Comet S.p.A. v Comet Cleaning Group Pty Ltd

Link copied
Case Copied 29 min read

TRADE MARKS ACT 1995



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

Re:Oppositions by Comet S.p.A. to registration of trade mark application numbers 2422225 – COMET CLEANING and 2422226 - COMET CLEANING (stylised) both in class 37 and both in the name of Comet Cleaning Group Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Spruson & Ferguson

Applicant: HWL Ebsworth Lawyers

Decision:

2025 ATMO 162

Trade Marks Act 1995 (Cth) – oppositions under s 52 – ss 42(b), 44, 58A, 60 and 62A pursued – no ground of opposition established – trade marks to proceed to registration.

Background

1. This is a decision in respect of oppositions under s 52 of the Trade Marks Act 1995 (Cth)[1] by Comet S.p.A. (‘Opponent’) to registration of the following trade mark applications (‘Applications’) filed on 22 January 2024 (‘Relevant Date’) in the name of Comet Cleaning Group Pty Ltd (‘Applicant’):

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

Number

Trade mark[2]

Specification[3]

2422225

COMET CLEANING

(‘Word Mark’)

Class 37: Building cleaning; Window cleaning; Office cleaning services; Industrial cleaning services; House cleaning services; Cleaning services; Cleaning of property; Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of factories; Cleaning of hospitals; Domestic cleaning; Mechanical and chemical cleaning services

2422226

(‘Stylised Mark’)

Class 36: Building cleaning; Window cleaning; Office cleaning services; Industrial cleaning services; House cleaning services; Cleaning services; Cleaning of property; Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of factories; Cleaning of hospitals; Mechanical and chemical cleaning services; Domestic cleaning services

[2] The Word Mark and Stylised Mark will be collectively referred to as the Applicant’s Marks.

[3] The specifications are virtually identical differing only in the use of ‘domestic cleaning services’ in the Stylised Mark and ‘domestic cleaning’ in the Word Mark. I shall therefore refer to the services of both marks as the Applicant’s Services.

  1. The Applications were examined and advertised as accepted for possible registration on 23 June 2024.

  2. On 5 August 2024, the Opponent filed Notices of Intention to Oppose. On 3 September 2024, the Opponent filed identical Statements of Grounds and Particulars (‘SGP’). The Applicant filed Notices of Intention to Defend on 20 September 2024.

  3. The Opponent filed Evidence in Support (‘EIS’) on both Applications on 20 December 2024, being identical declarations of Paolo Bucchi, Commercial Executive Officer of the Opponent dated 19 December 2024 with Annexures 1 to 13 including Confidential Annexures 8 and 13 (‘Bucchi’). The Applicant did not file Evidence in Answer.

  4. The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing. I am a…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Comet S.p.A. v Comet Cleaning Group Pty Ltd and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2025] ATMO 162
Decision Date

CaseChat Overview and Summary

This decision concerns an opposition by Comet Cleaning Group Pty Ltd (the Opponent) to the registration of trade marks by Comet S.p.A. (the Applicant). The Opponent argued that the Applicant had acted in bad faith by applying to register trade marks that were substantially identical or deceptively similar to its existing "COMET" mark, which it claimed to have been using extensively in Australia. The Opponent contended that the Applicant, by filing its applications, was aware of the Opponent's mark and therefore acted in bad faith.

The primary legal issue before the Hearing Officer was whether the Applicant's conduct in applying for registration of its trade marks constituted bad faith under section 62A of the relevant legislation. This required the Hearing Officer to consider both the subjective knowledge of the Applicant at the time of filing and an objective assessment of whether that conduct fell below acceptable commercial standards. The Hearing Officer was guided by established principles, including those from *Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)* and *DC Comics v Cheqout Pty Ltd*, which define bad faith as a combined subjective and objective test.

The Hearing Officer found that the Opponent had failed to provide persuasive evidence demonstrating the Applicant's awareness of the Opponent's "COMET" mark. Crucially, the Hearing Officer noted that even if awareness were assumed, mere knowledge of another's trade mark, without more, does not inherently constitute bad faith. The Opponent had not presented evidence to suggest the Applicant's actions were "unscrupulous, underhand or unconscientious." Consequently, the Hearing Officer concluded that the Opponent had not established the ground of opposition under section 62A.

The Hearing Officer ordered that the Applicant's trade marks could proceed to registration, subject to a stay of one month to allow for potential appeal. The Opponent was ordered to pay the Applicant's costs, with costs for one opposition being awarded in accordance with Schedule 8 of the Regulations and costs for the other opposition being awarded on a reduced basis.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’):The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[32][32] [2012] FCA 81, [167].53. In DC Comics v Cheqout Pty Ltd,[33] Bennett J noted that[33] [2013] FCA 478, [62].Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the 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 standards54. In summary, the SGP states that the Opponent has been using its COMET Mark extensively in Australia in relation to goods which are closely related to the Applicant’s Services. As a result, the Applicant would have been aware of the COMET Mark at the time of filing the Applications and has therefore acted in bad faith by applying to register a trade mark which is substantially identical or deceptively similar to the Comet Mark. 55. The Opponent has not provided any compelling evidence to demonstrate that the Applicant’s filing of the Applications falls below acceptable commercial standards. In particular, the Opponent has not provided any evidence that the Applicant was aware of the Opponent’s use of the Comet Mark. In this instance, even if I were to accept that the Applicant was aware of the Opponent’s use of the Comet Mark, this alone does not provide a sufficient basis to conclude that the Applications were made in bad faith. Awareness or mere knowledge before the Relevant Date of another person’s trade mark, without more, does not in itself constitute a basis for a finding of bad faith’.[34][34] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).56. The Opponent has not provided any persuasive evidence that the Applicant’s filing of the Applicant’s Marks in connection with the Applicant’s Services was ‘unscrupulous, underhand or unconscientious’.[35] As a consequence, the Opponent has not established the ground of opposition under s 62A.[35] Fry Consulting (n 32), [166].Decision I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, the Applicant’s Marks may proceed to registration not less than one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that registration of the Applicant’s Marks shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.Costs59. The Opponent has sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. Accordingly, with respect to the opposition to trade mark 2422225, I award costs against the Opponent in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2422226, I award reduced costs against the Opponent under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[36][36] [2001] ATMO 78 (Hearing Officer Williams).Anne MakrigiorgosHearing OfficerDelegate of the Registrar of Trade Marks25 August 2025Annexure A

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.