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

The parties in this matter were 50-50 Foundation Pty Ltd (the Applicant) and Win 50-50 Pty Ltd (the Opponent). The dispute concerned the Applicant's application to register the trade mark "Opposed Mark" for lottery services. The Opponent opposed this registration, alleging that the Applicant had acted in bad faith in lodging the application. The decision was made by Iain Campbell Thompson, Hearing Officer, at the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the Applicant had acted in bad faith under section 62A of the relevant Act when applying to register the Opposed Mark. This required an assessment of the Applicant's conduct and intentions in seeking to register the mark, particularly in light of the Opponent's existing use and branding in the lottery market.

The Hearing Officer found that the Applicant had acted in bad faith. This conclusion was based on several factors, including the lack of corroborating evidence for the Applicant's assertion that the "50-50" concept was common in overseas markets, and the absence of evidence suggesting the term was descriptively used or generic in Australia. Crucially, the Hearing Officer noted that the Applicant had copied material from the Opponent's website and emulated the Opponent's trade marks, pitching identical services to the same market. This conscious copying and emulation, coupled with the Applicant's failure to address these issues in its evidence or submissions, led to the inference that the Applicant's actions were not in accordance with acceptable commercial behaviour. The Hearing Officer applied the principle that relevant circumstances, including conduct designed to gain a benefit by appropriating another's indicia and reputation, are considered in assessing bad faith.

Consequently, the Hearing Officer refused to register the Opposed Mark. The Applicant was also ordered to pay the Opponent's costs on the official scale, as the Opponent's evidence and submissions, though self-represented, appeared to be professionally prepared.