Vittoria successfully opposes Di Bella Coffee’s trade mark applications on the basis of bad faith

Vittoria Food & Beverage, owner of Australia’s Number 1 pure coffee brand “Vittoria Coffee” has been successful in opposing trade mark applications made by Di Bella Coffee, protecting its interests in its tagline “We Know Coffee”.

Vittoria Food & Beverage has been using the tagline “We Know Coffee” extensively in advertising for the Vittoria Coffee brand since August 2010, and particularly as part of its globally renowned campaign featuring Al Pacino.

Di Bella Coffee began using the tagline “We Know Coffee” in early March 2012, on its Facebook accounts, and within television and print advertisements. One television advertisement features Mr Phillip Di Bella proclaiming “I’m not Pacino” and “I know coffee”. Di Bella Coffee lodged applications in late March 2012 for the trade marks “Di Bella Coffee…We Know Coffee”, and “Crop to Cup…We Know Coffee”.

Vittoria opposed Di Bella Coffee’s trade mark applications under s62A of the Trade Marks Act, on the basis that those applications were made in bad faith.

In a decision handed down by the Australian Trade Marks Office last Thursday, the Hearing Officer declined Di Bella Coffee’s application “on the grounds raised pursuant to s62A of the Act”.

After considering the extensive use by Vittoria of the tagline “We Know Coffee”, and Di Bella Coffee’s knowledge of Vittoria’s brand and use, hearing officer Mr Michael Kirov determined that:

“…I am satisfied in the present case, too, that [Di Bella Coffee’s] actions before and around the Priority Date …. cast significant doubt on its intentions in filing the Applications….The Applicant does not deny that it did so in the knowledge that, indeed because, the Opponent had already been using the Tagline prominently in its advertising for its own coffee products for some time.”

“… [Di Bella Coffee’s] conduct in filing the Applications….fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. It is one thing to imitate a rival’s advertising campaign, but it is quite another to seek to acquire registered rights in trade marks which feature the very Tagline prominently used in that advertising.”

Mr Les Schirato, CEO of Vittoria Food & Beverage, was pleased with the decision.

Says Schirato: “Vittoria is committed to protecting its intellectual property rights. The decision is a great win for companies who have spent time, money and resources in building their brands.”

Today Vittoria Food & Beverage remains a family owned business, boasting three generations of family ownership.