Baccara Automation Control Pty Ltd v Baccara Geva Agriculture Corporation Society Ltd

[2022] ATMO 190

TRADE MARKS ACT 1995

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

Re:Opposition by Baccara Automation Control Pty Ltd to registration of trade mark application number 2059747 (classes 6, 7 & 9) - BACCARA - in the name of Baccara Geva Agriculture Corporation Society Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Wrays Pty Ltd

Applicant: Shiff & Company Lawyers

Decision:

2022 ATMO 190

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by Baccara Automation Control Pty Ltd (‘Opponent’) to registration of Australian trade mark number 2059747 (‘Application’) in the name of Baccara Geva Agriculture Corporation Society Ltd (‘Applicant’) to register the trade mark BACCARA (‘Trade Mark’) filed on 25 December 2019 for:

Class 6:Valves of metal; process and control valves of metal; proportional valves of metal for liquids and gases; valve assemblies and valve bodies of metal; fittings of metal for proportioning of fluids; parts and components for all the aforesaid goods; all the aforesaid goods not as parts of machines

Class 7:Control apparatus and control mechanisms for machines, machine tools and motors used in the agriculture, irrigation, gardening, energy, printing, medical, mining and construction industries; valves for compressors, engines, machines, pumps and for turbo-charged apparatus; motorized piston operated and diaphragm operated valves; valves for regulating fluid flow; proportional valves for liquids and gases; valves for use with fluids, including liquids and gases; valves operated automatically by changes in physical conditions or by electric or electronic control apparatus; valves operated by changes in temperature; air operated valves, in particular for fluids; valves for machines for use with fluids including liquids and gases diaphragm pumps and diaphragm valves; parts and components for all the aforesaid goods; all the aforesaid goods as machine parts

Class 9:Apparatus and instruments for the measurement and control of fluids; liquid level regulators and indicators; digital analysing and data transmitting apparatus; sensors and sensing apparatus; fluid control sensors and level regulators; solenoid valves, in particular for fluids combinations of the aforesaid goods to form systems (‘Goods’)
           

1. The Application was examined as required by s 31[1] and after the examination phase, was accepted for registration and advertised for opposition on 22 June 2020.  The Opponent filed a Notice of Intention to Oppose on 21 August 2020, followed by its Statement of Grounds and Particulars (‘SGP’) on 21 September 2020.  On 22 December 2020, the Applicant filed a Notice of Intention to Defend.

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

2. The parties then filed their evidence in accordance with the timetable set out in reg 5.14.  The Opponent filed evidence in support (‘EIS’) on 23 July 2021 followed by the Applicant’s evidence in answer (‘EIA’) on 22 October 2021.  The Opponent did not file any evidence in reply.

3. Following the conclusion of the evidence stage, both parties requested to be heard by way of written submissions.  The Applicant filed written submissions on 19 August 2022 but the Opponent did not file any submissions.  This matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the SGP, evidence of the parties and written submissions of the Applicant.

Grounds of Opposition, onus and relevant date

1. In the SGP, the Opponent nominated grounds of opposition under s 42(b), 58, 60 and 62A.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition[2] on the balance of probabilities.[3]  

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

3. The date at which the rights of the parties are to be determined is 25 December 2019 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.

Evidence

1. The following evidence was filed:

EIS

• Declaration of Brian Greenhalgh, Managing Director of the Opponent, made on 23 July 2021 with Exhibits BG-1 to BG-23 (‘Greenhalgh Declaration’).

EIA

• Declaration of Yoel Parness, former CEO of the Applicant, made on 17 August 2021; and

  • Declaration of Shlomi Atash, Asia Pacific Manager of the Applicant, made on 22 October 2021 with Exhibits SA-1 to SA-21.

Summary

1. The Applicant is an Israeli company established in 1964 which manufactures and sells solenoid valves and fluid control solutions.  The Trade Mark, a transliteration of the Hebrew word for ‘control’, was adopted in 1964 and has been continuously used for the Applicant’s Goods and business. The Applicant claims it has been using the Trade Mark in Australia since the early 1980s.

2. The Applicant established a wholly owned Australian subsidiary in 2009.  In addition to the Applicant’s Australian subsidiary, the Applicant also has wholly owned subsidiaries in Spain since about 2006, in the USA since about 2012 and is presently establishing a wholly owned subsidiary in India.  As well as its subsidiaries, the Applicant has a network of distributors in over 30 countries around the world. 

3. The Opponent is an Australian company founded in 1987.  It is predominantly a wholesaler specialising in the supply of solenoid valves, various switches, flow meters, transducers, level controls and gauges in Australia, New Zealand and South East Asia through a network of distributors and resellers.  In 2012, the Opponent expanded its business to include the sale of third party valves and associated products and services (collectively ‘Opponent’s Goods and Services’).  

4. The parties concur that they met in 1987, discussed the Opponent selling the Applicant’s Goods in Australia (‘1987 Discussion’) and the Opponent has been a customer of the Applicant since that time.  The Opponent has been selling the Applicant’s Goods in Australia and for many years used the Applicant’s promotional materials.  The only issue in dispute about the 1987 Discussion is the name under which it was agreed the Opponent could trade.  The Opponent alleges that the parties agreed it would use the name BACCARA AUSTRALIA whereas the Applicant contends that the name agreed to was BACCARA AUTOMATION CONTROL. 

Opponent’s Evidence

1. Mr Greenhalgh attests that he started the business of the Opponent in 1987 and at that time, the Opponent entered into a verbal agreement with the Applicant to import and distribute the Applicant’s Goods.  In the 1987 Discussion, the Opponent informed the Applicant that it proposed to use the mark BACCARA AUSTRALIA for its business in Australia and the Applicant indicated that it had no intention to trade under that mark.

2. On 11 September 1987, the Opponent registered BACCARA AUTOMATION CONTROL (AUSTRALIA) as a business name and on 31 January 2020, registered the business name BACCARA AUSTRALIA.

3. The Opponent attests that it has developed a significant reputation in the marks BACCARA, BACCARA AUSTRALIA and BACCARA AUTOMATION CONTROL AUSTRALIA (‘Opponent’s Marks’) through the continuous use of these marks in Australia since 1987 for the Opponent’s Goods and Services.

4. The Opponent’s Marks have featured prominently on its website at
   since at least 1995 (‘Opponent’s Website’), electronic signatures, invoices, quotes, product catalogues, data sheets, price lists, letterheads and promotional material.  The Opponent also promotes its business under the Opponent’s Marks online through search engine optimization, billboards, signage, printed advertisements and direct mail to its existing customers.  A selection of extracts from the Opponent’s Website obtained using the Wayback Machine, dating from 1999 to 2000, have been provided together with various other examples of use of the Opponent’s Marks including electronic signatures, a 1999 price list, a quote dated 18 April 2006, correspondence with a supplier dated 20 September 2002, correspondence with a customer dated 16 April 1999, photographs of product catalogues from 1994, 2008 and 2016, the Opponent’s newsletter from 2008 and 2012, and data sheets.

5. The Opponent has provided confidential details of its sales figures and advertising expenditure from 2002-2021 (inclusive).  The sales figures are not inconsiderable but the advertising expenditure is very modest. 

6. The Opponent attests that in addition to the promotional activities listed in paragraph 16, it also promotes its offerings under the Opponent’s Marks at trade shows.  Photographs of the Opponent’s exhibits at such events are included in the EIS.

7. Mr Greenhalgh declares that there have been a number of instances of confusion where consumers have assumed that the businesses of the Applicant and Opponent are the same or related.  Two emails from 2021 are provided by way of example.

Applicant’s Evidence

1. Mr Atash declares that he has been employed by the Applicant since 2004 and in 2010, relocated to Australia to help manage the Applicant’s wholly owned Australian subsidiary.  In August 2014, Mr Atash returned to Israel as Export Manager for the Applicant before coming back to Australia in his current position in 2020.

2. Mr Parness, who was the CEO of the Applicant from 1979 until about 2009, declares that the Applicant commenced use of the Trade Mark in Australia in about 1982 or 1983, when they began selling the Applicant’s Goods to a company in Sydney named Pongrass.  Pongrass acted as an unofficial distributor of the Applicant’s Goods for several years.  Maxam CompAir (now called Gardner Denver), Air Torque and Parker were also customers of the Applicant in Australia in the early 1980s and these companies still buy and distribute the Applicant’s Goods.

3. Mr Parness attests that in 1987, he met Brian Greenhalgh of the Opponent and in the 1987 Discussion they talked about the possibility of him importing and reselling the Applicant’s Goods under the Trade Mark in Australia.  Mr Parness claims that Mr Greenhalgh told him that he proposed to use the name Baccara Automation and the Applicant had no objection because it would help further develop the Applicant’s reputation in the Trade Mark in Australia.  Mr Parness denies that he discussed with or agreed to Mr Greenhalgh using the name Baccara Australia (only Baccara Automation) and never told him that the Applicant did not intend to use Baccara Australia.  In around 1988, the Applicant did begin supplying the Applicant’s Goods to the Opponent and associated promotional materials but Mr Parness declares that neither Mr Greenhalgh nor the Opponent was ever an exclusive distributor of the Applicant’s Goods in Australia

4. The EIS includes confidential global sales and marketing figures for 2012-2020, Australia/New Zealand sales figures from 2000-2020 and details of promotional expenditure in Australia from 2010-2020.  Sales of the Applicant’s Goods in Australia and New Zealand have increased significantly over the last 20 years, generally growing year on year, and are fairly substantial.  Mr Atash declares that the Applicant has about 200 active Australian customers (including resellers).

5. The Applicant promotes its Goods under the Trade Mark by exhibiting and attending trade fairs, participating in trade delegations, distributing promotional materials and merchandise, on a number of its corporate websites and social media (Facebook and LinkedIn).  Extracts of the websites obtained using the WayBack Machine from 1999 to 2020 are provided with screenshots of the Applicant’s social media accounts.

6. Mr Atash attests to knowing the Opponent since 2010 and states that whilst the Opponent has been a customer of the Applicant’s Goods, the Opponent has never been an exclusive importer, distributor or suppliers of the Applicant’s Goods.  The Opponent has sold the Applicant’s Goods which were “manufactured and branded by” the Applicant.   

7. The Opponent is still a customer of the Applicant’s Goods and the EIA includes sales figures for the Opponent’s purchase of the Applicant’s Goods from 2000 to 2020 as compared to total sales of the Applicant’s Goods in Australia.

8. Mr Atash declares that the Opponent does not manufacture or have manufactured products of its own but only distributes and sells the products of others.  This allegation is consistent with the Opponent’s own evidence.  Although the Opponent does not sell its own goods, it does appear that the Opponent has used the Opponent’s Marks for the Opponent’s Goods in marketing materials and labels applied to the goods and their packaging.[4]

   [4] See for example Greenhalgh Declaration, Exhibits BG-8 and BG-11.

9. Mr Atash attests that until about 2016, the Opponent did not sell products that compete with or are substitutes for the Applicant’s Goods.  However, since that time, the Opponent has been selling competing products which the Opponent is branding with the Trade Mark.  Examples of such goods from the Opponent’s Website taken in September 2021 are provided.  As a result, consumers are being confused between the Applicant and the Opponent.  Four examples of confusion from January 2020 to July 2021 are included in the EIA.

Discussion

Section 58

1. Section 58 provides that a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. Ownership of a trade mark can be established through authorship and use of a trade mark,[5] or in the absence of use, a combination of authorship, the filing of an application or an intention to use the trade mark.[6]

   [5] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) [1984] HCA 73; 156 CLR 414 (Deane J); Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

   [6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601, 627 (Dixon J).

3. To succeed in this ground of opposition, the Opponent must establish the following:

   i.The Trade Mark is identical, or substantially identical, to an earlier trade mark;

1. The earlier trade mark has been used in respect of good or services that are ‘the same kind of thing’ as the Applicant’s Goods; and

2. Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[7]

   [7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

1. It is well established that only a small amount of use of a trade mark is required to prove ownership of that mark.[8]

   [8] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [166]-[169] (Greenwood, Besanko and Katzmann JJ); Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 432 (Deane J), 421 (Gibbs CJ, Mason and Wilson JJ), 446 (Dawson J).

2. In its SGP, the Opponent particularises this ground as follows:

   In particular, the Opposed Trade Mark is substantially identical to the Opponent’s BACCARA Trade Marks which was used in relation to a range of goods including solenoid valves, pressure and vacuum switches, flow switches and flow meters, temperature switches and transducers, level controls and gauges together with associated services, including sales, advertising, promotion, provision of information in relation to the same before the priority date of the Opposed Trade Mark and covers the same or the same kind of goods or services as provided by the Opponent and thus the Applicant cannot claim to be the owner of the Opposed Trade Mark.

3. The test for whether two marks are substantially identical requires that they be compared:

   side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

   [9] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

4. The Opponent relies on use of the Opponent’s Marks, BACCARA, BACCARA AUSTRALIA and BACCARA AUTOMATION CONTROL.  The Applicant does not appear to contend that the Opponent’s Marks are not substantially identical to the Trade Mark but for completeness, I note that the mark BACCARA is obviously identical to the Trade Mark.  Each of the Opponent’s other marks consists of the dominant cognitive cue BACCARA with descriptive elements and in my view, these marks are also substantially identical to the Trade Mark.

5. As noted earlier, the only issue in dispute about the 1987 Discussion between the parties is whether it was agreed that the Opponent could trade under the name BACCARA AUSTRALIA as the Opponent claims or BACCARA AUTOMATION CONTROL as the Applicant alleges.  The EIS shows that on 11 September 1987, the Opponent registered the business name BACCARA AUTOMATION CONTROL (AUSTRALASIA) and did not register BACCARA AUSTRALIA as a business name until after the filing of the Application.   

6. The Applicant has not provided any evidence of sales in Australia since the early 1980s, which is not surprising given it was almost 40 years ago, but it has named a number of Australian companies it attests have purchased its Goods since the early 1980s.  This evidence is unchallenged by the Opponent.

7. I accept the Applicant’s evidence that it has used the Trade Mark in Australia since the early 1980s and believe that when the Opponent purchased and sold the Applicant’s Goods in Australia, it did so in the capacity as a dealer or non-exclusive distributor.  As stated in Estex Clothing Manufacturers Pty. Limited v. Ellis and Goldstein Limited:[10]

   [W]hen an overseas manufacturer projects into the course of trade in this country, by means of sales to Australian retail houses, goods bearing his mark and the goods, bearing his mark, are displayed or offered for sale or sold in this country, the use of the mark is that of the manufacturer.

   [10] [1967] HCA 51; 116 CLR 254, 271 (Windeyer J, Barwick CJ, McTiernan, Taylor and Owen JJ).

8. The Applicant manufactured the Goods sold by the Opponent and supplied them under the Trade Mark to the Opponent for resale in Australia.  The sale of the Applicant’s Goods under the Trade Mark to the Opponent and its other Australian customers in the 1980s is sufficient to establish the Applicant’s first use and ownership of the Trade Mark.  Until the present day, the Applicant has continued to sell the Applicant’s Goods under the Trade Mark to the Opponent and various other customers. 

9. As Barwick CJ explained in Bayer Pharma Pty Ltd v Fabrenfabriken Bayer AG:[11]

   It may be that, in some circumstances, what begins as a foreign manufacturer's mark may in time end as the registrable mark of the local distributor of that manufacturer's products or, for that matter, of that distributor's own manufactured goods. But in such cases, at least there must be a clear dissociation from the initial significance of the mark so as to warrant the conclusion that the mark has become exclusively indicative in Australia of the local distributor's goods.

   [11] (1965) 120 CLR 285; [1965] HCA 71, [23] (Kitto J, Barwick CJ, Taylor, Menzies and Owen JJ).

10. The majority of the Applicant’s Goods sold to Australia for at least the past two decades have been sold to customers other than the Opponent.  The value of these sales is reasonably significant.  There is no evidence that the Trade Mark has been “dissociated” from the Applicant.

11. As McGarvie J noted at first instance in Settef SpA v Riv-Orland Marble Co (Vic) Pty Ltd,[12] ownership does not cease due to the “wrongful appropriation” of an “upsurper’s business”.

    [12] (1987) 10 IPR 402, 419-420; affirmed Riv-Orland Marble Co (Vic)Pty Ltd v Settef SpA (1988) 19 FCR 569 (Bowen CJ, Northrop and Lockhart JJ).

1. I am satisfied that the Applicant is the owner of the Trade Mark in Australia.  Accordingly, the Opponent has not established the s 58 ground of opposition.

Section 62A

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

2. Bad faith is not defined in the Act.  The Explanatory Memorandum to the Bill that inserted this ground of opposition into the Act stated that this ground was introduced to cater for situations (among others) “in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith”.[13]  The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[14] and DC Comics v Cheqout Pty Ltd.[15]  The following propositions emerge from these decisions which are relevant to the present opposition:

   [13] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) [4.12].

   [14] (2012) 201 FCR 565 (Dodds-Streeton J) (‘Fry Consulting’).

   [15] (2013) 212 FCR 194 (Bennett J) (‘DC Comics’).

• bad faith for the purposes of s 62A must be [as at the Priority Date] and must relate to the making of the subject of each of the applications:[16]

  [16] Fry Consulting (n 12) 593-4 [145].

• while bad faith is a serious allegation that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt;[17]

• conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty;[18]

• the registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading;[19]

• all the circumstances surrounding the application to register the mark are relevant;[20] and

• s 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion.[21]

  [17] Ibid.

  [18] Ibid 594-5 [147]-[148], 597 [165].

  [19] DC Comics (n 13) 206 [62].

  [20] Ibid.

  [21] DC Comics (n 13) 209 [76].

1. The decided cases have established that this is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

2. The Opponent particularizes this ground in its SGP as follows:

   The Opponent submits that the Applicant was aware of use of the Opponent’s BACCARA Trade Marks when adopting the Opposed Trade Mark for use in Australia, particularly as the relevant goods are similar to the goods and services offered by the Opponent under its BACCARA Trade Marks. The filing of the Opposed Trade Marks represents an obvious attempt to take unfair advantage of the reputation generated by the use of the Opponent’s BACCARA Trade Marks.

3. The Applicant undoubtedly knew that the Opponent used the term BACCARA at least in its corporate name as the Opponent is a customer of the Applicant.  However, the Opponent used the mark as one of a number of resellers of the Applicant’s Goods in Australia.  In my view, at the time of filing the Trade Mark in Australia, the Applicant believed that they were the owner of the Trade Mark.  None of the instances of confusion amongst consumers put forward by either party pre-dates the filing of the Application and hence it would not seem that this consumer confusion prompted the filing of the Application.  The Applicant has simply taken appropriate steps to protect its brand in Australia as it has done in a number of other countries.  In the circumstances, I am not satisfied that the Application was filed in bad faith.

4. The s 62A ground of opposition is not established.

Section 60  

1. Section 60 of the Act relevantly provides:

2. Trade 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.
   
   

3. To establish this ground of opposition, the Opponent must establish:

• a reputation existing in another trade mark in Australia before the Relevant Date; and

• that because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

1. In relation to the s 60 ground, the Opponent claims in its SGP that:

   In particular, the Opponent has used the BACCARA Trade Marks in relation to a range of goods including solenoid valves, pressure and vacuum switches, flow switches and flow meters, temperature switches and transducers, level controls and gauges together with associated services, including sales, advertising, promotion, provision of information in relation to the same at the priority date of the Opposed Trade Mark. As a result of the Opponent’s use of its BACCARA Trade Marks for its goods and services, the Opponent has before the priority date generated a reputation in the BACCARA Trade Marks.

   Due to the Opponent’s reputation in the BACCARA Trade Marks, the Applicant’s use of the Opposed Trade Mark for the claimed goods would likely to deceive or cause confusion.

2. The Opponent must establish a reputation and a likelihood of confusion exists amongst a substantial number of consumers.[22] Reputation can be demonstrated in several ways. For example, it can be established by demonstrating that a significant number of consumers are regularly exposed to a particular trade mark or that a mark is viewed with a certain level of esteem in the market. It may also be inferred from a high volume of sales combined with substantial advertising figures and other promotions.[23] The length of use of a trade mark in the Australian market is also relevant in determining the existence of reputation and its extent.

   [22] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).

   [23] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).

3. Having traded in Australia for many years, it is likely that the Opponent has acquired a reputation in relation to the Opponent’s Goods and Services.  However, it is difficult to gauge the nature and extent of this reputation based on the EIS.  The only metrics provided are the sales and advertising figures.  Whilst there has been a reasonable level of sales for at least 20 years, sales appear to be consistent year on year and there is no apparent growth.  This may be attributable to the Opponent’s minimal advertising expenditure.  Further a significant proportion of the Opponent’s sales are sales of the Applicant’s Goods. 

4. Whilst I accept that the Opponent likely has some reputation in the Opponent’s Marks for the Opponent’s Goods and Services due to the length of time it has operated, this is not sufficient for the Opponent to succeed on the s 60 ground of opposition.  It is necessary for the Opponent to demonstrate that because of its reputation, use of the Trade Mark is likely to deceive or cause confusion.

5. I am not satisfied that use of the Trade Mark by the Applicant is likely to deceive or cause confusion.  The Applicant operates a global business and has offered the Applicant’s Goods for sale in Australia for decades.  Its sales are significantly higher than those of the Opponent, it has a broad customer base of over 200 customers (including resellers) and invests a considerable amount on advertising in Australia annually. 

6. Whilst both parties have submitted instances of confusion, all of these occurred after the Relevant Date.  Furthermore, the majority of these examples (including one of the two instances in the EIS) relate to customers mistaking the Opponent for the Applicant.  The level of confusion has likely increased in recent years as a result of the Opponent using BACCARA for goods that are substitutes for or competing products to the Applicant’s Goods. 

7. Given I have determined that the Applicant’s use of the Trade Mark for the Goods is not likely to deceive or cause confusion, the s 60 ground of opposition is unsuccessful.

Section 42(b)

1. Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark would be contrary to law.

2. In its SGP, the Opponent alleges that the Applicant’s use of the Trade Mark will constitute passing off and contravene ss 18(1) and 29(1) of the Australian Consumer Law as being conduct that is misleading or deceptive or that makes a misleading representation.

3. As stated under s 60, I am not satisfied that the Applicant’s use of the Trade Mark gives rise to a likelihood of confusion due to a reputation in the Opponent’s Marks.  For similar reasons, I do not believe that consumers would be misled or deceived.  Accordingly, the claims that use of the Trade Mark would breach the ACL or constitute passing off are not established.

4. As the Opponent has not established that use of the Trade Mark would be contrary to law, the s 42(b) ground of opposition is unsuccessful.

Decision

1. Section 55 relevantly provides:

55  Decision

(1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)  to refuse to register the trade mark; or

(b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has not established a ground of opposition.  Accordingly, trade mark number 2057947 may proceed to registration one month from the date of this decision.

2. 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 decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

3. The Applicant has sought an award of costs. Costs usually follow the event and I see no reason to depart from that principle. Accordingly, I award costs against the Opponent in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

28 October 2022