Daintree Saltwater Barramundi Fish Farms Pty Ltd v Mainstream Aquaculture Intellectual Property Pty Ltd

[2025] ATMO 70

TRADE MARKS ACT 1995

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

Re:Opposition by Daintree Saltwater Barramundi Fish Farms Pty Ltd to registration of trade mark application number 2176813 (class 29) – INFINITY BLUE DAINTREE BARRAMUNDI - in the name of Mainstream Aquaculture Intellectual Property Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Len Hickey of Kelly Hazell Quill Pty Ltd

Applicant: Clare Cunliffe of Counsel instructed by Scott La Rocca and Mason Fennessy-Kent of HWL Ebsworth Lawyers

Decision:

2025 ATMO 70

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 60, 61 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Daintree Saltwater Barramundi Fish Farms Pty Ltd (‘Opponent’) to registration of the trade mark detailed below filed in the name of Mainstream Aquaculture Intellectual Property Pty Ltd (‘Applicant’):

   Trade mark: INFINITY BLUE DAINTREE BARRAMUNDI (‘Trade Mark’)

   Number:2176813

   Filing date:7 May 2021 (‘Relevant Date’)

   Specification: Class 29: Barramundi; wild caught barramundi; farmed barramundi; frozen barramundi; preserved barramundi; chilled foods consisting principally of barramundi; prepared meals, predominantly of barramundi; seafood-based stock being predominantly based on barramundi; barramundi extracts  (‘Applicant’s Goods’)

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of acceptance of the application for possible registration, the Opponent filed a Notice of Intention to Oppose on 21 October 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 22 November 2021 (which was subsequently rectified and amended).  The Applicant filed a Notice of Intention to Defend on 10 June 2022.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support on 19 September 2022, followed by the Applicant’s evidence in answer on 20 December 2022 and concluding with the Opponent’s evidence in reply on 6 March 2023.

4. Once the time for filing evidence had ended, the parties were able to request a hearing.  Ultimately both parties requested an oral hearing.  Prior to a hearing date being set, the parties entered into a cooling off period.  Once the cooling off period expired, this matter was set down for a hearing on 25 March 2025 and the parties each filed a written summary of submissions.  At the hearing, Len Hickey assisted by Alannah Rodi both of Kelly Hazell Quill Pty Ltd made oral submissions on behalf of the Opponent (observed by Trevor Mark Hober of the Opponent).  Clare Cunliffe of Counsel, instructed by Scott La Rocca and Mason Fennessy-Kent of HWL Ebsworth Lawyers (and observed by Boris Musa and Jess Tale of the Applicant), made oral submissions on behalf of the Applicant.  I make my decision based on the aforementioned documents and oral and written submissions of the parties.

   Grounds, onus and Relevant Date

5. The Opponent’s SGP nominates grounds of opposition under ss 60, 61 and 62A.

6. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard on 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) (‘Food Channel’).

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   and Edelman JJ).

7. The date at which the rights of the parties are to be determined is 7 May 2021 being the priority date and filing date of the application.

   Evidence

8. The following evidence was filed in the proceedings:

9.     Declarant and Position	Date	Exhibits/Annexures
EIS
Trevor Mark Hober, Director of the Opponent (‘Hober’)	16 September 2022	A to G
EIA
Boris Musa, Managing Director and Chief Executive Officer of the Applicant (‘Musa’)	16 December 2022	BM-1 to BM-16
EIR
Trevor Mark Hober (‘Hober 2’)	3 March 2023	H to Q

Late evidence

1. On 13 March 2025 with the written summary of its hearing submissions, the Opponent filed a further declaration of Trevor Mark Hober made on 20 February 2025 with Exhibits TMH-1 to TMH-15 (‘Hober 3’).  Hober 3 was initially filed in the opposition by the Applicant to the Opponent’s application number 2222941 (seeking registration of ‘Daintree Salt Water Barramundi’ in class 29).  In its written hearing submissions, the Opponent advised that, ‘[W]hile the Opponent does not rely on Hober 3 in order to make good its case in the present opposition, the Registrar may wish nonetheless to be informed of the matters in Hober 3 as the Registrar reasonably believes to be appropriate pursuant to Reg 21.15(4)’.

2. I wrote to the Opponent on 14 March 2025 advising that the Opponent needed to pay the requisite fee if I was to consider whether or not Hober 3 should be considered in these proceedings.  The Opponent subsequently paid the fee and at the Hearing argued that there is no prejudice to the Applicant in taking Hober 3 into account as the Applicant is aware of this evidence and that Hober 3 provides probative information relevant to the s 60 ground of opposition.

3. The Applicant objects to the consideration of Hober 3 on the basis that the Applicant has not had an opportunity to respond to matters raised in that declaration, allowing the material to be considered is contrary to the broader purpose of the relevant ‘Raising the Bar’ amendments in reducing delays in the resolution of trade marks applications and the Opponent does not contend that the information is likely to have an effect on the outcome of the case but rather suggests it is not crucial.

4. Regulation 21.15(4) provides that the Registrar is not bound by the rules of evidence, but may be informed on any matter in a way that she believes to be appropriate.  However, evidence filed out of time will only be possibly considered where the party filing the evidence has paid the relevant fee and made a compelling case in favour of it being considered.  Important factors to consider in deciding whether there is a compelling case for the late evidence to be given weight includes:

   ·Why the evidence was filed after the due date

   ·If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier

   ·What the evidence shows

   ·Why that information is crucial to the delegate’s decision

   ·Why it is in the public interest to have the information considered

   ·What is the balance of convenience for the parties if the information is considered.​​​​​​​[4]

   [4] Trade Marks Manual of Practice and Procedure Part 51.2.5.

5. The Opponent has not explained why the information in Hober 3 was filed at a very late stage of the proceedings and not filed earlier.  Further, whilst the Opponent contends that the information in Hober 3 is relevant to the s 60 ground of opposition, it does not argue that the information is crucial to my decision.  I am not satisfied that the information is crucial nor, having regard to the other factors, that it is appropriate to have regard to Hober 3.  Accordingly, I give Hober 3 no weight in deciding this matter.

   Opponent’s evidence

6. Hober declares that the Opponent owns and operates a Barramundi farm on the Daintree River in tropical north Queensland (‘Opponent’s Farm’) which has produced Barramundi and related fish products (‘Opponent’s Goods’) for over 17 years under the following marks:

TM number	Trade mark	Priority date	Goods
2222941	Daintree Saltwater Barramundi (‘Opponent’s Word Mark’)	3 November 2021	Class 29:  Farmed fish; Farmed fish products; Fish (not live); Fish products; Fresh fish (not live); Frozen fish; Frozen fish products; Prepared foods consisting principally of fish; Prepared meals consisting principally of fish; Preserved fish; Processed fish; Food products consisting principally of fish; Food products derived from fish; Food products made of fish; Foods made from fish Class 31:  Live fish
2222942[5]	(‘Opponent’s Logo Mark’)	3 November 2021

[5] This registration is subject to the following endorsements: ‘It is a condition of registration that the trade mark will only be used in respect of BARRAMUNDI sourced from the DAINTREE, AUSTRALIA.’ And ‘Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.’

(collectively ‘Opponent’s Marks’).

1. Hober claims that the Opponent has acquired a reputation in the Opponent’s Marks as a result of the continuous use and promotion of these marks since 2004 in relation to premium quality fish and fish products.  In support of this claim, the Opponent provides details of its annual sales revenue from 2017 to 2022, samples of its product information sheet used to promote the Opponent’s Goods (‘Opponent’s Product Sheet’) and a copy of an article about the Opponent’s farm published on ‘Broadsheet’ in November 2018 (‘Opponent’s Article’).  Hober also attests that the Opponent’s Goods are consistently recognised for their high quality by receiving awards including 17 medals from the Sydney Royal Fine Food Show every year since 2006 (‘Opponent’s Awards’).

2. According to Hober, the Applicant is part of the Mainstream Aquaculture group (‘MA Group’) which produces Barramundi on farms in Wyndham, Victoria and Innisfil /Etty Bay in North Queensland and sells its Barramundi under the trade mark INFINITY BLUE.  In May 2021, the MA Group announced that it had purchased a prawn farm at Mossman, near Port Douglas, Queensland which it intended to convert into a Barramundi operation.

3. Hober makes various submissions about the Applicant’s intentions to use the Trade Mark for goods not produced in the Daintree region and claims that the Opponent does not own or operate a Barramundi farm within the Daintree region. 

4. Hober declares that the Opponent and Applicant had past discussions regarding the Applicant purchasing the Opponent’s Farm, business and the Opponent’s Marks but were unable to agree on a price. 

5. Hober 2 is primarily focused on the location of the Applicant’s farm and whether it is situated in the Daintree region.  The remainder of Hober 2 consists of submissions and comments on the Applicant’s evidence particularly various business name registrations containing the word ‘Daintree’.

   Applicant’s evidence

6. Musa provides information about the Daintree region in Queensland and declares that the Applicant owns a barramundi farm in Mossman (‘Applicant’s Farm’), a town that Musa attests is commonly referred to as being in the Daintree region.  According to Musa, the Applicant’s Farm is ‘derived from a catchment within the Daintree and Mossman River basins in the North East Coast catchment area’ and the Applicant intends to use the Trade Mark for the Applicant’s Goods from the Applicant’s Farm.  Musa provides examples of the manner in which the Applicant intends to use the Trade Mark, an estimate of annual turnover anticipated from sales of goods under the Trade Mark and its expected annual marketing expenditure to promote those goods.

7. Musa confirms that MA Group had discussions regarding the purchase of the Opponent’s Farm but a price could not be agreed.  Musa declares that the Opponent’s Mark was not significant in the potential purchase of the farm and that a price could not be agreed.

   Discussion

   Section 60

8. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)      another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)      because of the reputation of that other trade mark, the use of the     first‑mentioned trade mark would be likely to deceive or cause confusion.

9. To satisfy s 60, the Opponent must establish that the trade mark(s) upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

10. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.12F9F[6]

    [6] [2000] FCA 1335, [81].

11. Justice Kenny also referred to the Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[7]

    [7] (1999) 47 IPR 423, 436 (Hearing Officer I. Thompson).

12. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[8]  Here the relevant market is consumers of fish and fish products and hence would include most Australian households.  Further, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[9] 

    [8] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [9] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart, Gummow and French JJ).

13. In its SGP and written submissions, the Opponent claims that its evidence establishes a reputation in the Opponent’s Mark before the Relevant Date for barramundi and given that reputation, use of the Trade Mark is likely to cause confusion or deception because of:

    i.the similarities between the Opponent’s Mark and Trade Mark;

    ii.the parties are in direct competition with each other;

    iii.there are relatively few barramundi farms in tropical North Queensland;

    iv.the Applicant selected the Trade Mark to suggest a connection with the reputation in the Opponent’s Mark; and

    v.the inclusion of the words ‘INFINITY BLUE’ do not negate the risk of confusion as consumers will consider the Trade Mark to be derived from the Opponent’s Mark.

14. The Applicant contends that the Opponent’s claim that there is a reputation in the Opponent’s Mark is not supported by its evidence.  Firstly, the Applicant notes that the Opponent’s evidence is confusing in that Hober defines the Opponent’s Mark as being both the Opponent’s Word Mark and the Opponent’s Logo.  For the purposes of s 60, the Opponent must establish a reputation in each mark on which it relies. At the hearing, it was apparent that the Opponent relies only on the Opponent’s Word Mark.

15. The Applicant argues that the only documentary evidence of a reputation in the Opponent’s Word Mark is limited to:

    ·     the Opponent’s Awards and there is a lack of information about the Sydney Royal Fine Food Show such as how many people compete, how the Opponent’s Word Mark is used in the competition, how many people see it and how any use of the Opponent’s Word Mark was relevant to the judging process;

    ·     the Opponent’s Product Sheet which is undated but which refers to an award in 2021 so must have been created after that date.  Also, there is no evidence as to how widely it has been disseminated;

    ·     the Opponent’s article which is not accompanied by any information concerning readership of the publication or article itself.  Further, the Applicant contends the article does not establish any reputation in the Opponent’s Word Mark but rather suggests ‘that a lack of labelling laws mean that Australian consumers are not aware of what they are purchasing’.

16. The Applicant further notes that whilst sales revenue for the Opponent’s Goods are provided, the only reference to how the Opponent’s Marks are used in the sales process is mention of use of vendor farm names on the auction board at the Sydney fish market auction.  Hober lacks any information about the proportion of sales of the Opponent’s Goods at the auction or how the auction process generally works.

17. Finally, the Applicant contends that even if there is a reputation in the Opponent’s Word Mark, deception or confusion is highly unlikely given that the only common elements are the non-distinctive words DAINTREE and BARRAMUNDI and the Trade Mark includes the distinctive element INFINITY BLUE reducing any likelihood of confusion.

18. In my view, the Opponent’s evidence does not provide sufficient information about the nature and extent of use of the Opponent’s Word Mark to satisfy me that the Opponent’s Word Mark had a reputation at the Relevant Date in Australia.  Although the Opponent’s Word Mark has been in use for over 20 years, this alone is not sufficient to establish a reputation in the mark.  The revenue figures for the Opponent’s Goods whilst reasonable on their face are a very small fraction of the Applicant’s anticipated sales under the Trade Mark, and therefore presumably do not constitute an appreciable share of the market in Barramundi and related products.  The sales figures are steady but do not show any significant growth.  Moreover, it is not apparent to what extent use of the Opponent’s Word Mark is attributable to these sales as compared to the Opponent’s Logo Mark.  The Opponent seems to undertake little promotion of its goods.  Hober lacks detail about the extent of exposure of the Opponent’s Word Mark resulting from its participation in the Sydney Royal Fine Food Show.  The Opponent’s Product Sheet features the Opponent’s Word Mark but was clearly not produced until after the Sydney Fine Food Show in 2021 which may have been after the Relevant Date and Hober does not provide any details about the number of these product sheets distributed. 

19. Given that I am not satisfied that the Opponent’s Word Mark had the requisite reputation at the Relevant Date in Australia, it is not necessary for me to consider whether use of the Trade Mark is likely to deceive or cause confusion.  The s 60 ground of opposition is unsuccessful.

    Section 61

20. Section 61 states:

    61  Trade mark containing or consisting of a false geographical indication

    (1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

    (a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; or

    (b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

    if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

    (2) An opposition on a ground referred to in subsection (1) fails if the applicant establishes that:

    (a) the relevant goods originated in the country, region or locality identified by the geographical indication; or

    (aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (b) the sign has ceased to be used as a geographical indication for the designated goods in the country in which the designated goods originated; or

    (c) the applicant, or a predecessor in title of the applicant, used the sign in good faith in respect of the relevant goods, or applied in good faith for the registration of the trade mark in respect of the relevant goods, before:

    (i) 1 January 1996; or

    (ii) the day on which the sign was recognised as a geographical indication for the designated goods in their country of origin;

    whichever is the later; or

    (d) ….

    (3) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

    (a) although the sign is a geographical indication for the designated goods, it is also a geographical indication for the relevant goods; and

    (b) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

    (4) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

    (a) the sign consists of a word or term that is a geographical indication; and

    (b) the word or term is a common English word or term; and

    (c) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

1. A geographical indication in relation to goods ‘means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin’.[10]

   [10] Section 6.

2. In its SGP, the Opponent claimed that the geographical indication ‘Daintree’ refers to the Daintree region in Queensland and this region has a reputation for producing high-quality products, including Barramundi, and such reputation would likely be influential to consumers purchasing Barramundi and related products’.  However, in the hearing, the Opponent alleged that the geographical indication is ‘DAINTREE BARRAMUNDI’ which designates goods connected to the Daintree River.  According to the Opponent, consumers seeing the word Daintree used in relation to fish will automatically think of the Daintree River, not the Daintree region, because consumers know that fish come from bodies of water. 

3. Prior to the Australian Wine and Brandy Corporation Amendment Act 2010 (Cth), the definition of geographical indication required that the sign be recognised in that country as indicating that the goods originated in that country, region or locality and have a quality, reputation or other characteristic attributable to their geographical origin.  The requirement that a geographical indication be recognised in a country, region, or locality was removed to simplify the definition and align it more closely with international standards, such as those set by the World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’)[11] which makes no mention of the need for a geographical indication to be ‘recognised’. This change also aimed to reduce complexity and potential conflicts in the interpretation and enforcement of geographical indications. Also in the Australian Wine and Brandy Corporation Amendment Act 2010 (Cth), a rebuttal was added under s 61(2)(aa), effectively preserving the ‘recognised’ requirement. However, its position in the provision now means that it is for an applicant to show that the purported geographical indication is not recognised as such in its home territory.

   [11] Being Annex 1C to the Marrakesh Agreement Establishing the World Trade Organization, 1869 UNTS 299, 33 I.L.M. 1197 (1994).

4. In Australia, geographical indications are protected through registration as a certification trade mark, under the Wine Australia Act 2013 (Cth), through common law actions such as passing off or misleading and deceptive conduct in breach of the Australian Consumer Law (Schedule 2 of the Australian Competition and Consumer Protection Act (Cth).  However, I consider that with the removal of the word ‘recognised’ from the definition of s 6, it is not necessary for the operation of s 61 that the geographical indication in question be afforded any formal protection in the form of a certification trade mark or otherwise. 

5. Nevertheless, a geographical indication is not the same as a geographical location nor the geographical origin of the relevant goods.  The appropriate grounds for the opposition to registration of trade mark containing a geographical location or origin from which the goods do not emanate are ss 43 or 42(b).

6. In my opinion, given that an Opponent bears the onus in opposition proceedings, it is for the Opponent to establish a prima facie case that a trade mark contains a geographical indication within the definition outlined in s 6.  Only if I am satisfied of this, does the onus shift to the Applicant to establish the matters outlined in ss 61(2), (3) or (4).  If I was to simply accept the Opponent’s assertion that Daintree is a geographical indication and require the Applicant to establish that it is not under s 61(2)(aa), this would amount to a reversal of the general burden on an Opponent to establish the grounds of opposition.

7. In the present case, for Daintree to be a geographical indication, the Opponent must establish that Daintree is an area known for the production of fish (in particular barramundi) having certain qualities, reputation or other characteristics. The certain qualities, reputation or other characteristics must also be essentially attributable to that location. The Opponent claims that the Opponent’s Product Sheet establishes that ‘Daintree’ is a geographical indication for high quality Barramundi from the Daintree River. The contents of this document refer to the Opponent’s Sydney Fine Food Show medals, its fish being ‘produced in pristine water sourced from the Daintree River’ and the use of the ‘latest technology and techniques’ and a high energy diet for the fish to produce ‘a clean unmatched white eating fish which captures the essence of the land and our region’.

8. Iny my opinion, the Opponent’s Product Sheet does not establish that either the Daintree River or Daintree region are particularly known for the production of barramundi nor that fish from this area has a reputation, quality or other characteristics not found in barramundi from elsewhere.  Australia is not the only location where Barramundi are wild-caught or farmed, nor is the Daintree River.  The fact that the Opponent has received awards for its fish does not mean that either the Daintree River or region have a reputation for Barramundi that is ‘clean-eating’ or of higher quality than Barramundi from elsewhere.  The Opponent must do more than simply claim that ‘Daintree’ is a geographical indication.  It must establish through objective evidence that Barramundi from the Daintree have a reputation or have particular quality or characteristics as compared to Barramundi from other locations.

9. I am not satisfied that Daintree is a geographical indication and hence the s 61 ground of opposition is unsuccessful.

   Section 62A

10. Pursuant to s 62A, registration of a trade mark may be opposed on the ground that the application was filed in bad faith.

11. The Act does not define ‘bad faith’, but the Federal Court substantively considered the issue in Fry Consulting v Sports Warehouse Inc (No 2)[12] (‘Fry Consulting’) and DC Comics v Cheqout Pty Ltd[13] (‘DC Comics’). The following propositions emerge from these decisions:

    (a)   Bad faith for the purposes of s 62A must be as at the priority date and must relate to the making of the subject of the application;[14]

    (b)   Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith;[15]

    (c)   The onus of proving bad faith rests upon the opponent;[16]

    (d)   All of the circumstances surrounding the application to register the mark are relevant;[17]

    (e)   The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading;[18]

    (f)    While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt;[19]

    (g)   Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test;[20]

    (h)   Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A.[21]

    [12] [2012] FCA 81 (Dodds-Streeton J) (‘Fry Consulting’).

    [13] [2013] FCA 478 (Bennett J) (‘DC Comics’).

    [14] Fry Consulting (n 12), [145].

    [15] DC Comics (n 13), [76].

    [16] Fry Consulting (n 12), [145].

    [17] DC Comics (n 13), [62].

    [18] Ibid.

    [19] Fry Consulting (n 12), [145].

    [20] Ibid [147], [148] and [165].

    [21] Ibid [154].

12. In its SGP, the Opponent claims that given the Applicant already owns a registration for INFINITY BLUE it does not require registration of the Trade Mark and filed the application ‘to diminish the value of the Opponent’s Mark in the context of the purchase negotiations’.  In submissions, the Opponent argued that these prior business dealings are the distinguishing factor which elevates the filing of the application to one made in bad faith.  In particular, the Applicant asked the Opponent for their opinion on the Applicant using the term ‘Daintree Barramundi’ and the Opponent advised that it would not agree to that use.  The Opponent alleges that this conversation makes it apparent that the Applicant knew of the Opponent’s Marks and that the Opponent had asserted ownership of the Opponent’s Word Mark.  Hence, when these surrounding circumstances are considered, it is apparent that the filing of the application was not acceptable commercial behaviour.

13. The Applicant contends that there is no evidence that the Opponent’s Marks were of any significance in the sale negotiations which related to the potential purchase of the Opponent’s Farm and Musa declares that the Applicant’s only interest was in obtaining additional farming capacity.[22]  The Applicant merely extended a professional courtesy to the Opponent in seeking their opinion on the Applicant’s use of Daintree Barramundi but ultimately concluded that given the highly descriptive nature of those words, it was entitled to use and register the Trade Mark as a whole.  The Applicant notes that a difference of opinion or disagreement does not necessarily amount to bad faith. 

    [22] Musa, [21].

14. I agree with the Applicant that the Applicant’s decision to file an application for the Trade Mark does not amount to bad faith.  The Applicant is entitled to weigh the Opponent’s opinion, the level of distinctiveness of the words Daintree Barramundi and the overall differences in the Trade Mark and Opponent’s Marks. 

15. The Applicant has provided evidence of the manner in which it intends to use the Trade Mark to indicate the source of its goods, being similar to the way in which it uses ETTY BAY and Wyndham.[23]  Contrary to the Opponent’s claim, there is no evidence that the Applicant intends to take advantage of any reputation that the Opponent may have in the Opponent’s Marks.

    [23] Musa, p 199, 206 and 207.

16. I am not satisfied that the Applicant’s conduct in filing an application for the Trade Mark is unscrupulous, underhand nor outside of acceptable commercial behaviour.  Accordingly, the s 62A ground of opposition fails.

    Decision

17. Section 55 of the Act relevantly provides:

    (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.

18. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2176813 may proceed to registration not less than one month from the date of this decision. 

19. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   22 April 2025