Buddi Limited v Le Vise Products LLC

[2019] ATMO 40

TRADE MARKS ACT 1995

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

Re: Opposition by Buddi Limited to the extension of protection to International Registration 1262939 (class 9) (Australian Trade Mark Application No. 1718799) - Buddy Tag - in the name of Le Vise Products LLC

Delegate:	Katrina Brown
Representation:	Opponent:	Andrew Fox of counsel instructed by Stuart Green of Davies Collison Cave Pty Ltd
	Applicant:	Christopher Doidge of counsel instructed by Jane Brown and Joanne Young of ChoyBrown
Decision:	2019 ATMO 40 Trade Marks Regulations1995 – reg 17A.29 – grounds pursued under ss 42(b), 58 and 60 – no grounds established – protection extended to IRDA.

Background

1. This decision is in respect of an opposition under regulation 17A.32 of the Trade Marks Regulations 1995 (‘the Regulations’) by Buddi Limited (‘the Opponent’) to the extension of protection of the following International Registration Designating Australia (‘IRDA’):

International Registration No:       1262939

IRDA No:  1718799

Trade Mark:    Buddy Tag (‘the Trade Mark’)

Holder:  Le Vise Products LLC

Priority Date:   15 July 2015

Goods:Class 9: Electronic devices for locating and tracking children using global positioning      systems and cellular communication networks

(‘the Holder’s Goods’)

1. The Trade Mark was examined as required by reg 17A.12 and acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 10 December 2015.

2. The Opponent filed a Notice of Intention to Oppose on 9 February 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 9 March 2016.

3. The Holder filed a Notice of Intention to Defend on 31 March 2016.

4. The Opponent did not file evidence in the period for filing evidence in support. The Holder filed evidence in answer to the SGP and the Opponent filed evidence in reply.

5. Subsequent to the evidence in reply being filed, the Holder wrote to IP Australia on 24 April 2018 and stated that in its opinion the evidence in reply did not properly constitute evidence in reply as it was not in reply to the Holder’s evidence in answer.

6. An Assistant Hearing Officer replied to the Holder informing it that the hearing officer would determine the weight to be given to the evidence in reply when determining the substantive matter.

7. On 18 September 2018 the Holder filed evidence in answer to the Opponent’s evidence in reply.

8. The matter came before me, a delegate of the Registrar of Trade Marks, on 3 December 2018. Andrew Fox of counsel, instructed by Stuart Green of Davies Collision and Cave Pty Ltd, made written and oral submissions on behalf of the Opponent. Christopher Doidge of counsel, instructed by Jane Brown and Joanne Young of ChoyBrown, made written and oral submissions on behalf of the Holder.

Grounds of opposition and onus

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A of the Trade Marks Act 1995 (‘the Act’).

2. In the SGP, the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A. The ground under s 62A of the Act was not pressed in the written submissions and was not pursued by the Opponent at the hearing.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 [132].

4. The date at which the rights of the parties are to be determined is 15 July 2015 (‘the Relevant Date’).

Evidence

1. The parties rely on the following declarations:

Evidence in answer to the SGP

• Declaration of Willie Wu (Founder and CEO of the Holder) made on 30 January 2018 (‘Wu 1’).

Evidence in reply

• Declaration of Sara Murray (Chief Executive Officer of Opponent) made on 5 April 2018 with Exhibits SM-1 to SM-32 (‘Murray Declaration’).

Evidence in answer to the evidence in reply

• Declaration of Willie Wu made on 17 September 2018 with Exhibits WW-1 to WW-18 (‘Wu 2’).

The Murray Declaration

1. As mentioned previously, it is the Holder’s opinion that the Murray Declaration does not properly constitute evidence in reply as it contains material that does not respond to the Holder’s evidence in answer.

2. Evidence in reply is an opponent’s opportunity to reply to an applicant or holder’s evidence in answer. By its very definition, evidence in reply should be limited to replying to issues canvassed in the evidence in answer. Where an opponent has elected not to file evidence in support such as the Opponent in this matter, the evidence in reply stage should not be used to rectify deficiencies in an opponent’s case.

3. Although there are three evidence stages, each with a specific purpose, unlike the courts the ‘Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.[3] In the words of Lord Denning MR:

   A tribunal (of this kind) is master of its own procedure, provided that the rules of natural justice are applied. … Tribunals are entitled to act on any material which is logically probative, even though it is not evidence in a court of law….[4]

   [3] Trade Marks Regulations reg. 21.15(4).

   [4] TA Miller Ltd v Minister for Housing & Local Government [1969] RPC 91.

4. The Registrar is not, as a matter of law, compelled to exclude evidence which does not properly constitute evidence in reply.[5] Hence, where evidence is filed in time it is generally objected to on the basis of its probative value rather than its admissibility. In Malibu Boats West, Inc v Catanese, Finkelstein J stated:

   The only question that arises in relation to the rejection of evidence is whether the decision maker acted with procedural propriety or fairness having regard to the task at hand. Generally speaking, it would not be proper or fair for an administrative decision-maker to ignore relevant material while discharging his or her statutory duty.[6]

   [5] See Dyno Nobel Inc v Orica Australia Pty Ltd [2003] APO 13 – a patent opposition but the principle equally applies to a trade mark opposition as both are administrative proceedings before a person exercising a statutory function.

   [6] [2000] FCA 1141 [24].

5. Whilst much of the Murray Declaration does not properly constitute evidence in reply it does contain material that has probative value in this opposition proceeding. I also consider that allowing the Murray Declaration is in the public interest of the Register being a true reflection of the marketplace. Additionally, I note that the Holder has provided material in answer to the Murray Declaration in the form of Wu 2 and as such the important principles of procedural fairness have been met.

6. My decision is to allow the Murray Declaration. This should not be interpreted as opening the door for material to be filed in the evidence in reply stage that properly constitutes evidence in support. In opposition proceedings an opponent will generally be best placed by filing evidence at the first opportunity to do so. By waiting to show its hand until the evidence in reply stage, an opponent risks material, crucial to the matter, not being allowed or given the full weight it may warrant, and also risks an adverse award of costs. 

The Opponent

1. In the Murray Declaration it is declared that the Opponent first conceived of and used its BUDDI Trade Mark as early as 2004 in the United Kingdom in relation to ‘electronic monitoring systems and devices for locating and tracking individuals using global positioning systems and cellular communication networks’.[7]

   [7] Murray Declaration [4].

2. It is declared that the Buddi Trade Mark was known to Australian consumers as early as August 2007. The Opponent has provided examples of its trade mark being featured, or mentioned on, various platforms seemingly targeted at international jurisdictions. Furthermore, it is declared that the Buddi Trade Mark was first used in Australia in 2012 when it responded to a tender from the Western Australian Government. The Opponent also provides details pertaining to other responses to tender requests from Australian entities from 2013 to 2015.

3. The details of the Opponent’s Australian Registration are as follows:

Trade Mark No:

1808012

Trade Mark:

BUDDI (‘the Buddi Trade Mark’)

Owner:

Buddi Limited

Registered from:

9 November 2016

Specification:

Class 9: Radio/electronic individual location transponder devices; electronic transmitters and receivers, all for use in tracking individuals and animals; electronic tags; electronic security tags; electronic location apparatus; electronic tracking apparatus; telematics apparatus; electronic devices for assisting care giving for seniors or people needing assistance comprised of sensors for determining status of person and apparatus for sending electronic alerts to care givers; personal security alarms; computer hardware and software system for tracking people, objects and pets using GPS data on a device on the tracked people, objects and pets; electronic devices for animal or people locating and tracking programmed to use global positioning systems (GPS) and radio and cellular communications; GPS tracking devices; electronic medical wristband with sensors to monitor people's health, namely, movement in the nature of monitoring the physical movements of a patient wearing or carrying the device, heart rate and body temperature; electronic medical wristband with sensors to monitor the physical movements of a patient wearing or carrying the device for the detection of falls; electronic medical wristband with sensors to monitor the health of the elderly or disabled in their own homes and to provide electronic alerts to care givers and third parties; parts, fittings and accessories for the aforementioned goods

Class 10: Patient monitoring sensors and alarms; electronic sensors used for medical purposes to monitor the location of patients afflicted with dementia for predicting a patient's wandering combined with sending electronic communications to alert third parties to intervene; parts, fittings and accessories for the aforementioned goods

Class 35: business administration and management services related to the provision of computerised and telematic location services; business information services relating to all the aforesaid services; advisory, support, consultancy and information services in relation to the aforementioned services

Class 38: Communication by radio, telephone and computer; transmission and reception of electronic signals; receiving and sending messages and telephone messages; telecommunications; telematics services; advisory, support, consultancy and information services in relation to the aforementioned services

Class 42: Design and development of computers and computer software; installation maintenance and repair of computer software; design of telecommunications apparatus; design and development of computer hardware (for others); advisory, support, consultancy and information services in relation to the aforementioned services

Class 45: Alarm and electronic surveillance monitoring services and individual monitoring services; provision of information relating to the operation of alarms; provision of security alarm monitoring services; surveillance services; personal, legal and social services in the nature of providing case management services, namely, coordinating legal, physical and social services for disabled persons, the elderly, offenders; monitoring of alarms for security purposes and monitoring of peoples locations in the nature of emergency response alarm monitoring services, namely, monitoring of alert devices by a remote monitoring centre for the dispatch of emergency public health and security services and notification to third parties and status in the nature of observation of an activity or physical condition for security purposes and dispatching of emergency personnel when changes in conditions occur; medical alarm monitoring services; personal safety alarm monitoring services in the nature of monitoring of the detection of falls; emergency response alarm monitoring services, namely, monitoring of alert devices by a remote monitoring centre for the dispatch of emergency public health and security services and notification to third parties; emergency response medical alarm monitoring services; security services, namely, providing offender location and providing GPS-based tracking services for observing an activity; advisory, support, consultancy and information services in relation to the aforementioned services

The Holder

1. The aim of the Holder is ‘to provide parents with cost-effective and easy-to-use child safety devices and accessories which they can use to keep track of their children. Our target market is parents and the baby and child products industry’.[8]

   [8] Wu 2 [6].

2. The Holder describes the evolution of its product that bears the Trade Mark as follows:

   Our BUDDY TAG product is a tracker that alerts parents when the child wanders too far away. I came up with the idea after my [Wu’s] youngest daughter got lost at an amusement park in Texas in December 2012. Luckily, we found her after some panicked searching. At the time, I had been working on a tracking device for keys and phones that would utilise Bluetooth or GPS technology. The incident with my daughter inspired me to convert the concept into a tracker for children. I discussed the idea with my family and together we brainstormed for a name. My older daughter eventually came up with the name BUDDY TAG. We all like this name because “buddy” means a close friend, and that helps define the product’s connection between a parent and the child.[9]

   [9] Wu 2 [7].

3. The Holder declares that it was not aware of the Opponent or its products and services at the time of adopting the Trade Mark and it ‘had no intention to mislead or make use of any reputation or goodwill the Opponent may have acquired in Australia or overseas’.[10]

   [10] Wu 2 [23].

4. It is declared that the first sale by the Applicant in Australia of a product bearing the Trade Mark was on 20 October 2013.

5. The Holder describes various media platforms that its product is advertised on and or available for purchase in Australia including the names and websites of approximately 20 Australian online retailers, examples of online banner ads on Australian websites, promotional materials from the Australian distributor Dale Importers and user reviews from Australian blogs.

Section 58

1. Section 58 of the Act provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. The term ‘owner’ is not defined in the Act. However it is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[11] in the course of trade in Australia in relation to the designated goods or services[12] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[13]

   [11] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.

   [12] Seven Up Co v OT Ltd [1947] HCA 59.

   [13] Re Hicks’ Trade Mark (1897) 3 ALR 75.

3. The Opponent asserts that it has used its Buddi Trade Mark in Australia before the priority date of the Trade Mark and also before the Holder’s first use of the Trade Mark in Australia which is declared to be 20 October 2013. At the hearing the Opponent relied upon the following use put forward in the Murray Declaration:

• August 2012 – response to Western Australian Department of Corrective Services tender;

• August 2012 – registration with the Australian government and state tender websites; and

• December 2013 – response to Corrective Services New South Wales tender.

1. For the above mentioned uses to assist the Opponent they must demonstrate use of the word ‘Buddi’ as a trade mark. Use ‘as a trade mark’ is:

   use of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.[14]

   [14] Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

2. In Woolworths Ltd v BP plc (No 2) the Full Court provided the following insights in relation to determining whether there has been use ‘as a trade mark’:

   Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin.[15]

   [15] [2006] FCAFC 132 [77] [emphasis added].

3. The portion of the Opponent’s response to the Western Australian Department of Corrective Services tender which has been entered into evidence contains the word ‘Buddi’ in the following context:

   Name of Legal Entity: Buddi Limited

   Business Name: Buddi New Zealand

   Email: [email protected]

4. I am not satisfied that the word ‘Buddi’, objectively viewed, is functioning as a badge of origin in the abovementioned context. There is nothing before me to suggest that this use of the company name, the business name or the email address, does anything more than simply identify the entity responding to the tender. In my estimation, the use set out in [34] of this decision is not use of the word ‘Buddi’ to distinguish the goods or services provided by the Opponent from the goods or services of other persons; it is not use ‘as a trade mark’.

5. The response to the Corrective Services New South Wales tender suffers the same difficulties. Although it is of note that the word ‘Buddi’ is on the top right corner of each page of this tender response. In my view, it is this use that is more likely to be regarded as having the character of a trade mark. However, the pages of the tender response that have been entered into evidence do not make mention of any goods or services and it is therefore difficult for me to conclude that this use of ‘Buddi’ indicates a connection in the course of trade between goods and the person who applies the mark to the goods.

6. In respect of the registration with Australian Government and State tender websites, the Opponent has provided user guides which are ‘typically included in such tenders’. Whilst the user guides clearly show use of ‘Buddi’ as a trade mark, the word ‘typically’ conveys something less than certainty as to whether these user guides (or similar ones) were submitted as part of registering with the Australian Government and State tender websites. As such, I do not regard this as establishing use of the Buddi Trade Mark.

7. Although not specifically addressed in the Opponent’s submissions, Exhibit SM-23 to the Murray Declaration contains a copy of a slide presentation declared to have been given by Sara Murray (Opponent’s CEO) to the Northern Territory Police Force in August 2013. The slide presentation contains at least some use of ‘Buddi’ as a trade mark in relation to the Buddi Smart Tag and the Buddi Smart Beacon. I note that the evidence demonstrates that these are the only goods that the Opponent used its Buddi Trade Mark in relation to in Australia, before the priority date of the Trade Mark.

8. For this to assist the Opponent in its claim to ownership, the electronic smart tag and or smart beacon referred to in the slide presentation must be the ‘same kind of thing’ as the Holder’s Goods. In Colorado Group Limited v Strandbags Group Pty Limited Allsop J observed the following in regards to the ‘same kind of thing’:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article.[16] 

   [16] [2007] FCAFC 184 [89] (‘Colorado’).

1. In determining whether goods are the ‘same kind of thing’:

   a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a "same kind" inquiry from the factors for a "same description" inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as "essentially the same" may well cover a narrower field that goods "of the same description".[17]

   [17] Colorado [2007] FCAFC 184 [16].

2. I am going to focus my discussion on whether the Buddi Smart Tag is the same kind of thing as the Holder’s Goods. If I am not satisfied that these goods are the same kind of thing, I am unlikely to reach a different conclusion in relation to the Buddi Smart Beacon.

3. The slide presentation does not contain much information about the Buddi Smart Tag. The court faced a similar situation in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd and held that it was permissible to look beyond the slide presentation for the purpose of determining what services were being offered.[18] In this matter I will do likewise and look beyond the slide presentation for the purpose of determining the nature of the Buddi Smart Tag.

   [18] [2018] FCAFC 6 [78].

4. The Murray Declaration establishes that the Buddi Smart Tag is an anklet with tamper proof features such as steel bands, Kevlar® and requires a key for it to be removed. It was designed and promoted principally for use in a police or corrective services setting to be worn, for example, by parolees or people under home detention. This is acknowledged in the newspaper article published in the UK Telegraph on 13 December 2014 which states ‘Buddi’s so called Smart Tags – designed specifically to tag criminals’ and it is also evident when the Buddi Smart Tag is referred to as ‘offender electronic monitoring equipment’. The Buddi Smart Tag allows the location of the person wearing the anklet to be monitored for the purpose of deterrence and protection of the community.

5. The Holder’s Goods are described in the application as electronic devices for locating and tracking children. The evidence demonstrates that the Holder’s Goods are colourful lightweight wristbands that allow the location of the child wearing the wristband to be tracked. The purpose of the Holder’s Goods is to prevent the child from becoming lost and ultimately to ensure the child’s safety.

6. In my opinion, the Buddi Smart Tag is not the true equivalent of the Holder’s Goods. The goods have a different purpose (deterrence and community protection vs loss prevention and safety of the person wearing the device), different target markets (law enforcement vs parents and care-givers of children) and different trade channels. In my opinion, the Buddi Smart Tag is not the same kind of thing as the Holder’s Goods. Having reached this view, it is not necessary for me to comment on whether the trade marks are substantially identical.

7. The s 58 ground of opposition has not been established.

Section 60

1. Section 60 of the Act provides:

   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 this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick the meaning of the word ‘reputation’ for the purposes of s 60 was provided in light of the dictionary definition:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc. something specified.[19]

   [19] [2000] FCA 1335 [81].

4. The reputation in the other trade mark must be amongst a significant or substantial number of people.[20]  The reputation cannot be assumed, but rather must be established as a matter of fact by the Opponent.[21]

   [20] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd [1992] FCA 159.

   [21] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 [77].

5. The Opponent contends that the Buddi Trade Mark had, before 15 July 2015, acquired a reputation in Australia amongst a significant or substantial number of people. In my opinion, the evidence before me does not support this contention.

6. The Murray Declaration states that the Buddi Trade Mark was known to Australian consumers as early as August 2007. This assertion is seemingly based on a single Australian entity pre-registering for the Opponent’s product. The Murray Declaration does not provide any information as to what actions were taken between 2007 and 2012 in terms of the Australian market. The Murray Declaration goes on to state that the Buddi Trade Mark was first used in Australia at least as early as August 2012, approximately 3 years prior to the Relevant Date. To substantiate this claim, the Murray Declaration details contact that the Opponent had, via various means, with approximately 13 separate Australian Government Departments and private entities located in Australia from August 2012 to October 2014.

7. The Opponent has a contract with Corrective Services New South Wales which commenced on 25 September 2014, approximately 10 months before the Relevant Date. Exhibit SM-24 is the press release associated with this contract. It states that the electronic devices will be fitted to 485 offenders. 

8. The Opponent has provided the approximate annual revenue attributed to goods or services sold under the Buddi Trade Mark in Australia from 2011 to 2015. The figures for 2011 to 2014 are modest. The revenue is more significant in 2015 presumably due to the contract with Corrective Services New South Wales. The declaration does not state whether these figures are for financial years or calendar years and as such it is not clear to me what portion of the 2015 figures is before the Relevant Date.

9. The Opponent has also provided the approximate expenditure on promotion of the Buddi Trade Mark in Australia from 2014 to 2015. The expenditure is modest. The Opponent also refers to promotion via its website ‘ The Opponent has not provided figures relating to how many times its website had been accessed from Australia prior to the Relevant Date. Nor has it indicated how many purchases were made by Australian customers directly via its website. I also note that Australian customers are able to lease health monitors bearing the Buddi Trade Mark from Telstra. However, the Opponent has not provided any indication as to how many products were leased under this arrangement prior to the Relevant Date.

10. The Opponent also relies on spillover reputation from use of the Buddi Trade Mark in other jurisdictions such as the United Kingdom. Ultimately the question to be answered is how much of the reputation in other jurisdictions had transferred into the Australian consciousness at the Relevant Date.

11. The Opponent has provided examples of third party publications from international jurisdictions that reference the Buddi Trade Mark, the earliest of which is dated 14 July 2007. However the Opponent has not provided any means to quantify the exposure that the Australian public had to these articles. Similarly, the Opponent has provided the names and dates of international conferences and trade shows at which products bearing the Opponent’s Buddi Trade Mark were showcased but has neglected to provide any indication as to how many Australians were in attendance.

12. The Opponent has also provided a screenshot from an advertisement which is declared to have been uploaded to YouTube® on 21 December 2010. However there is no indication as to how many times this advertisement was accessed from Australia. The Opponent also references its use of Google AdWords® since 2008. Whilst the 2007 to 2008 results from this Google AdWords® campaign have been provided, there is no indication that any of these results relate to users in Australia.

13. The evidence before me establishes that the Opponent’s Buddi Trade Mark has a reputation in overseas jurisdictions. However it does not establish with any certainty, the degree to which the reputation had spilled over into Australia at the Relevant Date.

14. I am not satisfied that the evidence establishes, as a matter of fact, that at the Relevant Date, the Buddi Trade Mark had the reputation contemplated by s 60 of the Act.

15. The s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42(b) of the Act relevantly provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b) its use would be contrary to law.

2. The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms schedule 2 to the Competition and Consumer Act 2010. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading.

3. I have found that the Opponent has not demonstrated a reputation in its Buddi Trade Mark sufficient for the use of the Trade Mark to cause confusion or deception under s 60 of the Act. It follows that it is unlikely that use of the Trade Mark will amount to misleading or deceptive conduct under the ACL because ‘for the public to be misled or deceived…there must be in the minds of the relevant public some established truth against which the notion of misleading or deceptive conduct can be measured’.[22] Similarly, without sufficient reputation having been demonstrated in the Buddi Trade Mark, the use of the Trade Mark would not falsely represent to an Australian consumer that the Holder’s Goods have the sponsorship or approval of the Opponent.

   [22] Dairy Vale Metro Co-op Ltd v Brownes Dairy Ltd [1981] FCA 63 [42].

4. The Opponent has not satisfied me that use of the Trade Mark would not could be contrary to the ACL.[23] As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

   It is not enough for a party opposition registration to show that s 18 of the ACL or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[24]

   [23] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

   [24] [2017] FCAFC 174 [411].

5. Accordingly the s 42(b) ground of opposition has not been established.

Decision

1. Regulation 17A.4N of the Regulations provides:

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a) to refuse protection in respect of all of the goods or services                  listed in the IRDA; or

   (b) to extend protection in respect of some or all of the goods or   services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which the grounds on which the IRDA        was opposed have been established.

1. The Opponent has not established a ground of opposition.

2. Accordingly IRDA number 1718799 may proceed to protection one month from the date of this decision.

3. If the Registrar is served with a notice of appeal, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Holder sought costs. As the successful party, the Holder is so entitled and I award costs against the Opponent in the amounts set out in Schedule 8 of the Regulations.

Katrina Brown
Hearing Officer
Trade Mark Oppositions & Hearings
21 March 2019