Block Super Pty Ltd v Trampoline CB Pty Ltd

[2022] ATMO 193

TRADE MARKS ACT 1995

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

Re:Opposition by Block Super Pty Ltd to registration of trade mark application number 2114920 (classes 30 and 43) – THE BLOCK ARCADE TEA ROOMS 1892 - in the name of Trampoline CB Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Brian Goldberg of Trademark Ventures

Applicant: Self-represented

Decision:

2022 ATMO 193

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42(b), 43, 44, 58, 59, and 62A pressed – s 62A established – registration refused.

Background

1.     This is a decision on the opposition by Block Super Pty Ltd (‘Opponent’) to registration of Australian trade mark number 2114920 (‘Application’) in the name of Trampoline CB Pty Ltd (‘Applicant’) filed on 27 August 2020 (‘Relevant Date’) for THE BLOCK ARCADE TEA ROOMS 1892 (‘Trade Mark’) for various food and beverage products in class 30 and services relating to the provision of food and drink in class 43.[1]

[1] The full specification of goods and services is shown in Annexure A.

2.     As required by the Trade Marks Act 1995 (Cth),[2] the Application was examined, accepted for possible registration and subsequently advertised for opposition on 28 January 2021.  The Opponent filed a Notice of Intention to Oppose on 29 January 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 4 February 2021.  The Applicant filed a Notice of Intention to Defend on 28 May 2021.

[2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

3.     The parties were given the opportunity to file evidence in accordance with the timetable set out in Reg 5.14.  On 23 August 2021, the Opponent filed its evidence in support of the opposition (‘EIS’).  The Applicant did not file any evidence.

4.     Following the conclusion of the evidence stage, the Opponent requested a hearing by video conference.  The Applicant did not ask to be heard.  Prior to the hearing, the Opponent filed a written summary of its submissions on 5 October 2022 and a supplementary submission on 12 October 2022 (‘Supplementary Submission’). 

5.     This matter was heard before me as a delegate of the Registrar of Trade Marks on 17 November 2022.  At the hearing, the Opponent was represented by Brian Goldberg of Trademark Ventures.   I make my decision based on the particulars in the SGP, the EIS, and written and oral submissions of the Opponent.

Grounds and Onus

6.     The SGP nominates grounds of opposition under ss 41, 42(b), 43, 44, 58, 59, and 62A. 

7.     The Opponent bears the burden of establishing one or more of the grounds of opposition[3] on the balance of probabilities.[4]  The rights of the parties are to be determined at the Relevant Date.

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

[4] 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).

8.     At the hearing, Mr Goldberg primarily relied on the grounds of opposition under s 62A and    s 58, whilst submitting that the other grounds were also established.

Preliminary Matter

9.     The Supplementary Submission filed by the Opponent consists of a copy of the Opponent’s business name registration for THE BLOCK TEA ROOMS registered on 3 June 2020.

10.   This submission constitutes further evidence.  This information was available and should have been filed as part of the EIS. 

11.   Regulation 21.19 set out below, provides the Registrar of Trade Marks with a discretion on her own initiative to take into account information available to her:

21.19  Registrar may use information available

(1)  If:

(a)  information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)  the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)  the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)  provide the information to the party; and

(e)  give the party a reasonable opportunity to make representations about the information.

(2)  For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

12.   The Supplementary Submission was available to the Applicant from the time it was filed on 12 October 2022.  The Applicant has not made any objection or comment on the Supplementary Submission. On the other hand, the Opponent has not made any submissions on why the information was not included in the EIS or why it should be taken into account under Reg 21.19 other than a statement that they feel the information is important.

13.   The information contained in the Supplementary Submission does not affect my decision and hence, it is not necessary to consider the Supplementary Submission under Reg 21.19.

Evidence

14.   The only evidence to be considered is the Opponent’s EIS consisting of a declaration of Brian Goldberg, legal representative for the Opponent, made on 23 August 2021 with Annexures A-G (‘Goldberg Declaration’).  I note that usually it is preferable for a company to give evidence in an opposition by way of a declaration sworn by an officer or senior employee rather than its legal representative.  However, in this case, almost all of the information to which Mr Goldberg attests is publicly available and hence I consider that it has probative value.

15.   Mr Goldberg declares that the Opponent is the owner of The Block Arcade (‘Arcade’), a heritage listed, historic shopping arcade situated in the heart of Melbourne’s central business district housing 5 stories of renowned retailers.  Extracts from various websites about the historical and cultural significance of the Arcade are annexed to the Goldberg Declaration.

16.   The Arcade is voted #11 of 712 things to do in Melbourne by TripAdvisor and is included in almost all tours of the city of Melbourne as evidenced by website extracts annexed to the Goldberg Declaration.

17.   As a result of its historical and cultural significance, the Arcade is frequently featured in the media.   The EIS annexes a number of articles referring to the Arcade including from the Sydney Morning Herald, The Age, the Australian Financial Review as well as various travel publications.

18.   The Opponent promotes the Arcade on its website, Facebook, Twitter and Instagram accounts.  The social media accounts have a relatively small number of followers.

19.   The Opponent is the owner of Australian trade mark registrations for THE BLOCK ARCADE in classes 36 and 37 and THE BLOCK ARCADE & Device in class 35.

20.   Mr Goldberg attests that on 26 August 2020, the Opponent announced that the tea rooms situated in the Arcade would be renamed THE BLOCK ARCADE TEA ROOMS 1892.  A link to the article published in the Herald Sun (‘Herald Sun Article’) is provided but a copy of the article is not in evidence.

21.   Mr Goldberg declares that the Applicant has no association with the Arcade and does not lease a premise within the Arcade.

Discussion

Section 62A

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

23. 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.’[5].  The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[6] and DC Comics v Cheqout Pty Ltd.[7]  The following propositions emerge from these decisions which are relevant to the present opposition:

·    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 the application.[8]

·    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.[9]

·    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.[10]

·    The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[11]

·    All the circumstances surrounding the application to register the mark are relevant.[12]

·    s 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion.[13]

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

[6] (2012) 201 FCR 565 (Dodds-Streeton J) (‘Fry Consulting’).

[7] (2013) 212 FCR 194 (Bennett J) (‘DC Comics’).

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

[9] Ibid.

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

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

[12] Ibid.

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

24.   The decided cases have established that determining whether an application was filed in bad faith 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: in light of that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

25.   In the SGP, the Opponent alleges that the Application was filed in bad faith as it was lodged the day after publication of the Herald Sun Article announcing that the Opponent would be renaming the tea rooms venue in the Arcade as THE BLOCK ARCADE TEA ROOMS 1892.

26.   As noted above, the EIS only includes a link to the Herald Sun Article and not the article itself.  Any evidence on which a party intends to rely should be printed or scanned to PDF and filed as evidence. If that is not possible due to technical issues, some other evidence substantiating the claim should be filed.  Weblinks should not be used as  weblinks can break and the information on them can change over time.

27.   The present case is a good example of why weblinks are not appropriate.  The link leads to the Herald Sun website but the Herald Sun Article can only be accessed by subscribers of the Herald Sun.  However, the relevant web page accessed via the link does include the following snippet of the article:

28.   It would be extremely surprising if the Herald Sun Article entitled “New Name for Hopetoun Tea Rooms revealed” did not disclose the new name within the contents of the article.

29.   I expect that on receipt of the EIS, the Applicant would have clicked on the relevant link and seen the same snippet given that in both the SGP and EIS, the Opponent alleges that it is this article that led to the Applicant filing the Application in bad faith.

30.   In addition, the Opponent attests that the Applicant does not have a lease for a premises within the Arcade and is not associated with the Opponent.  From the EIS, it appears that the Arcade is well known in Melbourne where the Applicant is based and it seems unlikely that the Applicant intended to offer the Goods and Services from a place other than in the Arcade.  Accordingly, on the face of it, the Applicant would not appear to have any basis for seeking to register the Trade Mark for the Goods and Services. 

31.   The Applicant was on notice that the ground of bad faith was being pursued by the Opponent from the Notice of Opposition, SGP and Evidence in Support.  In my opinion, the timing of the filing of the Application one day after publication of the Herald Sun Article and the absence of any lease or right to offer Goods and Services in the Arcade, is sufficient to establish a case that the Applicant should answer.  The Applicant has chosen not to challenge or dispute the Opponent’s evidence in any way and this failure to do so, strengthens the Opponent’s case.[14]  

[14] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [22]-[23] (Hearing Officer Nancarrow).

32.   In the absence of any evidence or submissions from the Applicant to the contrary, I am satisfied on the balance of probabilities, that the Application was filed in bad faith.

33.   The ground of opposition under s 62A is established.

Decision

34.   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.

35.   The Opponent has established a ground of opposition and accordingly, I refuse to register the Trade Mark.

36. The Opponent has requested an award of costs. As costs usually follow the event and I see no reason to depart from that principle, I award costs against the Applicant in accordance with the official scale set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

1 November 2022

ANNEXURE A

Goods and Services of the Application

Class 30:  Farinaceous foods; rice based snack foods; snack foods made from corn; snack food products made from rice; snack foods prepared from grains; snack foods prepared from cereals; cereal breakfast foods; snack foods made of wheat; snack foods made from cereals; snack foods prepared from maize; starch for food; snack food products made from cereals; dried pasta foods; cereal based snack food; foods produced from baked cereals; snack food products made from rice flour; snack foods made of whole wheat; snack foods consisting principally of pasta; snack foods consisting principally of rice; snack foods consisting principally of bread; molasses for food; iced tea; chai tea; tea cakes; tea essence; mate (tea); rooibos tea (not medicinal); kombucha tea; tea (not medicinal); beverages made of tea; beverages with tea base; apple flavoured tea; tea-based beverages; kelp tea; iced coffee (coffee based beverages); coffee drinks; fruit flavoured tea (other than medicinal); coffee; coffee extracts; coffee beverages with milk; non-medicated tea beverages; coffee beverages; coffee essences; jasmine tea, other than for medicinal purposes; chocolate coffee; decaffeinated coffee; flavoured coffee; non-medicated tea based beverages; preparations for making tea based beverages; coffee beans; herbal tea (other than for medicinal use); orange flavoured tea (other than for medicinal use); coffee concentrates; aerated drinks (with coffee, cocoa or chocolate base); mixtures of coffee essences and coffee extracts; non-medicated tea extracts; beverages made from coffee; beverages with coffee base; drinking chocolate; herb tea-based beverages not for medical purposes; aerated beverages (with coffee, cocoa or chocolate base); cakes; chocolate cake; candy cake; aromatic preparations for cakes; batter for making pancakes; cream cakes; cake fillings; cake dough; chocolate covered cakes; sponge cakes; chocolate decorations for cakes; cake batter; cake flour; iced sponge cakes; rice cakes; cake mixes; gelato cakes; candy decorations for cakes; semifreddo gelato cakes; frozen cakes; breakfast cake; iced fruit cakes; cake decorations made of candy; edible cake decorations; cake preparations; treacle cake; fruit cake snacks; oat cakes; icing for cakes; edible decorations for cakes; cake powder; sponge fingers (cakes); chocolate pastries; prepared desserts (chocolate based); frozen yogurt cakes; mixtures for making cakes; prepared desserts (pastries); sweet souffles (desserts); malt cakes; chocolate eggs; mixes for making cakes; christmas puddings; chocolate fudge; chocolate candy with fillings; cake frosting (icing); chocolate biscuits; powder for making cakes; egg roll cookies; chocolates; chocolate; chocolate sweets; mousse desserts; cheesecakes; chocolate covered biscuits; danish butter cookies; ice cream desserts; chocolate creams; puddings; marshmallow filled chocolates; egg pies

Class 43:  Hospitality services (food and drink); restaurant services; food and drink catering; take away food services; takeaway food and drink services; provision of carry out foods and beverages; preparation of take-away and fast food; cake baking; cake decorating