Alisa Nye v John Nye

[2022] ATMO 211

TRADE MARKS ACT 1995

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

Re:Oppositions by Alisa Nye to registration of trade mark application numbers 2132013 GOLDEN RIDGE ANIMAL FARM and 2132014 GOLDEN RIDGE ANIMAL FARM Logo (both in classes 31, 41 & 44) - in the name of John Nye

Delegate:

Tracey Berger

Representation:

Opponent: Madeleen Rousseau of Meyer West IP

Applicant: No appearance

Decision:

2022 ATMO 211

Trade Marks Act 1995 (Cth) – oppositions under section 52 – s 42(b), 58, 60 and 62A pressed – s62A ground established – applications refused

Background

1.     This is a decision on the oppositions by Alisa Nye (‘Opponent’) to registration of Australian trade mark numbers 2132013 and 2132014 (‘Applications’) filed on 29 October 2020 by John Nye (‘Applicant’) for the following trade marks:

Trade Mark #	Trade Mark (‘Trade Marks’)	Specification
2132013	GOLDEN RIDGE ANIMAL FARM	2.     Class 31:  Animals, including baby lambs, kids, chicks, ducklings, rabbits, hens, roosters, goats, sheep, guinea pigs, ponies, cows and other farmyard animals; Pets; Farmstock; Animal breed stock; Animal progeny; Animal foodstuff, including rabbit pellets, layer pellets, hay and chick starter crumbles; Bran marsh for animal consumption; Eggs for hatching; Stall food for animals 3.      Class 41:  Entertainment services; Educational services; Cultural services; Petting zoo services; Animal exhibitions; Animal parks and reserves (zoos); Petting zoo services; Animal training; Party planning; School excursions to farms or petting zoos; Fetes; Hire of animals for recreational, cultural or educational purposes; Organising animal shows or farm visits; Booking of petting zoo or animal hire; Obedience training for animals; Mobile petting zoos or farms; Pony rides 4.      Class 44:  Farming services; agricultural services; information services relating to farming, animals or agriculture 5.     (‘Applicant’s Goods and Services’)
2132014	(‘Logo Mark’)

6. The Applications were examined under s 31 of the Trade Marks Act 1995 (Cth),[1] accepted for possible registration and advertised as accepted on 30 March 2021.  The Opponent filed a Notice of Intention to Oppose on 30 March 2021, followed in each case by a Statement of Grounds and Particulars (‘SGPs’) on 29 April 2021.  The Applicant filed a Notice of Intention to Defend the oppositions on 18 June 2021.

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

7.     The parties had the opportunity to file evidence in accordance with reg 5.14.  The Opponent filed Evidence in Support (‘EIS’) on 21 September 2021 consisting of a declaration of Alisa Nye made on 21 September 2021 with Annexures AN-1 to AN-39 and Confidential Annexures A and B. 

8.     On 24 December 2021, the Applicant’s attorneys informed this office that the Applicant had withdrawn his instructions and accordingly, they were no longer handling the matters so all future correspondence should be directed to the Applicant at the contact details provided.

9.     On 13 January 2022, the Applicant filed an application for an extension of time to file its evidence in answer in the opposition to application number 2132013 (after first filing an incorrect extension request on 10 January 2022).

10.   On 22 February 2022, the Applicant filed a declaration of John Nye made on 22 February 2022 with Exhibits 1-7.

11.   On 24 February 2022, the Applicant was advised that this office intended to refuse the extension because the grounds given were that the Applicant’s solicitor had closed due to Covid which was inconsistent with the solicitor’s earlier advice that the Applicant had withdrawn instructions.  Also, no information was given about whether the Applicant had acted promptly and diligently to prepare its evidence or whether there were exceptional reasons justifying the extension.  The Applicant was given an opportunity to file further reasons but in the absence of any response from the Applicant, the extension was refused.

12.   The parties were given the opportunity to request a hearing and the Opponent requested an oral hearing.  The Applicant did not ask to be heard.  The matter was heard before me as a delegate of the Registrar of Trade Marks on 18 November 2022 by video conference.  Prior to the hearing, the Opponent filed written submissions and at the hearing, Madeleen Rousseau made oral submissions on the Opponent’s behalf.  I make my decision based on the particulars in the SGPs, the EIS and written and oral submissions of the Opponent.

Grounds and onus

13.   The SGP nominates grounds of opposition under ss 42(b), 58, 60 and 62A.

14.   The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2]

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

15.   The rights of the parties are to be assessed as at the filing date of the Applications,[3] being 29 October 2020.

Evidence

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

EIS

16.   In 1985, the Applicant and his wife (who are the Opponent’s parents) purchased a farm at 684-686 Old Northern Road, Dural (‘Property’) and together they operated a business known as ‘Golden Ridge Animal Farm’ (‘Business’).  It is not entirely apparent from the EIS but I understand that the Business operated by the Applicant and his wife was a petting farm business. 

17.   In 1997, the Applicant’s wife fell ill and passed away in 2002.  The Opponent alleges that during her mother’s illness, the Business declined and as a result, the Applicant encountered financial problems.  The Applicant informed his family that because of his financial difficulties, he proposed to sell the Property unless one of his children agreed to take over the Business assuming all financial responsibility in exchange for any profit after the mortgage repayments and business running costs had been paid.  The Opponent withdrew from high school in around June 1999 to take over the Business but as the Opponent was a minor at the time, the transfer of the Business to the Opponent was gradual.

18.   On 1 July 2007, the Opponent formally took over the business from the Applicant who cancelled his ABN and trading name for Goldern Ridge Animal Farm[4].  On 1 September 2007, the Opponent registered her ABN as a sole trader, the trading name Golden Ridge Animal Farm and for GST. 

[4] It appears the trading name was misspelt.

19.   The Opponent claims that she has been solely responsible for the finances of the Business since 1999 including payment of the mortgage on the Property and that the Applicant has not contributed financially to the Business since that time.  The Opponent declares that when she took over ownership of the Business, the Applicant had not lodged tax returns from 2001-2006.  After taking over the Business in 2007, the Opponent filed the outstanding tax returns in her own name as the owner of the Business and has continued to file annual tax returns for the Business.

20.   Since at least 2007, the Opponent has managed all aspects of the Business including selecting which services to provide, determining the systems for and ensuring provision of the services, selecting the animals and equipment, managing the website at (‘Website’), authoring the Website content and handling bookings.  The Applicant has not been involved in the operation of the Business for many years except when the Applicant has employed the Opponent in a casual paid capacity for certain tasks. 

21.   From before 2007 and continuously after that date, under the mark GOLDEN RIDGE ANIMAL FARM, the Opponent has offered farming services, live animals, services relating to a petting zoo, bookings for the petting zoo and animal hire, the organisation of educational and entertainment events, provision of facilities for events, advisory services relating to event management services, event planning services; sale of eggs and other goods, live animals; bred stock, animal foodstuffs, eggs for hatching (fertilised); party planning (entertainment); education services; cultural activities; animal training; organisation of animal shows; information services relating to farming; agricultural services; consultancy relating to agriculture; advisory services relating to the care of animals (‘Opponent’s Goods and Services’).  The Opponent holds a licence issued by the Department of Primary Industries authorising the display of animals at the Property.

22.   In September 2010, the Opponent was approached by the University of Western Sydney who used the Business as a case study for its business marketing students. As part of this exercise, the Logo Mark was designed by one of the students in collaboration with, and at the expense of, the Opponent.  Copyright in the Logo Mark was assigned to the Opponent.

23.   In 2004, the Opponent registered the domain name for the Website for the Business operated on the Property.  After becoming solely responsible for the Business in 2007, the Opponent updated the Website in 2008.  The mark GOLDEN RIDGE ANIMAL FARM has been used on the Website to promote the Opponent’s Goods and Services since at least July 2008 and the Logo Mark has been used since at least 2011. Archived extracts of the Website using the Wayback Machine have been provided from September 2004 to March 2020.

24.   In 2016, the Opponent started a mobile farmyard as part of the Business and registered the domain name mobilefarms.com.au.  Since that time, the Trade Marks have been used on this website to promote the Opponent’s Goods and Services.

25.   In addition, the Trade Marks are used on invoices, stationery, promotional brochures, posters, signage, gift cards, show bags, staff uniforms, promotional items, online advertising, radio advertising and print advertising in community classifieds, newspapers such as The Australian, Weekend Australia, The Daily Telegraph and Sunday Telegraph and publications such as Sydney Child and AussieKids.  Examples are included in the EIS with advertising expenditure from 2015 to 2021.

26.   The Opponent created a Facebook account on 23 June 2012, an Instagram account in around February 2015 and subsequently, a YouTube channel.  Since that time the Opponent’s Goods and Services have been promoted under the Trade Marks on these social media accounts.

27.   The Opponent’s Goods and Services have received media coverage in print, online, television and radio.  The Opponent’s Goods and Services offered under the Trade Marks are also promoted on third party websites including Tripadvisor, Time Out and birthday party finder sites.

28.   In 2018, the Opponent entered into agreements with the Royal Agricultural Society to provide her mobile farm services under the Trade Marks at the Royal Melbourne Show. 

29.   In September 2020, the Opponent became aware that the Applicant wanted to remove her from the Business when the Applicant gave the Opponent’s siblings a handwritten note outlining various legal action he proposed taking against the Opponent, ways or removing her from the Business and things for the siblings to think about in taking over the Business (‘Applicant’s Note’).  A copy of the Applicant’s Note and transcription is provided in the EIS. 

30.   In response to the Applicant’s Note, the Opponent had her solicitors write to Mr Nye.  It is apparent from this letter that in 2001, Family Court Orders were made between Mr Nye and his wife which changed title in the Property from a joint tenancy to a tenancy in common.  Mr Nye’s wife then made a will leaving her interest in the Property to the Opponent and her other 4 siblings in equal shares.  The will made no mention of the Business as an agreement had already been reached in 1999 for it to be transferred to the Opponent.  In March 2009, the Opponent purchased one of her sibling’s shares in the Property and hence the Opponent owns 20% of the property whilst the Applicant holds 50% and the remaining 30% is held in equal share by 3 of the Opponent’s siblings.    Although the Opponent only owns 20% of the Property, she has been solely responsible for payment of the mortgage even though the Applicant and one of the Opponent’s siblings (and his family) reside on the Property.

Applicant’s Evidence

31.   As noted above, the Applicant’s evidence was filed after the deadline for its evidence in answer and the Applicant was unsuccessful in obtaining an extension of time.  The Applicant has not made any submissions on whether I should allow the evidence under Regulation 21.15 or 21.19.  The exhibits to John Nye’s declaration do not support the claims made in the declaration and the claims are contradicted by documentary evidence provided by the Opponent.  I consider that the declaration of John Nye is of little probative value and would not affect the outcome of my decision. Accordingly, I decline to allow this evidence under Regulation 21.15 or 21.19.

Discussion

Section 62A

32.   Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith.

33. The phrase ‘bad faith’ is not defined in the Act but as Bennett J explained in DC Comics v Cheqout Pty Ltd[5]:

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.[6]

[5] [2013] FCA 478.

[6] Ibid, [62].

34.   In the SGPs, the Opponent claims that the Applicant was aware of the Opponent’s use of and reputation in the Trade Marks and accordingly, the Applications were filed in bad faith.  

35.   Whilst there are no documents evidencing the transfer of the Business, it is apparent that the Applicant took steps to remove himself from the Business by cancelling his trading name registration and ABN.  At that time, the Opponent took the necessary actions to assume responsibility for the business including registering for an ABN, GST and the trading name GOLDEN RIDGE ANIMAL FARM. 

36.   The Applicant resides on the Property where the Opponent has been offering the Opponent’s Services since 2007 and must have been aware of the Opponent’s Services being offered under the Trade Marks.  Knowledge of the Opponent by the Applicant, particularly through a prior business connection, such that a person standing in the shoes of the Applicant should have known that they should not have applied for a trade mark deceptively similar to that used by the Opponent is sufficient for a finding of bad faith.[7]

[7] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565, 596-7 [156] (Dodds-Streeton J).

37.   The Applicant has not been involved in the Business for over a decade other than as a casual employee of the Opponent nor has he made any financial contribution to the operation of the Business or the Property.  I accept the Opponent’s evidence that she assumed sole ownership of the Business in 2007 and has been offering the Opponent’s Goods and Services under the mark GOLDEN RIDGE ANIMAL FARM since 2007 and also the Logo Mark since 2010.  Until the filing of the Applications, the Applicant has acted in a manner consistent with the Opponent’s claims to be the sole owner of the Business and provider of the Opponent’s Services under the Trade Marks.

38.   I am satisfied that the Applicant was aware of the Opponent’s Services being offered under the Trade Marks and the filing of the Applications was done in bad faith.

39.   The Opponent has established a ground of opposition under s 62A.

Decision and Costs

40.   Section 55 relevantly 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.

41.   I have found that the Opponent has established a ground of opposition and I therefore refuse to register the Trade Marks. 

42. The Opponent has sought an award of costs. Costs usually follow the event and there is no reason to depart from that principle. Accordingly, with respect to application number 2132013, I award costs against the Applicant in the amounts set out in Schedule 8 of the Regulations. In relation to application number 2132014, I award reduced costs against the Applicant in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[8]

[8] [2001] ATMO 78.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

2 December 2022