Action North American, Inc. v Aobao International Pty Ltd

[2018] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by Aobao International Pty Ltd to registration of trade mark application 1761747 (16, 25, 35) (IR 1294156) - PW ONLY - in the name of Action North American, Inc.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: IP Wealth – written submissions

Holder: Spruson & Ferguson – written submissions

Decision:

2018 ATMO 133

Trade Marks Act 1995

Opposition under reg. 17A.33 of the Trade Marks Regulations 1995 - grounds under 60, 58, 42, 59, and 62A, of the Trade Marks Act 1995 not established.

Background

1. Trade mark application number 1761747 is the Australian designation of an application under the Madrid Protocol by Action North America, Inc. (‘the Holder’) to extend protection of the trade mark subject of its international registration 1294156 to Australia (‘the IRDA[1]’).  After examining the IRDA, IP Australia on 21 July 2016 advertised its intention to extend protection to the IRDA details of which appear below:

   [1] International Registration Designating Australia.

Application No: 1761747

IRDA No:  1294156

Priority Date:  25 February 2016

Goods/Services:              Class 16: Decals

Class 25: Clothing, namely, hats, shirts, jackets, sweaters, hoodies, jerseys, pants

Class 35: Retail and online retail store services featuring clothing, decals, books, motorcycle engine parts, motorcycle frame parts, engine oil, motorcycle tires

Trade Mark:  PW ONLY

(‘the Trade Mark’)

1. As allowed by regulation 17A.33 of the Trade Marks Regulations 1995 (‘the Regulations’), on 26 July 2016 Aobao International Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection to the IRDA.

2. On 25 August 2016, the Opponent filed its Statement of Grounds and Particulars (‘the SGP’) detailing grounds under sections 60, 58, 42, 59, 62A, and 41[2] of the Trade Marks Act 1995 (‘the Act’).

   [2] The Opponent did not rely on the ground under section 41 in its written submissions.

3. On 18 October 2016, the Holder filed a Notice of Intention to Defend.

4. On 27 February 2017, the Opponent filed its evidence in support of the opposition being a declaration by Ka Hang Cheng, Managing Director of the Opponent, made on 27 February 2017, with Exhibits KHC-1 to KHC-11.

5. On 2 June 2017, the Holder filed its evidence in answer being a declaration by Tim DeNardis, President and owner of the Holder, made on 31 May 2017, with Annexures A to E.

6. Both parties have been informed of their right to be heard or to make written submissions: both parties have filed written submissions by their attorneys - Spruson & Ferguson for the Holder and IP Wealth for the Opponent.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition which are detailed in the SGP on the balance of probabilities.[3]

   [3] 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]- [133].

2. The relevant date at which the grounds under regulation 17A.33 must be considered is the filing date of the opposed application.[4]

Evidence

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

The Opponent

1. Mr Cheng states that the Opponent is a retailer, wholesaler and importer specialising in motorcycle spare parts from a physical location as well as an online platform and has used the trade mark PWONLY (‘the Opponent’s Trade Mark’) since October 2008 in relation to:

   Engines for automobiles; Engines for motor land vehicles; Motor land vehicle engines;

   Motorcycle parts; parts, fittings and accessories for the aforementioned goods;

   Retail services; Retailing of goods (by any means); retail, wholesale and importation of motorcycle parts.

2. I note here that the supporting material shows that the retail services engaged in by the Opponent under the Opponent’s Trade Mark appear to be solely via the Internet and related exclusively to motorcycle spare parts, including engines, and I weight Mr Cheng’s claims accordingly.  The earliest corroborated sale claimed by Mr Cheng to be under the Opponent’s Trade Mark is from 3 August 2009 and the tax invoice relating thereto bears the logo:

3. Mr Cheng states that the reasons for selecting the Trade Mark are:

   In October 2008 the Opponent chose to use the word PWONLY when setting up their online platform. The Opponent considered the use of the suffix –ONLY was prevalent in the marketplace at the time, and in keeping with the market direction at that time, the Opponent decided to come up with a brand that reflected that trend.

4. I note in passing that the Opponent did not similarly use the word ‘only’ in another of its domain names, and that the letters ‘PW’ with the Opponent’s trade mark stand for the words ‘pee wee’ – a junior class of motorcycle event.

5. Mr Cheng supplies total turnover for the Opponent during the years 2008 to 2016 but it does not emerge what proportion of these figures relate to sales under the Opponent’s Trade Mark.  Similar reservations apply to the advertising, marketing and promotional figures supplied for the same years by Mr Cheng.

The Holder

1. The Holder is based in Florida, USA, and was established in 1997.  It commenced sales of motorcycle spare parts under the Trade Mark in 2005.  eBay^® and other receipts in evidence show first sales to Australia in 2007 both from its website and via eBay^®.

2. Mr DeNardis supplies a confidential spreadsheet showing total sales to Australia for the years 2007 and 2008 – complete with order dates, payment amounts and dates, the purchasers’ names and addresses, transaction identifications, and the items which were purchased.

3. The eBay® and other receipts supplied by Mr DeNardis correspond with the details which are entered on the spreadsheet and thus corroborate it.

4. Further, Mr DeNardis supplies Internet Archive (Wayback Machine) printouts of the Holder’s website which carries the Trade Mark for the years 2005 to 2008 as well another site, 50ccmotocross.com, which also bears the Trade Mark.

Consideration

Section 58

Statement of Grounds and Particulars:

1. The Opponent asserts:

   1. The Opponent is the owner of the [Opponent’s Trade Mark].

   2. The Opponent has continuously used the [Opponent’s Trade Mark]since 2008 on the Goods and Services.

   3. The Goods and Services are the same kind of thing as the goods and services to which registration is sought in the Opposed Application.

Discussion

1. Section 58 of the Act provides:

   58Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

2. Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[5] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’.[6]

   [5] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

   [6] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

3. Here there is no debate as to whether the trade marks under consideration (PW ONLY vs PWONLY) are substantially identical or if the services, at least as far as the retail of motorcycle spare parts are concerned, are ‘the same kind of thing’.  What is a major issue is who had first use of the Trade Mark in Australia and, if it were the Holder, whether (as the Opponent argues) the Holder abandoned the use of the Trade Mark in Australia.

4. The Holder’s corroborated evidence of use of the Trade Mark is the first in time and therefore (subject to the Opponent’s arguments concerning abandonment), the Holder is the owner of the Trade Mark in Australia.

5. The arguments concerning abandonment concern the Holder’s evidence which only show corroborated use of the Trade Mark in Australia during the years 2007 and 2008.  The Opponent wishes me to draw an inference that the Holder abandoned use of the Trade Mark at some point of time in 2008 and now intends to recommence use in the face of the Opponent’s use of the Opponent’s Trade Mark.

6. In King Par, LLC v Brosnan Golf Pty Ltd Greenwood J said:[7]

   Abandonment is not to be inferred merely from nonuse: Shanahan, 5th Ed, [10.1510] at p 75, and the authorities noted at fn 77. On the other hand, a mere intention not to abandon is not enough: Shanahan, 5th Ed, [10.1510] at p 75, fn 76, and the authorities cited at fn 76. In Settef SpA v RivOland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, McGarvie J accepted that in reliance upon the principles in Mouson & Co v Boehm (1884) 26 Ch D 398, Chitty J, that mere nonuse of the trade mark is not enough to give rise to abandonment ; there has to be an intention to abandon; abandonment is a question of fact; and, inferences as to fact (concerning an intention to abandon) might be capable of being drawn from primary facts.

   In RivOland Marble Co (Vic) Pty Ltd v Settef SpA (1988) 19 FCR 569 at 571572, Bowen CJ in the Full Court of the Federal Court said this:

   Once having acquired proprietorship it can only be lost upon some established general law basis such as estoppel, acquiescence or abandonment  ... Counsel for the Marble Co did argue that Settef had abandoned its trade mark through disuse ... However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost. ...

   [7] [2014] FCA 795 at [188].

7. Here there is no evidence of intention to abandon and the paucity of corroborated evidence of use of the Trade Mark by the Holder between 2008 and the priority date of the Trade Mark might be explained by the drafter of the declaration focusing only on the need to show use earlier than that asserted by the Opponent in Mr Cheng’s declaration.  Mr DeNardis for his part states:

   The Trade Mark was first used by the [Holder] in 2005 in relation to a new line of motorcycle parts for Yamaha PW50 and PW80 model motorcycles. Since that time, the [Holder] has continuously sold its own exclusive line of “PWonly” branded parts and accessories for PW50 and PW 80 model motorcycles. These PWonly branded parts are after-market parts and high performance engine and frame parts for PW model dirt bikes.

   In addition, the [Holder] has sold and continues to sell OEM factory Yamaha parts under or by reference to the Trade Mark.

   The [Holder] currently ships to thousands of customers both within the United States and overseas to every continent including Australia. Below is a list of the top 10 countries which the [Holder] ships to (listed in descending order based on sales):

   (i) United States

   (ii) Canada

   (iii) Australia

   (iv) United Kingdom

   (v) France

   (vi) Sweden

   (vii) New Zealand

   (viii) Finland

   (ix) Norway

   (x) Russia

8. The above statement carries a clear implication of ongoing sales from the first use of the Trade Mark by the Holder in Australia through to the priority date of the IRDA.  I also stress that in my considerations I bear in mind that if nonuse had occurred (which I consider doubtful) this does not in itself signal abandonment.

9. I am inclined to accept Mr DeNardis’s uncorroborated statement and its implication that the Holder did not cease use of the Trade Mark in Australia in 2008.  I observe that both declarations before me suffer from some awkwardness and ambiguity in their drafting: on the one hand Mr Cheng seemingly claims that the Opponent’s Trade Mark has been used by it for a range of retail services which encompasses the retail sale of all possible goods – from, in effect, ballet pumps to combine harvesters.  On the other hand the corroborative exhibits to Mr DeNardis’s declaration are silent about the Trade Mark’s use in Australia by the Holder between 2008 and the priority date but his declaration implies otherwise.

10. On the evidence before me, and consideration of the totality of Mr DeNardis’s declaration, it is more probable than not that the use of the Trade Mark in Australia by the Holder has been on-going since 2007: it is more difficult to infer that the Holder ceased the use in Australia of a successful trade mark and now seeks to resume it than it is accept that use of the Trade Mark in Australia by the Opponent has been continuous and that the ambiguity that has arisen is from an awkwardness in the way in which Mr DeNardis’s declaration was drafted.

11. The Opponent also submits that the Holder’s website did not specifically mention Australia or explicitly target sales at Australians.  In the face of actual sales to purchasers within Australia, I do not view this concern as being material to the question of use in Australia.  In E & J Gallo Winery v Lion Nathan Australia Pty Ltd the Court observed:[8]

    The capacity of a trade mark to distinguish a registered owner's goods from those of others, as required by s 17, does not depend on whether the owner knowingly projects the goods into the Australian market. It depends on the goods being in the course of trade in Australia. Each occasion of trade in Australia, whilst goods sold under the trade mark remain in the course of trade, is a use for the purposes of the Trade Marks Act.

    [8] [2010] HCA 15; (2010) 241 CLR 144; (2010) 265 ALR 645; (2010) 86 IPR 224; (2010) 84 ALJR 352; [2010] AIPC 92-381 at [51].

12. Similarly, concerning the engagement of services from Australia, in Carnival Cruise Lines Inc v Sitmar Cruises Ltd Gummow J observed:[9]

    Thus, whilst the course of trade involved the provision of the services contracted for by steps taken outside Australia (i.e. the cruise itself) crucial integers in that course of trade took place in Australia. The trade commenced with the various steps taken to encourage inquiries from prospective customers and advanced with the placing and acceptance of bookings. In relation to that course of trade, the marks "Fun Ship" and "Fun Ships" were used so as to indicate the connexion between Carnival and the services to be provided by means of its cruises, and to distinguish Carnival Cruises from those operated by other traders: Mark Foy's Limited v Davies Coop and Co. Ltd [1956] HCA 41; (1956) 95 CLR 190 at 205. Accordingly, in my view, before the dates of the relevant applications by Sitmar, there had been public use in Australia of "Fun Ship" and "Fun Ships" as trade marks so as to confer upon Carnival the statutory status of "proprietor" of those trade marks, within the sense of the High Court authorities to which I have referred.

    [9] [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [56].

13. His Honour’s remarks were made in 1994 before the widespread adoption of the Internet.  However, in the circumstances before me, the Holder’s website was freely accessible to Australians and Australians ordered from it.  To draw an analogy from pre-Internet times, the website functioned much like a paper catalogue to which Australians had access; it resulted in the placement and the acceptance of orders by Australians from Australia on an ongoing basis.

14. The Opponent has not established its opposition under section 58 of the Act.

Sections 60

1. Section 60 of the Act provides:

   60Trade 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 first‑mentioned 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 first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:For priority date see section 12.

2. In order to found this ground the Opponent must establish to the Registrar’s satisfaction that, at the priority date:

   ·    the reputation of the trade mark on which it relies[10] was such that

   ·    the use of the Trade Mark would be likely to confuse or deceive.

   [10] Under section 60 of the Act it is not necessary that the trade mark on which the Opponent relies be registered.

Reputation

1. In McCormick & Co Inc v McCormick[11] (‘McCormick’) Kenny J asked:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [11] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[12] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[13] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[14]

   [12] [2000] FCA 1587; (2000) 50 IPR 1.

   [13] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   [14] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

3. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[15]

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [15] Op cit at [86].

1. Here the Opponent also relies on the Kenny J’s observation in McComick:[16]

   As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 ("Hugo Boss") at 436:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark . The quantum of sales, advertising and promotion contributes to the `recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals' and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

   [16] Op cit at [85].

2. The corroborative material attached to Mr Cheng’s declaration establishes that the Opponent has at least two websites: and Further, invoices for advertising those websites were issued to ‘GT Motorcycles’ which shares a postal address with that given on the printouts of the websites within Mr Cheng’s declaration and, additionally, ‘GT Motorcycles’ in turn has its own website.  Viewed in the light of this, Mr Cheng’s statements as to the Opponent’s income and advertising expenditure are somewhat ambiguous and it is impossible to ascertain what proportion of the figures supplied by Mr Cheng actually relates to the use of the Opponent’s Trade Mark.

3. The examples of advertising in magazines given by the Opponent are similarly opaque: the circulation figures for these magazines are not supplied – neither is the size of the marketplace for the Opponent’s services which apparently involve the supply of motorcycle spare parts for ‘pee wee’ class motorcycle racers.  Further, many of the invoices from magazines for advertising, from Melbourne IT for domain name lease, and so forth are issued to individuals or entities other than the Opponent and the relationship between these individuals and entities and the Opponent is not explained.

4. Likewise, it is not clear what proportion of the potential market visits the Opponent’s website.  Whilst the figure given as to the number of unique visitors to the website is suggestive, it is not clear what proportion of the potential marketplace this figure represents.  Additionally, given the similarities between the Holder’s website ( and the Opponent’s website ( it might be the case that many of the unique visitors to the Opponent’s website were in fact seeking the website of the Holder who, I have found, is the owner of the Trade Mark in Australia.

5. Given the above, and the obvious difficulty in finding, in effect, that the use of the Trade Mark by the Holder (who is the owner of the Trade Mark) would be deceptive or confusing, I find that the Opponent has not established its ground under section 60 of the Act.

Section 42

Statement of Ground and Particulars

1. The Opponent asserts:

   1. The Opponent had acquired a reputation in the Prior Mark in Australia before the Priority Date.

   2. The Opponent’s Prior Mark has been used in Australia by the Opponent in respect of the Goods and Services since 2008.

   3. Use of the Opposed Application by the Applicant in respect of the goods or services to which registration is sought would, in light of the reputation of the Opponent’s Prior Mark, constitute:

   i. breach of the Australian Consumer Law contained in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (“ACL”):

   ·misleading or deceptive conduct contrary to Section 18 of the ACL; and

   ·false or misleading representations that the goods or services supplied or promoted by the Applicant have sponsorship or approval of the Opponent contrary to Section 29 of the ACL: and / or

   ii. passing off under common law.

Discussion

1. Section 42 of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   …

   (b)its use would be contrary to law.

2. As observed by the Registrar’s delegate in Monster Energy Co v USA Nutraceuticals Group Inc:[17]

   In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the [ACL] is a more stringent test than that for deception or confusion under s 60,[18] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

   Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[19] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation[20] also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

   [17] [2017] ATMO 22.

   [18] See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, at p 198 (Gibbs CJ).

   [19] [2003] FCA 104, at [107].

   [20] [1989] FCA 506, at [40].

3. Such is the situation here: the Opponent has not established the ground under subparagraph 42(b) of the Act.

Section 59

Statement of Grounds and Particulars:

1. The Opponent asserts:

   1. The Applicant was aware at the Priority Date that the Opponent was the owner of the Prior Mark.

   2. A simple internet search shows the Opponent is the owner of the Prior Mark in Australia.

   3. It is unlikely that the Applicant would wish to use the Opposed Application in respect of the goods and services to which registration is sought, as such use would be contrary to law.

Discussion

1. Section 59 of the Act provides:

   59Applicant 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 Opponent submits:

   Given the Opponent’s prior use and reputation in the Opponent’s Mark, including the Opponent’s website, online advertising, Facebook, the Applicant would easily have been able to search and see the Opponent’s Mark before choosing the Opposed Application for an Australia trade mark application.

   As per above, any use of the Opposed Application would be contrary to law. Therefore, it is unlikely that the Applicant would want to use a trade mark that would be breach of the law.

   Furthermore, the Applicant has provided use of the Opposed Application in the United States from 2005 to 2008. There has been no evidence of recent use, which indicates that the Applicant is not currently using the Opposed Application and has made no plans to start using the Opposed Application in Australia.

3. In view of my finding under section 58 of the Act that the Holder is the owner of the Trade Mark in Australia, the ground cannot be established.

Section 62A

Statement of Grounds and Particulars

1. The Opponent asserts:

   1. The Opponent has been using the Prior Mark since in or about 2008, in relation to the Goods and Services.

   2. Performing simple due diligence on a brand name before use, including conducting a simple internet search for “PW ONLY”, would have retrieved the Opponent’s website showing clear use of the Prior Mark.

Discussion

1. 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.

2. In view of my finding under section 58 of the Act that the Holder is the owner of the Trade Mark in Australia, the ground cannot be established.

Other

1. As I have previously observed, in its submissions the Opponent states that it does not pursue the ground under section 41.

Decision

1. Regulation 17A.34N provides:

   17A.34NDecision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)The Registrar must notify the International Bureau of the Registrar’s decision.

2. As none of the grounds on which the IRDA was opposed have been established it is appropriate to extend protection in respect of all of the goods and services listed in the IRDA.

3. The IRDA may then proceed to protection one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and the disposition of the IRDA should be in accordance with the Court’s order or direction.

Costs

1. Both parties requested their costs in this matter and as the Holder has been the successful party it is appropriate in terms of section 221 of the Act that I award costs against the Opponent at the official scale in Schedule 8 to the Regulations.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

28 August 2018