Cantarella Bros Pty Ltd ACN 000 095 607 v Energy Beverages LLC [2023] HCATrans 123 (15 September 2023)

Last Updated: 15 September 2023

[2023] HCATrans 123

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
Sydney No S34 of 2023

B e t w e e n -

CANTARELLA BROS PTY LTD ACN 000 095 607

Applicant

and

ENERGY BEVERAGES LLC

Respondent

Application for special leave to appeal

KIEFEL CJ
GAGELER J

TRANSCRIPT OF PROCEEDINGS

AT CANBERRA AND BY VIDEO CONNECTION

ON FRIDAY, 15 SEPTEMBER 2023, AT 10.30 AM

Copyright in the High Court of Australia

KIEFEL CJ: In accordance with the protocol for remote hearings, I will announce the appearances for the parties.

MR A.J.L. BANNON, SC appears with MR B.P. CAMERON and MS N.L. GOLLAN for the applicant. (instructed by Herbert Smith Freehills)

MR N.R. MURRAY, SC appears with MS S. RYAN, KC and MS J.P.S. AMBIKAPATHY for the respondent. (instructed by Davies Collison Cave Law Pty Ltd)

KIEFEL CJ: Yes, Mr Bannon.

MR BANNON: Thank you, your Honour. This application, your Honours, raises for the Court’s consideration the question of whether, under the scheme of Trade Marks Act, the specification of the goods, in respect of which registration of a mark is sought or obtained by reference to goods within a nominated class in schedule 1 of the Regulations, confines the scope of the registration to goods exclusively within that class to the effect that it does not include goods in that class.

The Full Court determined that the classes of goods are not mutually exclusive, and goods identified by reference to one class could be and were, in fact, in this case, the same goods as goods in another class. That is the first occasion that it has been so held. The issue has not been considered previously by this Court and we submit it is a matter of significance in identifying the scope of exclusive rights and the registrability of marks. The application raises the related question as to whether it is permissible to construe the scope of the classes by reference to the Nice Classification published by WIPO. The relevant sections of the Act appear in the application book at page 178. Firstly, section 20 which defines the exclusive rights of the user mark by reference to, at the top of the next page:

the goods and/or services in respect of which the trade mark is registered.

Section 120, which starts at the bottom of 181, the top of the next page is subsection (1), the product related to or provides for infringement, if there is a use for the mark which:

is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

And that must be a reference to the same goods. Subsection (2) extends the scope of the monopoly by providing that it is infringed if the goods in respect of which it is used are:

(a) goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered –

Both as a failsafe or an additional capacity for a defendant to establish that there is no infringement because the words which are key are below subparagraph (d). So, the difference in rights is significant. And then section 44, at page 180 of the application book, at the bottom of the page, provides that:

an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods –

And that is a priority date issue as well. The “similar goods” is defined as, in section 14, on page 178, they include “the same” goods, but goods that “are of the same description” as well. Thus, for that section to operate, or at least be considered, one needs to know, essentially, on the one hand, the scope of the goods of the application – here, the MOTHERSKY application, which was for goods in class 30, coffee in particular, and one must know the scope of the existing registration, here is the “MOTHER” mark for goods within Class 32.

GAGELER J: Mr Bannon, does anything for the purposes of your proposed appeal turn on the difference between “same” goods and goods “of the same description”?

MR BANNON: Fundamental to our argument is that goods are the same goods if they are within the scope of the registration properly construed. Goods of the same description – there is plenty of authority, which we do not seek to challenge, but even within the same – within a single class you could have goods which are the – it would not be relevant to the sections we are looking at – may or may not be the goods “of the same description”, but for the purposes of section 44(1)(a), and indeed, 120 and section 20, I think the short answer is what I have given your Honour: no, there is not point, as far as we are concerned, which arises.

If it is not “the same” goods, then the comparison exercise, which is important, to be relevant to the comparison of whether they are goods “of the same description”, again, you would have to have something which is within the class covered by the – or the goods covered by the application, and something which is covered by the existing registration. They are the only things which can be compared for the purposes of goods of the same description. Again, it is critical to know what the scope of both is. Lastly, section 60, on page 181, where:

The registration of a trade mark in respect of particular goods –

and that is the MOTHERSKY application:

may be opposed on the ground that –

there was an existing reputation, not necessarily in relation to the goods the subject of the application, but, again, it is critical to identify what is the scope of the goods of the application before one can have a sensible consideration of section 60. It follows, we respectfully submit, that the issue of classes and the proper approach to the construction and limitation of a specification by class informs all of the issues on the appeal, if our point is right, and if leave were granted, and decisively so.

If I can briefly seek to demonstrate this by reference to the findings, and, to the extent necessary, I will come back to it. In relation to the point about “same goods”, that is 44(1)(a), the Full Court found at 152, which is application book page 156:

that “coffee” as a beverage falls within the scope of “non‑alcoholic” beverages” –

In other words, our application is for coffee. It is a subset, their Honours found, of non-alcoholic beverages, notwithstanding for different class, and therefore is the same goods. That was contrary to the effect of the submission we have made – 131 and 132. Indeed, an additional submission – sorry, that is the paragraphs of the judgment – an additional submission we made at 129 that milk, coffee flavoured milk, is not within “coffee”, and, indeed, either registration. Then, in relation to goods of the same description, in paragraph 153, on page 156, the court found:

at the very least, as goods of the same description –

that being particularly specific as to why they were doing so, but it does not – it is pretty clear, we submit, that – fundamental to that consideration or opinion, was that by “coffee”, which we have described as coffee‑flavoured milk, as the primary judge did, fell within the MOTHERSKY application as coffee. I will come back to explain how that appears from their judgment, but the short point is that that is Class 29, it is neither Class 30 nor Class 32, and therefore should not have been the subject of the equation consideration of goods of the same description. In relation to the deceptive similarity question, at 157 of the application book, the Full Court applied, at 162, that his Honour carried out the comparison of whether MOTHERSKY and MOTHER were deceptively similar, because his Honour approached it from the background of the wrong analysis of what the application covered. Then at 165, at page 158, their Honours said:

such use would be use on or in relation to goods across the full scope of “non-alcoholic beverages”. This would include “coffee” beverages.

That was the platform against which the Court went on to consider and come to a different view in relation to deceptive similarity. Then, including at 167, their Honours referred to his Honour’s reference to MOTHER being non-distinctive. Their Honours took a different view, but, we would submit, it would seem by reference to the fact that it covered non-alcoholic beverages generally, including energy drinks. If I could just briefly take your Honours back to what his Honour said in relation to the primary judge. At page 76 of the core book, at paragraph 254, the primary judge said:

I do not accept that MOTHER is a highly distinctive, unusual –

Other than in relation to energy drinks. What his Honour had in mind was describing coffee as “mother” or indeed, “father”, is not particularly distinctive – father’s brew, mother’s brew. But when you get to energy drinks, and so therefore the issue of the class is important – and at 326, his Honour picked up, at page 90, the same point, namely that it is descriptive. Lastly, in relation to the section 60 point, the Full Court, at 160 of the book, at paragraph 181, after – I showed you 181, their Honours, at 185, concluded that iced coffee, critically, was part of “coffee beverages”. The last sentence of 186, their Honours said:

The evidence showed that RTD coffee was sold through similar trade channels and in similar areas of supermarkets to energy drinks –

That could only have been true in relation to iced coffee. As their own reasons indicate, coffee in a can was not being sold in that way. In terms of why the argument is correct, namely that the classes are mutually exclusive, can I just refer to these matters: firstly, at page 180 of the application book, section 27(3) is set out. That provides that:

in an application, the application must:

(a) include a representation . . .

(b) specify, in accordance with the regulations, the goods and/or services in respect of which it is sought to register the trade mark.

The MOTHERSKY application did so in this case, and we set that out at page 169 of the application book, at paragraph 12; the top line. It was framed as:

“Class 30: Coffee; Coffee beans –

That is the relevant class, for present purposes. And that formulation confined the goods to those goods in that class.

GAGELER J: Mr Bannon, you took us to 27(3)(b): specification of the goods has to be in accordance with the regulations. Is there anything in the regulations that requires the specification of a class of goods?

MR BANNON: Yes. Sorry. If one goes back to section 19, your Honour, on page 178.

GAGELER J: Section 19?

MR BANNON: Yes. So, 19(1) says:

may be registered in accordance with this Act in respect of:

(a) goods –

And (2):

The registration of a trade mark may be in respect of goods or services of more than one class.

So, that suggests, we would respectfully submit, the use of the word “class”, an ordinary meaning, is a set or categories; things having related attributes grouped together and differentiated from others. There would be, oddly, no need for, we would submit, separation, unless they were going to be different. Then subsection (3):

The regulations may provide for the classes into which goods and services are to be divided –

We emphasise the word “divided”, and secondly:

for the purposes of this Act.

Now, the discernible purposes of the Act, which we have looked at, are the scope of rights: section 44(1), and the infringement provision in section 120. All of which are matters which go to the scope of rights and the scope of the ability to prevent registration of a mark. They are far more than – they are not administrative purposes. There may be additional administrative purposes, but they are purposes of the Act. Of course, additionally, there are non‑use provisions which provide that if you do not use the mark, in respect of which it is registered, you can lose the mark.

Section 69 requires registration of the goods specified and the particulars to be entered on the register. That was addressed in Self Care. Could I take your Honours briefly to a paragraph of Self Care which addresses that, which is behind tab 6 of the application book – of the bundle, sorry, I should say. At paragraph 6, the court referred to:

The structure and policy of the Act –

including a reference to, in (2):

a trade mark is registered in respect of particular goods –

and there is a reference to the Nice Classification. Continuing on in that paragraph, the rights:

including . . . to use the trade mark in relation to the goods or services in respect of which it is registered –

That is consistent with what we have indicated and, perhaps, paragraph 38 of the judgment, as well, about the importance of the register recognising, inter alia, the brackets in parentheses in the middle of paragraph 38:

the identified limits on the monopoly in the form of the mark, the class and the particular goods) –

So, there is working assumption in the Act, we respectfully submit, that a specification of the goods by class is required, and, secondly, has a purpose for the Act going to substantive rights. Thirdly, we would submit, that they are mutually exclusive. In terms of the actual consideration – before I get to the Nice Classification in the publications, if one goes to the actual classes, which is scheduled to the regulation which starts at 184, examples, just from reading this, which indicate an attempt for exclusivity, is at 185. Class 7 says:

Machines and machine tools . . . (except for land vehicles) –

That reflects Class 12 which refers to “Vehicles”, and then Class 19, on the next page, 186:

Building materials (non‑metallic) –

And Class 6 has metallic materials. Class 21 has “(except paintbrushes)”. Class 16, on page 186, specifically includes “Paintbrushes”. Class 33: “(except beers)”, and Class 32 includes “Beers”. While 29, which includes “milk”, 30, and 32, do not have those exceptional words, nevertheless the sense of the whole class system is, we submit, designed to be exclusive. One would interpret that naturally so, but the assistance provided by the Nice Classification, and we have given references to her Honour, Justice Gleeson’s – in Trident, her reliance on that – I do not need to go back to it, and that has been picked up and followed by, in Flexopack, Justice Beach, I think it was the other way around. The Nice Classification – which your Honours should have – firstly, if I could ask your Honours to look at Class 29. That has a statement which says:

Class includes, in particular:

. . .

milk beverages with milk predominating –

Then, on page 5, it has got an item 290072 – “milk beverages, milk predominating”, “milk shakes”. Over on page 6, about halfway down the page, 290192 – “powdered milk”. As for Class 30, if one could put one’s hand on that:

This Class includes, in particular:

beverages with coffee –

It is just under, about three lines down, in the explanatory note:

beverages with coffee, coffee, cocoa, chocolate or tea base –

Then Class 32 documents as a provision which says, in the explanatory notes:

This Class does not include, in particular:

milk beverages (milk predominating)

beverages with coffee, cocoa, chocolate or tea base.

So, the Full Court’s decision that “coffee” covered the same group as another registration is flawed at both ends, and it is not within 32 and not within 33. And the reliance on flavoured milk – iced coffee flavoured milk was, for the purpose of any substantial identity of goods – the same description of goods was also in error because “milk beverages” was within 29, and the evidence in relation to those coffee flavoured milks was one per cent coffee powder and the rest milk.

May it please the Court.

KIEFEL CJ: Yes, thank you, Mr Bannon. Yes, Mr Murray.

MR MURRAY: If it please the Court. By way of context to our learned friends’ application, we submit it is worth noting the following: in order to succeed on any appeal the applicant must not only overturn the same goods finding, it must separately overturn the finding as to goods of the same description, and in a moment I will provide an alternative answer to your Honour Justice Gageler’s question about the relationship between those two concepts.

In addition, the applicant would have to overcome the section 60 finding. An alternative way home for our friends would be to overturn the deceptive similarity finding and the section 60 finding, but, whichever of those combinations applies, it is only the same goods finding that attracts this issue of the Nice Classification which is the only issue of principle advanced by our learned friends.

To turn, quickly, to the relationship between “the same goods” and goods “of the same description”, the distinction arises in section 14 of the Act, but the authorities demonstrate that these are quite distinct concepts. Could I ask the Court, please, to turn, firstly, to paragraph 264 of the primary judge’s reasons, which is in the book at page 78, and there was no contest about this as a matter of principle:

The factors that need to be taken into account in determining whether goods are of the “same description” primarily include: first, the nature and characteristic of the goods and their origin; second, their purpose and the use to which they are put; and third, whether they are commonly dealt with in the same course trade or business, sold to the same sort customers or sold in the same shops –

And so it was that in the E & J Gallo proceeding in the Full Federal Court:

a unanimous Full Court found that beer and wine . . . were goods of the same description.

although they are in different classes in the Nice Classification, and special leave to appeal against that finding was refused. To give a more graphic demonstration of the difference between same and similar goods, could I ask the Court, please, to turn to our response in special leave submissions, at paragraph 4, which is page 191 of the book. We have set out there the observations of Chief Justice Latham in Reckitt & Colman v Boden:

“Goods may be of the same description although they are included in different classes mentioned in the regulations, and they may be of different descriptions though they are included in the same class” –

So, the issue of class is irrelevant to the question of “goods of the same description”. One looks at the factors that identify, as mentioned by the primary judge here. Regardless of whatever academic interest there is in the Nice Classification point, our friends would still confront findings of fact in relation to “goods of the same description” that they would need to overcome. I will come back to that in due course, if I may, after I deal with the first point as to “same goods”.

In our respectful submission, the applicant pays insufficient attention to the statutory scheme. It is insufficient merely to say that the identification of class forms part of the specifications of goods. When one considers the scheme, it is apparent that the requirement that a class be assigned to the statement of goods does not operate to limit the meaning of the words used in the description of goods or services. My learned friend has identified section 19(3) of the Trade Marks Act:

The regulations may provide for the classes into which goods and services –

Schedule 1 of the Regulations are the class numbers and their headings. It is not the full content of the Nice Classification. That full content is not incorporated as a matter of Australian legislation. As my friend has identified, section 27(3) requires that an application for registration specify goods and services in accordance with the Regulations. Your Honour Justice Gageler asked about what the Regulation said about that. The relevant regulation is Regulation 4.4 which is set out in the book at page 201. As subregulation (1) makes clear:

the following subregulations set out the manner of specifying –

this is giving content to the requirement in 27(3). Starting, relevantly, at subregulation (3):

The goods and/or services must be grouped according to the appropriate classes –

so far so good. Then subregulation (4):

The applicant must nominate the class number that is appropriate to the goods or services –

Pausing here, in our submission these provisions demonstrate that (a), the goods and services for which protection is sought; and (b), the classification of those goods and services are distinct things in the legislative regime. You attribute class to the goods and services, you do not use class to modify the content of them. Neither text nor context suggests that this nomination exercise substantively alters the content of the goods and services specified. That is description of the goods and services and attribution of class are different steps in the statutory scheme. There is further support for this construction, your Honours. Subregulation (6) specifies that:

The goods and/or services must, as far as practicable, be specified in terms appearing in any listing of goods and services that is:

(a) published by the Registrar –

Then subregulation (7) says if there is any difficulty with that:

the applicant must provide sufficient information to enable the Registrar to decide the classification of the goods and/or services.

In our submission, this is another powerful indication that the specification of goods and services is distinct from classification because it is not the role of the Registrar to choose the substantive content of the goods and services. And if our friends are right that the attribution of class does so, then you would be attributing, in the scenario envisioned by subregulation (7), a function in the Registrar of defining the substantive content of the goods and services, rather than examining the application in terms of the goods and services nominated by the applicant, which is the correct approach to the statutory scheme, and deciding whether that application for registration should be accepted.

Further support for this is provided by section 32 of the Act – I am sorry, it is not in the materials. The effect of section 32 is that if a question arises as to the proper class into which goods and services should fall, that question is to be decided by the Registrar, and no appeal lies from that decision. This may be compared to rights of appeal granted by the Act under section 35, which arises where there has been an adverse examination; section 56, where there is an opposition to the application for registration; and section 67, where an applicant wishes to appeal against the Registrar’s decision in respect of an application to amend the registration.

Each of those scenarios may well give rise to issues as to where similarity of goods means that the application for registration cannot proceed, and if there is a contest about whether goods are indeed the same, there is a right of appeal or a right to apply for an amendment so as to modify the scope of services. If our friends are right that an attribution of class substantively alters the content, and if there is a debate about that, it is determined by the Registrar with no right of appeal, that is confining the substantive content of an applicant’s rights with no recourse, and that is a very unlikely construction, in our respectful submission.

GAGELER J: Mr Murray, in relation to section 32, the explanatory memorandum for the Trade Marks Bill 1995 contained these sentences:

The use of a classification system is for administrative purposes only, and has no effect on the trade mark owner’s statutory rights. The system, consistent with those used by most trade mark offices around the world, assists in the efficient searching of trade mark data.

That seems to accord with the way in which you frame your submissions.

MR MURRAY: It does, with respect, your Honour, and it is consistent with commentary – for example, in the Nikken Case, Justice Wilcox disregarded the class because it was in conflict with the description of services, and his Honour relied on the venerable English text of Kerly, which made the observation in very similar terms to the one your Honour has just put to me, and so there is a pattern precisely to that effect.

Your Honours have been taken to schedule 1 and the headings. It is apparent, on their face, they are illustrative, not exhaustive. They are not precise descriptions of all the things that fall within the full Nice Classification. The headings, in fact, can obscure matters to one who is not practiced with the fine detail of the way the classification works. For example, in Class 25, “clothing” is in the heading, but when one is immersed in the detail of these things, if one wants registration for protective clothing, one specifies Class 9.

Now, it would be exceedingly odd if the difference between “clothing” and “protective clothing” were to be so significant that your desire for protection would be frustrated by an incorrect attribution of class as between 25 and 9, when on the classes as provided to applicants for trade mark registration, the headings set out in schedule 1 of the regulations, there is absolutely no indication of that discrepancy. So, it is, on its face, a very unsafe basis for definitional attribution of content to goods and services as opposed to an administrative function, given the ever‑expanding number of goods and services that economies deal with. In order to try and manage the system, trade mark offices around the world use the Nice Classification to assist with searching. That is what it is for; it goes no further than that.

Can I move then to the issue of goods “of same description” as it applies on the facts of the case. I have dealt with the issues of principle. Your Honours, it was common ground below that the reference to “coffee” in our learned friends’ application for registration included coffee in beverage form. But that was the extent of the agreement. There was then disagreement as to what that meant. The Full Court in its reasons, at paragraph 109, on page 147 of the book, encapsulated our learned friends’ submission below as to the scope of the beverage conception of “coffee” in the application for registration – means:

“coffee in its input form and coffee when made into a beverage, which fits the description of coffee”.

With great respect, the Full Court is exactly right when it identified that this begs the question of what beverage fits the description of “coffee”. One then goes to paragraph 128 of the Full Court’s reasons on page 151 of the book, picking up from about line 4 on that paragraph:

there is nothing in the specification, so construed, which would limit the meaning of “coffee” to any particular coffee beverage or to any particular kind or type of coffee beverage. For example, there is nothing to limit “coffee” to black coffee as opposed to white coffee or coffee made with milk. There is nothing to limit “coffee” to coffee that does not include some additive such as, for example, a flavoured syrup. Further, there is nothing to limit “coffee” to a hot beverage or a freshly‑brewed beverage as opposed to a cold or iced beverage. Further still, there is nothing to limit “coffee” to coffee produced by a particular process or prepared in a particular way, or to coffee packaged and promoted in a particular way. There are many permutations of what constitutes “coffee” as a beverage.

In our respectful submission, those considerations are unanswerable. Once it is accepted that “coffee” in the specification extends to coffee in its beverage form, then all of those permutations come into play. Although the Full Court expressed some surprise as to whether, in different circumstances, that application for registration might be understood to include coffee in beverage form, in our respectful submission, our friends’ concession below is plainly right because a consumer’s primary conception of coffee is a beverage for consumption. So, there ought to be no . . . . . down of the beverage aspect of coffee. That is what consumers want it for. Its trading and economic significance is so that it can be drunk.

Then moving forward to paragraph 136, on page 153 of the book, there the Full Court identified matters from before the priority date of our friends’ application demonstrating the crossover between iced coffee products, what our friends would consider pure coffee products in the beverage form, and energy drinks. So, in the Food & Beverage magazine, “Non‑Alcoholic Beverages Award Finalists”, we have things like “Ice Break Loaded”, which is “real iced coffee”, we see from 137, with guarana provided for additional energy. In the same breath, picking up in paragraph 140 what perhaps a coffee connoisseur might regard as their preferred form of coffee. These are all in the same spectrum – well, they are all on a spectrum of coffee beverages. As that passage from 136 to 146 demonstrates, we have coffee products included in ready‑to‑drink form, including in black and white form, in iced coffee format, in cans ready to drink.

If I could then ask the Court, please, to turn for a graphic demonstration of this crossover in the primary judge’s reasons, in paragraph 112, application book page 43, there was a 7‑Eleven Facebook post – 7‑Eleven, the well‑known convenience store – and we can see the post over the page on 44. There they are advertising freshly ground coffee available at 7‑Eleven within even my learned friend’s conception of what coffee is, and 7‑Eleven says:

I’m the reason you can get out of bed in the morning.

That is, the freshly ground coffee. Mr Toth, a poster to Facebook, holding up a can of Red Bull says, well, this is “My reason”. As in, well, I have an alternative in this energy drink. And 7‑Eleven says:

oooo we sell those too –

This is strongly resonant of the reasoning of the Full Court in Gallo, looking at products pitched as alternatives, sold through the same trade channels, falls very neatly in with the Full Court’s analysis of the crossover of these products. The finding that these are goods of the same description, as that concept is properly understood, was inevitable.

As to deceptive similarity, there is simply no issue of principle. The fact that “MOTHERSKY” is a made‑up word does not deprive the consumer of the ability to recognise the constituent elements of “mother” plus “sky”. And “mother” has no meaning – it might be a commonly used word, but it has no meaning in the context of non‑alcoholic beverages. It is inherently distinctive. “MOTHERSKY” takes all of that mark. It was a
completely conventional – a deceptive similarity analysis undertaken by the Full Court and there are no alarm bells to warrant visitation.

Section 60 sits in a different context, because there is no requirement that the marks be deceptively similar, and no requirement of similarity of goods or services. Of course, issues of similarity will be relevant to the statutory question of whether people are likely to be misled or confused, but because there are both threshold definitional requirements our friends, even if successful on all other grounds, would face a completely fact‑dependent and fact‑heavy appeal to prevail overall, such that whatever might be said about the Nice Classification it is not an appropriate vehicle.

May it please the Court.

KIEFEL CJ: Thank you, Mr Murray. Do you have anything in reply, Mr Bannon?

MR BANNON: Yes, your Honour. In relation to the section 32 in the explanatory memorandum point, could I take your Honours to Justice Gleeson’s judgment, which I referred briefly before, at paragraph [48], tab 8 of the bundle. At paragraph 148 – I am sorry, paragraphs [48] and [49] of their judgment, in particular [49], your Honour opined that the class, where it is framed as “Class 29:”, as it was in that case, which appears from paragraph 4 of the judgment, it is to be construed by reference to the scope of Class 29 at the time. That is a finding that would be defined a monopoly by reference to how it is framed.

Now, the particular application in the . . . . . registration both use the same language in the sense of “Class: certain goods”. The courts, both below and above, treated the class as confined to the goods in that particular class – and that is Full Court, paragraph 81. But the point of the Full Court was that the classes overlap. That was the point. Coming back to the explanatory memorandum, section 19(3) referred to the purpose of the Act. The explanatory memorandum does not say that it is for an administrative purpose.

So, it is hard to reconcile, with respect, 19(3) and the words of the explanatory memorandum for 32, where nothing is taken up in the legislation to make that clear, and in circumstances whether one has courts construing the exclusive rights by reference to the proper construction of the class. Now, if it be the case that it is irrelevant for the exclusive rights then we would respectfully submit that this is something which this Court should resolve.

We submit it is, notwithstanding the words of the explanatory memorandum, and, indeed, the problem is, as we have said, they have a
registration for non‑alcoholic beverages. They can serve under 121 for coffee, and anything else which drags within that, which is, we would respectfully submit, a surprising outcome. The only other merit I want to mention, my learned friend said there is a massive – sorry, a significant factual debate in relation to goods of the same description.

Could I take your Honours back to the Full Court’s judgment at paragraph 136, at appeal book 153. The matters their Honours rely upon as the matters which their Honours could identify in the evidence which existed – and this is stopped at 140, which existed before the relevant date – the only matters referred to there are iced coffee, and secondly, 143, Campos.

The Campos products were not being sold at the supermarket; they were sold in flagship stores. So, our point about classification: if they are truly milk products, as his Honour the primary judge found, classification will determine . . . . . for identity, a substantial – the same description applies, as well. The primary judge’s finding in relation to the needs of the – we have referred to it in the submission, but I think it is paragraph 309. So, there is no substantial debate. As we have said before, the classification issue will inform that, and with respect, would then determine all issues.

May it please the Court.

KIEFEL CJ: The Court will adjourn briefly to determine the course that it will take.

AT 11.14 AM SHORT ADJOURNMENT

UPON RESUMING AT 11.18 AM:

KIEFEL CJ: In our view, there are insufficient prospects of success in this matter to warrant the grant of special leave. Special leave is refused with costs.

AT 11.18 AM THE MATTER WAS CONCLUDED