Coffee, Cake, and Class 30: Richards v Black Star Pastry

08.28.25

When you think of a café, you often associate it with the rich, delicious taste of the coffee it serves, a flaky pastry on the side, and everything you’d expect from your local barista. Under the Australian Trade Marks Act 1995, these familiar experiences fall under specific classifications, most notably, Class 30, which includes goods such as coffee beverages and bakery products.

In our latest article, Associate Samantha Ludemann of XVII Degrees delves into the recent decision in Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226. This trade mark dispute examines whether a trader using the name ‘BLACK STAR’ in a different but related sector infringed an existing registered mark, and whether this posed a real risk of consumer confusion regarding the origins of a bakery and a specialty coffee business.

Overview

Judge Manousaridis presided over the dispute between Martin Richards (trading as Blackstar Coffee Roaster) and Black Star Pastry Pty Ltd (BSP). Mr Richards alleged that BSP infringed two registered trade marks for BLACKSTAR used in connection with coffee and related products. The Court dismissed BSP’s cross‑claim and found infringement under ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth) (TM Act).

The Parties

The Applicant, Mr Richards, is the owner and user of the BLACKSTAR marks in connection with roasting coffee beans and making coffee beverages. The Blackstar Coffee Business commenced July 2007 in Brisbane.

The Respondent, Black Star Pastry Pty Ltd, is a bakery business founded by Mr Christopher Thé in Newtown, Sydney, in late 2008, selling pastries and coffee beverages under the sign ‘Black Star Pastry’.

The Trade Marks

Blackstar Marks

Trade Mark No. 1172976 — “BLACKSTAR” (word) (Blackstar 976), effective 26 April 2007, accepted 06 July 2007 (class 30, including coffee and related products).
Trade Mark No. 1288833 — “BLACKSTAR COFFEE” (Blackstar 833), effective 20 March 2009, accepted 19 November 2009 (classes 29, 30, 33).

BSP Marks (collectively, “BSP Trade Marks”)

Trade Mark No. 1449202 “BLACK STAR PASTRY” (BSP202), effective 19 September 2011, accepted 23 August 2013 (classes 16, 30, 43).
Trade Mark No. 1953011 “BLACK STAR PASTRY” (BSP011), effective 04 September 2018, accepted 29 November 2019 (classes 16, 35).

Both relating to the image:

Trade Mark No. 1953012 – “BLACK STAR PASTRY” (word) (BSP012), effective 04 September 2018, accepted 29 November 2019 (classes 16, 30, 35, 43).
BSP trade marks are registered for goods such as bakery products and services such as bakery and café services.
Around December 2021, BSP ceased using BSP202 and BSP011 logos previously deployed, and adopted a new logo: (“New BSP Logo”), while continuing to use BSP012.

Background

Mr Richards applied in person at IP Australia (Brisbane Office) on 26 April 2007 for the BLACKSTAR word mark. He attended alone and signed alone. He gave evidence that Ms Andrews (his then wife and business partner) consented to the filing and that the application was one of many start‑up tasks undertaken on behalf of their partnership.

BSP opened in late October 2008 in Newtown, selling pastries and espresso‑based coffee. Mr Thé did not undertake trade mark searches. BSP used Little Marionette coffee beans initially, later changing equipment and suppliers. BSP’s storefronts and staff uniforms prominently displayed ‘Black Star Pastry’. In July 2018, JKPL BSP Pty Ltd (JKPL), part of the JKLP Group, purchased the majority of shares held by Mr Thé in BSP, after which the business expanded by opening new stores.

Opposition History

On 19 September 2011 BSP sought to register BSP202. On 7 February 2012, IP Australia issued an adverse report noting conflict with Blackstar 976 and Blackstar 833 for closely related services (class 43 ‘cafés’ and ‘providing drink services’) and because all signs shared the essential element ‘BLACK STAR’. BSP amended its specification to limit services (e.g., ‘bakery services; providing food’) to overcome the objection.

On 2 September 2018 BSP applied to register BSP011 and BSP012 (including ‘restaurants; cafés; hospitality services; take away food services’.

Mr Richards filed notices of intention to oppose on 27 February 2019 following a meeting with a JKPL representative that did not eventuate. The Registrar of Trade Marks decided those applications could proceed only if class 43 was pared back (removing ‘restaurants; cafés; hospitality services; take away food services’) and class 35 excluded ‘specialty coffee retailing services’.

In the course of BSP’s trade mark applications, its representatives approached Mr Richards to explore whether consent could be obtained for BSP to register “Black Star Pastry” in respect of café and coffee-related services. Mr Richards expressed concern about brand dilution and potential consumer confusion, and no consent was forthcoming.

Claims and Defences

Mr Richards alleged infringement because BSP used the BSP trade marks in relation to coffee beverages and coffee (registered goods) and to café/specialty coffee retailing services (closely related services) under sections 120(1), 120(2)(b) of the TM Act.

BSP’s key defences were: (a) ownership/cancellation of Blackstar 976 under s 58; (b) no use in relation to registered goods or only ancillary use; (c) no substantial identity/deceptive similarity; (d) statutory defence under s 122(1)(e) by virtue of ‘bakery services’; and (e) disentitlement to relief due to delay/acquiescence.

Key Issues for Determination

Ownership and cancellation: was Mr Richards ‘the owner’ at filing (s 58), given alleged joint ownership with Ms Andrews?
Infringement under s 120(1): did BSP use its marks ‘as a trade mark’ in relation to coffee beverages and coffee goods covered by the Blackstar registrations?
Infringement under s 120(2): did BSP use its marks for café/specialty coffee retailing services closely related to Blackstar’s registered goods, and does the s 120(2) proviso apply?
Defence under s 122(1)(e): were the making/serving of coffee beverages covered by BSP’s registered ‘bakery services’?
Disentitlement to relief: did Mr Richards delay or acquiesce such that relief should be withheld?

Ownership and Cancellation (ss 28, 58)

The Court held that s 58 asks whether ‘the applicant for registration was not the owner of the trade mark at the time of application’ ([92]–[95]). BSP’s premise, that joint owners must jointly apply or else the applicant is ‘not the owner’, was rejected. Section 28 is permissive (‘may together apply’) and does not exhaustively define all co‑ownership situations ([94]).

Critically, the Judge cited M Smith Q.C. and N Leslie, The Law of Assignment, second edition, OUP 2012, at [2.23] regarding the incidents of joint tenancy: “each joint tenant is entitled to the whole of the interest … no joint tenant holds any specific or distinct share” ([96]). Thus, even if Mr Richards and Ms Andrews were joint owners, each was still ‘the owner’. The evidence supported that Ms Andrews consented to Mr Richards filing in his own name ([97]–[99]). Accordingly, BSP’s cross‑claim for cancellation failed.

Use as a Trade Mark and Infringement (s 120(1))

A mark is used ‘in relation to goods’ when used upon, or in physical or other relation to, goods, including on labels, advertising, and websites; and it is used ‘as a trade mark’ when employed as a ‘badge of origin’ indicating a connection in the course of trade between the goods and the user ([152]). Assessment is objective and context‑dependent, including presentation and how consumers would perceive the sign ([152]).

The words ‘Black Star Pastry’ were prominently displayed at or near BSP stores. Consumers observing the signage together with in‑store activities (menus, coffee machines, POS, service) would understand the sign as denoting the source of all goods and services offered there, including coffee beverages, not just pastries ([153]–[158]). Uniforms with ‘Black Star Pastry’ reinforced that connection across all transactions, including ordering and serving coffee ([157]).

BSP offered bagged coffee bearing ‘Stardust’ (with a star boy logo) and ‘Milkyway’ (with a hedgehog logo), with ST. ALi branding partially obscured. In context, consumers would attribute origin to BSP because the goods were offered within the ‘Black Star Pastry’ environment without clear indication of a different source ([159]–[160]). The Court therefore found use ‘as a trade mark’ in relation to coffee beverages and coffee goods.

Substantial Identity and Deceptive Similarity

Substantial identity is assessed by side‑by‑side comparison to determine the total impression of resemblance, having regard to essential features ([162]). The Blackstar 833 (word + star device) was not substantially identical to the BSP word‑only signs; nor were the composite BSP202/BSP011 to Blackstar 976/833—as there are differences in device/layout prevailed.

Deceptive similarity is assessed from the perspective of the notional buyer with imperfect recollection: whether resemblance gives rise to a real, tangible danger of deception or confusion; a reasonable doubt as to common source ([165]–[166]). The dominant, distinctive element ‘Black Star’ appears in both parties’ signs, whereas ‘Pastry’ is descriptive and exerts a lesser impression. The Court found a strong resemblance between Blackstar 976 and BSP012/New BSP Logo; resemblance to the composite BSP202/BSP011 was slightly weaker but still significant given the prominence of ‘Black Star’. Accordingly, the BSP trade marks were deceptively similar to both Blackstar 976 and Blackstar 833.

Closely Related Services and the s 120(2) Proviso

The Court held that BSP provided café services and specialty coffee retailing services, closely related to the registered coffee goods in Blackstar 976 and Blackstar 833. Given the deceptive similarity findings, s 120(2) infringement was established. BSP failed to prove the proviso (that its use was not likely to deceive or cause confusion) in light of the association between café services and coffee goods and the overlap in trading context ([176]–[177]).

Statutory Defence under s 122(1)(e)

BSP argued that making/serving coffee beverages fell within its registered ‘bakery services’ and so its use was a ‘right to use’ a registered trade mark. The Court rejected this: ‘bakery services’ (in class 43) do not extend to the making and serving of coffee beverages. Dictionary definitions and context confined the scope to services associated with baking and sale of baked goods (and perhaps their on‑premises consumption), not beverage preparation ([192]-[194]). The s 122(1)(e) defence therefore failed.

Disentitlement to Relief (Delay, Acquiescence, Unconscionability)

BSP contended that Mr Richards knew of BSP’s use and failed to act, so relief should be withheld. The Court rejected this. From 2011 onwards, registry correspondence and BSP’s own amendments demonstrated that BSP knew consent had not been given for café/drink services. In February 2019, Mr Richards expressly stated in an email to JKPL that he ‘must ensure that [he] protect the name from dilution in the market place’ and then opposed BSP’s new applications; BSP nonetheless pursued expansion ([205]–[213]). Assertion of rights is not confined to commencing proceedings; oppositions and refusals to consent were sufficient assertions. Relief was therefore not barred.

Outcome and Orders

BSP’s cross‑claim dismissed (ownership/cancellation failed).
Mr Richards’ cancellation claims against BSP’s registrations dismissed (save for infringement findings).
Declarations: BSP infringed the Blackstar trade marks by using ‘Black Star Pastry’ in relation to coffee beverages and BSP‑branded coffee.
Matter listed for directions to settle injunction form on 11 September 2025.

For more case studies and insights into the nuances of IP law in Australia, connect with us at XVII Degrees. 

More Insights

Photo by Joshua Earle on Unsplash

References