act 1995. That is, the stylised text in the De Loreza Mark when compared to the plain text wording of ‘BLACK SHEEP” that Denversian Pty Ltd sought to register, was distinct.

The court held that the stylisation was actually an integral part of that Mark and therefore made it distinguishable from the plain text wording “BLACK SHEEP”.

Some key takeaways

  • It is better to register the word and the logo if budget allows, to prevent circumstances like this!
  • If registering a logo, the stylisation of the words in your logo will form an essential and necessary part of its identity.
  • To demonstrate that a mark has been used ‘in the course of trade’, a business must provide evidence that shows an objective commitment to offer goods and services under that trade mark – a business name or domain name registration will not suffice.

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