Conga Foods Pty Ltd v Cobram Estate Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Conga Foods Pty Ltd to registration of trade mark application number 2301038 (class 29) - COBRAM ESTATE Australia's most loved extra virgin olive oil (word) - in the name of Cobram Estate Pty Ltd

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Russell Waters of Phillips Ormonde Fitzpatrick

Applicant: Marcus Fleming, of Counsel, instructed by Natasha Burns and Rob Vienet of Allens Patent & Trade Mark Attorneys

Decision:

2025 ATMO 36

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 43 and 62A – none established – trade mark may proceed to registration.

Background

On 15 September 2022 (‘Relevant Date’) Cobram Estate Pty Ltd (‘Applicant’) filed an application to register trade mark 2301038 under the Trade Marks Act 1995 (Cth),[1] details of which I extract below:
Priority date: 15 September 2022
Trade mark: COBRAM ESTATE Australia's most loved extra virgin olive oil (‘Trade Mark’)
Goods: Class 29: Olive paste; Olives, preserved; Prepared olives; Processed olives; Extra virgin olive oil for food; Fish in olive oil; Olive oil; Olive oil dip; Olive oil for food; Edible oils; Vegetable oils (edible); Cooking oils; Blended vegetable oils; Edible oils for use in baking; Edible oils for use in barbecuing; Edible oils for use in basting foodstuffs; Edible oils for use in cooking foodstuffs; Edible oils for use in frying; Edible oils for use in grilling; Edible oils for use in roasting; Food spreads being a blend of edible oils and edible fats (‘Applicant’s Goods’)
Endorsements: Evidence and/or other circumstances provided under subsection 41(4).
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and acceptance was advertised on 16 February 2023.
On 23 February 2023 Conga Foods Pty Ltd (‘Opponent’) filed its Notice of Intention to Oppose. On 20 March 2023 the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 5 June 2023, the Applicant filed its Notice of Intention to Defend.
On 5 September 2023, the Opponent filed its Evidence in Support (‘EIS’), consisting of a declaration of Kristen Moxey, Marketing Manager for the Opponent, dated 5 September 2023, with Exhibits KM-1 to KM-8 (‘Moxey-1’).
On 10 November 2023, the Applicant filed its Evidence in Answer (‘EIA’) being a declaration of Elly Royston, an Australian Legal Practitioner at Burns IP Law Pty Ltd, dated 1 November 2023, with Exhibits ER-1 to ER-8 (‘Royston’) and a declaration of Brent Crosbie, Head of Sales and Marketing at Cobram Estate Olives Ltd, dated 7 November 2023, with Exhibits BC-1 to BC-14 (‘Crosbie-1’).
On 16 January 2024, the Opponent filed its Evidence in Reply, consisting of a declaration of Kristen Moxey, dated 16 January 2024, with Exhibit KM-9 (‘Moxey-2’).
On 15 February 2024, the Applicant requested to be heard. On 21 February 2024 the Opponent requested to be heard.
On 31 October 2024, the Applicant filed a request referring to reg 21.19 of the Regulations for the Registrar to take into account a further declaration of Brent Crosbie, dated 30 October 2024, with Exhibit BC-15 (‘Crosbie-2’). The Applicant also filed submissions about whether I should give weight to such material. On 6 November 2024, the Opponent filed written submissions on the issue of whether I should give weight to Crosbie-2.
On 12 November 2024, the Opponent filed written submissions regrading the substance of the opposition. On 19 November 2024, the Applicant filed written submissions (‘Applicant’s Submissions’).
On 26 November 2024, I heard the matter by teleconference. Russell Waters of Phillips Ormonde Fitzpatrick appeared on behalf of the Opponent. The Applicant was represented by Marcus Fleming, of Counsel, instructed by Natasha Burns and Rob Vienet of Allens Patent & Trade Mark Attorneys. I am to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).
Onus and grounds
The Opponent has the onus of establishing one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP pursued grounds of opposition under ss 42(b), 43 and 62A.
Evidence
EIS
Moxey-1 declares that:
Extra Virgin Olive Oil (“EVOO”) is cold extracted without the use of heat or chemicals, otherwise known as ‘cold pressed’. It is considered the highest grade of olive oil and must meet strict chemical and sensory criteria. Olive oil is considered Extra Virgin if it is fruity, has no defects and has a free fatty acid level of 0.8 percent or lower. Virgin olive oil is also cold pressed, but may have some minimal defects and has a fatty acid level of between 0.8 percent and 2.0 percent. Olive oil commonly referred to as ‘Classic/Traditional Olive Oil’ or ‘Light Taste Olive Oil’, is a blend containing a small amount of Virgin or Extra Virgin Olive Oil along with olive oil that has been refined. The process of refining extracts fruit compounds from virgin olive oils to remove colour, aroma and acidity of the fruit, leaving behind the pure fat of the olive. Olive Oil has a more subtle flavour and aroma than EVOO.
The relevance of Moxey-1 is otherwise mainly in its Exhibits, which I summarise below.
Exhibit KM-1 to Moxey-1 consists of a screen capture of advertising appearing on a website said to be that of the Applicant with the following text:
I attach a replication of the screen capture website at Schedule 1 to these written reasons. Moxey-1 declares that the asterisk (*) in the statement is linked to the following note at the bottom of the webpage:
*Based on IRI AU Weighted Grocery Scan Data (MAT to 16/01/22) Cobram Estate is the #1 Extra Virgin Olive Oil.
Exhibit KM-2 is a graph showing a data scan document at the date referred to in the footnote for five leading brands of EVOO. On a dollar basis the total retail value of Applicant’s EVOO sold appears to be more than that of the Opponent at some points. However, on the basis of litres sold, the Opponent’s EVOO was more than that of the Applicant. Another study shown at Exhibit KM-3 to Moxey-1, dated nearer to the Relevant Date, again reflects a similar total retail sales value and closer litre comparator between the parties.
Exhibit KM-4 is a graph comparing quarterly sales of the Applicant’s EVOO and the Opponent’s EVOO between February 2020 and February 2023. There is some fluctuation in sales. However, it appears the Opponent sells a higher volume in litre terms for much of the quarterly periods shown. Exhibit KM-5 shows similar for five brands and that the Applicant was outsold by at least one, sometimes two other brands.
Exhibit KM-6 are webpages of the Choice Consumer Group relating to a test of 25 olive oils to determine whether they meet ‘extra virgin’ standards. The test is said to reveal that a brand called Cockatoo Grove Organic Australian Extra Virgin Olive Oil received the highest score and best tasting olive oil. Exhibit KM-7 to Moxey-1 shows data from the website operated by Canstar Blue relating to olive oil concerning value for money, packaging convenience and overall satisfaction.
Surveys conducted by BDA Marketing Planning Pty Ltd are at Exhibit KM-8 (‘BDA Surveys’). The BDA Surveys are said to reveal the top three motivations of purchasers for cooking oils.
EIA
The Applicant is a large producer and distributor of EVOO. The Applicant sells several brands of EVOO, including one line under the sign ‘Cobram Estate’. These are said to be sold at major supermarket chains in Australia.
Royston offers examples of advertising which the declarant says shows that consumers are familiar with and are often exposed to vague claims in marketing and advertising.
Various examples of trade marks appearing on the Register of Trade Marks which contain the words ‘world’s most’, ‘Australia’s most’ and ‘Australia’s favourite’ are also extracted in Royston.
Crosbie-1 in summary seeks to respond to various assertions made in the EIS which assert that the Applicant is not in fact the market leader for EVOO. Crosbie-1 asserts that the Opponent has not defined what metrics would equate to being ‘Australia's most loved’ EVOO and that the words ‘most loved’ amount to a subjective term not capable of being objectively measured.
Crosbie-1 also asserts that Cobram Estate is consistently the market leader in EVOO in Australia as measured by empirical third-party data. In furtherance of this Crosbie-1 provides various market data which I do not summarise here.
EIR
Moxey-2 contains various statements made in relation to the accuracy of the figures provided in the EIS and the EIA. There are also statements about the volatility of market positions of the parties and other traders in the EVOO industry. I need not summarise these in full.
Moxey-2 declares that:
I am aware that Cobram Estate have a strong market position in relation to flavoured infusions made with extra virgin olive oil. See, for example, the “Cobram Estate Roasted Onion Infused Extra Virgin Olive Oil” appearing in Exhibit BC-11 to the Crosbie Declaration which is just one example of a range of 12 different flavoured infusion products sold by the Applicant. These infusions are typically sold in small 250ml bottles, at a higher price point than extra virgin olive oil per se, and because of the range of different flavours, consumers are likely to purchase more than one different flavoured infusion for use in the home.
Although they are labelled as “Australian Extra Virgin Olive Oil”, these infusions do not fall within the definition of extra virgin olive oil set out by the International Olive Council (“IOC”); rather they are products “made with” extra virgin olive oil. The IOC definitions of virgin olive oils and extra virgin olive oil is set out at paragraphs 2.1.1 and 2.1.1.1 (i) of the IOC Trade Standard Applying to Olive Oils and Olive Pomace Oils. The Trade Standard also provides at paragraph 5.1 that no food additives to virgin olive oils are permitted. See Exhibit KM-9 to the present declaration.
Whilst infusions made with extra virgin olive oil are not themselves extra virgin olive oil, the inclusion of goods made with extra virgin olive oil in the definition provided by Cobram Estate Olives Ltd to Circana could explain the difference between their figures and those in my earlier declaration, (which did not include infusions). The smaller bottles, range of different flavours and higher price points applying to infusion products are consistent with the high unit sales numbers and overall dollar values reported in the Circana data.[4]
[4] Moxey-2, [6]-[8].
Preliminary Consideration
Crosbie-2 was filed outside the periods for evidence. Therefore, it was filed out of time. Material filed out of time may be considered by the hearing officer pursuant to reg 21.15(4). Part 51.2.5 of the Trade Marks Office Manual of Practice and Procedure notes that a party must make a compelling case for giving such material weight when deciding the opposition. Important considerations are the nature and significance of the evidence put forward, including whether the material is critical to the outcome and whether that material is of high probative value.[5] For reasons which will become apparent, the material in Crosbie-2 is not crucial and it does not change the outcome in this matter.
[5] Fed Square Pty Ltd v Federation IP Pty Ltd [2015] ATMO 42, [50] (Hearing Officer Wilson).
Accordingly, I give Crosbie-2 no weight in deciding this matter.
Consideration
Section 43
Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish the ground of opposition under s 43, the Opponent must show that there is a connotation within the Trade Mark and, because of this connotation, the use of the Trade Mark in relation to the Goods would be likely to deceive or cause confusion. Section 43 is concerned with a connotation arising from the Trade Mark itself.
In McCorquodale v Masterson, Kenny J observed that:
The word “connotation” is defined in The Oxford English Dictionary (Oxford, 2^nd ed, 1989) as meaning:
1. The signifying in addition; inclusion of something in the meaning of the word besides what it primary denotes; implication.
...
b. That which is implied in a word in addition to its essential or primary meaning.[6]
[6] [2004] FCA 1247, [26].
In Pfizer Products Inc v Karam, Gyles J clarified that a connotation ‘is a secondary meaning implied by the mark’.[7] The connotation of a trade mark differs from its denotation and the latter refers to ‘what the trade mark must be for the purposes of the [Act]’.[8] That is, a badge of origin for the applicant’s goods and/or services. As was explained in Primary Health Care Limited v Commonwealth of Australia:
The connotation with which s 43 is concerned is a meaning secondary to that which is denoted by the subject of the application to the Registrar. In other words, the section is concerned with whether the mark the subject of the application (or a sign contained in the mark) connotes something other than a connection in the course of trade between the relevant goods or services and the person who applied (or intended to apply) it to those goods or services.[9]
[7] [2006] FCA 1663, [53].
[8] [2017] FCAFC 174, [10] (Greenwood J) (‘Primary Health Care’)
[9] Ibid, [411] (Rangiah J) (with my emphasis added).
The operative test is a whether there is a secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the specification for the Trade Mark. It is only if there is a real and tangible danger that the trade mark would be likely cause the consumer’s expectations to be false and result in confusion as to the inherent nature of the goods themselves, that s 43 would be established.[10]
[10] FreshFood Holdings Pte Limited v Pablo Enterprise Pte Ltd [2024] ATMO 94, [60] (Hearing Officer Smith).
The Applicant refers me to FreshFood Holdings Pte Limited v Pablo Enterprise Pte Ltd where the hearing officer noted that:
Section 43 of the Act is not intended to preclude all marks that contain descriptive material that only describe a subset of the goods or services for which registration is sought. Such marks are not marks where there is a real and tangible danger that the trade mark would cause consumer’s expectations to be false and result in confusion.[11]
[11] Ibid, [64].
Where a trade mark consisting of multiple elements has a connotation which is deceptive or confusing by a single element in the trade mark, the question there will be whether the remaining elements of the trade mark dispel the connotation.[12]
[12] Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428, [86] (Bennett J).
Use in connection with non-EVOO goods
I turn to consider one alleged connotation as being the basis for the s 43 ground opposition.
By its SGP the Opponent states:
…the goods covered by the application are not limited to goods containing or comprising only extra virgin olive oil
The Opponent makes the following submissions in respect of s 43:
… If applied to the claimed goods other than extra virgin olive oil, the mark connotes that the goods are extra virgin olive oil, or that the goods at least contain extra virgin olive oil. Without a limitation to goods being or containing extra virgin olive oil, use of the Opposed Mark is likely to deceive or cause confusion when used on goods that do not contain extra virgin olive oil
The Applicant summarises the Opponents case as being that, ‘…it may be possible to conceive of ways to use the Trade Mark in connection with non-EVOO goods that might be misleading or deceptive.’[13] The Applicant also notes that there are strict food labelling requirements in Australia and submits that I must assume that the Applicant would comply with the strict requirements when labelling products. I note that there is little evidence of the content of those requirements before me.
[13] Applicant’s Submissions, [49].
The Applicant also submits that traders commonly use their reputation in one product in the context of advertising as a form of brand extension, levering the former in the context of promoting another product. Such a thing is sometimes termed ‘product line expansion’ or ‘brand extension’. The Applicant expands on this submission and says that a consumer viewing the Trade Mark would be likely to understand the words ‘Australia’s most loved extra virgin olive oil’ as speaking of the original product line only and not necessarily connoting anything about the Applicant’s Goods.
The Macquarie Dictionary defines ‘extra virgin’ as, ‘of or relating to an oil, such as olive oil, peanut oil, etc., extracted by cold pressing rather than by chemical treatment, and therefore of the highest quality.’ The evidence also demonstrates that ‘extra virgin’ olive oil is a specific type of these goods having a higher quality, having been manufactured by a specific process.
On my assessment of the whole Trade Mark, the inclusion of the words ‘Australia’s most loved extra virgin olive oil’ is likely to connote to some consumers that the Applicant’s Goods wholly consist of, or contain as an ingredient, extra virgin olive oil (‘Connotation-1’). The words ‘Cobram Estate’ and/or ‘most loved’ do not dispel this connotation. The sign ‘Cobram Estate’ appears to be the main identifying element of the trade source for the Applicant’s Goods, with other words connoting things about the nature of the Applicant’s Goods.
The Opponent must also demonstrate that because of Connotation-1, the use of the Trade Mark in relation to the Applicant’s Goods would be likely to deceive or cause confusion. The expression ‘likely to deceive or cause confusion’ requires that the ‘probability of deception or confusion must be finite and non-trivial’ and that there ‘must be a “real tangible danger of its occurring”’.[14] I also note that ‘the threshold for confusion is not high’.[15] For these purposes, confusion can be established even if it does not ‘result in any deception or confusion that induces a sale or persists until the moment of sale’.[16]
[14] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [43] (French J).
[15] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[16] Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, [115] (Nicholas J).
The Opponent notes that the scope of the language for the Applicant’s Goods would include non-EVOO goods. I agree with this submission. However, the Applicant submits that the language of the Applicant’s Goods conceivably contains goods which are wholly, or in part, EVOO. On a commercial reading of the language of the specification of the Applicant’s Goods, each of the Applicant’s Goods include notionally EVOO. Therefore, Connotation-1 is not necessarily in direct contradiction of the Applicant’s Goods listed in the specification. What I must consider is whether there is a ‘real and tangible danger’ that use would deceive or cause confusion. Whilst some of the scope of the language of the Applicant’s Goods is broad, with goods such as various types of edible oils which contains many types of oils which are not EVOO, I have no compelling reason to assume that the use of the Trade Mark would be necessarily used on anything other than goods which are wholly olive oil or have as an ingredient olive oil.

I otherwise note that, a person purchasing, for example, ‘olives’, ‘fish in olive oil’ or ‘preserved olives’ is not likely to be deceived or confused because of Connotation-1. For those goods, consumers are likely to view the relevant words speaking of a main or original product line sold under the sign ‘Cobram Estate’. Additionally, I note that the evidence of the Opponent does not demonstrate that the Applicant would likely use the Trade Mark in a way which would deceive or cause confusion. I also have no reason to find that the Applicant would use the Trade Mark in relation to the Applicant’s Goods, for example on non-EVOO goods, in such a way that it would deceive or cause confusion.
It is the Opponent who bears the onus in this matter. I am not satisfied on the balance of probabilities that use of the Trade Mark on any of the Applicant Goods, presents a ‘real tangible danger’ of consumers being misled as to what they are purchasing. Overall, I am not satisfied that use of the Trade Mark would deceive or cause confusion as a result of Connotation-1.
Accordingly, the ground of opposition under s 43 based on Connotation-1 has not been established.
Australia’s ‘most loved’
I must also consider the s 43 of opposition in respect of the other connotation which the Opponent particularises. The SGP states:
The Opposed mark connotes that the goods to which it is applied are “Australia’s most loved extra virgin olive oil”. This mark is likely to deceive or cause confusion, … because it indicates that the goods to which it is applied are Australia’s “most loved” goods of that kind, which was not the case at the time the application was filed and will probably not be the case in the future…
The words of the Trade Mark, including the words ‘most loved’, as appearing in the Trade Mark appear to connote that persons in Australia have a strong affection and/or predilection or overall the strongest affection for the Applicant ‘s EVOO under the Cobram Estate brand. How one would objectively measure ‘love’ in this context is not clear. At the hearing, the representatives of the parties spent considerable time on submissions as to how one would measure whether the EVOO of the Applicant is Australia’s ‘most loved’. I do not accept that the ordinary consumer would find a connotation that the EVOO goods of the Applicant are the most purchased by volume or the most purchased by volume in litres. Rather, I do accept that there is a connotation that the Applicant’s Goods are ‘Australia’s most loved’ (‘Connotation-2’) meaning that they are the most liked by Australian consumers in some way. Connotation-2 does not connotate that the Applicant’s EVOO are the most purchased by any particular measurement, only that they enjoy a high regard and affection by some Australian consumers.
The Opponent submits that it has additional evidence which demonstrates the heightened likelihood of deception or confusion. It relies upon Exhibit KM-1 to Moxey-1, which it says demonstrates that deception or confusion might occur because of the manner in which the Applicant uses the Trade Mark. I do not agree that this evidence, or any of the other evidence, supports such a contention. The data and words used on the website in the screen capture at Exhibit KM-1 do not demonstrate use of the Trade Mark as applied for and as such do not support the contention asserted. The focus of my decision should be the Trade Mark and use thereof. Nor does Exhibit KM-1 speak to how the Applicant would be likely to use the Trade Mark in relation to goods other than EVOO. Even so, I am not satisfied that the overall conduct of adding the reference to data in Exhibit KM-1 would make it more likely that a consumer would see the claim in the Trade Mark about the Applicant’s EVOO being ‘Australia’s most loved’ as an objective statement. The statement remains one which consumers would be likely to view are subjective. I also note there is no example in the EIS or EIR of how the Applicant is likely to use of the Trade Mark in relation to non-EVOO goods in a way which would be likely to deceive or cause confusion. Accordingly, the evidence in this regard does not assist the Opponent in respect of the issue of the Applicant’s olive oil being the ‘most loved’.
Statements being puffery or which are exaggerated will generally not be misleading or deceptive. Puffery generally refers to statements of opinion and not statements of fact.[17] The public is accustomed to the puffing of products in, for example, advertising.[18] I am satisfied that what I am asked here to consider in terms of the Applicant’s Goods being the ‘most loved’ is a statement of opinion which amounts to ‘mere puffery’. These kinds of statements, including the statement regarding the Applicant’s EVOO being the ‘most loved’, are not likely capable of objective proof or that that they would being taken as a statement of fact, and without more would amount to mere exaggerations.
[17] Sabre Corporation Pty Ltd v Laboratories Pharm-A-Care Pty Ltd [1995] FCA 1130, [35] (Beazley J).
[18] Re Stuart Alexander and Co (Interstate) Pty Limited and Douwe Egberts Koninklijke Tabaksfabriek-Koffiebranderijen-Theehandel NV v Blenders Pty Limited [1981] FCA 152 (Lockhart J).
I am not satisfied on the balance of probabilities that use of the Trade Mark is likely to deceive or cause confusion because of Connotation-2.
Accordingly, the ground of opposition under s 43 in respect of Connotation-2 has not been established.
Section 42(b)
Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.
In this respect, the Opponent relies on ss 18(1) and 29(1)(a) of the Australian Consumer Law (‘ACL’) as found in the Consumer Competition Act 2010 (Cth).
These sections provide that:
Section 18(1): A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29(1): A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: (a) make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use
By its SGP the Opponent alleges
The Opposed mark suggests that the goods to which it is applied are “Australia’s most loved extra virgin olive oil”. This mark is likely to mislead or deceive in breach of the Australian Consumer Law, both because it indicates that the goods to which it is applied are Australia’s “most loved” goods of that kind, which was not the case at the time the application was filed and will probably not be the case in the future, and because the goods covered by the application are not limited to goods containing or comprising only extra virgin olive oil.
Justice Rangiah noted in Primary Health Care Limited v Commonwealth of Australia that:
Section 42(b) of the TMA requires that the use of a trade mark “would be” contrary to law. It is not enough for a party opposing registration to show that s 18 of the ACL or s 52 of the TPA might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[19]
[19] Primary Health Care (n 8) [411].
I am not satisfied that use of the Trade Mark is likely to for example lead a consumer into error, mislead or deceive. For similar reasons to those concerning the ground of opposition under s 43, I am not satisfied that the use of the Trade Mark in relation to the Applicant’s Goods would be likely to mislead or deceive under s 18 and/or s 29 of the ACL.
Accordingly, the ground of opposition under s 42(b) has not been established.
Section 62A
Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. For this, I must determine whether, ‘in all the particular circumstances, the [Applicant’s] knowledge was such that [their] decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[20] This question is determined as at the Relevant Date.
[20] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J).
In DC Comics v Cheqout Pty Ltd, Bennett J noted that:
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 standards.[21]
[21] [2013] FCA 478, [62].
In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:
The onus of demonstrating “bad faith” falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of “balance of probabilities”. That said, the allegation of the allegation of “bad faith” is a very serious one and a finding of bad faith should not be taken lightly.[22]
[22] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
By its SGP the Opponent submits
The opposed mark contains an assertion that the goods to which it is to be applied are “Australia’s most loved extra virgin olive oil”. At the time of filing the application the Applicant knew or ought to have known that the Cobram Estate brand of extra virgin olive oil was not in fact “Australia’s most loved” brand of extra virgin olive oil.
The Opponent also makes the following submissions in respect of s 62A:
At the time of filing the present application, (15 September 2022) the Applicant was aware that its claim made in the Opposed Mark that Cobram Estate was “Australia’s most loved extra virgin olive oil” was based on sales data that showed that, at that time, another brand had higher volume sales that Cobram Estate: see Exhibit KM-3. The same was true for sales data from 16 January 2022 which was referred to on the Applicant’s website as the basis for the claim (see Exhibits KM-1 and KM-2).
The Opponent’s evidence does not support the assertions made in the SGP regarding the ground of opposition under s 62A. The Opponent’s submission appears to be that an appellation of puffery in a trade mark in this context would be somehow underhanded. In all the circumstances I am not satisfied that it would so be. Ordinary traders would expect that they and other traders are able to make those kinds of connotations in a trade mark. Consumers are also used to seeing brand and product line extensions.
In the absence of any evidence of conduct falling short of reasonable expectations, I am not satisfied that the application for the Trade Mark was made in bad faith.
Accordingly, I am not satisfied that the ground of opposition under s 62A has been established.
Decision and costs
Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, 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.
I am not satisfied that any of the grounds of opposition have been established.
If the Registrar is served with a notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Both parties have requested costs. It is normal for costs to follow the event. I award costs against the Opponent in accordance with Schedule 8 to the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
25 February 2025
Schedule 1

[2025] ATMO 36

25 February 2025