Anthony Fajwul v MetroLink Computers Pty Ltd
[2017] ATMO 30
•10 April 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Anthony Fajwul to registration of trade mark application 1661942(37) - DR IT - filed in the name of MetroLink Computers Pty Ltd.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Written submissions from Donna Bartlett of M & K Lawyers Group Pty Ltd. Applicant: Stephen Krouzecky and Dr John Golding of Krouzer IP. |
| Decision: | 2017 ATMO 30 Opposition to registration under section 52 of the Trade Marks Act 1995 – grounds under sections 58, 60 and 62A – section 58 established – Trade Mark refused registration. |
Background
This matter involves an opposition to the registration of a trade mark application under section 52 of the Trade Marks Act 1995 (‘the Act’). The current details of the opposed trade mark application are:
Trade Mark No. 1661942
Trade Mark: DR IT (‘the Trade Mark’)
Priority Date: 4 December 2014
Applicant: Metro Link Computers Pty Ltd (‘the Applicant’)
Specification of Services:
Class 37: Computer support services (installation repair and maintenance of computer hardware and peripherals); Information technology (IT) services (computer and computer peripherals installation and maintenance); Installation and repair of computer hardware; Installation of computerised information systems; Installation of computers; Installation of middleware (computer hardware); Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of computer peripherals; Installation, maintenance and repair of middleware (computer hardware); Maintenance and repair of computer hardware; Maintenance and repair of computers; Maintenance of computers; Maintenance services relating to computer hardware; Repair of computers; Residential, commercial and industrial installation and repair of electrical and computer wiring and cabling
The Trade Mark was examined as required under section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 23 April 2015.
On 23 June 2015, Anthony Fajwul (‘the Opponent’) filed a notice of intention to oppose registration of the Trade Mark. The Statement of Grounds and Particulars (‘SGP’) subsequently filed by the Opponent set out grounds of opposition under sections 42(b), 58, 60 and 62A of the Act.
After the Applicant filed its notice of intention to defend, the Opponent filed evidence in support of the opposition comprising:
Declaration of Anthony Jonathan Fajwul made 18 November 2015 with Exhibits AJF-1 to AJF-11(‘Fajwul declaration’). Exhibits AJF-3 and AJF-6 are claimed to be confidential.
Evidence in Answer subsequently filed by the Applicant consisted of:
Declaration of Stavros Pourniotis (Director of the Applicant) made 23 February 2016 with attachments SP-1 to SP-17 (‘Pourniotis declaration’).
A further fourteen declarations from business owners attesting to their knowledge (or otherwise) of the Applicant and the Opponent.
Evidence in Reply from the Opponent comprised:
Declaration of Camila Chirichella Barata Costa (solicitor at M&K Lawyers Group Pty Ltd) made 4 May 2016 with exhibits CC-01 to CC-04 (‘Costa declaration’).
The Applicant’s legal representatives argued that the contents of the Costa declaration was not truly evidence in reply but amounted to new evidence and should be dismissed or heavily discounted as a result. It is firstly arguable whether the material in the Costa declaration truly raises a new issue or whether the material it contains is a response to the allegations within the Pourniotis declaration. In addition, Reg 21.15(4) of the Trade Marks Regulations 1995 (‘the Regulations’) makes clear that the Registrar is not bound by the rules of evidence and may be informed on any matter in a way the Registrar reasonably believes to be appropriate. On the facts of the matter before me, I am not convinced that this evidence should be discounted or dismissed.
The Applicant requested to be heard on the opposition and the Opponent provided written submissions to be considered by the Registrar of Trade Marks. The Opponent’s legal representative, Donna Bartlett of M & K Lawyers Group Pty Ltd, provided written submissions indicating that the opposition would be pursued on three of the grounds particularized in the SGP namely sections 58, 60 and 62A. The Applicant provided its own written submissions in response to the Opponent’s arguments.
The opposition was allocated to me to hear and decide as a delegate of the Registrar of Trade Marks. As delegate, I heard the opposition on 2 March 2017 in Canberra. The Applicant was represented via telephone by Stephen Krouzecky and Dr John Golding of Krouzer IP. The Opponent did not appear.
Onus and Relevant Date
The Opponent bears the onus of establishing at least one of the grounds of opposition on the civil standard of the balance of probabilities.[1] The rights of the parties are to be determined as at the date of the application[2] which is generally, but not always, the filing date.[3] In this matter the relevant date is 4 December 2014.
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].
[3] See sections 6, 12, and 72 of the Act.
Grounds: Section 58
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.
The first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the services of the application and also goods/services constituting the ‘the same kind of thing’.[4]
[4] Re Hicks' Trade Mark (1897) 22 VLR 636.
An exception to that general statement is if the trade mark has been used before the relevant date. In that event (and in the absence of fraud) the owner of a trade mark in Australia is taken to be the first person to use it (‘first user’) in the course of trade in relation to those goods or services. The first user need not have invented or first thought of the trade mark[5], but rather it is the first party to use it as a trade mark in Australia.
[5] Aston v Harlee Manufacturing Co (1960) 103 CLR 391, (399) (Fullagar J).
The application of section 58 requires that a ‘total impression of similarity (emerges) from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.’[6]
[6] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, [62].
The Opponent is relying on its use of ‘Dr I.T. Computer Consulting’ which is the Opponent’s business name registered on 29 July 2005. However, whether or not the Opponent has demonstrated use of ‘Dr I.T. Computer Consulting’ or the name ‘Dr IT’ solus, to compare either side-by-side with the Trade Mark leaves a total impression of similarity. Neither the full stops in ‘I.T.’ nor the expression ‘Computer Consulting’ alters this finding. The expression ‘Computer Consulting’, when viewed in the context of the claimed services, is clearly a descriptor to which little weight would be attributed in the comparison.[7] The trade marks are therefore substantially identical.
[7] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47.
I should make it clear upfront that the registration of a business name does not, by itself, amount to use as a trade mark. This point is relevant to the evidence supplied by both parties. As Rangiah J found in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd in the context of an infringement action:
The applicants allege that mere registration of the business names amounts to infringement of their trade marks. I do not accept that submission. Section 120 of the TMA requires use of a sign as a trade mark. Registration is not use. The mere registration of a business name is analogous to the mere registration of a domain name. The mere registration of a domain name which contains the words of a registered trade mark does not amount to trade mark infringement: Sports Warehouse Inc v Fry Consulting Pty Ltd at [153]; Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544 at [50]; CSR Ltd v Resource Capital Australia Pty Ltd [2003] FCA 279; (2003) 128 FCR 408 at [42].[8]
[8] [2015] FCA 554, [308].
The Applicant’s use of the Trade Mark
Before filing the opposed trade mark application on 14 December 2014, the Applicant searched the ASIC[9] registry, the ATMOSS[10] database, ‘Google’, ‘Yellow Pages’, ‘True Local’ directory, ‘Facebook’ and ‘Twitter’ and did not locate the Opponent’s business. In June 2014, it occurred to the Applicant that ‘it may be able to acquire ownership of the Trade Mark in its own right as no one appeared to be using it and that it appeared available for registration as a trade mark.’[11] On 30 June 2014, the Applicant registered the business name DR IT NSW. Although Mr Pourniotis declares that the Trade Mark has been marketed continuously since 30 June 2014, I have not been supplied with instances of use before the filing date of the application.
[9] Australian Securities and Investment Commission.
[10] Australian Trade Marks Online Search System.
[11] Pourniotis declaration, [4].
The Costa declaration provides some explanation for the non-appearance of the Opponent’s business on these databases, registries and directories. In essence, the Opponent does not use Facebook or Twitter or choose to have its business listed in the Yellow Pages or the True Local Directory. With respect to being unable to locate the Landing Page using the ‘Google’ search engine, she declares:
As acknowledged in paragraph 11(c) of the SP-Dec, the results of organic searches on Google depend on an advanced algorithm which takes into account, amongst a raft of other data analytics, the number of times a term or a webpage is accessed and optimisation strategies such as the adoption of key words which may be purchased from Google for certain periods of time; and
The non-appearance of the Opponent’s details in such searches only evidences the extent to which the Opponent’s webpage and details have been accessed and the level of optimisation (if any) used, and provides no evidence contrary to the Opponent’s evidence of prior use of and reputation in the Trade Mark.[12]
[12] At paragraph 8(b) of the declaration.
The bare fact that the Applicant was not aware of the Opponent’s business, even after conducting due diligence searches in various databases, does not necessarily mean that the Opponent is precluded from demonstrating prior use of the Trade Mark in the course of trade by other means. With this in mind, I turn now to the Opponent’s evidence.
The Opponent’s use and its ‘Landing Page’
The various contexts in which the Opponent alleges its trade mark has been used are: the Opponent trading under the business name ‘DR I.T. Computer Consulting’, its use within the digits of a landline/mobile telephone number, the use of an email address (‘[email protected]’) and the registration of a domain name (‘ which resolves to a Landing Page.
Like the registration of a business name, the registration of a domain name (such as ‘ does not constitute trade mark use. Nevertheless, actual use of a domain name may operate as a ‘sign on the front of a shop’[13]. Any use shown must indicate a connection in the course of trade between the services with respect to which the mark is used and the person using it.
[13] Solahart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700; (2011) 281 ALR 544; 92 IPR 165, [50].
The evidence regarding the Opponent’s ‘DR IT’ Phone Number (‘9029 DR IT (3748)’), the mobile phone number (‘045092 DR IT (3748)’) and the email address ‘[email protected]’ also cannot amount to use of the Trade Mark for a number of reasons. Unless it is promoted to relevant consumers that the last four numbers in the phone numbers spell out ‘DR IT’, the significance of the last four digits would be lost on most consumers. Similarly, it is not immediately evident that any trade mark within the email address is ‘DR IT’. If the significance of the phone numbers and the email was evident to the consumer, it would still not be use of a trade mark substantially identical to the Trade Mark.
In relation to the first use of his trade mark, Mr Fajwul declares that:
‘DR IT’ has been used as the brand to identify and promote the Services provided by the Opponent since September 2005.
Over this time, I have been very fortunate to have my business grow by word of mouth referrals and have had no need to produce any promotional material, other than a basic landing page. Attached hereto and marked Exhibit AJF-2 is a still of the DR IT landing page. [14]
[14] Declaration of Jonathan Fajwul [8-9].
The Landing Page at Exhibit AJF-2 to the Fajwul declaration is extracted below:
(‘the Landing Page’)
In his declaration, Mr Fajwul does not provide a specific date for the first appearance of the Landing Page at ‘ but the Pourniotis declaration sources copies of the webpage from the Wayback Machine at Attachments SP-13 to 16. The evidence therein indicates that the above representation indeed appeared on the landing page between 20 April 2008 and 9 January 2016.
With reference to the above appearance of the Opponent’s business name, I mention here the distinction between use as a business name and use as a trade mark as discussed by Lander J in Shahin Enterprises Pty Ltd v ExxonMobil Oil Corp:
There is a clear distinction, in my opinion, between conducting a business under a particular name and using a mark in respect of goods or services. The intention which the applicant needed to establish was an intention to use a mark to distinguish goods or services in the course of the applicant’s trade from goods or services provided by any other person. Because it has established that it intended to use the name to brand its businesses that does not mean, however it has established that it has used a mark or a sign to distinguish goods or services in the course of trade.[15]
[15] Shahin Enterprises Pty Ltd v ExxonMobil Oil Corp [2005] FCA 1278, [73].
The context of the demonstrated use is all-important and requires objective examination. In this respect, I also note the Opponent has supplied a sales register ‘detailing continuous sales from Sep 2005 through to current date’.[16] This sales register at Exhibit AJF-3 to the Fajwul declaration is an internal document headed ‘Anthony J Fajwul t/a Dr I.T. Computer Consulting’ and I find it reasonable to assume from the Fajwul declaration (although it is not clear from the Exhibit itself) that the sales referred to therein are for the provision of computer support services (installation, repair and maintenance) and the like. These are undoubtedly the same kind of services as those claimed in class 37 of the Applicant’s specification of services. I note that this particular point was uncontested.
[16] Fajwul declaration, [12].
Further, the sales in the register occurred over the same period that the Landing Page featured the Opponent’s advertisement. I am satisfied from the context, placement and surrounding elements in the advertisement that use ‘DR I.T. Computer Consulting’ indicates a connection in the course of trade between the services and the Opponent and is therefore trade mark use.
Mr Pourniotis’ declares that the Landing Page is ‘distinct from a website and has no global navigation to tie it to any website’[17], that it has been a page under construction since 2008 and that ‘it is not intended for any serious promotion of the Opponent’s business or access by the public using commonly available search engines’.
[17] Pourniotis declaration, [11].
Despite these observations, I am of the view that the Landing Page contains a trade mark substantially identical to the Trade Mark and was available (although not easily accessible) to the Australian public. It amounts to an advertisement for the Opponent’s services and therefore constitutes an offer to trade in those services or at the very least an existing intention to supply the services bearing the Opponent’s trade mark before the relevant date.
Amount of use to establish ownership
One of the issues raised at the hearing was the amount of use in the course of trade that is necessary to demonstrate ownership of a trade mark in Australia. Mr Krouzecky and Dr Golding argued that much of the case law that seizes upon a single instance of use relate only to cases where there was substantial overseas reputation in the trade mark. The question before me was how much use will suffice in situations where (as here) the person seeking to establish prior use in a trade mark has no overseas reputation?
To answer the question, it is necessary to extract the relevant case law on this point. In the case of Seven Up Company v OT Ltd Latham CJ found (on appeal):
In my opinion the effect of these cases is that in the absence of fraud it is not unlawful for a trader to become the registered proprietor under the Trade Marks Act of a mark which has been used, however extensively, by another trader as a mark for similar goods in a foreign country, provided the foreign mark has not been used at all in Australia at the date of the application for registration. But the position is different if at that date the mark has become identified with the goods of the foreign trader in Australia because those goods have been brought into Australia by the foreign trader himself or by some importer or in some other manner. The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia.[18]
[18] [1947] HCA 59; (1947) 75 CLR 203 [Emphasis in bold].
The above comments were reiterated in Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd as seen below:
It was not the "author" of the trade mark if that trade mark had been used by a person in Australia before the date of the application "in relation to goods for the purpose of indicating, or so as to indicate, a connexion in the course of trade between the goods" and that person. See the definition of "trade mark" in s. 6. Such a use has been described as a use on the Australian market. It has been held that any use at all on the Australian market will suffice to deny to the applicant the right to claim authorship and consequent registration: Seven Up Co. v. O. T. Ltd. per Williams J. [1947] HCA 59; (1947) 75 CLR 203, at p 211 in a passage adopted by Latham C. J. on appeal (1947) 75 CLR, at p 216.[19]
[19] [1974] HCA 51; (1974) 131 CLR 592 (p601).
The above statement of principle does not appear to be restricted to instances where the person seeking to claim authorship has an overseas reputation in a trade mark. However, a common thread is that the establishment of a local reputation in the trade mark is not a prerequisite to demonstrating that the Applicant is not the owner of the Trade Mark. Again, as was found in the case of Moorgate Tobacco Co Ltd v Philip Morris Ltd:
The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act. In such a case, the court "seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia" (see The Seven Up Co. v. O.T. Ltd. [1947] HCA 59; (1947) 75 CLR 203, at p 211; Aston v. Harlee Manufacturing Co. [1960] HCA 47; (1960) 103 CLR 391, at p 400).[20]
[20] [1984] HCA 73, [21] [Emphasis added].
More generally, in Colorado Group Limited v Strandbags Group Pty Limited, Finkelstein J decided:
…Second, a person may be the proprietor of a mark if he has used it, provided no-one else has used the mark before him. This last proposition requires some elaboration. In the case of an inherently distinctive mark nothing more than first use is necessary to establish proprietorship. The applicant need not show that the mark has gained public recognition. Any general use of the mark as a trade mark will be enough, although in a rare case the use may be so inconsequential that it should be ignored as de minimus. Perhaps care should also be taken when there has been only a slight use of the mark followed by a long period of non-use, where something akin to the doctrine of abandonment might apply. If a mark is not inherently distinctive but indicates that an article emanates from some (usually anonymous) source because, or partly because, the mark has acquired a secondary meaning, strictly speaking first use is not sufficient to establish proprietorship.[21]
[21] [2006] FCA 160, [23]. This passage was quoted with approval on appeal in Colorado Group Limited v Strandbags Group Pty Limited [2007] FCAFC 184, [5].
Precedent therefore indicates that even in the case of persons seeking to establish proprietorship with no overseas use, a general market reputation in Australia need not be established[22] and nothing more than general use of the trade mark will suffice, which may be slight, provided it is not so inconsequential as to be seen as de minimus use.
[22] See also Re Registered Trade Mark "Yanx" [1951] HCA 28; (1951) 82 CLR 199, (205).
In the current opposition, I am faced with an offer to trade in the relevant services (on the Landing Page) supported by additional evidence that Australian customers have actually utilized the Opponent’s services provided under its trade mark. However, if there were any remaining doubts surrounding the latter, the Opponent has also supplied third party corroboration of its claims to ownership.
As evidence in reply, Exhibit CC-04 to the Costa declaration contains a letter from the designer of the logo that appears on the Landing Page. The designer writes:
This is to certify that my company, The Illustrating Man Designs Pty Ltd trading as Cartooning Kingdom has been using DR I.T. computing service since February 2006 until the present… We have recommended Dr I.T. to all our family members and business associates…
Exhibit CC-04 also provides two more examples. The first appears to be from a computer hardware and software retailer of which Mr Fajwul is a customer. He says:
Since Late 2005 to present Digitalstar has had an ongoing business relationship with Anthony Fajwul Trading as Dr I.T. Computer Consulting.
He has bought numerous computers, accessories and software. Every quotation and tax invoice has been to that business name.
When talking on the phone and via email he has always been introduced to all of our staff as Anthony from Dr. I.T.
A customer of the Opponent also writes a testimonial as follows:
Pacific King has received service by Anthony Fajwul from Dr I.T. Computer Consulting since January 2009. … I have always associated Dr. I.T. with Anthony and his business. In fact I found Dr I.T. by Googling it when my sister joined my Company and advised Dr I.T. had been servicing the Real Estate agency she previously worked at…
Ultimately, the activities of the Opponent are sufficient to constitute relevant use of the mark in Australia for the purpose of indicating a connection in the course of trade between the Opponent and computer support services. In this context, I find that the Applicant cannot ‘accurately put itself forward as claiming to be the proprietor of the [Trade Mark]’.[23]
[23] See, for example, Buying Systems (Australia) Pty Limited v Studio Srl [1995] FCA 1063, [9].
Accordingly, on the balance of probabilities, I find that the ground of opposition under section 58 of the Act has been established.
Section 60:
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.
To adapt the above section of the Act to the facts of the current opposition, a successful section 60 requires the Opponent to establish an Australian reputation extant in another trade mark as at 14 December 2014, such that the use of the Trade Mark would be likely to deceive or cause confusion in the marketplace.
In terms of the level of reputation required to be demonstrated, established legal precedent in Australia points to a requirement that a ‘significant’ or ‘substantial’[24] number of consumers within the relevant trade/market must be likely to be deceived or confused for this ground to be established. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[25] and may depend on the specialised nature of the relevant market.[26]
[24] See Renaud Cointreau& Cie v Cordon Bleu International Ltee (2001) 52 IPR 382; [2001] FCA 1170 and ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.
[25]“Bali” Trade Mark [1969] RPC 472, (496).
[26] Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1; [2000] FCA 1587, [20].
In ConAgra Inc v McCain Foods (Aust) Pty Ltd, it was made clear that reputation in a trade mark cannot be assumed and ‘In the end the question of the existence and extent of reputation and of goodwill must be a matter of fact…’[27]
[27] (1992) 33 FCR 302, (77).
The Fajwul declaration and the exhibits it contains, with references to the DR IT phone and mobile number, the Landing Page, the domain name and the sales register are all insufficient to establish the requisite reputation in Australia. There is not any evidence of expenditure on advertisements promoting the Opponent’s trade mark and some evidence in relation to sales within Australia. Any promotions are limited to ‘word of mouth’ and the (previously discussed) Landing Page.
In short, there is not a sufficient reputation demonstrated in the Opponent’s trade mark for the first element of the ground to be made out. As a result, I find that the ground of opposition under section 60 of the Act has not been established.
Section 62A
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.
A trade mark application will be made in bad faith if ‘persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.’[28]
[28] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [174].
The facts here are that the Applicant searched the ASIC Registry, ATMOSS database, ‘Google’, the ‘Yellow Pages’, ‘True Local’ directory, ‘Facebook’ and ‘Twitter’ and was unable to locate the Opponent’s business via these means.
The Opponent argues that the Applicant did not provide any evidence of having conducted any domain name searches, but submits that it is unlikely that it did not do so. The Opponent also points to the Applicant’s registration of the domain name ‘ which, it argues, highlights the unavailability of the suffix ‘.com.au’ the domain name owned by the Opponent. It is likely that the Opponent would have been aware of this unavailability.
Having said that, the paucity of other trade mark use and business promotional activities by the Opponent may have led the Applicant to believe that the landing page was not current and that ‘Dr IT Computer Consulting’ was not being used as a trade mark. That may be a reasonable assumption to make given the results of the other searches conducted by the Applicant.
In any event, I find that the Opponent’s arguments are based on a number of unsupported assumptions. Even if the Applicant conducted a domain name search and encountered the landing page, the decision to apply to register the Trade Mark in the face of that knowledge falls well short of an application made in bad faith. I find that the Applicant’s act of filing this trade mark application is entirely reasonable on the information before it at the time and certainly not of ‘an unscrupulous, underhand or unconscientious character.’[29]
[29] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [166].
I find that the ground of opposition under section 62A of the Act has not been established.
Decision
Section 55 of the Act relevantly provides:
55Decision
(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.
A ground of opposition has been established. I refuse to register trade mark application no. 1661942.
Costs
I note that, in the event of their client’s success, Mr Krouzecky and Dr Golding made submissions that costs should be awarded in favour of the Applicant on a party-party basis. After being given the opportunity to do so, the Applicant elected not to provide further reasons for this view or request to produce further material. Given the outcome of these proceedings, I therefore award costs against the Applicant under section 221 of the Act in accordance with the amounts set out in Schedule 8 of the Regulations.
Heath Wilson
Hearing Officer
Oppositions and Hearings
10 April 2017
Key Legal Topics
Areas of Law
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Commercial Law
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Intellectual Property
Legal Concepts
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Offer and Acceptance
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