50-50 Foundation Pty Ltd v Win 50-50 Pty Ltd

[2019] ATMO 56

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 50-50 Foundation Pty Ltd to registration of trade mark application 1787249 (41) - WIN50/50 (Fancy) - in the name of Win 50-50 Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Self represented Applicant: W Legal Pty Ltd
Decision:	2019 ATMO 56 Trade Marks Act 1995 Section 52 opposition to registration - grounds under sections 42, 58, 60, and 62A of the Act. Ground under section 62A established. Registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Win 50-50 Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

   Application No:         1787249

   Priority Date:             5 August 2016
   Services:  Class 41: Lottery services
   Trade Mark:               

   (‘the Trade Mark’)

2. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration on 5 January 2017 in the Australian Official Journal of Trade Marks.

3. On 3 March 2017, 50-50 Foundation Limited (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark, followed, on 29 March 2017, by a Statement of Grounds and Particulars which details grounds of opposition under sections 42, 58, 60, and 62A of the Act.

4. On 2 August 2017, the Opponent filed its Evidence in Support being a declaration by John Cameron Corry, Director of the Opponent, made on 3 August 2017, with Annexures JC-1 to JC-15 accompanied by a further confidential declaration (‘Corry 2’) made by Mr Corry on the same day.

5. On 30 October 2017, the Applicant filed its Evidence in Answer, being a declaration by Olaf Jan Borutz, Legal Representative of the Applicant, made on 30 October 2017, with Annexure A.

6. On 4 January 2018, the Opponent filed its Evidence in Reply, being a declaration (‘Corry 3’) made by Mr Corry on 29 December 2017 with Annexure JC-16.

7. Subsequently, both parties have been advised of their right to request a hearing or to make written submissions.  The Opponent has filed written submissions by Mr Corry; and the Applicant has filed written submissions by W Legal and Advisory.

8. Now, in order that the Registrar may discharge the duty imposed by section 55 of the Act to decide this matter, it has been passed to me, one of the Registrar’s delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

   Onus and Relevant Date

9. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

10. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application.

    Evidence

    [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

    The Opponent

11. Mr Corry explains:

    The Opponent is a non-profit company that was established in 2012. The Opponent is the trustee of the 50-50 Foundation, a registered charity with the Australian Charities and Not-for-profits Commission.

    In 2012, the Opponent engaged Hoopla Creative Agency to research and design the trade marks for the Opponent's services.

12. Mr Corry states that since 2013 the Opponent has been using the trade marks which appear below:

    50-50

    (Collectively, ‘the Opponent’s Trade Marks’)

13. Mr Corry also states:

    The Opponent has its headquarters in Queensland, Australia, and provides services in Queensland, New South Wales and South Australia. The Opponent organises and operates charity raffles, competitions, games, lotteries and fundraising events for sporting organisations and their charity partners under the [Opponent’s Trade Marks].

    The Opponent has acquired a reputation in the [Opponent’s Trade Marks] in relation to a variety of goods and services, including:

    ·charity raffles, competitions, games and lotteries;

    ·fund raising events and activities; and

    ·event management services in relation to fund raising events.

14. My understanding is that the above services of the Opponent (‘the Opponent’s Services’) are, in the main, offered by the Opponent at sporting events.  Concerning this, Mr Corry states:

    The Opponent first used the [Opponent’s Trade Marks] at the Broncos vs Cowboys NRL game on 12 April 2013 which had an attendance of 42,556 people. The game was televised live on Channel Nine in Queensland and New South Wales and Australia-wide on Fox Sports. Annexed and marked JC-3 is an article published by Newscorp Australia on 20 April 2012 referring to the launch of the 50-50 Charity Raffle at the game.

15. Since then, the Opponent’s Trade Marks have been used in relation to the Opponent’s Services at NRL, Super Rugby and AFL games as well as at V8Supercars, the Brisbane Global Rugby 10 and the Royal National Agricultural Show.

16. The Opponent has a website at and Mr Corry states that between 1 July 2014 and 5 August 2016 there were over 45,000 pages views of that website.

    The Applicant

17. Mr Borutz asserts that the Applicant runs a lottery in South Australia.  Like the Opponent’s Services, Mr Borutz asserts, the lottery is run at sporting events.  Mr Borutz states:

    The concept underpinning the Lottery is common in the United States of America and Canada (Lottery Concept).

    Numerous successful sporting organisations operate similar popular lotteries including, the Vancouver Canucks who compete in the National Hockey League, Philadelphia Eagles, Indianapolis Colts and the Pittsburgh Steelers who compete in the National Football League, the Cleveland Cavaliers who compete in the National Basketball Association, and the Los Angeles Dodgers who compete in the Major League Baseball.

    Rodney Phillip Jameson (Jameson), the sole director, secretary and shareholder of the Applicant, first became aware of, and experienced, the Lottery Concept in Canada in 2005.

    Since 2010, Jameson spent numerous years developing the brand and concept of the Lottery. This is evidenced by discussion of this concept in an email dated 29th June 2010 between Jameson and Tinley Lewis of the Adelaide Football Club, in which Jameson discussed the Lottery Concept.

18. I note now that none of the above assertions are corroborated by supporting material.  I weigh them accordingly.

    Dealings between the Parties

19. Mr Corry states:

    In light of the close similarities between the Opposed Mark and the [Opponent’s Trade Marks], I do not believe that the Applicant honestly adopted the Opposed Mark or made the trade mark application in good faith.

    I believe the Applicant knew of the [Opponent’s Trade Marks] and intended to take advantage of the reputation that the Opponent has established in the [Opponent Trade Marks].  This is because the Applicant copied parts of the Opponent's website. Annexed and marked JC-13 are screen shots of the Opponent's website and the copied parts of the Opponent's website as they appear on the Applicant's website.

20. Mr Corry states that portions of the layout and explanations on the Applicant’s website are similar and some of the text is copied almost word for word.  For example:

    Opponent’s Website:

    Your odds of winning the prize money is directly related to the number of chances sold in each draw.  If 45,000 tickets are sold and you have spent $6 and received 3 chances, the odds of winning are 1:15,000.  As the draw increases in value throughout the event your chances of winning decrease although the prize value increases.

    Applicant’s Website

    Your odds of winning 50% of the Jackpot is directly related to the number of tickets sold in each lottery.  If 5,000 tickets are sold and you have spent $10 and received 3 tickets, the odds of winning are 1:1,600.  As the Jackpot increases in value throughout the event your chances of winning decrease although the prize value increases.

    Opponent’s Website

    50-50 guarantees the greater of a minimum prize of a fixed amount of cash at each game or 50% of the gross ticket sales.  The winner will receive the prize in cash (to a maximum value of $100,000). The trustee of 50-50 will determine the minimum fixed prize prior to each event at which the 50-50 system is used.

    Applicant’s website

    Win 50-50 guarantees the greater of a minimum prize of a fixed amount of cash at each game or 50% of the gross ticket sales (Jackpot).  Win 50-50 will determine the minimum fixed prize prior to each event at which the Win 50-50 system is used.

21. Mr Corry further states:

    The Opponent sent a letter of demand dated 7 March 2017 to the Applicant regarding the copyright infringement. Annexed and marked JC-14 is a copy of the correspondence between the Opponent and Applicant in relation to this matter.

    The Applicant responded to the Opponent on 23 March 2017 agreeing to change the copied material on its website. However, as at the date of this declaration, the Applicant has not removed the copied parts from its website. Annexed and marked JC-15 is a copy of the letter from the Opponent to the Applicant dated 23 March 2017.

    Section 62A

    Statement of Grounds and Particulars

22. In its Statement of Grounds and Particulars the Opponent asserts:

    The Opponent has used the [Opponent’s Trade Marks] in Australia since at least 2013. The Opponent has acquired a reputation in the [Opponent’s Trade Marks]. The Opponent’s Services are the same or similar to the Applicant’s Services.

    The Applicant was aware of the [Opponent’s Trade Marks] and chose the similar Applicant’s Mark so as to leverage or springboard off the Opponent’s reputation and goodwill.

    The Applicant’s knowledge of the [Opponent’s Trade Marks] and its reputation can be seen from a comparison of the Opponent’s website at and the Applicant’s website at where the Applicant has copied the Opponent’s website content in a manner amounting to copyright infringement.

    The Applicant knew that its conduct in relation to adopting and applying for the trade mark and using associated advertising, such as the website at would increase the likely confusion between the Applicant’s Mark and the [Opponent’s Trade Marks] and would also falsely represent that the Applicant’s Mark was sponsored or approved by, or had an affiliation with, the Opponent, the [Opponent’s Trade Marks] or the Opponent’s Services.

    In making the application for registration of the Applicant’s Mark, the applicant demonstrated conduct of an unscrupulous, underhanded or unconscientious character.

    In all the circumstances, persons adopting proper standards would regard the Applicant’s decision to file the application for registration for the Applicant’s Mark as in bad faith and reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

    Section 62A - Framework

23. Section 62A of the Act provides:

    62AApplication made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

24. In DC Comics v Cheqout Pty Ltd[3] (‘Chequout’) Bennett J referred to the judgment of Kenny J in Fry Consulting v Sports Warehouse Inc (No 2)[4] and said:

    [3] [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334 at [60].

    [4] [2012] FCA 81; (2012) 201 FCR 565.

    Her Honour considered (at [144]) the Explanatory Memorandum relating to s 62A, which stated:

    1.The Act allows removal of a trade mark on the basis that there was no intention in good faith to use, authorise use of, or assign the trade mark. However, current opposition grounds do not cover instances in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith. There have been several instances in which trade mark applicants have deliberately set out to gain registration of their trade marks , or have adopted trade marks, in bad faith. Some examples of these include:

    a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;

    a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and

    business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

    When such situations occur, there is very little third parties can do to prevent registration of this type of trade mark, because existing grounds for rejection and opposition do not allow the Registrar to take these facts into account.

    Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.

    Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:

    ·     Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

    ·     Bad faith does not require dishonesty.

    ·     Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    ·     The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

    ·     ◦It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.

    ·     ◦The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.

    ·     All the circumstances surrounding the application to register the mark are relevant.

    ·     An act of bad faith cannot be cured by an action after the date of application.

    Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:

    ... mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

    Submissions

25. Relevant to my consideration of this ground the Opponent submits:

    … it can be readily inferred that the Applicant, through its sole director Mr Rodney Jameson, had knowledge of the [Opponent’s Trade Marks] and the Opponent's Services before the Filing Date and intended to take advantage of the Opponent's reputation in the [Opponent’s Trade Marks] and mislead consumers given the Applicant copied parts of the Opponent's website and, despite the Opponent's demands, had not removed the copied parts from the website as at 29 December 2017.

    […]

    The Opponent was not aware of any use of the mark 50-50 either as a word or stylised logo (or any substantially identical mark) in relation to the Opponent's Services (or any similar services, including the Applicant's Services) in Australia by any third party, including the Applicant, prior to the Opponent's first use of the Opponent's Marks in 2013.

    The Applicant has not provided any evidence of use of the mark 50-50 either as a word or stylised logo (or any substantially identical mark) in relation to the Applicant's Services (or any similar services) in Australia (or overseas) prior to the Opponent's first use in April 2013.

    In paragraph 10 and 32 of the EIA Declaration, the Applicant refers to discussions (by someone other than the Applicant) and the alleged development of a 'Lottery Concept' (defined in paragraph 9 of the EIA Declaration) since 2010. However, no evidence is provided by the Applicant of the trade mark (if any) used in relation to the alleged 'Lottery Concept'.

    Similarly, the Applicant refers (at paragraphs 9, 10 and 32 of the EIA Declaration) to 'Lottery Concepts' being operated by sporting organisations in the United States and Canada. However, the Applicant does not provide any evidence of the trade mark (if any) used in relation to any 'Lottery Concept' in the United States and Canada or evidence that such marks were in use in Australia before April 2013.

26. And the Applicant submits:

    i. the Applicant simply sought to protect its brand in the lottery market, where it had started to build a strong identity, by seeking to register the Opposed Mark;

    ii. the Applicant lodged the Opposed Mark nine (9) months prior to the Opponent’s Priority Date; and

    iii. as set out in paragraph 6.4 above, the Opposed Mark is clearly distinguishable and significantly different in form and substance to the Opponent’s Marks.

    The propositions and assertions set out in the paragraphs above evidence that:

    i. the Applicant did not lodge the Opposed Mark using special knowledge in the interests of gaining an advantage over any other mark, or in breach of a duty or agreement in respect of any other mark;

    ii. persons adopting “proper standards” would not consider the registration of the Opposed Mark, as previously sought by the Applicant, as an action made in bad faith; and

    iii. the Applicant has not exhibited any behaviour which may give rise to wrongdoing for the purposes of section 62A of the Act.

    Consideration

27. The following factors go to my reasoning concerning the assertion of bad faith:

    ·     Whilst the Applicant asserts that the concept underpinning the lottery services of the parties is common in the USA and Canada, there is no corroborating evidence of this before the Registrar;

    ·     Similarly, there is no suggestion by the Applicant (nor is there evidence) that the term ‘50-50’ is commonly descriptively used by third parties in relation to such services (whether in Australia or overseas) or is in any way generic in relation to such services;

    ·     The Applicant’s rehearsal on its website of material from the Opponent’s website indicates a conscious decision to iterate that material and there is an inference that the Applicant also both emulated one or more of the Opponent’s Trade Marks and pitched the identical services at the same market.  In reaching these conclusions I do not consider that it is necessary to consider whether the Applicant has breached the copyright that the Opponent has in the material on its website – it is sufficient to observe that there has obviously been a marked degree of conscious copying;

    ·     These factors indicate that the Applicant has copied the concept, material and branding for the 50-50 lottery from the Opponent (including the distinctive 50-50 element);

    ·     A person acting in accordance with acceptable standards of commercial behaviour would not engage in all of these actions; and

    ·     The Applicant has not addressed all of these issues in its evidence or in its submissions.

1. In so finding I note the words of Bennett J in Chequout at [73]:

   In my view, the inference is clear, from the immediate use of the Trade Mark together with the BG Shield Device that, in making the application to register the Trade Mark, Mr Gabrielle (and therefore Cheqout) intended to use it in combination with the BG Shield Device in order to strengthen the allusion to Superman. The inference can also be drawn that this use was designed to gain a benefit by appropriating Superman indicia and the reputation of the DC Comics superhero, so as to further the viewer’s association between the Trade Mark and the Superman word mark.

   This is a “relevant circumstance” in a consideration of bad faith for the purposes of s 62A (Fry at [167]).

2. And at [76] of Cheqout Her Honour stated:

   Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. That aspect is the subject of other grounds of opposition, such as ss 43 and 60. Such a requirement would, in my view, contradict the legislative intent in introducing a new ground of opposition by limiting its application to circumstances provided for by existing grounds.

3. Similarly, here, the Applicant’s rehearsal of the text that is on the Opponent’s website on its own website (viewed in combination with the similarity of the Trade Mark to the Opponent’s Trade Marks) may be reasonably inferred to have been done to further a perception of an association between the Trade Mark and both the Opponent’s Trade Marks and the Opponent’s Services.

4. The Opponent has established its ground under section 62A of the Act.

   Decision

5. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

6. I refuse to register application 1787249.

   Costs

7. Both parties in these proceedings requested their costs. Whilst the Opponent represented itself, its evidence and submissions appear to have been professionally prepared. In terms of section 221 of the Act, I therefore award costs against the Applicant at the official scale in Schedule 8 to the Trade Mark Regulations 1995.

   Iain Campbell Thompson
   Hearing Officer
   Trade Marks Hearings
   9 April 2019