City of Rockingham v Diesel Rocket Fuel Pty Ltd

The City of Rockingham (the Opponent) opposed the registration of a trade mark application filed by Diesel Rocket Fuel Pty Ltd (the Applicant). The dispute arose from the Applicant's registration of a trade mark for a mobile telephone application and waste removal services, which the Opponent alleged was filed in bad faith. The matter was heard by Jock McDonagh, a Hearing Officer acting as the Delegate of the Registrar.

The primary legal issue before the court was whether the Applicant's trade mark application was made in bad faith, pursuant to section 62A of the relevant Act. This required the court to consider the subjective knowledge of the Applicant at the time of filing and objectively assess whether their conduct fell below acceptable commercial standards. The Opponent contended that the Applicant had developed the mobile application in collaboration with them and subsequently filed for the trade mark without their knowledge or authorisation, thereby acting in bad faith.

The Hearing Officer applied the principles established in cases such as *DC Comics v Cheqout Pty Ltd* and *Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)*, which define bad faith as a combined subjective and objective test. This involves examining the applicant's knowledge at the time of application and determining if their behaviour, in light of that knowledge, fell short of acceptable commercial standards as judged by reasonable and experienced persons in the field. The evidence presented indicated that the Applicant had entered into a contract with the Opponent for the development of the application and then proceeded to file for the trade mark registration without the Opponent's consent.

Consequently, the Hearing Officer was satisfied that the Opponent had established its ground of opposition under section 62A. The trade mark application was refused registration, and costs were awarded against the Applicant in favour of the Opponent.