A Local Group Pty Ltd v Regan Long and Sarah Fenson

[2023] ATMO 91

TRADE MARKS ACT 1995

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

Re:Opposition by A Local Group Pty Ltd to registration of trade mark application number 2135001 (class 32) - LOCAL BREWING CO with device - in the names of Regan Long and Sarah Fenson

Delegate:

Anne Makrigiorgos

Representation:

Opponent: None

Applicant: Spruson & Ferguson

Decision:

2023 ATMO 91

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 59. 60 and 62A considered – none established due to lack of evidence – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by A Local Group Pty Ltd (‘Opponent’) to registration of the following trade mark:

   Trade mark number:      2135001 (‘Application’)

   Trade mark:   (‘Trade Mark’)

   Applicants:  Regan Long and Sarah Fenson (‘Applicants’)

   Filing Date:  11 November 2020 (‘Relevant Date’)

   Specification:  Class 32: Beer; beer, ale and lager; beer, ale and porter; beer, ale, lager, stout and porter; beer, ale, stout, porter; beers; black beer (‘Applicant’s Goods’)

   [1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

2. The Trade Mark was examined and advertised as accepted for possible registration on 26 November 2021.

3. On 25 January 2022, the Opponent filed a Notice of Intention to Oppose the Trade Mark. On 2 February 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicants on 8 April 2022. The Applicants filed a Notice of Intention to Defend the opposition on 6 May 2022. No evidence was filed by either of the parties.

4. The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Applicants requested a decision without a hearing.  I make this decision as a delegate of the Registrar of Trade Marks based on the information in the SGP.

Grounds, Onus and Relevant Date

1. In the SGP, the Opponent particularised grounds of opposition under ss 59, 60 and 62A.The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date, being both the filing date and the priority date of the Trade Mark.

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 59

1. Section 59 provides:

   59  Applicant not intending to use trade mark

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a)  to use, or authorise the use of, the trade mark in Australia; or

   (b)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services specified in the application.

   Note:          For applicant see section 6.

2. The burden is with the Opponent to demonstrate a prima facie case that the Applicants, at the time of filing this Application, did not intend to use the Trade Mark.[4] If a prima facie case is established, that burden will then generally fall to the Applicants to offer positive evidence of their intention to use the Trade Mark at the Relevant Date.

   [4] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161] (Jacobson J).

3. The act of filing an application for registration of a trade mark carries with it a rebuttable presumption that the person applying holds an intention to use a trade mark.[5]

   [5] Aston v Harlee Manufacturing Co (1963) 103 CLR 391, 401 (Fullagar J) and Suyen Corporation v Americana International Limited [2010] FCA 638, [190], [197] (Dodds-Streeton J).

4. The Opponent has merely made unsubstantiated claims in the SGP that at the time of filing this Application, the Applicants did not intend to use the Trade Mark.  As the Opponent has not provided any supporting evidence that the Applicants did not hold the requisite intention, the Applicants have no case to answer under this ground.

5. Accordingly, the Opponent has not established the ground of opposition under s 59.

Section 62A

1. Section 62A provides:

   62A  Application made in bad faith

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

2. As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[6]

   [6] [2012] FCA 81, [167].

3. In DC Comics v Cheqout Pty Ltd,[7] Bennett J noted that:

   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.

   [7] [2013] FCA 478, [62].

4. The Opponent has merely made unsubstantiated claims in the SGP as to the Applicants’ intentions in filing the Application.  As the Opponent has not provided any supporting evidence that the Applicants’ filing of the Application falls below the standard of acceptable commercial standards, the Opponent has not established the ground of opposition under s 62A.

Section 60

1. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the firstmentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the firstmentioned trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

2. Section 60 relies upon a likelihood of consumer confusion and/or deception occurring because of the reputation of another trade mark. 

3. What must be shown by the Opponent is at least one trade mark which had a reputation in Australia at the Relevant Date, and because of that reputation, use of the Trade Mark would be likely to confuse or deceive. 

4. While the Opponent has identified in the SGP the trade mark , which is the subject of the Opponent’s trade mark registration number 2134022 (‘Opponent’s Mark’), and has made claims that the Opponent has a reputation in this trade mark, these claims are unsubstantiated.

5. Therefore, I am not satisfied that there had developed the necessary reputation in the Opponent’s Mark at the Relevant Date amongst a substantial number of consumers in the relevant market. Thus, the s 60 ground of opposition has not been established.

Decision

1. Section 55(1) provides:

   55  Decision

   (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.

2. The Opponent has not established any ground of opposition nominated in the SGP. Accordingly, trade mark application number 2135001 may proceed to registration not less than one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

10 July 2023