Australian Rugby League Commission Ltd v Enterprise above & beyond Ltd

[2017] ATMO 150

TRADE MARKS ACT 1995

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

Re:Opposition by Enterprise Above & Beyond Pty Ltd to registration of trade mark application 1585168(24, 28) - STATE OF ORIGIN - filed in the name of Australian Rugby League Commission Ltd.

Delegate:

Adrian Richards

Representation:

Opponent: Self represented

Applicant: Shelston IP

Decision:

2017 ATMO 150

Opposition to registration of a trade mark under section 52 of the Trade Marks Act 1995 (Cth) – grounds of opposition under sections 41, 42, 43, 44, 58 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This decision on the written record relates to an opposition to the registration of a trade mark under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’).

2. Australian Rugby League Commission Ltd (‘the Applicant’) filed an application for registration of a trade mark (‘the Application’). Relevant details of the Application are reproduced below:

   Application number:             1585168

   Trade mark:  STATE OF ORIGIN (‘the Trade Mark’)

   Priority date:  10 October 2013 (‘the Relevant Date’)

   Specification of goods:         Class 24: Textiles and textile goods, not included in other classes; bed and table covers; manchester; bedding; sheets; blankets; quilts; bedspreads; pillow cases; towels; tea towels; golf towels; textile wall hangings; textile serviettes; table napkins; textile place mats; textile bar runners; flags in this class; banners; covers for cushions; textile coverings for furniture, and other household items; all of the foregoing goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league
   
   Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; arcade, board, interactive and trading card games; toys; soft toys; yoyos; cubby houses; footballs; golf equipment, apparatus and accessories including golf tees and golf bags; billiard and snooker apparatus and accessories; dart boards and dart accessories; sporting bags; balls; kicking tees; corner flags; goal posts; tackling pads; padding for goal posts; protective padding including shoulder pads; shin pads; electronic games; toy action figures and accessories therefor; action games and accessories therefor, balloons, kites; playing cards; trading cards (card games); parts, fittings and accessories for all the foregoing; all of the foregoing goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league (‘the Applicant’s Goods’)

3. The Trade Mark was advertised as having been accepted for possible registration on 7 January 2016 with the endorsement ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.’

4. Enterprise Above & Beyond Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark on 27 February 2016. The Opponent then filed a Statement of Grounds and Particulars (‘the SGP’) on 11 March 2016. This office gave a copy of the SGP to the Applicant, who responded by filing a Notice of Intention to Defend on 29 April 2016.

5. The parties filed their evidence in accordance with the statutory procedure. Details are set out below under the heading ‘Evidence’. Once the evidence stages were complete, this office sent letters to the parties dated 3 February 2017 informing them, among other things, that the opposition was ready to be heard. Neither party asked for a hearing date to be set within the timeframe of the 3 February 2017 letter.

6. This office wrote again to the parties on 7 April 2017, informing them that since there had been no request for an oral hearing the opposition was to be decided on the papers. Among other things, the 7 April 2017 letters invited the parties to file written submissions to be considered by the delegate in deciding this opposition. The Opponent was first to take the opportunity, filing its submissions on 7 May 2017. Attached to the Opponent’s submissions was the first of three attempts to seek to adduce evidence outside of the statutory periods for doing so. All of the Opponent’s late evidence is dealt with below under the heading ‘Late Evidence’. The Applicant filed submissions on 13 July 2017. The opposition was then given to me, a delegate of the Registrar of Trade Marks, to decide.

Grounds and onus

1. In its SGP, the Opponent nominates grounds of opposition under ss 41, 42, 43, 44, 58 and 62A of the Act. The onus is on the Opponent to satisfy me on the balance of probabilities that it has established a ground of opposition.[1] The rights of the parties are to be determined as at the Relevant Date.[2] To succeed, the Opponent need only establish one ground of opposition.

   [1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

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

Evidence

1. The evidence filed in accordance with the statutory procedure is set out below:

   Evidence in support

   Declaration of Fred Nugent, owner and sole director of the Opponent, made on 29 May 2016 with exhibits A, A1 - A3, A5 - A26, A26a, A27 - A31, A32A - A32C, A33, A34, AFL State of Origin Request, B, Ba, C, C1, D - I, K - R, R1 - R8, S, T, T1, U, UU, V, W, W1, X, Y, Y1, Z, Z2 (‘Nugent 1’).

   Evidence in answer

   Declaration of Peter Giurissevich, Senior Legal Counsel for National Rugby League Limited and Legal Counsel for the Applicant, made on 23 November 2015 with exhibits PG-1 - PG-139, including confidential exhibits PG-5, PG-9, PG-10, PG-12, PG-35, PG-45, PG-113 - PG-121, PG-123, PG-124, PG-128 - PG-130 and PG-132 (‘Giurissevich’).

   Evidence in reply

   Declaration of Fred Nugent, owner and sole director of the Opponent, made on 25 January 2017 with exhibits Answer1, Answer1.1 – Answer1.3, Answer10.2, Answer2, Answer3, Answer3.1, Answer6, Answer6.1, Answer7, Answer8, Answer8.1, Answer8.2, Answer9, Answer10, Answer10.1, Answer11 - Answer14, Answer14.1, Answer15, Answer15.1, Answer15.2, Answer16 – Answer20, Answer25, Answer26.1, Answer26.2, Answer26, Answer28, Answer29, Answer29.1 – Answer29.3, Answer30, Answer31, Answer31a, Answer32 - Answer35, AnswerR1 and AnswerR2 (‘Nugent 2’).

2. Giurissevich provides some background on the declarant, the prosecution history of the Application, the Applicant, the Opponent and past dealings between the parties. The Applicant is the peak body of the sport of rugby league in Australia, and its two members are New South Wales Rugby League Limited and Queensland Rugby Football League Limited. Giurissevich focuses on the business activities of the Applicant and its two members, for example, in relation to the Australian professional national rugby league competition (which is today known by the initialism ‘NRL’). Most important to the present proceedings, this declaration sets out the history of those business activities in relation to the annual three game State of Origin series played between representative rugby league teams from the Australian States of New South Wales and Queensland.

3. The immense popularity of the rugby league State of Origin series is so well known that, in my view, it could not reasonably be doubted. Nevertheless, Giurissevich offers ready support for this proposition, including breakdowns of State of Origin game attendance figures in the tens of thousands and television audiences in the millions, year after year. Representative rugby league matches have regularly been played between teams from New South Wales and Queensland since as early as 1908, but the current State of Origin series format and name has been in place since 1980.

4. The Applicant’s revenue for State of Origin merchandise for the years 2009 to 2014 has been provided. Also in evidence is the Applicant’s marketing expenditure for the State of Origin series from 2013 to 2015, which includes advertising of its merchandise. The amount earned in revenue and expended in marketing is of course commercial-in-confidence, but it will suffice to observe here that both sets of figures are significant. Also in evidence are a plethora of examples of use of the Trade Mark from 2001 to 2016, though the Applicant also submits that these examples are indicative of the merchandise that has been offered since the series’ commencement in 1980.

5. Nugent 1 offers an account of the Opponent’s business activities and its historical dealings with the Applicant. The Opponent and the declarant are joint proprietors of the business name STATE OF ORIGIN, registered under the Business Names Act 1962 (Qld) (‘the Business Name’) since 2004. Mr Nugent is also the registrant of the domain name stateoforigin.com.au, which has operated as a shopping website also since 2004 (‘the Website’). The Website sells sports merchandise that relates to the State of Origin series. That is, the Opponent has retailed goods that are identical to some of the Applicant’s Goods for a significant period.

6. Examples in evidence of emails that the Opponent has sent to third parties show that they are often signed either ‘State of Origin’ or ‘State of Origin Online’, but invariably accompanied with the identifier ‘Enterprise Above & Beyond’. The Opponent has taken out many advertisements for the Website in print magazines such as Rugby League Week. The full website address is typically included along with the words ‘online shop’, an example of which is below:

1. Throughout Nugent 1 the Trade Mark is conflated with the Website’s domain name and the Business Name. Nugent 2 correctly acknowledges that a trade mark is neither of those things, but then seeks to reason that the registration of a domain name and business name somehow imply trade mark rights along with them. Aside from that, Nugent 2 for the most part repeats and expands on the content of Nugent 1. This is chiefly done by way of offering replies to many of the paragraphs in Giurissevich. Nugent 2 outlines the Opponent’s position in relation to all of the nominated grounds of opposition.

2. The Applicant and Opponent share a long history, but this can be summarised for present purposes along the following lines. Mr Nugent approached the Applicant about the fact that the domain name stateoforigin.com.au had not been registered. The Applicant indicated at that time that it was not interested in securing the registration, so Mr Nugent obtained it. The Opponent began retailing the Applicant’s officially licensed merchandise alongside other State of Origin and NRL merchandise through the Website. Eventually, the Applicant’s members entered into contractual arrangements with the Opponent that, among other things, saw the Website become an official NRL shop. The contracts expired, and at the request of the Applicant and its members, the Opponent removed from the Website all references to it being an official NRL shop. However, the Opponent continued to offer the general public a mix of official and unofficial State of Origin merchandise for sale through the Website up to the Relevant Date.

Late evidence

1. As mentioned, the Opponent filed three declarations outside of the statutory evidence periods. These were received on 7 May 2017, 3 June 2017 and 26 June 2017. The post April 2013 principles for admitting late evidence into opposition proceedings were discussed in Fed Square Pty Ltd v Federation IP Pty Ltd,[3] and an outline of the more crucial points that a party seeking to file late evidence should try to cover when seeking this indulgence is provided in the Trade Marks Office Manual of Practice and Procedure. For present purposes, the salient principles to draw on are that there must be a compelling case made for the admission of late evidence, and its relevance is a necessary but not sufficient condition.

   [3] [2015] ATMO 42.

2. Only the annexure to the 7 May 2017 declaration could not have been available to the Opponent at an earlier date. In contrast, the 3 June 2017 and 26 June 2017 declarations annex information that has on its face been in the Opponent’s possession since, respectively, 2009 and 2004. The Opponent has not attempted to explain why it could not adduce this earlier. More generally, all three declarations either add nothing to the grounds of opposition, or merely supplement information already in the properly filed evidence. The Opponent has not given a compelling reason to admit any aspect of these three declarations into evidence, so they have not been referred to in my discussion of the grounds of opposition below.

Reasons

Section 41

1. The relevant parts of s 41 of the Act are reproduced below:

   41 Trade mark not distinguishing applicant’s goods or services

   (1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

   Note:For goods of a person and services of a person see section 6.

   (2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

   (3)This subsection applies to a trade mark if:

   (a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

   (4)This subsection applies to a trade mark if:

   (a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

   (b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances.

   Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

   (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

   (b) the time of production of goods or of the rendering of services.

   Note 2:For goods of a person and services of a person see section 6.

   Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

2. There is a two step test for whether a trade mark has been inherently adapted to distinguish in the terms of ss 41(3) and (4). The first step is to determine the ordinary signification of the words,[4] before then asking, in light of that ordinary signification:

   …whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it…by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]

   [4] Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337, 361-2 (French CJ, Hayne, Crennan and Kiefel JJ).

   [5] Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J).

3. The Opponent submits that the Trade Mark is a reference to a person’s State of origin, thus other sporting bodies would in the ordinary course of running inter-state competitions and related matters, without improper motive, desire to use the Trade Mark. The Opponent seeks to draw support for this from a decision of this office, in which the Hearing Officer considered that ‘the phrase STATE OF ORIGIN should remain public property, on my own observations of charity and sporting events, and commercial promotions where participants are chosen on the basis of their State of origin.’[6] On similar terms to this excerpt, but reserving for now my view on whether the phrase ‘should remain public property,’ I find that the ordinary signification of the Trade Mark is a reference to the State from where someone (or indeed, something) originates.

   [6] Re Application by Queensland Rugby Football League Limited [1994] ATMO 18 (‘Re Queensland’).

4. The Applicant submits that the Trade Mark does not directly describe the Applicant’s Goods, and so is inherently adapted to distinguish them. As the Hearing Officer noted in Re Queensland in respect of various marketing and promotional goods, similar in many respects to the Applicant’s Goods, these are ‘integral to promotion of sporting contests and therefore the words STATE OF ORIGIN [are] equally as generic for them as the contests themselves.’[7] While I agree with the Applicant that the Applicant’s Goods are not on their face directly described by the ordinary signification of the Trade Mark, this must be weighed against the fact that the Applicant’s Goods have been specified to all be ‘goods promoting or marketing or otherwise relating to or associated with or indicating a connection with the game or sport of rugby league’, and the ‘integral’ nature of promotional and marketing goods to sporting competitions. As such, I am of the view that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the goods of the Applicant from the goods of other traders.

   [7] Ibid.

5. The Hearing Officer in Re Queensland[8] made clear he was prepared to consider evidence of use that would demonstrate that the applied for trade mark had acquired distinctiveness, but no such evidence was forthcoming. In the present matter, the Applicant has provided overwhelming and continual evidence of use of the Trade Mark from well before the Relevant Date. This evidence is of such an extent that it establishes in fact that the Trade Mark distinguishes the Applicant’s Goods from the goods of other traders. An endorsement to this effect will be added to the Register.

   [8] [1994] ATMO 18.

6. The Opponent has failed to establish this ground of opposition.

Section 42

1. The text of this provision is set out in full below:

   42 Trade mark scandalous or its use contrary to law

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

   (a)    the trade mark contains or consists of scandalous matter; or

(b)    its use would be contrary to law.

1. This provision incorporates two distinct grounds of opposition. As regards s 42(a) of the Act, I have not been able to derive from the Opponent’s materials any allegation that the Trade Mark itself is scandalous, nor does it appear on its face to be.

2. Nugent 2 submits that this trade mark ‘if approved would break the law.’ The ‘laws’ that the Opponent refers to are laches and estoppel. Subsection 42(b) is on its terms concerned only with whether use of the Trade Mark would be contrary to law. Use of a trade mark in relation to goods is defined in s 7(4) of the Act as ‘use of the trade mark upon, or in physical or other relation to, the goods (including second-hand goods)’. The Opponent’s position is that the Applicant has unnecessarily delayed in filing the Application or is otherwise estopped from filing due to its prior conduct. This ground of opposition cannot be applied to the filing of the Application itself since this is not a use of the Trade Mark. Further, the Opponent has not explained, nor can I envisage a way, that doctrines of laches or estoppel might come into the picture when the Applicant applies the Trade Mark to the Applicant’s Goods.

1. The Opponent has failed to establish this ground of opposition.

Section 43

1. The full text of this section is set out below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. The deception or confusion alleged by the Opponent relates to historical use of this term by other sporting bodies and by the Opponent. That subject matter is not within the realm of this ground of opposition: ‘Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other Trade Mark. That aspect of the matter is dealt with under s 60.’[9]

   [9] Winton Shire Council v Lomas (2002) 119 FRC 416, 421 [19].

3. The Opponent has failed to establish this ground of opposition.

Section 44

1. The subsection relevant to my discussion of this ground of opposition is set out below:

   44  Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)    the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)   a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)    a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)    the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)    that there has been honest concurrent use of the 2 trade marks; or

   (b)    that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)    beginning before the priority date for the registration of the other trade mark in respect of:

   (i)the similar goods or closely related services; or

   (ii)the similar services or closely related goods; and

   (b)    ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2:For predecessor in title see section 6.

   Note 3:For priority date see section 12.

2. In order to establish this ground, the Opponent needs to identify another trade mark that has a priority date that is earlier than the Relevant Date, which is substantially identical or deceptively similar to the Trade Mark, and which claims similar goods or closely related services.

3. The SGP nominates five trade marks. Four have a priority date later than the Relevant Date (1588254, 155430, 1673749 and 1673750), and cannot be considered under this ground of opposition. Relevant details of the fifth trade mark are set out below:

   Registration number:            1578151

   Trade mark:  

   Priority date:  3 September 2013

   Specification of goods and services:

   Class 25: Sports caps; sports clothing (other than golf gloves); sports garments (other than golf gloves); sports jackets; sports jerseys; sports jumpers; sports shirts; sports sweaters; sports uniforms (other than golf gloves or helmets); sportswear (other than golf gloves or helmets)

   Class 35: Marketing; Provision of retail services, including online

   Class 41: Advisory services relating to the organisation of sporting events; arranging of sporting events; arranging of sports competitions; booking of sports facilities; coaching services for sporting activities; country clubs (providing entertainment and sporting facilities); event management services (organization of educational, entertainment, sporting or cultural events); hire of equipment for sports; hire of sports facilities; information services relating to sport; management of sporting events; officiating at sports contests; organisation of sporting activities; organisation of sporting competitions; organisation of sporting events; organisation of sports competitions; production of sporting events; providing facilities for sports events; providing information, including online, about education, training, entertainment, sporting and cultural activities; providing sports facilities; providing sports training facilities; provision of apparatus for sports; provision of facilities for sports; provision of information about sports; provision of sport facilities; provision of sporting competitions; provision of sporting events; provision of sporting facilities; provision of sports facilities; rental of equipment for use at sporting events; rental of sporting apparatus; rental of sporting apparatus and equipment (except vehicles); rental of sports apparatus; rental of sports equipment; rental of sports equipment (except vehicles); rental of sports facilities; sport camp services; sporting activities; sporting information; sports coaching; sports consultancy; sports information services; sports instruction services; sports officiating; sports refereeing; sports training; sports tuition; film production; production of audio and/or video recordings; production of live entertainment; production of live performances; production of magazines; production of music shows; production of videos; production of webcasts; management of entertainment events

4. The Opponent included the above trade mark on its SGP but neglected to make submissions or file evidence in relation to it. Nugent 2 briefly notes that honest concurrent use under s 44(3)(a) of the Act must be honest, but Mr Nugent then uses this point as a platform for accusing the Applicant of general dishonesty.

5. Looking over the above specification of goods and services, it is not apparent that any are similar, or closely related to, the Applicant’s Goods. In the absence of any submissions to the contrary, I find that the Applicant’s Goods are not similar or closely related to the above specification of services. However, if I am wrong on that point, and were to find the mark above to be deceptively similar to the Trade Mark, then the Applicant’s evidence of significant and continuous use from before the priority date of the mark above would be sufficient to satisfy s 44(4) of the Act.

6. The Opponent has failed to establish this ground of opposition.

Section 58

1. This provision is set out below:

   58 Applicant 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. The following observations are of particular assistance in interpreting the above provision:

   The word ‘owner’ is not defined in the Act, although there are numerous decisions where courts have considered its meaning. It is well established that, in the absence of fraud, the owner of a trade mark in Australia for particular goods or services is taken to be the first person to use it in the course of trade in Australia in relation to those goods or services.[10]

   [10] L.T. Overseas Limited v Chemico Pty Ltd [2008] ATMO 44, [18] (citations omitted).

3. The SGP states that ‘Enterprise Above & Beyond Pty Ltd is the owner of this mark, the applicant has agreed in writing, we have clear evidence that they didn't want the TM years ago.’ The SGP therefore clearly contends only that the Opponent is the owner of the Trade Mark. Despite this, the Opponent has attempted to run two arguments in support of this ground of opposition.

4. The argument not present in the SGP relates to prior use of the term State of Origin by the Australian Football League (‘the AFL’). Given the confined language of the SGP I do not consider it appropriate to explore this issue in any depth. However, having read through the Opponent’s evidence I note that nothing in it on this point rises above mere assertion.

5. The other argument surrounds who was first to file. This can be relevant in cases where there has been no use of the trade mark.[11] The Opponent asserts that its sole director Mr Nugent sought and failed to register the Trade Mark in 2005. Given the evidence shows extensive use of the Trade Mark by the Applicant, and this use extends back many years before 2005, Mr Nugent’s unsuccessful application is of no assistance in determining the ownership of the Trade Mark. On the face of the evidence, the Applicant was the first to use the Trade Mark in relation to the Applicant’s Goods from 1980 onward.

   [11] Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601.

6. The Opponent has failed to establish this ground of opposition.

Section 62A

1. This section is set out below:

   62A Application 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. Establishing this ground of opposition requires consideration of subjective and objective elements: ‘The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.’[12]

   [12] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565, 598 [167].

3. The Opponent submits that its evidence shows that the Applicant concedes that the Opponent has been using the Trade Mark as its own. I see nothing concrete in the evidence in this regard. The Applicant or its members have on several occasions dealt with the Opponent in relation to goods sold through the Website. Those dealings amount to nothing more than recognition that Mr Nugent is the registrant of the Website. The Opponent seeks to assert that its director’s control of the Website somehow implies that it has acquired rights in the Trade Mark. Despite the close resemblance of the Website with the Trade Mark, the registration of the former simply does not create a proprietary right in the latter.

4. An interesting angle pursued by the Opponent relates to s 41 of the Act and the findings in Re Application by Queensland Rugby Football League Limited.[13] The Opponent seeks to draw from that decision that the Applicant would or should have believed that it would ‘never own’ the Trade Mark, and the Application was filed with this belief in mind. This ignores the capacity of s 41 to take into account evidence of factual distinctiveness.

   [13] [1994] ATMO 18.

5. It would be inappropriate to repeat here any detail of the Opponent’s various accusations of that attempt to paint the Applicant in a bad light. None of those accounts relate to the filing of the Application, and so are not relevant to the present ground of opposition.

6. The Opponent has failed to establish this ground of opposition.

Decision and costs

1. Section 55 of the Act 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.

   Note:           For limitations see section 6.

2. The Opponent has not established a ground of opposition, so I have decided to register the Trade Mark. The trade mark application may proceed to registration one month from the date of this decision with the additional endorsement ‘Evidence provided under subsection 41(4)’. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicant has requested an award of costs. The normal course is for costs to follow the event, and I see nothing in the present circumstances that would give me reason to depart from this. I award costs against the Opponent in the applicable amounts set out in schedule 8 of the Trade Marks Regulations 1995 (Cth).

Adrian Richards

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

1 December 2017