Callico LLC v Calico Global Pty Ltd

[2016] ATMO 98

TRADE MARKS ACT 1995

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

Re:Opposition by Calico LLC to registration of trade mark application 1582486 (42) - CALICO - in the name of Calico Global Pty Ltd

Delegate:	Debrett Lyons
Representation:	Opponent: Angus Lang of Counsel instructed by Gilbert & Tobin, Lawyers Applicant: written submission only 2016 ATMO 98
Decision:	Trade Marks Act 1995 (Cth) - Section 52 opposition: s.62A considered – bad faith established – trade mark to be refused registration

Background

1. This is an opposition brought by Calico LLC (“the Opponent”) pursuant to section 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Calico Global Pty Ltd (“the Applicant”):

Application Number:	1582486
Priority Date:	26 September 2013
Services:	Class 42: research services
Trade Mark:	CALICO	(“the Trade Mark”)

1. Following the advertisement in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration on 20 February 2014, the Opponent filed a Notice of Intention to Oppose on 17 April 2014.  The Opponent then filed a Statement of Grounds and Particulars (“SGP”) on 16 May 2014.  The SGP was assessed by this office as adequate and a notice was sent to the Applicant on 13 February 2015.  The Applicant filed a Notice of Intention to Defend on 17 June 2014. 

2. The parties filed evidence in support, evidence in answer, and evidence in reply, described below, after which a hearing was convened in Canberra before me, Debrett Lyons, a delegate of the Registrar, on 26 July, 2016.

3. At the hearing the Opponent was represented by Angus Lang of Counsel, instructed by Lauren Eade of Gilbert & Tobin, Lawyers, who both appeared before me in person.  The Applicant was not represented at the hearing and relied on the written submissions of its attorneys, HopgoodGanim, Lawyers, which had been provided before the hearing in accordance with my directions.

4. The hearing dealt contemporaneously with a second matter between the parties in which the Opponent (here) had brought an application for partial removal from the Register of an earlier registration of the Trade Mark.[1]  

   [1] The decision in that matter to be published in due course as Calico LLC v Calico Global Pty Ltd [2016] ATMO 86.

   Grounds of Opposition, Onus and Standard of Proof

   6. The SGP raised grounds of opposition under sections 44, 59 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of the grounds.

5. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 26 September 2013, being the filing date of the application (“the Priority Date”).[4]

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

   [3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd[ 2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

   The Evidence

   8.       The Opponent filed Evidence in Support of its opposition comprising the declarations of:

   ·    Arthur Levinson made on 1 October 2014 (“Levinson Declaration”);

   ·    Monique Liburd dated 1 October 2014 (“Liburd Declaration”); and

   ·     Lauren Eade dated 1 October 2014 (“Eade Declaration”). 

6. The Applicant filed Evidence in Answer comprising the declaration of Kevin Owens, managing director of the Applicant, made on 14 January 2015 (“Owens Declaration”).

7. The Opponent filed Evidence in Reply comprising a further declaration of Monique Liburd dated 26 March 2015. 

8. The Applicant also relies on the evidence it was compelled to produce under section 202 of the Act at the request of the Opponent. The Applicant produced three documents pursuant to the a notice to produce issued on 24 March 2015:

   ·    Signed engagement letter from Watson Mangioni dated 25 September 2013;

   ·    Email advice to Calico Pty Ltd from Watson Mangioni dated 24 September 2014; and

   ·    Email from Watson Mangioini to HopgoodGanim Lawyers dated 4 March 2016.

9. Notices to produce are made under section 202(c) of the Act and are part of a process separate from the evidentiary rounds of an opposition controlled by div 2, sub-div C of the Trade Mark Regulations 1995.  However, the position taken by this Office is that material produced in response to a notice to produce is automatically considered under regulation 21.19. 

   The Applicant’s business

   13.     The evidence shows that Kevin Owens (“Owens”) first used and registered[5] the Trade Mark (“the Registration”) in Australia in June 2004. In November 2006 Owens caused Calico Pty Ltd to be incorporated and in May 2011 Owens caused the Applicant to be incorporated.

   [5] Owens applied for registration of the Trade Mark on 7 June 2004 and it later issued as Reg. No. 1005184 for the following services:

10. The Applicant’s business is enabled through websites at calicohealth.com and and is described[6] as follows:

    [6] in the “about Calico” section of its website at calico.com.au, captured as at 13 January 2013 and as shown at LE-6 to the Eade Declaration.

    Calico stands for “Calories In, Calories Out” and its aim is to turn a complicated problem into a simple equation.

    Calico works in two ways, online and outdoors. Online it enables you to set your own fitness goals and helps you to achieve those goals with the aid of the Calico Fitness Totems installed at public walking paths.

    It’s a system that delivers free online fitness & nutrition programs & tools whilst changing outdoor space, giving you the knowledge and infrastructure to help achieve your goals. It may be 6 Calico Fitness Totems in 36 minutes, or 10 Fitness Totems in a longer time. Whatever is right for you.

11. The on-line component is offered via a mobile phone software application[7] and the touted benefits[8] are that:

    [7] The website for the application is mycalico.com (Owens Declaration, [18]).

    [8] from the “about” section of that website (Eade Declaration, LE-9).

    Calico’s iPhone fitness app rewards you for being active. Use it to track walks, runs or cycle rides and fill up your Burn&Earn “FitDisc” as you go. Reach your daily goal to claim real-world discounts and exclusive offers at nearby shops.

    -     App Features

    -     Set your goals and daily burn target

    -     Track your activity in real-time on a map

    -     Monitor distance, speed and calorie burn readings

    -     Listen to music and take photos on your journey

    -     Discover local shops and claim your ‘Burn&Earn’ rewards

    -     Browse your activity history, intensity graphs and stats

    -     Cloud sync your data so it is safe and secure

    -     Friend other users and exercise together

    -     Share your workouts via Facebook and Twitter

    -     Weight tracker, badges and more!

12. The outdoor installations, referred to as “Calico Fitness Totems” (“totems”), are described as follows[9]:

    [9] Again, from the website calico.com.au (Eade Declaration, LE-6)

    Installed every 500m, Calico Fitness Totems work with your online goals to easily show the activity (intensity = time and distance) that you need to put in to achieve your fitness goals.

    With your targets set online, the Fitness Totems turn public space into your very own private gym.

    The free Calico smartphone app [lets] you bring the smarts with you. Using the phones [sic] GPS, the Calico app allows you to track activity on the go, get real time motivation from friends and take part in programs, on and off the Calico tracks.

13. The totems are installed on local council owned land in Perth in Western Australia. 

14. The Owens Declaration states that the Applicant offers free “Calico Health Screenings”[10] and health and research services and studies[11].  

    [10] Owens Declaration, [60]; Ex. 19.

    [11] Owens Declaration, [50] et. seq.

    The Opponent’s business

    19.     The Opponent’s business is directed towards the cure of intractable diseases associated with ageing and degenerative conditions.[12]  Its focus is research and development.[13] (“the Opponent’s Business”).

    [12] Levinson Declaration, Ex AL-1.

    [13] Levinson Declaration, [6].

15. It is noteworthy that the Opponent’s CEO was and continues to be Arthur Levinson, the former CEO of pharmaceutical company, Genentech, and a current director of Hoffmann-La Roche[14].  The Opponent employs leading figures in the fields of medicine, drug development, molecular biology and genetics[15].

    [14] Levinson Declaration, 1, 2, Ex AL-1.

    [15] including Hal V Barron MD, David Botstein PhD, Robert Cohen MD and Cynthia Kenyon MD (Levinson Declaration, [7]).

16. The Opponent’s Business was launched on or about 18 September 2013.[16]  Publicity attending the launch is said to have been international[17] and included a Time magazine cover story[18], an announcement by Larry Page (CEO and co-founder of Google) on 19 September 2013[19], and other media coverage including an 18 September Press Release[20].

    [16] Levinson Declaration, [13].

    [17] Levinson Declaration, [14-16].

    [18] Levinson, Ex AL-21.

    [19] Levinson Declaration, AL-2.

    [20] Ibid.

17. The Press Release includes statements from Larry Page and Art Levinson, as follows:

    Illness and aging affect all our families. With some longer term, moonshot thinking around healthcare and biotechnology, I believe we can improve millions of lives. It’s impossible to imagine anyone better than Art – one of the leading scientists, entrepreneurs and CEOs of our generation – to take this new venture forward”. Art said: “I’ve devoted much of my life to science and technology, with the goal of improving human health. Larry’s focus on outsized improvements has inspired me, and I’m tremendously excited about what’s next. … Art Levinson will remain Chairman of Genentech and a director of Hoffmann-La Roche, as well as Chairman of Apple. 

    Further Background Facts

    23.     The Applicant confirms that it was aware of the 18 September 2013 Press Release, the 19 September 2013 Larry Page announcement and the Time magazine cover story prior to making the opposed application.[21]

    [21] Owens Declaration, [32].

18. It seems that awareness was almost immediate because on 20 September 2013 a representative of the Applicant contacted Google Australia to “inform [Google] of the pre-existence of Calico (and their published app app.mycalico.com) in the health and wellness space…”.[22]

    [22] Liburd 1, [6].

19. On 26 September 2013, the opposed application was made.  The Owens Declaration states:

    The timing of the application is explained by the fact that when [the Applicant] realised that [the Opponent] was proceeding with the CALICO trade mark, it appointed legal representation. On the advice of legal representatives, [the Applicant] took steps to solidify its position and protect its legitimate business operations from the encroachment of [the Opponent].[23]

    [23] Owens Declaration, [69].

20. After October 2013, the Applicant’s website was partly reworded to make reference to “healthy aging”, “disease prevention” and “medical information”.[24]

    [24] Eade Declaration, [9] ; Ex LE-1 and LE-6.

21. In May 2014, the Opponent proposed a co-existence agreement with the Applicant but no agreement was reached.[25]

    [25] Owens Declaration, [39].

22. On 14 March 2014 and claiming a Paris Convention priority date of 18 September 2013, the Opponent filed trade mark application no. 1611319 for the mark CALICO in classes 5, 10 and 44.  The class 44 services were listed as: 

    Providing medical information, consultancy, and advisory services for the treatment of aging, immunological diseases and degenerative conditions of the body, the promotion of life extension, and restoration of youthful bodily functions

23. On 15 May 2014 the Opponent made application under section 92 of the Act for partial removal of the Applicant’s older Registration of the Trade Mark from the Register.[26]

    [26] in respect of the class 44 services listed above in fn 5

24. On 22 May 2014 the Applicant made two applications for assignment of the Registration to be recorded - one from Owens to Calico Pty Ltd and a second from Calico Pty Limited to the Applicant.

    Discussion and findings

    31. As stated, the SGP raised grounds of opposition under sections 44, 59 and 62A of the Act. On the evidence I am able to decide this matter under section 62A of the Act.

    Section 62A

    32. Section 62A of the Act is reproduced below:

    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.

25. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, 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.[27]

    [27] [2012] FCA 81, [24]-[26].

26. Her Honour continued later in the same decision:

    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.[28]

    [28] Ibid [165]-[166].

27. In Pritchard Pacific Pty Ltd v McCarrison (‘Pritchard Pacific’) the delegate noted that:

    The Hearing Officer in Hard Coffee found that in most circumstances an element of intentional dishonesty was necessary to establish section 62A, but failing that, the ‘reasonable man’ test may apply:

    ...In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the ‘reasonable man’ standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.

    Therefore, it may be the case that an applicant has some belief in its right to a trade mark but a ‘reasonable man’ still ought to be aware that he should not apply for its registration.[29]

    [29] [2011] ATMO 46, [39-40] (citations omitted).

28. The introduction to the Applicant’s written submissions include the following statements, from which references have been redacted and my own emphasis has been added:

    The nature of the Applicant’s business is such that, establishing a client base in a given territory is achieved by offering services and membership services free of charge to consumers in order to collect data from that client base so as to create an outlet for third party advertising and for the offering of other services, such as the provision of research services using that data.

    The Websites, CALICO App and the Fitness Totems are all provided for the business purpose of:

    -     providing the means to collect client information; and

    -     using that information to create an outlet for third party advertising and for the offering of other services including medical and diagnostic services and, importantly, the provision of research services based on that data.

    A key aspect of the Applicant’s business is the collection of client data for the purpose of using that data to provide research services. 

    The provision of research services are key and fundamental to the Applicant’s business model which is why this fact has always been made readily apparent to clients, and potential clients, of the Applicant in its Privacy Policy and Terms and Conditions published on its website prior to the priority date of the Opponent’s Application.

29. I have considerable difficulty with the broad claim that the provision of research services is fundamental to the Applicant’s business model.  Further, on the evidence I have the same difficulty identifying any actual offering of what I would consider to be “research services”.  Finally, I have difficulty accepting Owens claim that the Trade Mark has been used in respect of health and research studies.

30. I turn to particulars of the evidence noting that some of the Applicant’s submissions in relation to the grounds of opposition pressed under section 44 and 59 of the Act are connected to and relied upon in rebuttal of the Opponent’s allegation of bad faith; they are also considered here as necessary.

31. So, for example, it is the Applicant’s assertion in response to the section 44 ground that it has made continuous use of the Trade Mark in respect of research services since before the priority date of the Opponent’s application no.1611319 for the purposes of section 44(4) of the Act. In doing so it relies upon two pieces of evidence now considered.

32. First, the Owens Declaration includes a written agreement[30] made between the Applicant and a local authority in Perth by the name of The Town of Cambridge (“TOC”) under which TOC permitted the Applicant to install totems on public land owned by it.

    [30] Owens Declaration, Ex 15.

33. The purpose of the agreement was to provide for the conduct of a three year “Multicentre Observational Study” commencing on 22 December 2011 which, at its highest, required that the Applicant keep a “Study File”, defined to mean “the file … containing the documentation and aggregate data of the study”.   The agreement states that the Applicant is to provide TOC with, and publish, data collected from the use of the totems in the TOC.[31] 

    [31] Owens, Ex 15, Recitals, clause 2.1; clauses 5.1 and 11.1.

34. There is no evidence that any data was provided to TOC under this agreement.  There is no evidence that any results were published.[32]  In any event, the Opponent recites the definition of the word “research” in the Macquarie Dictionary Online “(noun 1.  diligent and systematic inquiry or investigation into a subject in order to discover facts or principles: research in nuclear physics)” in support of its submission that even if, as a matter of fact, data were provided to TOC, that does not constitute the provision of a “research” service since research requires inquiry, investigation, and the discovery of facts or principles, not merely the provision of data.

    [32] notwithstanding clause 11.1 : “The Town recognises that Calico as the sponsor has a responsibility to ensure that results of scientific interest arising from the Observational Study are appropriately published and disseminated”.

35. The Applicant further relies on the “Privacy Policy and Terms and Conditions” published on one of its websites on 17 March 2012[33], asserting that they “constitute evidence of use of the CALICO trade mark for research services or at the very least an ‘objectively ascertainable commitment’ to supplying the research services, which is sufficient to constitute use of the trade mark.”

    [33] Owens Declaration, [49]; Ex 14.

1. The terms and conditions are exhibited to the Owens Declaration.  They state, in part:

   Aggregated Personal Data: Most Calico users want to know how they compare to others, and in an ongoing effort to better understand and serve the users of the Calico Services, Calico often conducts research on its customer activity levels, biometrics, demographics and behaviour based on the Personal Data and other information provided to us. This research is compiled and analysed on an aggregate basis, and Calico may share this aggregate data with the public, its affiliates, agents and business partners.

2. There is no evidence of research or other action taken by the Applicant or any other entity pursuant to those terms and conditions.

3. Otherwise, the evidence can be summarized thus: Exhibit 16 of the Owens Declaration consists of a photograph of a banner for a self-described “Health Study” event held in August 2011.  The short report thereon refers to 8 participants who attended “The Calico accelerometer Walga Conference Challenge”.  The report describes that the “group worked off just over 70 glasses of red wine (103ml glasses), and walked the equivalent of 114 laps around the exhibition centre!”.  A “Challenge Winner” is named.

4. Further, the Applicant claims to provide “Calico Health Screenings”, said to be conducted on-line and face to face.  They entail measurement of height, weight and blood pressure.[34]  The only supporting evidence thereof is a photograph of a person receiving a blood pressure test in July 2014, after the Priority Date, together with the photograph of a sign that measurements such as height and weight may be taken.

   [34] Owens Declaration, Ex 19.

5. Furthermore, the Applicant claims to provide articles “pertaining to medical issues” which are published on its websites or tweeted via its Twitter account. [35]  The articles on the website appear under the heading “fitness”, “fitness blog” or “nutrition” and relate to conditions such as Alzheimer’s disease, cancer, diabetes, and hypertension, and describe their signs and symptoms.

   [35] Owens Declaration, [62]

   Bad faith?

   49.   It is with hesitation that I have, in the end, found it necessary to set what follows in context of the initial observation that the Applicant’s business is premised on what must be fairly characterized as a lightweight concept.  That observation is not for one moment to devalue its possible value in commercial terms, nor to deny the health benefits that might flow to members of the Perth or broader community.  Nor, I stress, is it an observation conditioned by comparisons with the Opponent’s business.  What I am saying is that I do not find on the evidence that research is at the heart of the Applicant’s business.   Research has not been a driver for any part of that business, nor is there in my assessment cogent evidence of research being ancillary to any of the Applicant’s primary objectives.

   50.   I adopt the dictionary definition of “research” as requiring inquiry, investigation, and the discovery of facts or principles.  I agree with the Opponent’s assessment of the TOC agreement; it was essentially for the provision of unprocessed data.   I read the reference in that agreement to a “Multicentre Observational Study” as a somewhat grandiose way of describing no more than the collection of data from totems located in different localities in TOC.  Further, I regard the use of the word “research” in the website terms and conditions of use to be accidental and, absent any actual activity in that regard, treat these terms as “boilerplate” material and of very little weight. Certainly, taken on its own, it is not compelling evidence of a genuine interest in research, properly understood.  The so-called health screenings are little more than that – screenings – and there is nothing rising to the description of a “study”.  Finally, the articles are not published research but summary information about known medical conditions.

   51.   In essence, the provision of a fitness app and attendant advertising driven revenue constitutes the Applicant’s core interests.  Even if the evidence considered above were somehow to be construed as comprising “research services”, the service would be inevitably confined by the nature of the Applicant’s business.  In that respect I note here the Opponent’s submission that:

   “Research services” is a broad category of services, encompassing research relating to agriculture, architecture, chemicals, computers, design, engineering, medicine, pharmaceuticals and technology (to give only a few examples from IP Australia’s classification directory). This involves a highly disparate range of fields of technology, such as those practised by farmers, architects, chemists, physicists, engineers and computer programmers. A specification of “research services” unqualified by an appropriately defined field is accordingly of substantial breadth.

   52.   The Opponent’s Business was launched and is conducted by reference to a sign identical to the Trade Mark.  By its admission, the Applicant was aware of the Opponent’s business prior to making the opposed application.  The Applicant correctly states that “the fact that the Applicant may have been aware of the Opponent’s business and its trade mark is not of itself fatal: Next Group Plc v Nexcorp Australia Pty Ltd [2016] ATMO 34, [77]”. Nevertheless, applying the standard of the reasonable man, I must determine whether the act of making the application for registration showed conduct of an unscrupulous, underhand or unconscientious character.

   53.     As seen, the Owens Declaration states that the Applicant saw the possible extension of the Opponent’s business under the Trade Mark to Australia as a threat to its business, an “encroachment on its rights” in its own words. [36]

   [36] Owens Declaration, [69].

   54.     A week after becoming aware of the Opponent’s business, the application was filed.  Attempting to defuse the impact of that evidence, it was the Applicant’s written submission that:

   the Owens Declaration should not be read so as to say that the Trade Mark Application was specifically motivated by the launch of [the Opponent] – instead the intention of Mr Owens, … is simply to state that the launch of [the Opponent] prompted the Applicant to seek legal advice and upon seeking that advice, the Applicant was prompted to take the acceptable (and advisable) commercial step of applying to register the trade mark for its prior existing rights;

6. That submission hinges on acceptance of those “prior existing rights” and in so much as those asserted rights relate to research services I have said all I can. Moreover, at least for the purposes of section 62A, I can only take so much notice of the Applicant’s argument of a future expectation of such rights, as for example, shown by its submission in connection with section 44(4) and elsewhere that:

   It has been emphasised in the case law that a mere “objectively ascertainable commitment” to supplying the relevant goods or services is sufficient to constitute trade mark use: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 107 FCR 166, 179 [40].

7. Aware of the launch of the Opponent’s Business before the filing date of the opposed application, Owens explains that he had not “seen any mention of the opponent being interested in ‘research’”.[37]  He continues:[38]

   [37] Owens Declaration, [32]

   [38] Owens Declaration, [36]

   Therefore, I say categorically, that the CALICO trade mark application was not filed with any intention to block the opponent from obtaining a registration for services in which the applicant knew or ought to have known that the opponent had an interest…The CALICO trade mark application was simply filed to protect the applicant’s existing and intended future good faith use of the CALICO trade mark in Australia in relation to research services.

8. I find those assertions disingenuous. The Press Release, taken alone and being a source of information unambiguously known by the Applicant, refers to the personalities engaged in the Opponent’s new enterprise, their backgrounds in medicine and medical science and the obvious focus of the new business on research and development.

9. The failure to conclude a co-existence agreement with the Opponent is explained in the Owens Declarations by the claim that “the sheer size and marketing budget of the opponent would result in the applicant being squeezed out of the market”.[39]  Whilst that agreement was advanced well after the filing date, it nonetheless casts a telling shadow over the Applicant’s state of mind on the Priority Date.

   [39] Owens Declaration, [39]

   59.   So far as the applied-for services are concerned, the Opponent states:

   The term [“research services”] encompasses research across a wide range of disparate fields, in relation to which [the Applicant] had no actual or proposed use, and indeed no apparent capacity or qualification to perform. This included scientific medical research such as drug discovery. 

   60.   I fully understand the Opponent’s written submission:

   That Mr Owens may have experienced initial concern when becoming aware of the launch of Calico LLC is understandable, but his response, to make a trade mark application which was on any view excessive in scope specifically for the purpose of preventing encroachment of [the Opponent], and in circumstances where it had been clear from [the Opponet’s] launch that its activities encompassed medical research such as drug discovery, fell short of the ordinary standards of commercial behaviour and accordingly was undertaken in bad faith within the meaning of s 62A.

   61. Judged by the requisite standard, I find that the Applicant’s action in making the application for registration was of an unconscientious character. If it did so impulsively, sparked by apprehension, it did not exercise the caution and judgement of a reasonable man. If it did so on legal advice, it was badly advised, but that matters none for the purposes of section 62A. What is important is that a reasonable man would have known better than to have applied for “research services”, without qualification. If the Applicant thought that it could shelter behind the belief that what it had offered under the Trade Mark in the past amounted to “research” in the sense of inquiry, investigation, and the discovery of facts or principles then that might have been one thing, but to make application so broadly as to cover all research services and by implication, medical research services, was a step too far. I have adopted the language of the case law in characterizing that action as unconscientious. In the circumstances, there might another, more apposite term but what matters is that it was an act of bad faith; the weight of the evidence points to the application being a spoiler, intended to impede the Opponent’s plans for an Australian business without legitimate basis when judged by persons adopting proper standards.

   62. I find that the application was made in bad faith and so find that the Opponent has established a ground of opposition under section 62A of the Act. I add only that the bad faith infects the whole of the application; the section is concerned with the question is whether the application was made in bad faith, not whether bad faith pertains to only some of the claimed services.

   Decision

   63. Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:

   …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.

   Note: For limitations see section 6.

   64.   I have found the opposition to be successful on a ground raised and I accordingly refuse to register trade mark application number 1582486.

   Costs

   65.   As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

   Debrett Lyons
   Hearing Officer
   Trade Marks Hearings
   4 November 2016

   
   

Class 41: Education, provision of training, entertainment, sporting and cultural activities; includes; the provision of on-line electronic publications and digital music (not downloadable) from the Internet, health and club gym, health club and fitness services, advice regarding exercise.
Class 44: Medical services; veterinary services, hygienic and beauty care for human beings or animals; includes medical analysis for the diagnosis and treatment of persons (such as x-ray examinations and taking blood samples), pharmacy advice, provision of advice and information regarding health and fitness