BlackSquare Inc v CRACKA IP Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Oppositions by BlackSquare Inc to registration of trade mark application numbers 1927725 (33, 35) - WINE COLLECTIVE and 1941358 (33, 35) - THE WINE COLLECTIVE.COM.AU and device - both in the name of CRACKA IP Pty Ltd

Delegate: Louise Tuohy

Representation: Opponent: Stephen Rebikoff of Counsel instructed by Vardon Legal
Applicant: Tom Cordiner Kings Counsel and Anthony Middleton of Counsel instructed by Baxter IP

Decision: 2022 ATMO 168
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60, 62A pressed – no grounds established – trade marks to proceed to registration
Background

This matter concerns oppositions by BlackSquare Inc (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark applications in the name of CRACKA IP Pty Ltd (‘Applicant’):
Application Number: 1927725
Trade Mark:               WINE COLLECTIVE (‘725 trade mark’)
Filing Date:                23 May 2018
Specification:             Class 33: Wine
Class 35: Retailing of goods (by any means); Cellar door sales of wine; Direct marketing (‘725 Goods and Services’)
Endorsement:             Evidence and/or other circumstances provided under subsection 41(4)
And
Application Number: 1941358
Trade Mark:               (‘358 trade mark’)
Filing Date:                17 July 2018
Specification:             Class 33: Wine; Alcoholic beverages (except beer); Alcohol for drinking
Class 35: Retailing of goods (by any means); Retail services; Cellar door sales of wine; Direct marketing; Marketing; Distribution of goods (not being transport services) and wholesale of goods; Wholesaling of goods (by any means) (‘358 Goods and Services’)
The trade mark applications were examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 6 March 2020 for 725 trade mark and 20 January 2020 for 358 trade mark.
The Opponent filed Notices of Intention to Oppose the registrations on 1 May 2020 for 725 trade mark and on 18 March 2020 for 358 trade mark. The Opponent filed its Statements of Grounds and Particulars (‘SGPs’) on 21 May 2020 for 725 Trade Mark and on 9 April 2020 for 358 trade mark. The Applicant filed Notices of Intention to Defend the registrations on 28 July 2020 for 725 trade mark and on 11 June 2020 for 358 trade mark.
Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
Once the time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 14 September 2022 by way of video conference. Stephen Rebikoff of Counsel, instructed by Vardon Legal, appeared for the Opponent. Tom Cordiner of Kings Counsel and Anthony Middleton of Counsel, instructed by Baxter IP, appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions prior to the hearing.
Grounds of Opposition, Relevant Dates and Onus
In the SGPs the Opponent nominated grounds under ss 42(b), 43, 58, 60 and 62A of the Act. In the hearing the Opponent pressed the grounds under ss 42(b), 58, 60 and 62A. Should the decision be appealed, then it would be open to the Opponent to plead any ground it considers relevant in proceedings before the Court.
The dates at which the rights of the parties are to be determined is 23 May 2018 for the 725 trade mark (‘725 Relevant Date’) and 17 July 2018 for the 358 trade mark (‘358 Relevant Date’) being both the filing and priority dates of the respective trade marks.
The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[1] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The Opponent filed the same evidence in respect of each opposition as follows:
Evidence in Support
·Declaration of David Gluzman, Director of the Opponent, made on 11 March 2021, with Exhibits DG-1 to DG-17 (‘Gluzman declaration’).
·Declaration of Matthew Protti, Director of the Opponent, made on 15 March 2021, with Exhibits MP-1 to MP-39 (‘First Protti declaration’).
Evidence in Reply
·Declaration of Matthew Protti made on 20 August 2021, with Exhibits MP-1 to MP-9 (‘Second Protti declaration’).
The Applicant filed separate evidence in respect of each opposition as follows:
Evidence in Answer
725 trade mark
·Declaration of Lloyd Heinrich, Director of the Applicant, made on 15 July 2021, with Exhibits LH-1 to LH-22 (‘Heinrich declaration’).
358 trade mark
·Declaration of Llyod Heinrich, made on 18 June 2021, with Exhibits LH-1 to LH-22.
Legislative Background and Reasoning
Before proceeding I note that in the SGPs the Opponent states it is the owner of the trade mark which I have reproduced below:
(‘Composite trade mark’)
Schedule 1 to the SGPs also lists the services provided by the Opponent under the Composite trade mark. The services are reproduced below:
Class 35: On-line marketing of wine products for others; On-line wine club services, namely, providing wine purchasing suggestions and related ordering, fulfilment and delivery services
Class 39: Delivery of goods
Class 41: Conducting seminars and presentations about wine; wine tasting services (education and entertainment); Operation of a web-site providing information about wines and a forum for people to discuss wine
Class 43: Wine club services (the provision of drink); Wine tasting services (provision of beverages) (‘Opponent’s Services’)
The SGPs also detail that the plain words WINE COLLECTIVE (‘Plain Word trade mark’) solus have been used by the Opponent in relation to the services reproduced at [12].
Section 58
Section 58 of the Act provides:
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.
In the SGPs the Opponent particularised the ground of opposition as follows:
725 trade mark
(1) The Opponent is the owner of the Opponent’s Trade Mark.
(2) The Opponent first commenced using the mark ‘Wine Collective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(3) The prominent feature in the Opponent’s Trade Mark are the words ‘Wine Collective’.
(4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark.
(5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being [23 May] 2018.
(6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.
358 trade mark
(1) The Opponent is the owner of the Opponent’s Trade Mark.
(2) The Opponent first commenced using the mark ‘winecollective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(3) The prominent feature in the Opponent’s Trade Mark is the words ‘winecollective’.
(4) The Opposed Trade Mark is substantially identical to the Opponent’s Trade Mark.
(5) The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being 17 July 2018.
(6) The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.
The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court stated:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration. [3]
[3] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
In order to succeed under this ground of opposition the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the trade marks of the Applications,[4] and which has been used for goods or services that are the ‘same kind of thing’ as the 725 and 358 Goods and Services.[5] The trade mark(s) relied on by the Opponent must have been used in the course of trade prior to the 725 and 358 Relevant Dates, or prior to the date of first use of the 725 and 358 trade marks, whichever is earlier.[6]
[4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).
[5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The First Protti declaration states that since 2009 the Opponent has operated, advertised, promoted and facilitated an online wine club under or by reference to the name WINE COLLECTIVE. The wine club provides members with international wines, tasting notes, food matches and tasting tips. The First Protti declaration states that the Opponent’s wine club is open to members from all over the world, however delivery is restricted to residents of Canada.
The First Protti declaration states that sales have been made from the Opponent’s online wine club via the website to customers in Australia. Exhibit MP-27 to the First Protti declaration is a copy of a Google Analytics report of the website for the period 7 February 2008 to 22 May 2018. The report shows 35 transactions from Australia totaling CA$6,276.88 in sales.
Confidential Exhibit MP-31 to the First Protti declaration is an internal document from the Opponent which shows a list of sales to Australian residents for the years 2016 and 2017.
Exhibit MP-29 to the First Protti declaration is an extract from the Opponent’s website “checkout” page which asks customers for their address details and includes a dropdown box for countries and lists Australia, noting the extract is dated after the 725 and 358 Relevant Dates.
Exhibit MP-35 to the First Protti declaration is an internal document from the Opponent’s accountant which details the Opponent’s “WineCollective Marketing Expenses” (in Canadian dollars) for the years 2013 to 2018.
The First Protti declaration states that a number of Australian wineries have sold their wine to the Opponent who has sold it through the website. Confidential Exhibit MP-17 is a copy of an internal document from the Opponent showing sales (in Canadian dollars) from Australian wineries to the Opponent for the years 2017 and 2018. Exhibit MP-32 to the First Protti declaration contains copies of invoices from Connect Logistics to Highfield Liquor detailing purchases from Australian wineries.
In my assessment of the evidence, I find that the Opponent has not used its Composite or Plain Word trade marks in Australia in the course of trade before the 725 and 358 Relevant Dates.
The Opponent argues that although the sales via its website ultimately resulted in the delivery of wine in Canada, such sales still involved the use of the Composite and Plain Word trade marks in Australia. The Opponent submitted that it is well established that so long as goods or services are sold or offered for sale in Australia, there will still be trade mark use in Australia even if the goods are located, or services provided overseas.[7]
[7] See: Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 509-511 (Gummow J); Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 89 IPR 457, [219] (Yates J); Secondment Pty Ltd v MCI Group Holdings SA [2013] ATMO 71 [26] (Hearing Officer Wilson); Ex Centris Production v 9197-3396 Quebec Inc [2018] ATMO 156, [13] (Hearing Officer Irgang).
In Ward Group Pty Ltd v Brodie & Stone Plc, Merkel J held:
In summary, the use of a trade mark on the Internet, uploaded on a website outside of Australia, without more, is not a use by the website proprietor of the mark in each jurisdiction where the mark is downloaded. However, as explained above, if there is evidence that the use was specifically intended to be made in, or directed or targeted at, a particular jurisdiction then there is likely to be a use in that jurisdiction when the mark is downloaded. Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in that jurisdiction when the mark is downloaded.
The first occasion on which there would have been a specific use of the Restoria mark by the website proprietors in Australia was when the trap purchasers were informed in Australia that their order had been accepted, in terms that used the Restoria name when referring to the UK Restoria product. In this case the confirmation web pages and emails that were downloaded by the trap purchasers did not refer to the Restoria mark. However, I am prepared to assume that the downloading of the acceptance of the order involved an implicit use of the Restoria mark by the website proprietor. There was also a further use of the mark in Australia by the website proprietors when the UK Restoria products were delivered by them to the trap purchasers in Australia. Both uses were uses of the mark in Australia that fall within the terms of s 120(1).[8]
[8] [2005] FCA 471, [43] to [44].
In this case, there is no evidence that the Opponent’s website was directed or targeted at Australian consumers. The website has .ca domain which indicates that the holder of the domain name meets Canadian Presence Requirements and in the market indicates that the website is Canadian. The website does not have a separate page for Australian consumers, and all prices are shown in Canadian dollars. While I note that the Opponent has provided a copy of its website ‘checkout’ page which shows that when setting up a transaction, a customer may select Australia as their place of residence, this extract is dated after the 725 and 358 Relevant Dates. In relation to the alleged sales made to Australian consumers, the evidence is from internal documents and a third party being Google Analytics. There is no evidence of a direct communication from the Opponent clearly showing that orders were accepted by the Opponent and that it was communicated using the Composite and/or Plain Word trade marks. Furthermore, product delivery is restricted to residents of Canada.
The Opponent’s marketing expenditure in relation to its wine club shows solid growth, however the figures are shown in Canadian dollars and there is no breakdown in the figures to show how much expenditure, if any, was directed at the Australia market.
The evidence provided by the Opponent included a large number of documents related to its software business. While some of these documents mention the Opponent’s wine club business and uses the Composite and/or Plain Word trade marks in its examples, none of these documents involve the use of the Composite or Plain Word trade marks for the Opponent’s Services.
The Opponent also argues that it has supplied retail and promotional services under its trade marks to Australian wineries who have sought to market and sell their wine overseas via the Opponent’s website. However, there is no evidence of these services being provided under the Composite or Plain Word trade marks in Australia. The wine products are purchased from the wineries through an intermediary and sold through the Opponent’s website by the Opponent in Canada.
For the reasons given above, I am satisfied that the ground of opposition under s 58 has not been established.
Section 60
Section 60 of the Act provides:
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.
In the SGPs the Opponent particularises the s 60 ground of opposition as follows:
725 trade mark
(1) The priority date for the Opposed Trade Mark is [23 May] 2018.
(2) The Opponent’s Trade Mark consists entirely of the words ‘Wine Collective’.
(3) The prominent feature in the Opponent’s Trade Mark are the words ‘Wine Collective’.
(4) The words ‘Wine Collective’ are the distinctive elements of the Opposed Trade Mark and the Opponent’s Trade Mark.
[(5)] The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being [23 May] 2018. The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.
[(6)] The Opponent has acquired a substantial reputation around the world and in Australia in respect of the Opponent’s Trade Mark including prior to the priority date of the Opposed Trade Mark.
[(7)] Based on the Opponent’s established reputation, the Opposed Trade Mark’s proposed use in respect of “Wine” and “Retailing of goods (by any means); Cellar door sales of wine; Direct marketing;” is therefore likely to deceive or cause confusion.
358 trade mark
(1) The priority date for the Opposed Trade Mark is 17 July 2018.
(2) The Opponent’s Trade Mark consists entirely of the words ‘Wine Collective’.
(3) The prominent feature in the Opponent’s Trade Mark are the words ‘Wine Collective’.
(4) The words ‘Wine Collective’ are the distinctive elements of the Opposed Trade Mark and the Opponent’s Trade Mark.
[(5)] The Opponent first commenced use of the Opponent’s Trade Mark earlier than the priority date of the Opposed Trade Mark being 17 July 2018. The Opposed Trade Mark covers services that are the same as the services covered by the Opponent’s Trade Mark.
[(6)] The Opponent has acquired a substantial reputation around the world and in Australia in respect of the Opponent’s Trade Mark including prior to the priority date of the Opposed Trade Mark.
[(7)] Based on the Opponent’s established reputation, the Opposed Trade Mark’s proposed use in respect of “Wine” and “Retailing of goods (by any means); Cellar door sales of wine; Direct marketing;” is therefore likely to deceive or cause confusion.
To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the 725 and 358 trade marks. The Opponent must then establish that because of that reputation use of the 725 and 358 trade marks would deceive or cause confusion.
In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour 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’12F9F[9] and 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…13F10F[10]
[9] [2000] FCA 1335, [81].
[10] [1992] FCA 159, [118].

Justice Kenny 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 sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.14F11F[11]
[11] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.
What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided 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 …15F12F[12]
[12] [2000] FCA 1587, [91].
In the present case the Opponent relies on evidence of its Composite and/or Plain Word trade marks. In my assessment, the Opponent’s sales figures for the Opponent’s Services are insignificant and the advertising expenditure while showing solid growth does not provide an indication of the Opponent’s reputation in Australia. Given the Opponent’s business is an online wine club, I consider the most cogent evidence of reputation would be demonstrated by internet users based in Australian that have accessed or engaged with the Opponent’s website. However, while the evidence filed indicates that the Opponent’s website has been accessible to Australian consumers since 2008, the download figures show limited numbers of Australian users with sales indicating a small niche of Australian consumers who specifically want wine delivered inside Canada.
The Opponent’s Composite and/or Plain Word trade marks have attracted some exposure with members of the Australian wine industry interested in purchasing the Opponent’s specialised software or wanting to sell wine within the Canadian market, however this exposure is limited and directed towards members of the wine industry and not to the Australian public generally.
The Opponent has a Facebook account,[13] and Exhibit MP-38 to the First Protti declaration is an extract of a post from Australia. However, the extract is dated after the 725 and 358 Relevant Dates and the Opponent does not provide any evidence of the number of Facebook followers based in Australia.
[13] Protti declaration [37], [Exhibit MP-38].
On balance, I am not satisfied that the evidence is sufficient to establish a reputation in the Opponent’s Composite and Plain Word trade marks in the Australian market.
The ground for opposition under s 60 has not been established.
Section 42(b)
Section 42(b) of the Act provides:
42 Trade Mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[ …]
(b) its use would be contrary to law.
In the SGPs the Opponent particularises the ground of opposition as follows:
725 trade mark
(1) The Opposed Trade Mark consists of the words ‘WINE COLLECTIVE’.
(2) The Opponent is the owner of the trade mark application listed in Schedule 1 (Opponent’s Trade Mark).
(3) The Opponent first commenced using the mark ‘Wine Collective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(4) The Opponent has acquired a substantial reputation around the world and in Australia in respect of the Opponent’s Trade Marks including prior to the Application Date of the Opposed Trade Mark.
(5) The Applicant offers the same services under the Opposed Trade Mark as the goods and services covered by the Opponent’s Trade Marks.
(6) Based on the Opponent’s established reputation, use of the Opposed Trade Mark by the Applicant, would be contrary to law as it is likely to constitute misleading and/or deceptive conduct or conduct that is likely to mislead and/or deceive and convey a false and misleading representation contrary to sections 18 and 29(1) of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth), and amounts to the tort of passing off.
358 trade mark
(1) The Opposed Trade Mark contains the words ‘winecollective’.
(2) The Opponent is the owner of the trade mark application listed in Schedule 1 (Opponent’s Trade Mark).
(3) The prominent feature in the Opponent’s Trade Mark is the words ‘winecollective’.
(4) The Opponent first commenced using the mark ‘winecollective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(5) The Opponent has acquired a substantial reputation around the world and in Australia in respect of the Opponent’s Trade Marks including prior to the Application Date of the Opposed Trade Mark.
(6) The Applicant offers the same services under the Opposed Trade Mark as the goods and services covered by the Opponent’s Trade Marks.
(7) Based on the Opponent’s established reputation, use of the Opposed Trade Mark by the Applicant, would be contrary to law as it is likely to constitute misleading and/or deceptive conduct or conduct that is likely to mislead and/or deceive and convey a false and misleading representation contrary to sections 18 and 29(1) of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth), and amounts to the tort of passing off.
As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on section 42(b) requires it to show that use of the 725 and 358 trade marks would be, rather than could or might be contrary to law.[14]
[14] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).
Section 18 of the Australian Consumer Law[15] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the Act imposes a more stringent test than that for deception or confusion under s 60 of the Act.[16] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60 of the Act. Consequently, I find that the Opponent has also failed to establish that use of the 725 and 358 trade marks would be contrary to s 18 of the ACL.
[15] Competition and Consumer Act 2010 (Cth), sch 2.
[16] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.
In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[17] nor will it constitutepassing off.[18]
[17] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.
[18] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
The Opponent has not established the ground of opposition under s 42(b) of the Act.
Section 62A
Section 62A of the Act provides:
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.
In the SGPs the Opponent particularised the ground of opposition as follows:
725 trade mark
(1) The Opponent first commenced using the mark ‘Wine Collective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(2) The Opponent has acquired a substantial reputation in Australia in respect of the Opponent’s Trade Mark including prior to the priority date of the Opposed Trade Mark.
(3) The Applicant was aware of the use of the mark ‘Wine Collective’ by the Opponent in Australia at the time the Applicant filed the application for the Opposed Trade Mark.
(4) The application for the Opposed Trade Mark was therefore made in bad faith.
358 trade mark
(1) The Opponent first commenced using the mark ‘winecollective’ in 2009 overseas and in late 2012 in Australia in relation to the goods and services provided by the Opponent set out in Schedule 1.
(2) The Opponent has acquired a substantial reputation in Australia in respect of the Opponent’s Trade Mark including prior to the priority date of the Opposed Trade Mark.
(3) The Applicant was aware of the use of the mark ‘winecollective’ by the Opponent in Australia at the time the Applicant filed the application for the Opposed Trade Mark.
(4) The application for the Opposed Trade Mark was therefore made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations 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; and
·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.
These illustrations are not exhaustive. Justice Bennett in DC Comics v Cheqout Pty Ltd observed that all of the circumstances surrounding the application to register a trade mark are relevant.[19] Moreover, conduct after the filing date can be used to shed light on the Applicant’s subjective intent at the filing date.[20]
[19] [2013] FCA 478 [62].
[20] Ibid [71].
In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J made the following comments:
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.[21]
[21] [2012] FCA 81, [147], quoting, Harrison’s Trade Mark Application [2004] EWCA Civ 1028.
Her Honour also considered:
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.[22]
[22] Ibid [165]-[166].
In the present case, the Opponent argues that at the time the Applicant applied to register its 725 and 358 trade marks, it was aware of both the nature of the Opponent’s business, and its use of the Composite and Plain Word trade marks.
The Gluzman declaration states that the Opponent’s relationship with Dean Taylor the then director of the Applicant started in 2013 and continued through to 2018. Over this time, Mr Gluzman declares the Applicant became familiar with all the Opponent’s products and services including its wine club.
The Gluzman declaration declares that Mr Gluzman telephoned Dean Taylor in September 2018 to discuss the use of the 725 and 358 trade marks by the Applicant. During the telephone conversation Mr Taylor apparently expressed his embarrassment and offered to raise this issue with the new Chief Executive Officer of the Applicant.
The Heinrich declaration confirms the Applicant’s awareness of the Opponent, however Mr Heinrich declares that the Applicant was not aware and does not believe the Opponent has any reputation or rights in Australia.
I consider the circumstances at most indicate that the Applicant may have been aware of the Opponent’s Composite and Plain Word trade marks. However, at the 725 and 358 Relevant Dates, the Applicant could have reasonably held the view that the Opponent’s rights in its Composite and Plain Word trade marks did not extend to Australia.
I am not satisfied that the filing of the 725 and 358 trade mark applications in the circumstances existing at the 725 and 358 Relevant Dates was conduct that constitutes bad faith.
The ground of opposition under s 62A is not established.
Decision
Section 55 of the Act 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.
The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark numbers 1927725 and 1941358 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the applications should be in accordance with the Court’s order or direction.
Costs
Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here.
In respect of trade mark 1927725 I award costs against the Opponent under s 221 of the Act in line with the amounts set out in Schedule 8 of the Regulations.
In respect of trade mark 1941358 I award costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd [2001] ATMO 78.
Louise Tuohy
Hearing Officer
Delegate of the Registrar of Trade Marks
29 September 2022

Delegate:	Louise Tuohy
Representation:	Opponent: Stephen Rebikoff of Counsel instructed by Vardon Legal Applicant: Tom Cordiner Kings Counsel and Anthony Middleton of Counsel instructed by Baxter IP
Decision:	2022 ATMO 168 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60, 62A pressed – no grounds established – trade marks to proceed to registration

[2022] ATMO 168

29 September 2022