What happened?

Black Star Pastry (BSP) is a Sydney bakery famous for the tooth-ache-on-a-plate Strawberry Watermelon Cake you can see on its website. Do people actually want to eat those things?

Anyway, it’s now also famous in legal circles for successfully fending off a trade mark infringement allegation made against it relating to its “Black Star” name.

BSP initially found itself on the wrong end of a finding made in the lower Federal Circuit and Family Court. It had been sued by Martin Richards, the owner of the Blackstar Coffee Roasters business.

Richards held two registered trade marks: for the plain text mark BLACKSTAR (registration no. 1172976), and also registration no. 1288833 for this logo:

Richards alleged that BSP’s use of the words BLACK STAR PASTRY in its stores – including on signage and staff uniforms – infringed both marks, particularly in relation to the sale of coffee beverages and coffee beans.

At first instance, he won. The lower court granted a permanent injunction restraining BSP from using BLACK STAR PASTRY as a trade mark in connection with coffee. BSP appealed to the higher but similarly named Federal Court of Australia.

Who won and why?

BSP won its appeal. Downes J set aside the injunctions. Unless there’s another appeal and it’s successful, BSP can trade on without change.

The outcome changed for two reasons.

Ground 1 — Joint ownership and invalid registration of the plain text mark

The parties agreed that Richards and his then-wife, Evonne Andrews, had jointly authored the BLACKSTAR mark and jointly used it in a partnership.

Despite this, Richards obtained registration in his sole name. Downes J held that section 28 of the Trade Marks Act was engaged. Paraphrasing, this section says that if the relations between two or more persons interested in a trade mark are such that none of them is entitled to use the trade mark except on behalf of all of them, they may apply together for registration.

Downes J determined that that provision requires joint owners to apply together if registration is sought. Her Honour added that the wonderful word “may” (also present in the neighbouring and relevant section 27) is only there to make clear that trade mark owners are not required to register their marks at all. It doesn’t mean that they can choose to apply independently of one another.

The problem here was that Richards’ decision to register the mark in his name alone created an “unworkable” situation: the registered owner would hold exclusive statutory rights under section 20, while the unregistered co-owner would not.

Consent from Andrews was not relevant. It’s not accommodated by the legislation. It also cannot cure Richards’ lack of statutory entitlement to apply for registration for himself only at the outset. Accordingly, the plain text mark was declared invalid and cancelled from the Register. In turn, it could no longer be infringed.

Ground 2 — No deceptive similarity to the Logo mark

In this case, the registration had initially been applied for jointly by Richards and Andrews. The invalidity problem just described didn’t come up.

The problem for Richards here was that Downes J found the word BLACKSTAR was not the dominant feature of the above logo. The primary judge had failed to assess the mark as a whole, omitting the word COFFEE and the large star graphic from the analysis.

Downes J conducted a fresh evaluation and concluded that the star graphic was the essential feature of the logo – not the word. Since BSP’s marks contained neither the star graphic nor the word COFFEE, consumers were unlikely to wonder whether BSP’s coffee came from the same source as Richards’ “Blackstar” business. No infringement.

What’s the significance for IP practitioners?

Two things:

Sort out ownership early

People who want to file trade mark applications find it annoying to talk to their lawyers about ownership. It’s dreadfully dull, and feels like over-lawyering on a technical sideline. And if there’s a problem, it usually costs some extra money to solve it before the application is filed.

But this case shows that if you get that wrong, the registration you get will be a dead duck. A black star even.

The lesson: DFTU!

Essential questions:

• Who coined the brand?
• Who used it first in the Australian market?
• Is there more than one owner?
• What if there’s a company involved?
• Do you need to execute an assignment document before you apply? That would fix problems but it must be done before the application is filed. Yes it adds cost, but not much. And it might avoid permanently and irretrievably undermining the registration you ultimately obtain.

Some amount of legislative reform might be on the way in this area, particularly to allow honestly made ownership mistakes to be corrected. See IP Australia’s Proposal 7 here. That might have helped Mr Richards in this case if it already existed. But it doesn’t.

Lockups are treated as a whole

When it comes to monopoly power, registrations for lockups featuring words and logos are like the Queen of Spades. They’re not as good as the plain text Ace. If Richards’ plain text registration was valid in this case, he probably would have won.

Lockups are called “composite logos” in the trade marks world. This decision demonstrates the importance of assessing composite logos as a whole. Trade marks owners should think twice before pursuing infringement allegations based on words in a composite logo if prominent graphic elements are also present.

For those interested in the full details, the case citation is: Black Star Pastry Pty Ltd v Richards (No 2) [2026] FCA 383 (8 April 2026)