Beaches and Bush Properties Pty Ltd v Beaches and Bush Properties Pty Ltd

[2018] ATMO 6

TRADE MARKS ACT 1995

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

Re:Opposition by Beaches and Bush Properties Pty Ltd to registration of trade mark application 1727760 (36) – BUSH TO BEACH REAL ESTATE PTY LTD and Device - filed in the name of Beaches and Bush Properties Pty Ltd

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2017 ATMO 6

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1.  This is an opposition brought by Beaches and Bush Properties Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Bush to Beach Real Estate Pty Ltd (‘Applicant’): 

Application Number:

1727760

Filing Date:

14 October 2015

Services:

Class 36: Advisory services relating to real estate ownership; Advisory services relating to real estate valuations; Agency services for the leasing of real estate property; Appraisal of real estate; Capital investment in real estate; Consultation services relating to real estate; Insurance services relating to real estate; Leasing of real estate; Management of real estate; Property leasing (real estate property only); Property sales services relating to real estate development; Real estate administration; Real estate advisory services; Real estate agencies; Real estate agency services; Real estate agents services; Real estate appraisal; Real estate appraisals (valuations); Real estate insurance services; Real estate investment; Real estate investment advice; Real estate investment management; Real estate investment services; Real estate lease renewal services; Real estate lease surrender services; Real estate leasing; Real estate licensing; Real estate management; Real estate services relating to property development; Real estate services relating to real estate development; Rental of real estate; Research services relating to real estate; Valuation of real estate

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

2.  Following the advertisement on 10 March 2016 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 March 2016.  The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 15 April 2016. The SGP was assessed by this office as adequate. The SGP raised grounds of opposition under ss 42(b), 44, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 18 May 2016.

Evidence

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 29 August 2016.  This evidence consists of a declaration made on 29 August 2016 by Milton Leslight, Founder and Director of the Opponent, with Exhibits A to Z, ZZ and Confidential Exhibit Y (‘Leslight Declaration’).  The EIS was accompanied by a 4 page cover letter which will be treated as submissions (‘Opponent’s Submissions’).

4.  The Applicant filed Evidence in Answer (‘EIA’) on 7 December 2016.  This evidence consists of a declaration made on 1 December 2016 by Annie Geaney, Director of the Applicant, with Exhibits AG-01 to AG-13 (‘Geaney Declaration’).  The Opponent chose not to file any evidence in reply.

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 22 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  The Applicant filed written submissions on 22 September 2017 (‘Applicant’s Submissions’).  The Opponent filed no material additional to the Opponent’s Submissions.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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.

The Opponent

7.  The Opponent is a real estate agency established in 2000 and based on the South Coast of New South Wales.  It is the registered owner of the trade mark set out in the table below (‘Opponent’s Trade Mark’). The services for which the Opponent’s Trade Mark is registered are collectively referred to as the (‘Opponent’s Services’). 

Number	Trade Mark	Priority Date	Services
1048011	BEACHES AND BUSH	30 March 2005	Class 36: Buying and selling of property; agency services for vendors of property; leasing of property; agency services for property owners including leasing services; real estate agency services Class 42: Internet hosting services; Internet hosting services for selling and leasing of real estate

8.  The Leslight Declaration contains the following claims/statements:

·     The Opponent has used the Opponent’s Trade Mark in respect of the Opponent’s Services in Australia since at least October 2000 in respect of private, commercial and industrial real estate. 

·     It has advertised its real estate agency services by reference to the Opponent’s Trade Mark using various methods including regional television commercials, radio and newspaper advertisements.  The Opponent maintains an active website, Facebook page, Twitter page, Instagram account and LinkedIn account.  As part of its real estate services the Opponent publishes promotional brochures and sign boards outside properties featuring the Opponent’s Trade Mark.  It lists its properties on various third party websites including and The Opponent has a strong Internet presence and is frequently searched for on Google.    

·     On 2 October 2015 the Deponent telephoned the director of the Applicant to let her know that he was of the belief that her business was trading under the Opponent’s Trade Mark.  On 14 October 2015 the Applicant filed the application for the Trade Mark.

The Applicant

9.  The Applicant is a real estate agency based in Queensland.

1. The Geaney Declaration contains the following claims/statements:

   ·     The Applicant has used the Trade Mark in respect of real estate services since March 2014.  It has been used in advertisements for the sale or rental of properties, on office stationary, on the Applicant’s website, its Facebook page and on third party real estate websites such as realestate.com.au. 

   ·     The Deponent has 14 years experience in the real estate industry and in that time has never heard of the Opponent’s business and is unaware of any instances of confusion between the Applicant and Opponent.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 14 October 2015, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Discussion

Section 44

1. The relevant provisions of the Act with respect to the ground pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

1. …

2. Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services  (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

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

   (ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

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.

1. 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.

2. 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.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

3. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

4. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application if the Registrar is satisfied that there has been honest concurrent use, other circumstances or that the Applicant has continuously used the trade mark beginning before the priority date of the Opponent’s relied upon mark, pursuant to ss 44(3) and 44(4) of the Act.

5. The Opponent has particularised the ground of opposition in the SGP as follows:

   The Opponent is the owner of Trade Mark No. 1048011 for the “BEACHES AND BUSH” word mark registered in Classes 36 and 42 filed 30 March 2005 (Earlier Trade Mark). This Earlier Trade Mark is deceptively similar to the trade mark subject of the opposed application, has an earlier priority date and covers the same and/or services to those claimed in the application.

   The respective trade marks are deceptively similar. It is clear that “BUSH TO BEACH” is confusingly similar to the “BEACHES AND BUSH” mark and that use of the applicant’s mark will lead to confusion in the mind of consumer. The Opponent’s Earlier Trade Mark consists of two elements, being the words “BUSH” and “BEACH”. These two elements are the same in reverse in the Opposed trade mark and are the only components of the Opposed trade mark. Thus, the Opposed trade mark is deceptively similar particularly in sound (aurally and orally) and in typed form (written) to the Earlier Trade Mark.

   In addition, as a whole, the Opposed trade mark conveys the same idea/impression to consumers because the Opposed trade mark contains and conveys the same idea as the idea present in the Earlier Trade Mark, being the correlation between the Australian “BUSH” and Australian “BEACH”. The result is that consumers who are looking for a property will remember the BEACHES AND BUSH as a whole, and are unlikely to dissect the trade mark such that the difference in order of the words (from the mark BUSH TO BEACH) will be remembered/noted.

   Moreover, the trade mark subject of the Opposed application are being applied to the same services as those offered by the Opponent. The Opposed application claims “real estate agency services” so there is a direct overlap in the kind of customer that will be likely to buy/use the services offered by the deceptively similar trade mark, subject of the Opposed application. Thus, the primary trade channel is identical and the respective businesses operate in the same field, namely, “real estate agency services”, so there is real and tangible danger of deception or confusion occurring. Further, in light of the 16 years of use of the Earlier Trade Mark in Australia, the deception/confusion is non-trivial.

   In light of the above, there is a real and actual danger of deception or confusion in the marketplace.

6. The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark and is registered for closely related services, being services that, broadly defined, relate to real estate agency services.  The first two requirements are satisfied.

Substantially identical or deceptively similar

1. The Opponent does not claim that the Opponent’s Trade Mark is substantively identical to the Trade Mark, nor are they.  It is therefore only necessary to consider in detail whether the Trade Mark is deceptively similar to the Opponent’s Trade Mark.  The principal authority for guidance in determining whether trade marks are deceptively similar comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[4]

   [4] (1963) 109 CLR 407, 415.

2. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[5] at [49]; Australian Woollen Mills[6] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[7] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[8] at 594 – 595.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[9]

   [5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [6] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

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

   [9] [2012] FCA 1022, [38]-[46].

1. The Trade Mark and the Opponent’s Trade Mark are set out below:

   BEACHES AND BUSH

2. The Opponent submits that the main components of the Trade Mark are the words ‘BUSH’ and ‘BEACH(es)’ which are also the main components of the Opponent’s Trade Mark, albeit in reverse order.  When considering the overall impression of the respective marks the Opponent also submits that the two marks share a strong conceptual similarity based around those shared components.  Furthermore, the Opponent submits, given the imperfect recollection of consumers, it is likely that the differences in word order will not significantly reduce the level of confusion.  

3. I do not accept the Opponent’s submissions in this matter.  When comparing marks for the purposes of deceptive similarity, it is necessary to consider the marks as a whole, not merely as a collection of separate elements.  While it is important to consider the essential features of various marks, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’.  I find that the respective trade marks are not visually similar, in that the Trade Mark itself contains a number of elements, including the wave and sun logo, the stylised writing and the words ‘real estate pty ltd’ that operate to distinguish itself from the Opponent’s Trade Mark.  The marks are not aurally similar, with the Trade Mark being read as ‘bush to beach real estate pty ltd’ and the Opponent’s Trade Mark being read as ‘beaches and bush’.  The respective marks have different first words and are of different lengths.  Indeed the only word common to the two marks is ‘bush’. 

4. While I acknowledge that the shared use of the words ‘bush’ and ‘beach(es)’ creates a significant conceptual similarity, there are also conceptual differences between the marks when read as a whole.  The words ‘real estate pty ltd’ are highly descriptive of the Applicant’s Services and so are unlikely to offer much to the relevant consumer’s impression of the Trade Mark. The phrase ‘bush to beach’ in the Trade Mark evokes the impression of travelling from the countryside to the coast or an expansive and contiguous area.  Contrastingly, ‘beaches and bush’ are simply two nouns that may refer to features of land that the Opponent typically deals in.  

5. Finally when considering the surrounding circumstances I note that both marks are registered or sought to be registered for real estate services. Such services are generally used by a home-owner for the sale or rental of their property. The selection of a real estate agency to provide real estate services is not an impulse purchase and the fees charged for services relating to the sale or rental of a property are substantial. The nature of the services offered, being high-value services that most people take some care in acquiring are such that the likelihood of confusion between the respective marks would be reduced. Considering all the surrounding circumstances, I find that as a result of the significant conceptual, visual and aural differences between the marks when considered as a whole, even allowing for imperfect recollection, it is in my view unlikely that the use of the Trade Mark will deceive or cause confusion because of any similarity it has to the Opponent’s Trade Mark. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 60

1. Section 60 of the Act is reproduced below:

   Section 60 - 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.

2. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[10]

   [10] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

3. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

   [11] [2000] FCA 1335, [81].

   [12] (1992) 33 FCR 302, 343.

4. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

   [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

5. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[14] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[15]

   [14] (2000) 50 IPR 1.

   [15] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

6. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[16]

   [16] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

7. The Opponent has particularised the ground of opposition in the SGP in respect of the Opponent’s Trade Mark and then states: 

   The Opponent has used its registered Earlier Trade Mark including in respect of “real estate agency services” since at least 2000 and it has been continuously used by the Opponent since that time. As a result of the Opponent’s continued use of its registered Earlier Trade Mark for at least the last 16 years, the Opponent has acquired a reputation in its Earlier Trade Mark and the use of the trade mark subject of the opposed application is likely to deceive or cause confusion.

   In particular, the Opponent’s business has a prominent presence online which is the most common first enquiry source for this trade (ie. real estate services) [and online searches are predominantly conducted by consumers by searching/typing words only]. According to Google and Yahoo figures, the Opponent’s real estate business name is the most searched real estate business online in Australia. Further, the Opponent is experiencing accelerated growth and brand-reach and has recently opened a further office for its business in Queensland, and has just entered the national market for same (which the Opponent commenced planning since around 2013), under and by reference to its Earlier Trade Mark.

8. The particulars to the SGP limit the ground of opposition under s 60(a) to reputation in the Opponent’s Trade Mark. The Applicant’s Submissions correctly note that the vast majority of evidence of reputation included in the EIS either relates to evidence that is after the relevant date or does not feature the Opponent’s Trade Mark. Rather each of the advertisements annexed to the Leslight Declaration purporting to show use of the Opponent’s Trade Mark feature a composite mark consisting of the letters ‘BB’ in stylised form and the words ‘beaches & bush properties’. While there is some evidence in the Leslight Declaration of the use of the Opponent’s Trade Mark in the Opponent’s social media sites, the Applicant’s Submissions rightly note that when a social media profile picture or name is changed, it will be altered for every prior post, irrespective of when the post was made. As such, evidence of use of the Opponent’s Trade Mark on the Opponent’s social media sites should be taken with caution. Even if I were to accept the Opponent’s evidence of its social media usage, the Opponent has traded primarily in a small geographical region in Australia, has not used the Opponent’s Trade Mark in advertising to any significant extent, and has provided no evidence of turnover, advertising expenditure or other promotion featuring the Opponent’s Trade Mark. I am not persuaded that at the relevant date the Opponent’s Trade Mark had acquired a sufficient reputation in Australia for real estate agency services to satisfy s 60(a) of the Act. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

Section 42

1. Section 42 of the Act is reproduced 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.

2. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[17]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[18]

   [17] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [18] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

3. The Opponent has particularised the ground of opposition in the SGP as follows (the ‘Earlier Trade Mark’ being a reference to the Opponent’s Trade Mark): 

   In view of the Opponent’s long-standing use and/or reputation in its Earlier Trade Mark including in respect of “real estate agency services”, use of the trade mark subject of the opposed application is likely to deceive or cause confusion in breach of the Australian Consumer Law and/or constitutes passing off. The applicant has/continues to misrepresent to consumers that the BUSH TO BEACH brand and services offered under and by reference to this trade mark has an association with the business of the Opponent in a matter calculated to injure the business/goodwill of the Opponent.

4. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act and in particular has failed to show any reputation in or significant use of the Opponent’s Trade Mark. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[19] and I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [19] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

5. Hill J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’) — the relationship between s 52 of the TPA[20] and passing off.  His Honour considered that:

   The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[21]

   [20] The equivalent of s 18 of the ACL.

   [21] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (citations omitted).

6. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

Section 62A

1. Section 62A of the Act is reproduced 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. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

• persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

• persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

• persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[22]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[23]

   [22] [2004] EWCA Civ 1028; [2005] FSR 10.

   [23] [2012] FCA 81, [147].

2. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[24]

   [24] Ibid [165]-[166].

3. The Opponent has particularised the ground of opposition in the SGP as follows: 

   The filing date of the opposed application is 14 October 2015. On 2 October 2015, we are instructed that the Opponent telephoned the applicant of the Opposed trade mark then wrote to the applicant of the Opposed mark on 7 October 2015 and on each occasion, made the applicant aware of the Opponent’s business and its rights and reputation in the Earlier Trade Mark. Despite being made specifically aware of the Opponent’s “real estate agency services” business and long-standing reputation and rights in the Earlier Trade Mark, the applicant then proceeded to apply for the Opposed trade mark. Accordingly, the application was clearly made in bad faith and the applicant continues to use and trade on the Opponent’s use and reputation in its Earlier Trade Mark.

4. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[25] In the present case I accept the evidence of the Applicant that it started using the Trade Mark in 2014 and at the time was not aware of the Opponent, a fact that is understandable given that the Applicant and Opponent trade in completely different geographical markets, the former in North Queensland, the latter on the South Coast of New South Wales. When the Applicant received a phone call from the Opponent alleging infringement, the decision of the Applicant to protect its rights in the Trade Mark by seeking registration does not amount to an action that was unscrupulous, underhanded or unconscientious in character; rather it appears to be an entirely appropriate response taken by a business that traded under an unregistered trade mark to protect its rights in the mark it had adopted and traded under. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

   [25] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

Decision

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1727760 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

16 January 2018