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

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.