Australian Climate Exchange Ltd v Chicago Climate Exchange Inc

[2009] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Australian Climate Exchange Ltd to registration of trade mark applications 1107063(36) – ACX and 1107064(36) – AUSTRALIAN CLIMATE EXCHANGE - filed in the name of Chicago Climate Exchange Inc.

Delegate:

Alison Windsor

Representation:

Opponent:  Tim O’Callaghan of Piper Alderman

Applicant:  Andros Chrysiliou of Chrysiliou Law

Decision:

2009 ATMO 60

S52 opposition:  1107063 - ground established under section 58 – use in Australia prior to applicant’s filing date;  section 59 – applicant filed trade mark as a commercial strategy, rather than with a firm intention to use;  1107064 – ground established under section 59 – filing as a commercial strategy with no firm intention to use.

Costs awarded against applicant.

Background

1. Chicago Climate Exchange Inc (“the applicant”) filed two applications to register trade marks, current details of which appear below:

Appn No	Filing date	Trade mark	Service specification
1107063	3 April 2006	ACX	Commodity exchange services, namely, dioxide and other emissions exchange services that facilitate the trading or sale of dioxide and other emissions allowances and offsets between business and other market participants
1107064 Convention priority date: 17/2/2006	3 April 2006	AUSTRALIA CLIMATE EXCHANGE	As above

1. Following examination, the applications were advertised in the Australian Official Journal of Trade Marks as accepted for possible registration. 

2. In due course, Australian Climate Exchange Ltd (“the opponent”) filed a notice of opposition (“the notice”) in respect of each of the applications (“the notices”). 

3. The usual process of serving evidence in support, in answer and in reply ensued, as provided for by the Trade Marks Act 1995 (“the Act”) and its Regulations.  The opponent also requested, and was granted, permission to file and serve further evidence.  Both parties then asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, in Canberra on 8 May 2009.  The opponent was represented by Tim O’Callaghan of Piper Alderman, who appeared by telephone conference.  Andros Chrysiliou of Chrysiliou Law appeared in person to represent the applicant.

Late request to admit further evidence

1. Two days prior to the agreed hearing date, the applicant filed a request to admit further evidence into proceedings.  I dealt with this matter before hearing the parties on the substantive oppositions.  As the opponent had no objection to admitting the material, it forms part of the evidence I am to consider in this matter.

Grounds of opposition and onus

1. The notices nominated all grounds of opposition available under the Act, except that relating to section 61.  At the hearing, however, the opponent only pressed grounds under sections 58, 59, 60 and 42, and made brief reference to section 41.  For completeness, I say now that the grounds which are not mentioned have not been established.

2. It is generally accepted that under the provisions of the Act, the onus to establish an opposition rests with the opponent.  To be successful, it is sufficient for the opponent to establish a single ground of opposition on the balance of probabilities.[1]

   [1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599

Evidence

1. The evidence provided in respect of this opposition appears in the following table:

Declarant	Date declared	Position	Exhibits
Evidence in support 1107063
Timothy John Hanlin	9/02/2007	Director	TJH1 to TJH13
Declarant	Date declared	Position	Exhibits
Evidence in support 1107064
Timothy John Hanlin	11/04/2007	Director	TJH1 to TJH13
Evidence in Answer 1107063 and 1107064
Paula DiPerna	11/12/2007	Executive Vice President	PD-1 to PD-40
Evidence in Reply and Opponent’s further evidence - 1107063 and 1107064
Scott Gerald Hill	19/08/2008	Non-executive Chairman	No exhibits
Edwin John Forkin	18/08/2008	Financial planner	No exhibits
Further evidence (applicant)
Andros Chrusiliou	6/05/2009	Solicitor	AC

1. The two Hanlin declarations are, to all intents and purposes, identical.  I will highlight any relevant differences in their information where necessary.

Evidence in support

1. In his declarations Mr Hanlin describes the nature of the opponent’s business, under a heading “History of Australian Climate Exchange”:

   6.The Opponent operates an emissions trading exchange business in Australia.  Emissions trading is an administrative approach used to reduce air pollution by providing economic incentives for reducing net emissions.

   7.The opponent first commenced business in December 2005.

   8.Presently, the range of products and services offered by the Opponent includes:

   a.an emissions Management, Measurement and Action Pathway (or EmMap) system

   b.an ACX Trading Program; and

   c.an ACX Trading Platform, which is currently under construction.

   9.In January 2007 the opponent begun [sic] to offer consulting services under the Trade mark aimed at developing the supply side of the emissions trading market and in support of its role as an active buyer of Australian emissions reduction units.

2. Mr Hanlin says both of the opponent’s trade marks – ACX and AUSTRALIAN CLIMATE EXCHANGE – were developed in October 2005 to provide “catchy and memorable” brand names for an Australian emissions trading market.  The opponent company name was registered at the Australian Securities & Investments Commission (“ASIC”) on 11 October 2005. 

3. Since about November 2005, Mr Hanlin says, both trade marks have been consistently used “in all corporate materials, including share certificates, company logos, websites, letterheads, promotional brochures, presentations, emails and general correspondence”.  Examples of the use claimed are given in the various exhibits annexed to the Hanlin declarations. 

4. Mr Hanlin states that the opponent relies on networking, direct mail-outs and cold calling to promote its products and services to potential members.  From as early as December 2005, he says, his company has conducted presentations to varying audiences including potential investors and corporate representatives and from the beginning of 2006 made presentations to representatives of relevant industry bodies.

5. Paragraph 23 of the Hanlin declarations states that “all of the documents displaying the Trade Mark in the above exhibits have been used prior to the date Chicago Climate Exchange filed its application to register trade mark number 1107063 [1107064] on 3 April 2006”.

Evidence in Answer

1. Ms DiPerna, on behalf of the applicant, sets out in her declaration a history of the development of the applicant company, which is a wholly owned subsidiary of climate Exchange plc, incorporated in the Isle of Man. 

2. The founder, chairman and CEO of the applicant is Dr Richard L Sandor, a high profile economist and financial innovator who is credited with the creation of the financial futures market, and was, in 2002, chosen by time Magazine as one of its “Heroes of the Planet” for his role in the founding of Chicago Climate Exchange.  The first trade of greenhouse gases occurred in 2003. 

3. Chicago Climate Exchange began in 2000, Ms DiPerna said, with an initial grant of funds from a leading Chicago-based philanthropy, to the Kellogg Graduate School of Management of Northwestern University.  The grant resulted in technical support being provided to Dr Sandor and his colleagues, who in turn developed a concept and system for the trading of greenhouse gases.  An entity named Environmental Financial Products, LLC was the predecessor of the applicant company and it transferred all its assets, employees and property to the applicant on January 30, 2005. 

4. In extracts from her declaration, Ms DiPerna says:

   19. It has been CCX, Inc’s desire, since its founding, to launch exchanges around the world, including in Australia. 

   … 

   20. European Climate Exchange was launched by CCX, Inc in 2005.  It is now the leading exchange operating in the European Union Emissions Trading Scheme, accounting for 80-90% of total exchange traded volume in the European Union emissions Trading Scheme.

   …

   23. CCX Inc’s strategy in relation to trade marks has been to use four basic identifiers in each market in which it provides services, namely:

   (a) the trade mark _____CLIMATE EXCHANGE, where the element “_____” consists of a geographic location;

(b) the trade mark __CX, where the element “__” is the first letter of the geographic location referred to in (a) above

(c) the trade mark combining the word __CX with a logo of the world globe; and

(d) a world globe often tailored to show the continent or hemisphere corresponding to the region in which CCX, Inc provides its services

24. Applying the strategy described in paragraph 24 to Chicago Climate Exchange, CCX, Inc. has used four trade marks to distinguish the services provided by Chicago climate Exchange, namely, the trade marks:

(a) CHICAGO CLIMATE EXCHANGE;

(b) CCX;

(c) CCX and Globe Design, as represented below; and

(d) globe logo design as represented below.

In keeping with CCX, Inc.’s strategy, the globe logo represented above has been tailored to show the continent of North America when used in respect of services provided by Chicago Climate Exchange.

1. The declaration then goes on to demonstrate how the trade mark strategy would be applied for the applicant’s European Climate Exchange trade marks, and for the trade marks for the proposed India Climate Exchange.

2. Ms DiPerna states that, because the applicant is the world’s first legally binding rules-based greenhouse gas emissions allowance trading system, it has developed a significant reputation world-wide, including in Australia.  In support of this claim, articles published in Australian print and electronic media over a period from 2001 to 2005 are supplied as exhibits to the DiPerna declaration.  The declaration then goes on to make reference to a number of Australian organizations which have become members of the applicant.  The first Australian member joined up in September 2006, with others following at later dates.

3. Ms DiPerna refers to her contact with members of the opponent company at a conference in Adelaide in February 2006, and to legal exchanges between the applicant and opponent the same year. 

Opponent’s Evidence in Reply and Further Evidence

1. The evidence in reply and further evidence consist of two declarations, and from the file it is difficult to determine which declaration is relevant to which piece of evidence.  However, as this has no effect on the end result, I will simply refer briefly to the content of each of the declarations.

2. The Hill declaration has been sworn largely as a response to Ms DiPerna’s comments about interaction between her and Mr Hill at an Adelaide conference in 2006, mentioned previously.  The parties have different recollections of the exchange. 

3. The Forkin declaration attests to Mr Forkin’s claim to knowledge of Mr Hanlin’s intention to create a business based on trading carbon offsets from late 2004 or 2005.  He also refers to having seen the opponent’s draft business plan, and to having seen use of both of the trade marks the opponent claims to use.

Applicant’s Further Evidence

1. The Chrysiliou declaration forming the applicant’s further evidence refers to the discovery of anomalies in the opponent’s evidence, and exhibits an extract from ASIC.  This extract gives a history of the opponent company, including the actual date of the application for its registration.

Discussion and Reasons.

1. A matter crucial to the determination of the oppositions in respect of both these trade marks is the opponent’s date of first use.  In respect of this, the applicant has attempted to cast doubt on the veracity of some of the statements in Mr Hanlin’s declarations. 

2. Mr Hanlin, at paragraph 1 of his declarations, which were made in February 2007, stated that he had been managing director and company secretary of the opponent, positions which he said he had held for over 2 years.  At paragraph 7 of his declarations, he declared that “the Opponent first commenced business in December 2005”.  At paragraph 11 he stated that the name “Australian Climate Exchange” was registered with ASIC on 11 October 2005, and at paragraph 12 said that the trademarks have been consistently used by the opponent on various materials since about November 2005. 

3. The applicant, in its further evidence, provided an extract from the ASIC public records which demonstrated that the opponent made application for registration as a public company on 16 December 2005, not in October as Mr Hanlin had stated, thus casting doubt on the accuracy of some of the information provided in Mr Hanlin’s declaration and noted in the previous paragraph.  

4. At the hearing, with the agreement of the applicant’s representative, the opponent’s representative tendered a letter from ASIC dated 19 October 2005, which refers to an application, filed with ASIC on 11 October 2005, to reserve the company name for a period of time.  It appears that Mr Hanlin has, at least for the purposes of making his declaration, equated reservation of the company name with its registration, and thus the dates at which the company began use of its trade mark do not tally with the registration.  He has also not been particularly careful in determining how long he had been an officer of the company at the time he made the declaration.

5. The inconsistencies in Mr Hanlin’s declarations suggest that he has not been scrupulous in making sure of his facts.  This is surely not good practice when committing information to a statutory declaration which you hope will support your case in actions such as these oppositions.  I intend to regard this as carelessness on Mr Hanlin’s part, rather than an attempt to mislead, because the inconsistencies are so obvious.

6. The presence of these identified inconsistencies suggest that I might not give as much weight to Mr Hanlin’s evidence as I otherwise could have done.  In the eventual wash-up of this matter, the inconsistencies do not affect the result.  The quality and quantity of the evidence, however, does.

The Grounds

1. I noted the grounds pursued at the hearing previously in paragraph 6.  In dealing with them I will refer to matters common to both trade marks, and then with matters peculiar to the individual marks.

2. Setting the scene for some of the grounds, I note that the applicant’s two trade marks – ACX and AUSTRALIA CLIMATE EXCHANGE – and the opponent’s trade marks – ACX and AUSTRALIAN CLIMATE EXCHANGE are substantially identical.  The applicant’s claimed services are the same as, or the same description as, those of the opponent, set out in paragraph 6 of the Hanlin declarations:  “the Opponent operates an emissions trading exchange business”.

Section 41 – trade marks not capable of distinguishing

1. There is nothing provided within the evidence or submissions which goes to raising doubts about the capacity of the applicant’s trade marks to distinguish its services.  The only relevant comment made is that the applicant has no use in Australia to support any ground for rejection raised under 41(5).  From the information provided, it is clear that the applicant has not used the trade mark in the Australian jurisdiction.  However, no ground under section 41 was raised by the examiner at the time of examination, and I can see no reason for raising one now.  The question of use within Australia is thus irrelevant.  The opponent has not established this ground.

Section 58 – applicant is not the owner of the trade mark

1. It is now well established in law that, in order to succeed under this ground of opposition, the opponent must establish three factors. These are:

• that the respective trade marks of the applicant and opponent be either identical or substantially identical [2],

• that the respective services of both parties be the ‘same kind of thing’ [3]

• that the opponent has the earlier claim to ownership based on use prior to both the application to register and any actual use of the mark by the applicant[4].

  [2] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd 31 IPR 375 (1994) 120 ALR 495

  [3] Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75

  [4] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

1. The first two points in the previous paragraph have already been established.  In respect of the third point, the applicant has not used its claimed trade marks in Australia, therefore it must rely on the relevant application dates.  For the ACX trade mark, the date is 3 April 2006.  For AUSTRALIA CLIMATE EXCHANGE, the relevant date is the convention priority date, 17 February 2006, the date at which its application was filed in its home jurisdiction, the USA.  

2. At the hearing, the opponent’s representative disputed the relevance of this date, referring to subsection 72(2) of the Act which he said supported a case for the applicant to have to rely on its filing date.  This matter needs to be determined before I am able to decide the relevant date before which the opponent must demonstrate its use.

3. Subsection 72(1) provides:

   Section 72.  Date and term of registration

   (1)  Subject to subsection (2), the registration of a trade mark in respect of the goods and/or services in respect of which the trade mark is registered is taken to have had effect from (and including) the filing date in respect of the application for registration. (emphasis added)

4. Subsection 72(2) of the Act relevantly provides:

   (2)  If: 

   (a) the application was in respect of a trade mark whose registration had also been sought in one or more than one Convention country; and

   (b) the applicant claimed a right of priority under section 29 for the registration of the trade mark in respect of particular goods or services; and

   (c) the trade mark is registered under this Act;

   the registration of the trade mark in respect of those goods or services is taken to have had effect: 

   (d) if an application to register the trade mark was made in only one Convention country--from (and including) the day on which the application was made in that country; …

5. “Filing date” is defined in section 6 as

   (a) in relation to an application for the registration of a trade mark other than an application referred to in another paragraph of this definition--the day on which the application is filed;

6. Section 72 refers to the term “priority date”, which is defined in section 12:

   Section 12.  Definition of priority date

   The priority date for the registration of a trade mark in respect of particular goods or services is: 

   (a) if the trade mark is registered--the date of registration of the trade mark in respect of those goods or services; or

   (b) if the registration of the trade mark is being sought--the day that would be the date of registration of the trade mark in respect of those goods or services if the trade mark were registered.

7. Section 29 explains the right of priority allowed an applicant by an application made under its provisions:  

   Section 29.  Application for registration of trade mark whose registration has been sought in a Convention country--claim for priority

   (1)  If: 

   (a) a person has made an application for the registration of a trade mark in one or more than one Convention country; and

   (b) within 6 months after the day on which that application, or the first of those applications, was made, that person or another person (successor in title) of whom that person is a predecessor in title applies to the Registrar for the registration of the trade mark in respect of some or all of the goods and/or services in respect of which registration was sought in that country or those countries;

   that person or that person’s successor in title may, when filing the application, or within the prescribed period after filing the application but before the application is accepted, claim a right of priority for the registration of the trade mark in respect of any or all of those goods and/or services in accordance with the regulations.

   Note:  For month see section 6.

   (2)  The priority claimed is for the registration of the trade mark in respect of the goods or services: 

   (a) if an application to register the trade mark was made in only one Convention country--from (and including) the day on which the application was made in that country; …

1. Section 225 is also relevant here, and the section reads:

   (1)  The regulations may declare a foreign country to be a Convention country for the purposes of this Act.

   (2)  If:

   (a)  the regulations declare that, under the terms of a treaty subsisting between 2 or more Convention countries, an application made for the registration of a trade mark in one of those countries is equivalent to an application made in another of those countries; and

   (b)  an application for the registration of a trade mark is made in one of those Convention countries;

   then, for the purposes of this Act, an application for the registration of the trade mark is taken to have also been made in the other Convention country or in each of the other Convention countries (as the case may be).

   (3)  If: 

   (a) the regulations declare that, under the law of a Convention country, an application for the registration of a trade mark made in another country is equivalent to an application made in the Convention country; and

   (b) an application for the registration of a trade mark is made in that other country;

   then, for the purposes of this Act, an application for the registration of the trade mark is taken to have also been made in the Convention country.

2. Use of the convention priority provisions therefore allows the applicant to claim an earlier filing date.  Effectively, that earlier date becomes the relevant priority date within Australia for that application for all purposes, except for renewing the registration when it comes due.[5]  If the opponent is to establish its section 58 in respect of application 1107064, it must be able to demonstrate relevant use of the AUSTRALIAN CLIMATE EXCHANGE trade mark prior to 17 February 2006, some six weeks earlier than the Australian filing date.

   [5] See subsection 72(3) of the Act. Renewal occurs ten years after the date on which the application was filed in Australia.

3. Inconsistencies in the evidence aside, it is difficult to determine definite dates of use of the opponent’s trade marks.  To dislodge an applicant’s claim to be the owner, only slight use is required but that use must be public commercial use.  Public commercial use does not necessarily entail massive distribution through a platform such as a nationally based supermarket, but it does involve exposure to members of the relevant public, rather than, for example, to members of staff, friends or family.

4. As far as 1107063 is concerned, Exhibit TJH2 shows use of the letters ACX on PowerPoint® slides which Mr Hanlin states were presented to potential investors, corporate advisers and managers at a roadshow in Melbourne and Sydney during the second week of December 2005.  This use may or may not have been for the purposes of fund-raising, as the applicant asserts, but it effectively put the trade mark ACX in front of the very people who would be expected to be interested in using the opponent’s services.  This use is preparatory use of the trade mark in respect of a business yet to take off, and the authorities do not appear consistent as to whether or not this can be regarded as “use” suitable to establish a ground of opposition under section 58.

5. More supportive examples of use appear at Exhibit TJH11 which includes copies of two letters – one dated 20 March 2006 and addressed to the Chief Executive Officer of BHP Billiton, and one dated 29 March 2006 and addressed to the General Manager, Corporate Affairs, Alcoa of Australia Limited.  Both these letters clearly show the ACX trade mark in the letterhead.  Both letters offer the respective companies an opportunity to become members of the opponent’s organisation.  Both letters refer to inclusion of the opponent’s brochure which forms exhibit TJH 7, and which shows both the ACX and AUSTRALIAN CLIMATE EXCHANGE trade marks being used in connection with the relevant services being offered.  

6. I am satisfied that the opponent has demonstrated use of its ACX trade mark from a date prior to 3 April 2006, the priority date of application 110763.  That being the case, the ground of opposition under section 58 is established for that trade mark.

7. As far as 1107064 is concerned, the relevant priority date before which use must be demonstrated is 17 February 2006.  The previously mentioned PowerPoint® slides do not support use of the opponent’s phrase trade mark, AUSTRALIAN CLIMATE EXCHANGE.  They show the company name on the bottom of the slides, and use as company name is not necessarily a demonstration of use as a trade mark.[6]  Other examples claimed as showing use of the phrase prior to February are not conclusive.  Exhibit TJH3, for example, clearly shows the phrase in use on a PowerPoint® slide, dated January 2006.  However, Mr Hanlin gives no indication of how or when this slide was put before the public, nor who would have been exposed to it.  Any other examples of use of the phrase, including the examples in the opponent’s advertising brochure mentioned above in paragraph 46, post-date the relevant priority date.

   [6] See Shahin Enterprises Pty Ltd v Exxonmobil Oil Corp [2004] ATMO 43

8. The information the opponent has provided in support of the phrase trade mark is incomplete, inconsistent and lacks persuasive content.  This goes against it as far as this trade mark is concerned.  The opponent has not demonstrated to my satisfaction that it has used the phrase as a trade mark prior to the applicant’s priority date.  The ground of opposition under section 58 has not been established in respect of application 1107064.

Section 59 – applicant not intending to use trade mark  

1. This ground is a challenging ground for an opponent to establish.  The opponent must provide sufficient evidence to displace the presumption of an intention to use inherent in the applicant’s action of filing the applications.  Alternatively, if the opponent raises sufficient doubts as to the applicant’s intention in this regard, the onus shifts to the applicant to support its own case.

2. The applicant had not used its trade marks in Australia by either priority date.  This is clear from the declaration forming the evidence in answer.  However, the evidence clearly sets out the applicant’s strategy for creating trade marks[7] and refers to discussions with various Australian people and organizations with a view to commencing operations in this country.  This information appears to indicate an intention to move its business into Australia, but it does not definitively point to the applicant’s intention to use the relevant trade marks.  Instead, the declaration refers to various Australian bodies which have joined the Chicago Climate Exchange in the USA, all of which have done so after these two trade marks were filed, and none of which have apparently done so via use of the disputed trade marks.  

   [7] See paragraph 17 of this decision, where the strategy is set out.

3. In his submissions at the hearing, Mr O’Callaghan suggested that the filing of the applicant’s USA application was timed in order to block the opponent’s use of its own trade marks in Australia, rather than with any intent to initiate use within Australia.  The application was filed at the United States Patent and Trademark Office on 17 February 2006, just prior to Ms DiPerna attending a climate change symposium in Adelaide where she was to be a speaker.[8] 

   [8] The symposium was held on 20-21 February 2006.

4. Given the timing of this filing, and the fact that Australian companies have joined up with the applicant’s Chicago based operations, it is indeed possible to infer that the Australian applications were filed at the time they were as a commercial tactic, rather than as a genuine indication of a definite intention to use the trade marks in the relevant trade within Australia.  

5. Ms DiPerna’s declaration was made in December 2007, almost 18 months after the applications were filed.  By that time, it is obvious that the applicant had made no use of the trade marks in Australia, nor is there evidence of use in any country overseas.  I am satisfied on the balance of probabilities that these two trade mark applications were filed as a commercial tactic, and that the applicant, neither at the time of filing nor at the time the opposition was mounted, had any real intention to use the trade marks within the Australian jurisdiction at any definite time.  The ground under section 59 has therefore been established for both trade mark applications.

Section 60 – trade mark similar to one with a reputation in Australia

1. Strictly speaking, as the opponent has succeeded in at least one ground of opposition, it is not necessary for me to consider the remainder.  However, in the circumstances of this case, I think it is necessary for me to complete the record by considering briefly the remaining grounds.

2. The applications were filed in April 2006, prior to the amendment of section 60 which took effect from 23 October 2006.[9]  The requirements of the section prior to the amendment are that the trade marks under consideration be substantially identical or deceptively similar, which is a matter that has already been resolved in the discussion in respect of section 58.

   [9] Trade Marks Amendment Act2006

3. The remaining matter is whether the opponent is able to establish that it had a reputation in Australia at the time these applications were filed, and that the reputation was of such stature that fair use of the applicant’s trade marks would cause deception and confusion.  The opponent cannot establish the required level of reputation – its evidence is simply not sufficient for the purpose.  Whilst there is sufficient information to demonstrate a minimal amount of use, that does not amount to the kind of reputation envisaged by section 60.  This ground of opposition is not established for either trade mark.

Section 42 –use contrary to law

1. The opponent submitted at the hearing that use of the applicant’s trade marks would be contrary to law in that it would amount to misleading and deceptive conduct contrary to the Trade Practices Act 1974 (“TPA”) and/or the tort of passing off. Mr O’Callaghan also submitted “that the appropriate date for considering whether or not use of the trade mark would amount to misleading and deceptive conduct or passing off, is not the priority date (February 2006) but either the date of hearing, or some date in the future (in anticipation that the applicant may in fact use the trade mark in the future)”.

2. I am unable to agree with Mr O’Callaghan on the appropriate date at which this section of the Act must be considered.  The matter should be considered at the relevant priority date for each trade mark, which date is supported by Wilcox J in his Harry Potter decision - Time Warner Entertainment Co LP V Stepsam Investments Pty Ltd (2004) 59 IPR 343.

3. In addition, for this ground to be established, it must be determined that the use of the trade mark would, not could, be contrary to law.[10] At the priority date, the trade marks were not in use, and the opponent was unable to demonstrate a reputation to any degree at all. There is no evidence to support Mr O’Callaghan’s contentions that the applicant’s use would trigger the provisions of the TPA. The opponent has not established this ground.

   [10] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24

Decision

1. In respect of application 1107063, the opponent has established grounds of opposition under sections 58 and 59.  In respect of trade mark application 1107064 it has established a ground of opposition under section 59.  The opponent is therefore successful in the opposition and I refuse to register applications 110763 and 110764.

Costs

1. Having been successful, the opponent is entitled to its costs.  I award costs against the applicant according to the scale found in Schedule 8 of the Regulations, with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad (2001) 53 IPR 591.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

6 August 2009