Denise Monk v Travel Leaders Franchise Group LLC

TRADE MARKS ACT 1995

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

Re:Opposition by Denise Monk to registration of trade mark application 1470835(39, 43) - CRUISE HOLIDAYS AND DEVICE - filed in the name of Travel Leaders Franchise Group LLC.

Delegate:

Nicole Worth

Representation:

Opponent: Jim Davies of Elevation Legal Commercialisation Lawyers

Applicant: Leanne Oitmaa of Watermark Intellectual Asset Management

Decision:

2013 ATMO 57

Section 52 Opposition: reg 5.15 - further evidence refused - ss41 and 62A – trade mark inherently adapted to distinguish Applicant’s services – application not filed in bad faith – no ground of opposition established.

Background

This is an opposition pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’). On 23 January 2012 Travel Leaders Franchise Group, LLC (‘the Applicant’) filed an application to register a trade mark, relevant details of which are shown below:
Application no.: 1470835
Priority date: 23 January 2012
Services:Class 39: Travel agency services including arranging and booking travel
Class 43: Travel agency services including booking and reserving accommodation including making hotel reservations.
Trade Mark:

(‘the Trade Mark’)

The application was accepted for possible registration and the acceptance was advertised in the Australian Official Journal of Trade Marks on 17 May 2012. On 16 August 2012, Denise Monk (‘the Opponent’) filed a Notice of Opposition (‘the Notice) to the Trade Mark’s registration, nominating grounds of opposition under sections 41 and 62A of the Act. The Opponent was informed on 23 August 2013 that evidence in support of its opposition was due three months from the date of filing the Notice. The correspondence that subsequently took place has bearing on the issue of further evidence, and so it is discussed in some detail below. Unless otherwise stated, in this decision reference to the Opponent may be taken as a reference to either the Opponent herself or to her representative in these proceedings, Mr. Davies.
On 4 September 2012 the Opponent wrote to IP Australia requesting revocation of the acceptance (and copied the request to the Applicant). The basis of the request was an allegation that a franchisee of the Applicant had, in a dispute involving the Opponent over the domain name ‘cruiseholidays.com.au’, falsely represented that the Applicant was the registered owner of the trade mark ‘Cruise Holidays’ in Australia. The Opponent alleged that the franchisee was therefore in contravention of section 151 of the Act (section 151 defines offence provisions that apply to false representations regarding trade marks). By virtue of the alleged conduct of the Applicant’s franchisee the Opponent invited the Registrar to investigate criminal proceedings against the Applicant, and asserted that acceptance of the Applicant’s trade mark should be revoked.
To support the allegation the Opponent filed a copy of a complaint made to LEADR Association of Dispute Resolvers (‘LEADR’)[1] by a Mr. Les Farrar, Managing Director of Cruisemart Pty Ltd. The complaint sought to transfer the domain name ‘cruiseholidays.com.au’ from the Opponent’s company to Cruisemart Pty Ltd. In the complaint Mr. Farrar explained that Cruisemart Pty Ltd had signed a franchise agreement with the US entity Cruise Holidays and that Cruise Holidays was a wholly owned subsidiary of the “Travel Leaders Group” (which I take to be a reference to the Applicant). Mr. Farrar claimed that the agreement provided Cruisemart Pty Ltd with the “sole license within Australia for the use of the Cruise Holidays name and logo” and stated as one of his reasons for the complaint “The Travel Leaders Group are the registered owners of the trademark ‘Cruise Holidays’ in Australia. Trade Mark No. 1470835”.
[1] LEADR is an independent body approved by .auDA (.au Domain Administration Ltd) to arbitrate domain name proceedings in accordance with the auDRP (.au Dispute Resolution Policy).
His other reasons included that: Cruisemart Pty Ltd was the registered owner of the “trading names” ‘Cruise Holidays’ and ‘Cruise Holidays Australia’ (for which he provided copies of business name registration certificates); that the domain name was allegedly not being utilised by any individual or company at that time; that it was his understanding the domain name holder was no longer actively involved in the travel industry; that the domain name holder’s business name had been deregistered (that business name now being owned by Cruisemart Pty Ltd); and that given the franchise agreement it was unlikely any other company or individual would successfully launch a business with the same or similar trading name as the domain name in question.
The Opponent alleges that Mr. Farrar’s assertion “The Travel Leaders Group are the registered owners of the trademark ‘Cruise Holidays’ in Australia. Trade Mark No. 1470835” was relied upon by the LEADR panelist when he decided to transfer the disputed domain name from the Opponent’s company to Cruisemart Pty Ltd. A copy of the panelist’s decision was not included in the material filed.
In letters dated 13 and 19 September 2012 the Registrar declined to exercise her discretion to revoke the acceptance and informed the Opponent that it was not the prosecuting authority for an alleged false representation under section 151. The Registrar also provided the Opponent with a certified copy of an extract of the Register of Trade Marks showing that the status of trade mark application 1470835 was ‘opposed’ (not ‘registered’). Such a document is admissible in any proceedings as prima facie evidence of the details entered on the Register of Trade Marks.
The Opponent did not serve or file any other documentation. The Registrar sent to the Opponent a notice of overdue evidence in support on 30 November 2012. After the conclusion of the statutory period in which to serve evidence in support and absent any such evidence, the Applicant, on 19 December 2012, requested that the matter be heard. The hearing was accordingly set down for 23 April 2013 and on 22 March 2013 I issued a direction containing a schedule for the parties to serve and file written submissions.
In my direction I indicated that if the Opponent wished to make submissions, it would need to do so by 9 April 2013. No submissions were served or filed. On 16 April 2013 the Applicant duly served and filed its submissions. Those submissions stated that the trade mark was inherently distinctive and that there was no bad faith on the part of the Applicant because, inter alia, the domain name dispute was not initiated or authorised by the Applicant and the complaint was filed well after the filing date of the Application.
It was at this late juncture that the Opponent requested permission to serve and file evidence and submissions, to appear at the hearing and to have the hearing adjourned to a later date. The Opponent’s reason for doing so was that she was surprised by the Applicant’s submissions, purportedly because those submissions changed the Applicant’s position from that which it allegedly had taken, by virtue of its franchisee, in the domain name dispute. The Opponent claimed that the Applicant now sought to characterize the Trade Mark as a logo rather than the words ‘Cruise Holidays’, and to claim that the domain name proceedings were not authorised by it. The Opponent therefore sought to adduce evidence in support of her opposition.
I did not consider the Applicant’s submissions in any way unpredictable, and I therefore did not consider the failure of the Opponent to anticipate them, nor the nature of the evidence the Opponent proposed to adduce (discussed further below), sufficient bases upon which to adjourn the hearing. In order to allay some of the Opponents concerns I did, however, indicate that although the request for revocation and supporting material had not been served or filed as evidence I would take it into account and would put the Applicant on notice that I was doing so.
Therefore the hearing proceeded as scheduled, with both parties giving submissions. The Opponent also requested permission to serve further evidence, but due to failures of her representative’s equipment not all of the exhibits were before me, or the Applicant, at the hearing. Over the days of 23, 24 and 26 of April 2013 the Opponent served and filed the remainder of her exhibits. Then on 26 April 2013 the Opponent filed an additional declaration with additional exhibits, pursuant to a conversation that took place after the hearing between her and her representative.
It is against this backdrop that I shall deal first with the further evidence request.

Application for permission to serve further evidence

The issue of whether evidence sought to be adduced by a party, where it is the only evidence the party has ever sought to adduce, should be filed under an ‘application for permission to serve further evidence’ or with an ‘application for extension of time to file evidence in a trade mark opposition’ has not to my knowledge been judicially considered in Australia. A small number of decisions of the Registrar have dealt with it, most recently in 2012 (see Virgin Enterprises Limited v V Group Pty Ltd[2]) which followed a 2011: Bluescope Steel Ltd v Maan Enterprises Pty Ltd[3]. In that decision Hearing Officer Williams commented at Annexure 1:
The further evidence on which the applicant sought to rely is “further” in the sense that the process for adducing such evidence is further to that of the earlier evidence stages set out in regulations.
There have been one or two unpublished decisions made at the Trade Marks Office in earlier years, to the effect that a party that had elected not to rely on evidence at first instance cannot describe any evidence that it later seeks to tender as being further evidence, since it is not “further to that which it has already filed”. The effect of viewing the word “further” in those narrow terms is that such a party may bring its evidence into contention only by way of a late extension of time to file, in the present matter, evidence in answer.
I reject such an interpretation on two bases. Firstly, as I have said above, the logical reading of the word “further, where it occurs at reg 5.15 is as meaning further to the evidence stages that have been previously defined, by regs 5.7 to 5.9.
Secondly, the very considerable extension of time fees that would apply to some cases – but not to others, depending on the history of the matter – makes a restricted reading of the word “further” undesirable.
[2] [2012] ATMO 24.
[3] [2011] ATMO 26.
I will proceed on this basis also, taking into account the Applicant’s submissions which address both the requirements for extensions of time as well as the requirements for further evidence.
The evidence sought to be adduced consists of a statutory declaration by Daniel James Stuart Davies, made 23 April 2013, with exhibits DJSD-1 to DJSD-4, and a second statutory declaration made 26 April 2013 also by Daniel James Stuart Davies, with exhibits DJSD-5 to DJSD-6. Mr. Davies is an IP and domain name consultant and is the Opponent’s representative, and I will refer to his declarations respectively as ‘Davies 1’ and ‘Davies 2’.
Davies 1 seeks to adduce: the previously discussed domain name complaint made by Mr. Farrar, as well as an email written in response to it by the Opponent and sent to the LEADR ‘case manager’ (both in Annexure DJSD-1 to the declaration); the Opponent’s letter requesting revocation of acceptance (at Annexure DJSD-2); and the previously referred to certified copy sent by the Registrar to the Opponent (at Annexure DJSD-3).
Davies 1 also seeks to adduce at Annexure DJSD-4 internet search results for the words CRUISE HOLIDAYS, images resulting from the search terms CRUISE HOLIDAYS, web pages showing unrelated entities using the words ‘Cruise Holidays’, web pages allegedly confirming the franchise relationship between Cruisemart Pty Ltd and the Applicant, extracts of the Applicant’s registered and applied-for trade marks in the US, and lastly pages captured by the Internet Archive between 2002 and 2005 allegedly showing the Opponent’s use of the phrase ‘Cruise Holidays’.
Davies 2 states that following the hearing, on the same day, a conversation took place between the Opponent and Mr. Davies wherein the Opponent recalled having a number of communications with Mr. Farrar of Cruisemart Pty Ltd early in 2012. To that end the Opponent sent to Mr. Davies two emails she had received from Mr. Farrar dated 16 and 26 April 2012 in which Mr. Farrar invites the Opponent to sell to him the domain name ‘cruiseholidays.com.au’ (an offer the Opponent apparently declined). One of the emails refers to a further, previous email sent by Mr. Farrar “a couple of months ago”. It appears that the Opponent is unable to recall precisely when communications with Mr. Farrar began. Her representative Mr. Davies declares that he understands it was “in or around January or February of 2012” and on this basis asserts that “the Applicant initiated its pursuit of the domain name CruiseHolidays.com.au in the same timeframe as the Application for the trade mark”. (It is unclear here whether Mr. Davies mistakenly refers to the Applicant rather than its franchisee, or deliberately does not differentiate between them on the basis that the franchisee’s actions were allegedly controlled or authorised by the Applicant). These emails from Mr. Farrar to the Opponent comprise Annexure DJSD-5 to Davies 2. At Annexure DJSD-6 of Davies 2 is a copy of an article from ‘DN Journal’, a publication for the domain name industry. The article discusses the sale of the domain name ‘Cruise.co.uk’ for £560,000, thereby purportedly illustrating the value of domain names relating to cruise holidays.
The relevant provisions governing further evidence are found in regulation 5.15 of the Trade Marks Regulations 1995 as it stood prior to amendments made on 15 April 2013.[4] The regulation stated:
[4] The regulations were amended pursuant to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013.
(1) A party to the opposition proceedings may apply to the Registrar:
…
(b) for permission to serve a copy of further evidence on the other party.
(2) The Registrar may grant an application on reasonable terms specified by the Registrar.
(3) The Registrar must not grant an application unless the Registrar:
(a) is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and
(b) has given the parties a reasonable opportunity to make representations concerning the application; and
(c) is reasonably satisfied that:
…
(ii) in the case of an application to which paragraph (1) (b) applies—permission to serve a copy of further evidence;
is appropriate.
For the purposes of paragraph (3)(c) of regulation 5.15, the Registrar will look to the reasons for the permission being sought and the nature of the evidence in question. The nature of the evidence has been described above, and the Opponent put forward the following reasons for her further evidence request:
·     “The Opponent had previously understood that the formal pleadings and submissions made in respect of the related auDRP dispute for the domain name CruiseHolidays.com.au would be admitted as evidence by the hearing officer in these proceedings”
·     “In the auDRP proceedings, the Applicant’s master franchisee claimed on the Applicant’s behalf an exclusive right to use the mark CRUISE HOLIDAYS, without adornment. Since the Applicant made clear in the submissions filed on 16 April 2013 that it sought to distinguish the words alone from the composite mark filed (which was not consistent with how the mark was characterised in the auDRP proceedings), the Opponent is preparing evidence to show, inter alia, that the ship graphic does not save the Applicant from its previously expressed position, since the relevant and dominant part of the mark are the words CRUISE HOLIDAYS”
·     “[T]he Opponent had previously requested that IP Australia commence criminal proceedings against the applicant and/or its Australian master franchisee…Whilst IP Australia said that it was not the prosecuting authority for such a matter, it did produce a formal certificate, confirming that no relevant trade mark was registered at the time of the auDRP proceedings. The provision of the formal certificate mistakenly gave the impression to the Opponent that the evidence would be admitted before the hearing officer…[B]ecause it had been supplied by IP Australia in a formal way, the Opponent had understood that it would be admitted as evidence in the hearing”
·     “In the submissions filed by the Applicant’s attorneys on 16 April 2013, the Applicant for the first time denied that they had authorised the auDRP proceedings, despite the serious allegation of criminal conduct having previously been put to them. This was not a position that the Opponent could have anticipated that the Applicant would take. The Opponent therefore found that it unexpectedly needed to prepare evidence that supports the contention that the Applicant would have at least been held to have authorised (or alternatively known about) the auDRP proceedings and that it now benefits from the outcome (as it stands) of those proceedings, so supporting the Opponent’s allegation that the application for this trade mark was filed in bad faith”
·     “It also became apparent from the Applicant’s submissions that it did not intend to rely on the statements made on its behalf in the auDRP proceedings as to the nature of the trade mark applied for. Again, the Opponent therefore had to file evidence in order [to] show how the phrase cruise holidays was used and depicted by third parties”
·     “…it only became apparent to me [being Mr. Davies, the Opponent’s representative] after the hearing that the Opponent had been contacted about the domain name CruiseHolidays.com.au at around the same time as [the] application for the trade mark was filed. After the hearing, the Opponent told me about and was then able to provide me with copies of some of that correspondence. This evidence, though brief, is central to the argument about the timing of the Applicant’s interest in the domain name CruiseHolidays.com.au; and whether it had acquiring that domain name in mind at the time that it filed the trade mark application. That in turn goes to the allegation of bad faith in respect of the trade mark application”
· “This is an unusual case, complicated by both the auDRP proceedings and also the Opponent’s dealings with IP Australia regarding section 151 of the Trade Marks Act 1995. This has led to uncertainty as to what evidence was already submitted, as well as late changes in the Applicant’s apparent position. Now that the situation is clearer, the Opponent requests that this further evidence be admitted”
Principles for deciding whether it is appropriate to allow an application for further evidence were set out in the UK case of Oxon Italia SpA’s Application[5] and they are, briefly, that the evidence could not reasonably have been obtained earlier, that the evidence would have an important influence on the result of the case, and that it is credible. The Registrar’s delegate made a further observation in Studio SrL v Buying Systems (Aust) Pty Ltd[6] that where further evidence could be adduced which would enable the Registrar to finally determine the matter, rather than the parties relying on an appeal to the courts that further evidence should be admitted into proceedings.
[5] [1981] FSR 408 at 409 (Ch D).
[6] [1992] AIPC 90-858.
I do not consider any of the further evidence sought to be adduced sufficiently influential, nor do I consider it reasonable to allow any of it into proceedings. I have already indicated to the parties that I will take the request for revocation and its supporting material into account, the supporting material being the complaint by Mr. Farrar to LEADR in respect of the domain name ‘cruiseholidays.com.au’. The remaining material in Davies 1 goes little way to establishing the Opponent’s grounds of opposition, as explained below.

The email by the Opponent to the LEADR ‘case manager’ makes a number of unsupported claims about her use of the domain name up until late 2010 (at which time the website was apparently no longer operational) and expresses opinion regarding Mr. Farrar’s attitude and motives.
The certified copy of the extract from the Register adds nothing to the Opponent’s case – it is information readily available to the Registrar.
The documents at Annexure DJSD-4 are either not sufficiently influential or have no bearing on the matter at hand:
·     The results of internet searches for the words ‘Cruise Holidays’ and associated images show, unsurprisingly, that ‘Cruise Holidays’ and images of cruise ships are in common use in respect of the services specified in the application. They do not address the particular form of the Trade Mark. The same can be said of the internet material showing third parties using the words ‘Cruise Holidays’.
·     The relationship between Cruisemart Pty Ltd and the Applicant is already explained in Mr. Farrar’s application to LEADR, and therefore internet material also evidencing the relationship is unnecessary.
·     The Applicant’s US trade mark application and registration has little bearing on either ground of opposition and would in any case tend to reflect genuine intention rather than bad faith.
·     The Internet Archive material purportedly showing the Opponent’s use of ‘Cruise Holidays’ as both a phrase and domain name appears to show use only between 2002 and 2005, and again has little bearing on the Trade Mark applied for (which does not equate to the words ‘Cruise Holidays’ or the domain name ‘cruiseholidays.com.au’).
Nor does Davies 2 sufficiently further the Opponent’s case. The emails to the Opponent from Mr. Farrar, at Annexure DJSD-5, indicate that Mr. Farrar had first sought to purchase the domain name “a couple of months” prior to his email of 16 April 2012. Aside from the lack of precision regarding the date, this factor of itself does little to establish bad faith on the part of the Applicant in applying for the Trade Mark (as discussed further under ‘Section 62A’). The sale price of the domain name ‘Cruise.co.uk’, at Annexure DJSD-6, whilst showing the potential value of domain names does not go to either of the grounds of opposition.
In addition to the above, I consider that all of the material could with reasonable diligence have been obtained earlier. It is for the Opponent to establish the opposition, and it being plainly evident that the Trade Mark is comprised of more than merely the words ‘Cruise Holidays’ (however erroneously Mr. Farrar might have characterised the Trade Mark in the domain name dispute) it would have been reasonable to anticipate a defence to that effect. Nor should it be any surprise to the Opponent that she would need to (a) substantiate its claim that Mr. Farrar was acting on behalf of or under the authority of the Applicant and then (b) connect the domain name dispute to the trade mark application being made in bad faith. That the Opponent has not done so is not as a result of an alleged change in position by the Applicant, but rather because of the Opponent’s apparent lack of foresight.
I do not consider either of the Davies declarations sufficiently influential to allow them into proceedings at this stage nor is it appropriate to allow the Opponent to retrospectively attempt to fix shortfalls in her case. Consideration ought also be afforded to the Applicant, and any further delay which might be caused by it responding to such evidence is unwarranted. For these reasons I refuse the Opponent’s request for permission to serve further evidence.
I turn now to the substantive matters of the opposition. The Opponent bears the onus of establishing either of the grounds of opposition under sections 41 and 62A, on the ordinary civil standard of the balance of probabilities.[7]
[7] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.

Section 41

The now repealed form of section 41 of the Act, which applies to this application, relevantly provided[8]:
[8] Section 41 was amended pursuant to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. Applications filed prior to then are governed by the previous version of section 41; see Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

Trade mark not distinguishing applicant's goods or services

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

Subsection 41(4) stated that if the Registrar was unable to decide, on the basis of inherent adaptation alone, that a trade mark was capable of distinguishing designated goods or services then subsections 41(5) and/or 41(6) apply. Subsections 41(5) and 41(6) contemplated acquired distinctiveness on the basis of use or (in the case of 41(5) ) intended use of a trade mark. In this case there is no scope for the application of subsections 41(5) or 41(6) since there is no evidence before me of use by the Applicant. The only matter to be decided therefore is the extent to which the trade mark is inherently adapted to distinguish the designated services pursuant to subsection 41(3).
Drawing upon the words of Lord Parker in Registrar of Trade Marks v W & G Du Cros Limited[9] Kitto J, in Clark Equipment Co v Registrar of Trade Marks[10], described the test for inherent adaptation as:
[T]he question whether a mark is adapted to distinguish [is] to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of the words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[9] (1913) RPC 216.
[10] [1964] HCA 55; (1964) 111 CLR 511.
The Opponent submits that the dominant feature of the Trade Mark is the words ‘Cruise Holidays’, they taking up more than half of the total area of the mark, being in a striking font and being positioned at the left hand side, the natural place for a reader in Western society to first look. The words are therefore, it is submitted, the feature that “strikes the eye and fixes itself in the recollection”, as per Saville Perfumery Ltd v June Perfect Ltd[11], and are “purely descriptive and incapable of distinguishing the [services] of the Applicant”.
[11] (1941) 58 RPC 147.
It is also the Opponent’s contention that the device does not save the Trade Mark because a simple depiction of a cruise ship is merely an illustration of the words ‘Cruise Holidays’[12], which are themselves descriptive of the services provided under the Trade Mark. Illustrations of cruise ships, it is submitted, are required for use by other honest traders in respect of similar services.
[12] The Opponent cites E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, at [69], wherein an image of a footprint was considered to be an illustration of the word ‘barefoot’ and therefore it did not substantially affect the identity of the trade mark.
Whilst I agree with the submissions that neither the words ‘Cruise Holidays’ nor a simple depiction of a cruise ship distinguish the Applicant’s services, they do not address the trade mark as applied for. I consider that the principle applied in Diamond T Motor Car Co’s Application[13] applies to the Trade Mark at hand: namely, that though each of the constituents in the composite trade mark might lack inherent adaptation to distinguish, their combination and arrangement is not one which other traders of similar services are likely to wish to use. Here, the silhouetted image of a cruise ship incorporates the words ‘Cruise Holidays’ as part of its body, in an arrangement and with an appearance unlikely to be desired for use by other traders.
[13] (1921) 38 RPC 373.
A further assertion by the Opponent appears to be that the Registrar ought not to register the Trade Mark because the Applicant has and will use the Trade Mark to claim a monopoly over the words themselves, as it has allegedly done in the domain name dispute, and as may allegedly be inferred by its US application for the trade mark CRUISE HOLIDAYS and by the lack of a limitation on the Australian application (unlike the US registration for the logo which states “No claim is made to the exclusive right to use ‘Cruise Holidays’, apart from the mark as shown”.) However even were I satisfied that the allegation was true, it is a consideration that is irrelevant to the question of distinctiveness. It is the Trade Mark before me which must be assessed, one which has been applied for in a particular form[14] and for which notional use, that is, in “a normal and fair manner” [15], must be considered. The alleged intention of the owner to seek a monopoly over only a part of the Trade Mark has no bearing on the assessment under section 41.
[14] See Express Newspapers Ltd v Star Newspaper Co [1984] IPD 7090 (UK Reg).
[15] As per Evershed J in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101.
I am satisfied that the trade mark is inherently adapted to distinguish the Applicant’s services from the similar services of other traders. Accordingly the ground of opposition under section 41 is not established.

Section 62A

Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In respect of the ground under section 62A the Opponent states:
The Application was made in the knowledge that the Opponent has operated as a travel agent using the domain name CruiseHolidays.com. The Domain Name Dispute Complaint states:
“…the current registered holder of the domain once operated a licensed travel agency…”
The Application was made on 23 January 2012.
The Application was accepted on 2 May 2012.
Within 2 weeks of the Registrar accepting the Application, and before the Trade Mark had even been advertised, the Applicant’s Master Franchisee (so by extension the Applicant) had filed the complaint in the Domain Name Dispute. The prompt timing of these events mitigates against any claim that there was no connection between the Application and the Domain Name Dispute. The Applicant does most of its business online and obtaining its preferred choice of domain name in Australia was plainly key to its expansion into the Australian market.
The Applicant’s Master Franchisee represented in the complaint filed in the Domain Name Dispute that the Applicant was the registered owner of the Trade Mark. They knew this was not true.
Section 151(1) makes clear that it is an offence to make a false representation that a trade mark is registered. It states:
“A person must not make a representation to the effect that a trade mark is a registered trade mark unless the person knows, or has reasonable grounds to believe, that the trade mark is registered in Australia.”
The Applicant is taken to have known that these false representations were made by its authorised user. In any event, it knew as soon as its representatives were notified by correspondence in September 2012. It has done nothing to remedy the misapprehension of the Domain Dispute expert. Instead, it has engaged in placing a website on the domain name and profiting from it.
The conduct of the Applicant falls short of what would be expected of a business acting in good faith and amounts to bad faith.
The fact that these events all occurred sequentially and in a short space of time, along with the Applicant’s failure to remedy the error and profiting therefrom, means that procuring the Domain Name was in the mind of the Applicant (and of its Authorised User, its Master Franchisee) at the time that the Application was filed.
Australian judicial authority in respect of bad faith is limited. In determining that which amounts to bad faith under section 62A Dodds-Streeton J, in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[16], commented:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone…
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…
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.
[16] [2012] FCA 81; (2012) 94 IPR 551, at [165].
Adapting that to the circumstances before me, the question is whether the Applicant’s knowledge was such that its decision to apply for registration of the Trade Mark on 23 January 2012 would be regarded as in bad faith by persons adopting proper standards.
It is the Opponent’s proposition that the Applicant filed the trade mark application as part of a broader strategy to gain the domain name, inferred from the sequence and timing of events. From the statements quoted above, in paragraph 40, it also appears that the Opponent does not distinguish the actions of the Australian franchisee from those of the Applicant, and does not distinguish between bad faith in applying for the trade mark and misrepresentation in the subsequent domain name dispute. Nor is it clear to me that the Opponent understands that trade mark opposition proceedings will not remedy the outcome of the domain name dispute – that is a separate issue for which remedy can only be sought via legal proceedings and/or a court of competent jurisdiction.
There is in fact very little evidence at all relating to any circumstances or knowledge in respect of any party as at 23 January 2012 (although I bear in mind that “it is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date”[17]). It might reasonably be supposed that the Applicant at some point prior to the filing of the trade mark application formed the intention to trade in the Australian market place. What the Opponent would then have me infer is that the Applicant, either through its dealings with the Australian franchisee or through its own investigations, found that the Opponent owned the domain name ‘cruiseholidays.com.au’ and then in order to gain the domain name, filed the trade mark application - presumably in order to strengthen its case for a domain name dispute.
[17] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505 (at 509).
This inference appears to be based upon evidence, which I have refused to allow into proceedings, that “a couple of months” prior to 16 April 2012 Mr. Farrar wrote to the Opponent expressing his desire to purchase the domain name ‘cruiseholidays.com.au’, and then the instigation of the domain name dispute on 16 May 2012. What this fails to take into account is that the Applicant, even with full knowledge of the Opponent’s website and the object of obtaining it for itself, may in good faith wish to register a trade mark incorporating words descriptive of its services. However the Trade Mark was subsequently characterised or mis-described in the domain name dispute, the fact remains that it is a logo incorporating features aside from the words ‘Cruise Holidays’ which distinguish the Applicant’s services from those of others, including the Opponent’s.
Having said that, I am not satisfied that the Applicant’s object in filing the trade mark application was to obtain the Opponent’s domain name. The Applicant appears to have been a provider of travel services in the US that was sufficiently well established to franchise its operations to Australia. A natural step in franchising is seeking to protect the business’s trade mark(s) in the jurisdictions it will operate. I am not persuaded that this was not the Applicant’s motivation here.
Further, although largely irrelevant to proceedings before me, I do not hold the actions of Mr. Farrar to be the actions of the Applicant. I consider it equally plausible that Mr. Farrar initiated the domain name dispute of his own volition, perceiving that ‘cruiseholidays.com.au’ would be a useful adjunct to ‘cruiseholidays.com’ (the domain name the of the franchise). It is also plausible that, having no apparent experience or expertise in trade mark law or procedure, Mr. Farrar did not understand that acceptance of the Trade Mark did not mean it was registered or that registration of the Trade Mark would not secure monopoly rights over the words ‘Cruise Holidays’. In addition he clearly identifies the trade mark application number in his statement “The Travel Leaders Group are the registered owners of the trade mark ‘Cruise Holidays’ in Australia. Trade Mark No. 1470835”. Given he does not attempt to provide documentation to lend weight to this claim, and that it would be a simple matter for anyone to ascertain the form and status of the Trade Mark from the Registrar’s online database, I am not persuaded that his motives were to deceive.
I am not satisfied that the Applicant filed its application for registration of the Trade Mark in bad faith, and accordingly the ground under section 62A of the Act fails.

Decision

According to section 55(1) of the Act:
Unless the proceedings are discontinued or dismissed, 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.
The Opponent has not established a ground of opposition and so its opposition fails. The application may proceed to registration after one month form the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

Costs ordinarily follow the event, and I see no reason to depart from this. Accordingly I award costs against the Opponent to the extent allowed in Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth

Hearing Officer

Trade Marks Hearings

18 July 2013

[2013] ATMO 57

17 July 2013