City of Rockingham v Diesel Rocket Fuel Pty Ltd

[2017] ATMO 122

TRADE MARKS ACT 1995

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

Re:Opposition by City of Rockingham to registration of trade mark application 1683291(9) - LITTER BUSTERS - in the name of Diesel Rocket Fuel Pty Ltd.

Delegate:

Jock McDonagh

Representation:

Opponent: Written submissions prepared by Wrays Lawyers

Applicant: No appearance nor submissions

Decision:

2017 ATMO 122

Trade Marks Act 1995 (Cth) - s 52 opposition: Grounds under ss 42(b), 44, 58, 59, 60 and 62A considered – application made in bad faith - opposition successful.

Background

1. This matter relates to oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark (‘the Trade Mark’) filed by Diesel Rocket Fuel Pty Ltd (‘the Applicant’). Relevant details of the opposed application are set out below.

Application No	1683291
Trade Mark	LITTER BUSTER
Filing Dates: (‘the Priority Dates’)	25.03.2015
Goods:	Class 9: Application software; Cards encoded to access computer software; Communication software; Communications processing computer software; Computer programmes (programs) and recorded software distributed online; Computer programs (downloadable software); Computer software; Computer software (programs); Computer software (recorded); Computer software adapted for use in the operation of computers; Computer software applications (downloadable); Computer software designed to estimate resource requirements; Computer software downloaded from the internet; Computer software for analysing address files; Computer software for authorising access to data bases; Computer software for business purposes; Computer software for communicating purposes between microcomputers; Computer software for communication between computer processes; Computer software for processing address files; Computer software for the analysis of defects; Computer software packages; Computer software products; Computer software programs; Computer software programs for database management; Data carriers for computers having software recorded thereon; Data communications software; Data processing software; Downloadable software applications (apps); Education software; Integrated software packages; Interactive computer software; Packaged software; Personal computer application software; Pre-recorded software; Process controlling software; Recorded computer software

1. The Trade Mark was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 August 2015. The City of Rockingham (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 2 October 2015. The Opponent filed a Statement of Grounds and Particulars (‘the Statement’) on 28 October 2015.  Thereafter the Applicant filed a Notice of Intention to Defend (‘NID’) on 25 November 2015.

2. The Opponent subsequently filed Evidence in Support as provided by the Trade Mark Regulations 1995 (‘the Regulations’). A copy was forwarded to the Applicant by this Office; however, it was returned marked ‘RETURN TO SENDER Left Address/Unknown’ on 8 April 2016.

3. At the request of the Opponent, the opposition was dealt with by way of written submissions. There has been no correspondence from the Applicant since it filed its NID.

4. Since the Applicant has received a copy of the Statement and has filed its NID, I am satisfied that it has been given an opportunity to participate in these proceedings and has been afforded procedural fairness under the Act and Regulations.

5. I heard the matter by way of written submissions in Canberra on 19 July 2017 as a delegate of the Registrar of Trade Marks. The Opponent relied on written submissions prepared by Marie Wong of Wrays Lawyers.

   Grounds of Opposition

6. The Opponent nominated the following grounds of opposition under the Act in the Statement, in the order shown:

   ·Section 58: Applicant not the owner of the Trade Mark

   ·Section 60: Trade Mark is similar to a trade mark which has acquired a reputation in Australia

   ·Section 42(b): Trade Mark is contrary to law

   ·Section 44: Identical etc. trade marks;

   ·Section 59 Applicant not intending to use the Trade Mark; and

   ·Section 62A: Application made in bad faith.

7. To succeed in its opposition the Opponent bears the onus of establishing at least one of the grounds on the ‘balance of probabilities’[1] based on the evidence before me.[2] As will become apparent, I have only found it necessary to address the Opponent’s s 62A ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

   [2] Cantarella Bros Pty Ltd  v Espresso Enterprises Pty Ltd [2014] ATMO 68, Hearing Officer Kirov at [34].

8. The time at which the grounds of opposition must be established is the date of filing of the application for registration.[3]

   [3] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   Evidence

9. The evidence consists of the following declaration:

Declarant	Position	Date Made	Annexures
Evidence in Support
Karin Strachin (‘Strachin Declaration’)	Manager, Strategy and Corporate Communications of Opponent	8.03.2016	Exhibits KS-1 to KS-76

Discussion

1. The Opponent is a local government body corporate as defined in section 2.5 of the Local Government Act 1995 (WA) and provides goods and services in the fields of litter reporting and waste removal and cleaning services to its rate-payers and the public at large under the trade marks LITTERBUSTERS and the following logo:[4]

   [4] Stracin Declaration, at [8].

2. The Opponent uses its trade marks in relation to a mobile telephone application that provides users with the ability to document and report litter, rubbish dumping and graffiti and other concerns to the Opponent. The Opponent also uses the trade marks in relation to waste removal services.[5]

   [5] Ibid.at [9]

3. The Opponent has used its trade marks in relation to waste removal services since July 2014, and in relation to the telephone application since November 2014.[6]

   [6] Ibid.at [10]

4. The Strachin Declaration details the development of the Opponent’s trade marks, its logo, and the seeking of a software developer to assist the Opponent in developing a smart phone application.[7]

   [7] Ibid.at [11] – [24]

5. On 17 July 2014, the Opponent entered into a contract with the Applicant for the development of the smart phone application.[8]

   [8] Ibid.at [25] – [32]

6. On 25 March 2015, the Applicant, without the knowledge and authorisation of the Opponent filed the application for the Trade Mark.[9]

   [9] Ibid.at [40]

7. The Strachin Declaration also details the dispute that followed between the Opponent and the Applicant. I will not repeat the details here, and will refer to relevant details as required in the remainder of my decision.

   Section 62A: Trade mark application made in bad faith

8. Section 62A provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

9. The Explanatory Memorandum to the Trade Marks Amendment Act 2006, (which introduced s62A), gives as non-exhaustive examples:

   a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they license or buy the trade mark; a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

10. In DC Comics v Cheqout Pty Ltd[10] (DC Comics) at [62], Bennett J summarised the relevant principles established in UK authorities and set out in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[11] (Fry (No 2)), that would be relevant in considering whether an application has been made in breach of s 62A, including:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge; the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

    [10] (2013) 101 IPR 334.

    [11] (2012) 94 IPR 551.

11. Bad faith will not be found easily given the serious nature of the allegation. However,   I note that in Sullivan v Civil Aviation Safety Authority[12] the Full Federal Court found that common law rules of evidence such as ‘Briginshaw test’ do not necessarily bind administrative decision makers. Even if it were, as discussed by Hearing Officer Kirov in Cantarella Bros Pty Ltd v Espresso Enterprises Pty Ltd:[13]

    the consequence of a finding adverse to the Applicant under s 62A would merely be that its bid to seek registration of the Opposed Marks failed. The allegation is not in any event that the Applicant has engaged in some kind of illegal or shameful behavior.

    [12] [2014] FCAFC 93

    [13] [2014] ATMO 68, at [34]

12. Based on the evidence filed by the Opponent, and for the reasons I shall refer to below, I am satisfied that this ground of opposition has been established.

13. While the Applicant has not filed any evidence to repudiate that of the Opponent, I do not assume that the Applicant necessarily accepts the Opponent’s evidence, and I again note that it did file a NID.

14. The exhibits to the Strachin Declaration provide a great deal of detail as to the correspondence between the Opponent and the Applicant throughout their business relationship. I am satisfied that I can give a great deal of weight to the evidence.

15. I am satisfied that the Strachin Declaration establish a business connection between the Applicant and the Opponent for the purposes of developing a smart phone application for the Opponent.

16. I am satisfied that at the time of making its application the Applicant was in a contractual arrangement to provide a smart phone application for the Opponent, and that any use of the Opponent’s trade marks was to be for the benefit of the Opponent and not itself.

17. The Trade Mark is substantially identical to the Opponent’s plain word mark. While the Opponent’s logo includes other material, I consider that that it would still be referred to by potential consumers as being the LITTERBUSTERS mark.

18. Further, I am satisfied that in light of the Applicant’s applying to register a word trade mark that is substantially identical to that of its client a reasonable and experienced observer would conclude that the application for the Trade Mark would be adverse to the Opponent’s trade mark rights in Australia and would fall short of acceptable commercial behavior.

19. Therefore, I am satisfied that the Opponent has established its ground under s 62A.

    Decision

20. I have found the Opponent has established the ground of opposition it raised pursuant to s 62A of the Act. As the Delegate of the Registrar I accordingly refuse to register the trade mark application number 1683291.

    Costs

21. The Opponent has sought its costs.  I see no reason to depart from the general rule that costs follow the event.  As the Opponent has established a ground of opposition, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations.

    Jock McDonagh

    Hearing Officer

    19 October 2017