Black Star Pastry Pty Ltd v Richards (No 2)

Black Star Pastry Pty Ltd v Richards (No 2) [2026] FCA 383 is a Federal Court appeal about trade mark ownership and infringement in the food and beverage sector. The dispute sat between a pastry business using BLACK STAR PASTRY branding and Mr Richards, who owned registered BLACKSTAR marks connected with a coffee business.

The appeal succeeded. The Court held that Mr Richards was not the owner of the BLACKSTAR word mark for the purposes of section 58 at the priority date because he had applied in his sole name when he was one of two joint owners. The Court declared the registration invalid and ordered it cancelled. It also set aside the earlier infringement findings against Black Star Pastry and dismissed the relevant application.

The Court described Black Star Pastry as a specialty bakery or pastry business. It had been commenced around October 2008 by Mr Christopher The and was acquired by Black Star Pastry Pty Ltd in 2011. Its core trade was baked goods such as bread, croissants, pastries, cakes, pies and sandwiches. The Court noted that the business had achieved particular notoriety for its Strawberry Watermelon Cake. But the business was not limited to pastries. It had also sold, and continued to sell, coffee beverages and coffee beans.

Mr Richards' business was different in emphasis. The Court said his Blackstar business principally consisted of roasting and selling coffee beans and making coffee beverages for direct consumption using those beans. So the parties were not identical businesses, but they were close enough in the broader food and beverage market for trade mark conflict to arise, especially around coffee-related goods and services.

The registrations in issue also mattered. Mr Richards was registered as owner of trade mark number 1172976 for the word mark BLACKSTAR, accepted for registration on 4 January 2008 with effect from 26 April 2007. He was also connected with trade mark number 1288833, a composite BLACKSTAR COFFEE mark with a large star graphic. That composite mark had originally been registered in the names of Mr Richards and Ms Evonne Andrews, was accepted on 19 November 2009 with effect from 20 March 2009, and Ms Andrews later assigned her interest to Mr Richards in 2013, with the assignment recorded in 2019.

Black Star Pastry also had its own registered marks. The judgment identifies four. One was a word mark for BLACK STAR PASTRY. Two were composite marks including a logo with the words BLACK STAR PASTRY. A fourth mark was registered in class 30 for a range of bakery and related goods including coffee, tea and chocolate. The Court also recorded that around December 2021 Black Star Pastry began using a new logo in connection with its business.

At first instance, the primary judge found that Black Star Pastry had infringed Mr Richards' marks by using the words BLACK STAR PASTRY in relation to coffee beverages, cafe services and coffee, with a specific exception for some packaged products where the words ST. ALi were visible in their entirety. Permanent injunctive relief was later granted, although stayed. Black Star Pastry had also brought a cross-claim seeking cancellation of the BLACKSTAR word mark on the basis that Mr Richards had applied for and obtained registration in his sole name even though he was one of two joint owners at the time. That cancellation claim failed at first instance, which is why the ownership issue came before the Federal Court on appeal.

The dates recorded by the Court help explain how the dispute developed.

First, the BLACKSTAR word mark had an earlier effective date than the bakery business. The Court recorded that trade mark number 1172976 was accepted for registration on 4 January 2008 with effect from 26 April 2007. That mark was in Mr Richards' sole name on the Register, but the appeal turned on whether he was actually entitled to apply in that way at the time.

Secondly, the pastry business began around October 2008 and was later acquired by Black Star Pastry Pty Ltd in 2011. That means the bakery business developed after the effective date of the BLACKSTAR word mark, but the appeal shows that priority on the Register is not the end of the story if the application itself was defective.

Thirdly, the composite BLACKSTAR COFFEE mark was accepted for registration on 19 November 2009 with effect from 20 March 2009. Unlike the word mark, this composite mark was originally registered in the names of Mr Richards and Ms Evonne Andrews. The Court recorded that Ms Andrews assigned her interest to Mr Richards in 2013 and that the assignment was recorded in 2019.

Fourthly, around December 2021 Black Star Pastry began using a new logo in connection with its business. The primary judge treated allegations concerning one of the bakery's word marks as applying both to that mark and to the new logo, and that approach was not challenged on appeal.

Finally, the procedural timeline matters. The first instance decision on liability was Richards v Black Star Pastry Pty Ltd (No 2) [2025] FedCFamC2G 1226. Orders were made on 1 August 2025 and further orders, including a permanent injunction, were made on 11 September 2025. On 8 April 2026, Downes J granted leave to appeal, allowed the appeal and dismissed the cross-appeal.

The appeal raised two distinct questions.

The first was an ownership and entitlement question under the Trade Marks Act 1995 (Cth). The catchwords identify the issue directly: whether one of two joint owners of a trade mark can apply for registration of that trade mark in that person's own name under section 27, where section 28 permits registration by joint owners and section 20(5) governs the exercise of statutory rights by joint owners of a registered mark. The Court recorded that Mr Richards had applied for registration of the BLACKSTAR word mark in his own name with the consent of the joint owner. The legal question was whether that was enough, or whether he lacked entitlement to apply in that way, making the registration vulnerable under section 58.

The second was an infringement question. The primary judge had found infringement under sections 120(1) and 120(2)(b). On appeal, the Court had to reconsider whether the bakery's use of BLACK STAR PASTRY and related branding was deceptively similar to the registered marks. This required attention to the nature of the registered marks themselves, especially the composite BLACKSTAR COFFEE logo, and to the actual manner in which the impugned marks were used in trade.

The Court also noted that the proposed grounds of appeal raised a novel legal issue for which there was no authority and that even Mr Richards accepted the ground had not been fully considered by any Full Court. That was one reason leave to appeal was granted.

Downes J granted leave to appeal, allowed the appeal and dismissed the cross-appeal. The formal orders are important.

First, the Court declared that Mr Richards was not the owner of Australian trade mark number 1172976 within the meaning of section 58 as at the priority date of that trade mark. The Court also declared that the registration was and had at all material times been invalid. It then ordered, under section 88(1), that the mark be cancelled or otherwise removed from the Register of Trade Marks.

Secondly, the Court set aside the first instance declarations that had found infringement by Black Star Pastry and, in their place, ordered that the application be dismissed. It also set aside the later orders that had granted further relief, including the permanent injunction.

The catchwords explain the core reasoning at a high level. On ownership, the Court found that Mr Richards had no entitlement to apply for registration of the BLACKSTAR word mark in his own name, even though he had the consent of the joint owner. On deceptive similarity, the Court said the primary judge's evaluation had been conducted on incomplete facts. It held that the essential feature of the composite logo was the star graphic, that this feature did not appear in the impugned marks, and that there was no deceptive similarity having regard to the manner in which the impugned marks were used.

The Court also ordered Mr Richards to pay Black Star Pastry's costs of the first instance proceeding, the application for leave to appeal, and the appeal and cross-appeal, including the notice of contention. Those costs-related orders, together with the cancellation and set-aside orders, were stayed for 14 days, or longer if a special leave application was filed within that period, pending final determination of that application and any subsequent appeal.

There are two practical reading points for business owners.

The first is chain of title. Many brands begin informally. A founder and collaborator may create a name together. A logo may be developed before a company is incorporated. A business may later be sold into a company structure. If ownership was joint at the start, a later application by only one person can create a serious defect. This case shows that the defect is not merely technical. It can lead to a declaration that the registration was invalid at all material times and to cancellation of the mark.

The second is that infringement analysis is not just a side-by-side comparison of words. The Court looked closely at the registered marks and the actual use complained of. That matters especially where one registration is a composite logo rather than a plain word mark. If the essential feature of the registered logo is a graphic element, and that element is absent from the challenged branding, the infringement case may be much weaker than a simple name comparison suggests. The Court also emphasised the manner in which the impugned marks were used, which means evidence of real-world presentation can be critical.

For businesses expanding into adjacent products, this is especially relevant. A bakery that starts selling coffee, or a coffee business that broadens into hospitality services, should not assume that overlap alone decides the legal position. The scope and validity of the other party's registrations still need to be tested carefully.

If you are reviewing risk, separate ownership questions from infringement questions. Ownership asks whether the applicant was entitled to file. Infringement asks what the registered mark protects and whether the challenged sign, as actually used, is substantially identical or deceptively similar. Businesses often blur those issues together, but this case shows they can produce very different outcomes.

This page reflects the Federal Court judgment page for Black Star Pastry Pty Ltd v Richards (No 2) [2026] FCA 383, including the orders, catchwords and the published extract of the reasons. The extract is sufficient to explain the commercial dispute, the issues on appeal and the result.

Some finer detail of the full reasoning may sit outside the extract reproduced here. If you need to rely on the case for a live dispute, filing strategy or enforcement decision, the full judgment should be checked closely.