Acaci Pty Ltd v UBreakIFix, Co

[2023] ATMO 101

TRADE MARKS ACT 1995

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

Re:Oppositions by ACACI PTY LTD to registration of trade mark application numbers 2090955 – UBREAKIFIX and 2090956 – UBREAKIFIX (Fancy) – both in classes 9, 35, 37 and 42 – in the name of UBreakIFix, Co.

Delegate:

Sheona Robertson

Representation:

Opponent: Not represented

Applicant: Marcus Fleming of Counsel, instructed by Davies Collison Cave Pty Ltd

Decision:

2023 ATMO 101

Trade Marks Act 1995 (Cth) – oppositions under section 52 – ground pursued under s 62A – ground not established – trade marks to proceed to registration

Background

1. This decision is in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by ACACI PTY LTD (‘Opponent’) to registration of the following trade marks (together ‘Trade Marks’):

Trade mark number	2090955	2090956
Trade mark	UBREAKIFIX	(‘Fancy Mark’)
Applicant	UBreakIFix, Co. (‘Applicant’)

1. Each of the Trade Marks was filed on 25 May 2020 and covering the same goods and services in classes 9, 35, 37 and 42. A convention priority date of 27 November 2019 is claimed in respect of some of the goods and services in classes 9, 35 and 37. See Annexure A for the full specification.

2. The Trade Marks were examined under s 31 of the Act, accepted for possible registration and advertised as accepted in the Australian Official Journal of Trade Marks on 11 November 2020.

3. The Opponent filed Notices of Intention to Oppose on 5 January 2021 followed by Statements of Grounds and Particulars (‘SGPs’) on 4 February 2021. The Applicant filed Notices of Intention to Defend on 12 May 2021.

4. The Opponent filed the following declarations as evidence in these oppositions:

• Declaration of Sercan Acaci, Managing Director and owner of the Opponent, made on 11 August 2021;

• Declaration of Sercan Acaci, made on 12 August 2021 with annexures (‘Acaci 1’); and

• Declaration of Sercan Acaci made on 7 February 2022 with annexure (‘Acaci 2’).

1. The Applicant filed the following declaration as evidence in this opposition:

• Declaration of David Barbuto, Chief Executive Officer of the Applicant, made on 10 November 2021 with Exhibits DB-1 to DB-13 (‘Barbuto Declaration’).

1. Acaci 1 and the Barbuto Declaration both contain clauses to the effect that information within those declarations is confidential. However, the confidential information is not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] Arguably, there are sensitive commercial matters in these declarations which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17.

2. After the period for filing evidence ended, a request for a hearing by way of written submissions was filed. Marcus Fleming of Counsel made written submissions on behalf of the Applicant (‘Applicant’s Submissions’). The Opponent did not file any written submissions.

3. As a delegate of the Registrar of Trade Marks, I have decided these matters on the basis of the material filed during the proceedings being the materials described in paragraphs [4] to [8] of this decision.

Grounds of opposition, onus and standard of proof

1. The SGPs adequately particularised a ground of opposition under s 62A of the Act.

2. The Opponent bears the burden of establishing the ground of opposition on the ordinary civil standard of the balance of probabilities.[2] The date at which the rights of the parties are assessed is 25 May 2020 (‘Relevant Date’), being the filing date of the Trade Marks.

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

The Opponent

1. The Opponent’s mobile phone, tablet and electronic watch repair services business commenced in August 2015.

2. It is declared that the Opponent has approximately 18,500 customers and that the Opponent’s business is a well-known mobile repair centre in Sydney, New South Wales.

3. The Opponent promotes it services via the website and on social media platforms.

4. The Opponent has previously applied to register the following trade marks (collectively, ‘Opponent’s Trade Marks’):

Number	Trade mark	Priority date	Class(es)	Status
1715853	20 August 2015	37	Cancelled: Owner request
1764300	12 April 2016	37	Cancelled: Owner request
1769684	UBREAKIFIX	10 May 2016	1	Lapsed: Not accepted
2059723	UBREAKIFIX	25 December 2019	37	Lapsed: Notice of intention to defend not filed
2059724	25 December 2019	37	Lapsed: Notice of intention to defend not filed
2124971	30 September 2020	9	Published: Under examination - Deferred
2124976	UBREAKIFIX	30 September 2020	36	Lapsed: Not accepted
2124980	UBREAKIFIX MAKE YOUR PHONE GREAT AGAIN	30 September 2020	9, 35, 42	Lapsed: Not accepted

1. It is declared that the Opponent has expended a significant amount on advertising and promoting the Opponent’s Trade Marks.

The Applicant

1. The Applicant is an electric and technology repair chain with franchise locations across North America, Canada, Puerto Rico, Trinidad and Tobago. The Applicant provides and services equipment such as smartphones, game consoles, tablets and computers.

2. The Applicant adopted the Trade Marks in 2009 and they have been in use since that time.

3. The Applicant is the owner of registrations for the UBREAKIFIX trade marks in word and stylised format in Canada, Europe, Mexico, Puerto Rico, UK and USA. Exhibit DB-2 of the Barbuto Declaration contains copies of registration certificates for these marks.

4. Exhibits DB-3 to DB-5 of the Barbuto Declaration show the Applicant’s revenue and advertising expenditure. They are substantial.

5. It is declared that the word and stylised formats of the Applicant’s UBREAKIFIX trade marks are promoted via the Applicant’s website and on social media. Exhibits DB-6 and DB-9 to DB-13 of the Barbuto Declaration contain examples of use of the Trade Marks on the Applicant’s website and on Facebook, Instagram, Twitter, LinkedIn and YouTube.

Discussion

Section 62A

1. Section 62A of the Act provides:

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

2. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather ‘it is a wider notion, potentially applicable to diverse species of conduct’[3] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth). 

   [3] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).

3. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   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.[4]

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J) (‘DC Comics’).

4. Justice Bennett also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[5]

   [5] Ibid [66].

5. Accordingly, I must determine what the Applicant knew at the time of making the applications for the Trade Marks and then, considering that knowledge, whether the Applicant’s conduct fell short of acceptable commercial behaviour and is of ‘an unscrupulous, underhand or unconscientious character’.[6]

   [6] Fry Consulting (n 3) [166].

6. An allegation of bad faith under s 62A is a serious one. In this regard, I note the following comments of the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[7]

   [7] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26, [12].

7. In the SGPs, the Opponent asserts that the Applicant was aware of the Opponent’s use of and reputation in ‘UBREAKIFIX’ and accordingly, the applications to register the Trade Marks were made in bad faith.

8. The Opponent’s evidence is lacking in sufficient detail to support the Opponent’s claim to a reputation in any of the Opponent’s Trade Marks at the Relevant Date. The Opponent’s evidence as to the use of the Opponent’s Trade Marks is limited to clients in and around Sydney, New South Wales. The Opponent’s evidence as to the revenue and advertising expenditure of its business does not indicate that a significant proportion of the relevant public had been exposed to the Opponent’s Trade Marks at the Relevant Date. I am not satisfied that the Opponent’s alleged reputation in ’UBREAKIFIX’ is such that use of the Trade Marks in Australia would result in a springboard or advantage for the Applicant.

9. In any case, although the alleged reputation of the Opponent’s Trade Marks in Australia can provide context for the Applicant’s conduct, ultimately it is a question of whether the Applicant’s conduct falls short of acceptable commercial standards.

10. It is clear that at the time of filing the applications for the Trade Marks the parties were known to each other. Prior to filing the applications, the Applicant had some interaction with the Opponent. Details of the correspondence between the parties is not provided, but it is declared that the Opponent withdrew its prior trade mark application numbers 1715853 and 1764300 following receipt of some correspondence from the Applicant.[8]

    [8] Acaci 1, [7].

11. Mere awareness of, or prior dealings with, the Opponent do not on their own indicate that the applications for the Trade Marks were made in bad faith. However, awareness or prior dealings can amount to bad faith when combined with other circumstances. The question is whether, in all the particular circumstances, the Applicant’s knowledge was such that the decision to apply for the Trade Marks at the Relevant Date would be regarded as in bad faith by persons adopting the proper standards.[9] 

    [9] Fry Consulting (n 3) [167].

12. There are obvious similarities between the Trade Marks and the Opponent’s earlier filed trade mark numbers 1715853, 1764300 and 1769684. The Opponent’s earlier filed trade marks all contain the word UBREAKIFIX as a prominent and memorable feature. The representations of the word ‘UBREAKIFIX’ in the Fancy Mark and the Opponent’s earlier trade mark numbers 1715853 and 1764300 are almost identical, with the exception of some minor differences in the font colours. Additionally, the Trade Marks nominate services in class 37 that are similar to the services claimed in class 37 of the Opponent’s earlier filed trade mark numbers 1715853 and 1764300, namely repair services for personal devices.

13. The identity between the Trade Marks and the Opponent’s Trade Marks is unlikely to be merely coincidental. However, there is no evidence to suggest that the Applicant at any stage recognised the Trade Marks as being the property of the Opponent. The Barbuto Declaration and the Applicant’s Submissions assert that the Applicant first adopted and used the Trade Marks in overseas jurisdictions in 2009, several years prior to the Opponent’s first use of the Opponent’s Trade Marks in Australia. Furthermore, the evidence supports that the Applicant has continued to use the Trade Marks in overseas jurisdictions since 2009. In my opinion, in applying to register the Trade Marks the Applicant is seeking to extend recognition of its pre-existing trade mark rights in overseas jurisdictions to Australia.

14. Acaci 2 asserts that the Applicant does not have a business presence or trading activity in Australia. It is not necessary for the Applicant to demonstrate use of the Trade Marks or an intention to use the Trade Marks in order to negate an accusation of bad faith. In filing applications to register the Trade Marks in Australia, the Applicant is presumed to have a genuine intention to use the Trade Marks. I note in this regard the comments of Fullagar J in Aston v Harlee Manufacturing Co:

    [T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.[10]

    [10] Aston v Harlee Manufacturing Co. (1960) 103 CLR 391, 401.

15. The evidence before me does not establish that at the time of filing the applications for the Trade Marks the Applicant’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. In the absence of such evidence, I am not satisfied on the balance of probabilities that the trade mark applications were made in bad faith.

16. The s 62A ground of opposition has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established the ground of opposition under s 62A of the Act. Accordingly, trade mark application numbers 2090955 and 2090956 may proceed to registration 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 the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event and I see no reason to depart from that principle. With respect to application number 2090955, I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth). In relation to application number 2090956, I award reduced costs against the Opponent in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[11]

   [11] [2001] ATMO 78.

Sheona Robertson

Hearing Officer

Delegate of the Registrar of Trade Marks

27 July 2023

Annexure A

Class 9

Phone accessories, namely, cell phone battery chargers, wireless cell phone battery chargers, USB cell phone battery chargers; car cell phone battery chargers; wall cell phone battery chargers; USB charging and synching cables; 8-pin high speed cables being electric cables; smart phone cases. Downloadable computer software for use in mobile phones, mobile computing and communication devices and network-connected devices and appliances, namely, software for proactively delivering content that recommends solutions, tips, tricks, and how-to information, for accessing help desk services, for facilitating monitoring, remote log-in and provision of in-person technical support services, for remotely managing settings and performance, for providing data deletion, back-up, and recovery, all of the aforementioned in connection with household and business devices and appliances, and goods which utilize the internet of things, namely, smartphones, computers, tablets, televisions, media players, video game consoles, network-connected devices and appliances, lighting control apparatus, hvac control systems, domestic safety and security systems, residential automation systems, and vehicles; downloadable computer software for use in and for mobile phones, mobile computing and communication devices and network-connected devices and appliances, namely, software for analyzing and optimizing battery life and storage capacity; downloadable computer software for use in mobile phones, mobile computing and communication devices and network-connected devices and appliances, namely, anti-virus software and software for maintaining device and network security, for dark-web scanning, and for enabling parental control

Class 35

Retail store services; business advisory services relating to the establishment of franchises; business advisory services relating to the operation of franchises; all in the field of smartphones, cellular telephones, handheld digital electronic devices, game consoles, handheld computers, tablet computers, laptop computers, and desktop computers, household and business devices and appliances, and goods which utilize the internet of things, and parts and accessories for the aforementioned

Class 37

Repair services for smartphones, cellular telephones, handheld digital electronic devices, game consoles, handheld computers, tablet computers, laptop computers, and desktop computers. Installation, set-up, maintenance, repair and replacement of household and business devices and appliances, and goods which utilize the internet of things, namely, smartphones, computers, tablets, televisions, media players, video game consoles, network-connected devices and appliances, lighting control apparatus, hvac control systems, domestic safety and security systems, residential automation systems, and vehicles, and parts for the aforementioned; consultation services in the field of installation, set-up, maintenance and repair of household and business devices and appliances, and goods which utilize the internet of things, namely, smartphones, computers, tablets, televisions, media players, video game consoles, network-connected devices and appliances, lighting control apparatus, hvac control systems, domestic safety and security systems, residential automation systems, and vehicles, and parts for the aforementioned

Class 42

Technology support services, namely, help desk services provided in-store, by telephone and through mobile application software; technology support services, namely, providing technological information about how to use and make more effective use of technology, how to optimize network connectivity, and how to maintain device and network security; technical and customer support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; repair of software; software as a service (saas) services featuring software for diagnosing technical problems; electronic data protection services, namely, data deletion, back-up and restoration in the nature of electronic data storage and recovery of electronic data; all of the aforementioned in connection with household and business devices and appliances, and goods which utilize the internet of things, namely, smartphones, computers, tablets, televisions, media players, video game consoles, network-connected devices and appliances, lighting control apparatus, hvac control systems, domestic safety and security systems, residential automation systems, and vehicles