Brisbane Distillery Pty Ltd ATF the Spirits Trust v Badger and Bandicoot Pty Ltd as trustee for Bill McToosh Clan Trust

The Opponent, Brisbane Distillery Pty Ltd ATF the Spirits Trust, opposed the trade mark application by Badger and Bandicoot Pty Ltd as trustee for Bill McToosh Clan Trust for the mark GIN SCHOOL in classes 9 and 41. The Opponent relied on its existing registration for GIN SCHOOL in class 33 and its own application for the same mark in classes 9 and 41, alleging the Applicant's application was filed in bad faith. The proceedings were heard by a Hearing Officer of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark application was made in bad faith, pursuant to section 62A of the relevant legislation. This required a two-step assessment: first, determining what the Applicant knew at the relevant date, and second, objectively considering whether, in all the circumstances, the Applicant's knowledge made its decision to apply for registration one that would be regarded as in bad faith by persons adopting proper commercial standards.

The Hearing Officer found that while the Applicant was aware of the Opponent and its trade mark application after receiving a letter of demand, this awareness alone did not equate to bad faith. The Applicant's evidence indicated that it had conceived the idea of a "gin school" prior to receiving the demand letter and had made its intention public. Crucially, the Applicant investigated the Opponent's registration and determined it covered alcoholic beverages (class 33) and not educational services (class 41). Furthermore, the Applicant presented evidence that the term "gin school" was commonly used and descriptive within the distilling industry, both in Australia and overseas, and that other traders used the term for similar services. Given this evidence, the Hearing Officer concluded that the Applicant's decision to file the application was a commercial one based on its assessment of the Opponent's claims and the descriptive nature of the term, and did not fall short of acceptable commercial behaviour.

Consequently, the Hearing Officer was not satisfied that the Applicant's decision to adopt and seek registration of the trade mark was made in bad faith, and therefore the ground of opposition under s 62A was unsuccessful. The trade mark application was permitted to proceed to registration, and costs were awarded against the Opponent.