Bumble Holding Limited v Aggregated Demand Pty Ltd

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TRADE MARKS ACT 1995



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

Re:Opposition by Bumble Holding Limited to registration of trade mark application number 2215185 (9, 35, 42) – BUYASHIVE and device - in the name of Aggregated Demand Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: King & Wood Mallesons

Applicant: L.E. Davis of Counsel instructed by Media Arts Lawyers

Decision:

2024 ATMO 105

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 60 and 59 considered – none established – trade mark to proceed to registration

Background

1.     This matter concerns an opposition by Bumble Holdings Limited (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of Aggregated Demand Pty Ltd (‘Applicant’):

[1]  Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.  

Trade mark number:              2215185

Trade mark:   (‘Trade Mark’)

Filing date:  5 October 2021

Specification:  Class 9: Application software; Computer software; Computer software downloaded from the internet; Computer software for analysing market information; Computer programs for sales purposes; Downloadable software applications (apps)

Class 35: Advertising; Office functions; Business administration; Business management; Business franchising services (group purchasing, group advertising); Business organisation and management of discount services; Online promotion on a computer network; Online advertising on a computer network; Organisation, operation and supervision of an incentive scheme; Provision of an online marketplace for buyers and sellers of goods and services; Discount store services (retail, wholesale, or sales promotion services); Online retail services; Retail services; Retailing of goods (by any means)

Class 42: Design and development of computer software; Design and development of computer hardware for others; Design and development of computer software for others

(‘Applicant’s Goods and/or Services’)

2.     The Application was examined as required by s 31 and advertised for possible registration on 6 March 2022.

3.     On 6 May 2022 the Opponent filed a Notice of Intention to oppose the registration followed by its Statement of Grounds and Particulars on 6 June 2022. The Applicant filed a Notice of Intention to Defend on 18 July 2022.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following Evidence in Support:

  • Declaration of Natasha Hinds-Payne, Head of IP & Brand Protection of Bumble, dated 17 October 2022 with Annexures NHP-1 to NHP-38 (‘Hinds-Payne’).
  • Declaration of Johnathon Hall, solicitor at King & Wood Mallesons for the Opponent, dated 17 October 2022 with Annexures JH-1 to JH-4 (‘Hall’).

5.     The Applicant filed the following Evidence in Answer:

  • Declaration of Craig Sutherland, Managing Director of the Applicant, made on 18 January 2023, with Exhibits CS-1 to CS-5 (‘Sutherland’).
  • Declaration of Christopher Cao, Registered Trade Marks Attorney at Media…
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Details
Case
[2024] ATMO 105
Decision Date

CaseChat Overview and Summary

This matter concerned an opposition by Bumble Holding Limited (the Opponent) against the trade mark application of Aggregated Demand Pty Ltd (the Applicant). The dispute centred on whether the Applicant had the requisite intention to use its proposed trade mark, "BUYASHIVE & Device," at the time of filing its application. The decision was made by Louise Tuohy, Hearing Officer and Delegate of the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was to determine whether the Opponent had established a prima facie case that the Applicant lacked the intention to use its trade mark in relation to the specified goods and services, as required by section 59 of the *Trade Marks Act 1995* (Cth). This involved assessing the evidence presented by both parties regarding the Applicant's business plans, preparations for launch, and any potential disruption caused by the opposition proceedings.

The Hearing Officer considered the difficulty in establishing a lack of intention to use, noting that it is often challenging for an opponent to succeed on this ground due to the subjective nature of intention and the presumption of intention flowing from an application for registration. The Opponent argued that its pre-commencement letter put the Applicant on notice of the section 59 ground and highlighted the lack of use. However, the Hearing Officer found that while the Opponent had shown the Applicant had not used the mark at the relevant date, it had not demonstrated that the Applicant was incapable of using the mark across the specified goods and services. The Hearing Officer also noted that an applicant may legitimately delay use pending the outcome of registration proceedings, and that the Applicant had provided evidence of domain name registrations and business planning prior to the relevant date.

Ultimately, the Hearing Officer was not satisfied that the Opponent had provided sufficient cogent evidence to establish a prima facie case that the Applicant lacked the requisite intention to use the trade mark at the relevant date. Consequently, the ground of opposition under section 59 was not established. The Hearing Officer decided that the Applicant's trade mark application could proceed to registration, and awarded costs against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Justice Jacobson also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[36][36] Ibid [161] (citations omitted). 67. In the present matter the Opponent submits that its SGP put the Applicant on notice that s 59 was to be raised in these proceedings.[37] Exhibits JH-2 and JH-3 to Hall comprise screenshots of searches of Google and Google Play Store which were conducted on 8 September 2022. The searches covered terms such as Aggregated Demand Pty Ltd, BUYASHIVE and BUY AS HIVE. The results of these searches were put to the Applicant in a letter from Kind & Wood Mallesons dated 14 September 2022.[38] The letter states the following:[37] See (2008) 75 IPR 478, 497 [162].[38] Hall (14), [Exhibit JH-4].Our client’s view that there is no relevant intended use of the BUYASHIVE & Device mark by your client. This is reinforced by the fact that any such use in Australia of the BUYASHIVE & Device mark in respect of the Goods and Services would cause confusion (under s44 and/or s120 of the TMA, as the case may be) as against our client’s earlier pending and registered rights for, and use of, its Earlier Pending and Registered BUMBLE Trade Marks (as defined in the SGP) and as against our client’s reputation in those marks (under the s60 of the TMA). Notably, these include the word marks HIVE and BUMBLE HIVE and the logos below: For example, the specification of Goods and Services covers (via its broad claims) apps for the purposes of social networking which comprise Bumble’s core goods, and there would plainly be a likelihood of confusion if your client used the BUYASHIVE & Device mark on such goods. In light of the above, Bumble considers it very unlikely that your client relevantly intended to use or authorise the use of the BUYASHIVE & Device mark at the date of filing (namely, 5 October 2021).Pending a substantive response on behalf of your client outlining the goods and services in respect of which it uses or intends to use the applied-for mark, we will introduce this letter into evidence in the Opposition in support of the ground under section 59 of the TMA.68. The Opponent states that the Applicant by way of its evidence in answer confirms in positive terms that the intended use is in respect of a narrow part of the specification being the organisation, operation and supervision of an incentive scheme in class 35. Moreover, the Opponent states that at the Relevant Date the Applicant did not have an intention to use the Trade Mark in relation to goods in class 9, the services in class 42 and part of the class 35 specification. 69. In Sutherland, Mr Sutherland states that the Applicant has a clear intention to use the Trade Mark for all of the Applicant’s Goods and Services. Moreover, the Applicant is in the first stage of operations to launch an e-commerce platform in Australia and internationally under the Trade Mark. In support of these statements Confidential Exhibit CS-4 to Sutherland comprises the Applicant’s legal briefing which provides an overview of the Applicant’s business model and strategy dated July 2021. Confidential Exhibit CS-5 to Sutherland comprises the Applicant’s website design brief dated July 2021. 70. Mr Sutherland states that the Applicant’s website will be accessed at and which domain names were registered on 13 July 2021.[39][39] Sutherland (7), [Exhibit CS-2].71. Mr Sutherland states that the Applicant was registered with the Australian Securities and Investment Commission on 29 September 2021.[40][40] Sutherland (3), [Exhibit CS-1].72. While the Applicant admits that at the Relevant Date it had not used the Trade Mark, Mr Sutherland deposes that the Opposition disrupted the Applicant’s plan to launch in Australia, given the time and investment required in Opposition proceedings and the risk of having to rework its website design. 73. In this matter I am to consider whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicant.74. The Opponent’s evidence shows that it put the Applicant on notice that it was pursing a ground of opposition under s 59 and that there had been no use of the Trade Mark at the Relevant Date nor eleven months after in September 2022. However, the evidence does not show that the Applicant would be incapable of providing the Applicant’s Goods and Services or incapable of using the Trade Mark across the scope of the Applicant’s Goods and Services.75. Further, in Paintmaster Products v Lewis Berger & Sons,[41] the Registrar observed that an applicant might properly elect to delay use pending the outcome of the application for registration. In this case the Applicant deposed that these proceedings have disrupted its development and launch timeline in Australia. Moreover, prior to the Relevant Date the Applicant had obtained the registration of domain names and prepared business briefs which contained detailed plans for the business direction to lawyers and website designers. [41] (1955) 25 AOJP 1915.76. In relation to the scope of the Applicant’s Goods and/or Services being beyond anything that could even be said to have been the subject of an intention to use, I note that upon a perceived market demand, the Applicant is involved in a start-up venture capitalising business developing a viable product, service and platform which will require a stable of goods and services. In view of the nature of the Applicant’s business and without evidence to the contrary I am satisfied that the Applicant’s approach to the specified goods and services at the Relevant Date was aligned with a genuine intention and not speculative.[42][42] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [152] (Burley J).77. I am not satisfied the Opponent has provided sufficient cogent evidence to establish a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. As such there is no shift of the evidentiary onus to the Applicant. 78. The Opponent has not established a ground of opposition under s 59. Decision79. Section 55 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.80. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2215185 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 Application should be in accordance with the Court’s order or direction. Costs 81. 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. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations. Louise TuohyHearing OfficerDelegate of the Registrar of Trade Marks7 June 2024Annexure 1

Ratio Decidendi

Legal Principle Established

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