Elite Fitness LC Pty Ltd v Velvet Publications Pty Ltd

[2025] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Elite Fitness LC Pty Ltd to registration of trade mark application number 1997038 (class 35) - ELITE FITNESS EQUIPMENT - in the name of Velvet Publications PTY LTD

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Colwell Wright Solicitors Pty Ltd

Applicant: One IP International Pty Ltd

Decision:

2025 ATMO 49

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44, 58, 58A, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Elite Fitness LC Pty Ltd (‘Opponent’) to registration of the following trade mark:

   Trade mark number:  1997038 (‘Application’)

   Trade mark:  ELITE FITNESS EQUIPMENT (‘Trade Mark’)

   Applicant:  Velvet Publications PTY LTD (‘Applicant’)

   Filing Date:  20 March 2019 (‘Relevant Date’)

   Specification:               Class 35: Sales promotion services; Direct-mail advertising; Direct mail advertising (‘Applicant’s Services’)

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

2. The Trade Mark was examined and advertised as accepted for possible registration on 2 June 2020.

3. On 31 July 2020, the Opponent filed a Notice of Intention to Oppose the Application. On 28 August 2020, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 28 October 2020.

4. The Opponent filed Evidence in Support (‘EIS’) on 29 April 2021. The Applicant filed Evidence in Answer (‘EIA’) on 19 October 2021. The Opponent filed Evidence in Reply (‘EIR’) on 4 January 2022.

5. The parties were given the opportunity to request a hearing or for a decision to issue without a hearing. The Applicant requested a decision without a hearing. I make this decision as a delegate of the Registrar of Trade Marks based on the information in the SGP and the evidence of the parties.

   Grounds and onus

6. The SGP nominates grounds of opposition under ss. 44, 58, 58A, 60 and 62A.

7. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

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

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   Evidence

8. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
EIS
Jacob William Cooke, solicitor for the Opponent (‘Cooke 1’)	25 June 2021	One
EIA
Olaf Kretzschmar, IP consultant for the Applicant (‘Kretzschmar’)	19 October 2021	YS-01 to YS-05
EIR
Second declaration of Jacob William Cooke (‘Cooke 2’)	4 January 2022	EFLC-01 to EFLC-03

Summary of EIS

1. Cooke 1 states that the evidence relied upon by the Opponent is contained in the SGP and annexes a copy of the SGP. However, the annexed SGP differs from the originally filed SGP by the addition of a further ground of opposition under s 41. The Opponent has not requested an amendment to the originally filed SGP to add the s 41 ground and therefore I reject the s 41 ground as a valid ground in this opposition and will not comment on s 41 further.

2. Cooke 1 lists the following registrations with a priority date of 30 June 2004 in the name of the Opponent covering gymnastic equipment in class 28 (together ‘Opponent’s Marks’):

Number	Trade mark
1008866
1008908
1008911

1. Cooke 1 claims that the Opponent first used the Opponent’s Marks 25 years ago and has since then continuously used the Opponent’s Marks in respect of goods and services for gymnasium equipment such as gymnasium equipment sales, gymnasium equipment hire and commercial trade and leasing of gymnasium equipment to gyms (‘Opponent’s Goods and Services’). The Opponent also claims that the Opponent’s Marks have acquired a reputation in Australia for the Opponent’s Goods and Services. No supporting evidence is provided for any of these claims.

2. Cooke 1 provides hyperlinks to the Opponent’s website at and the Applicant’s website at (‘Applicant’s Website’). Cooke 1 provides pictures of the following logos claimed to be used on these websites namely:

   (Opponent)  (Applicant).

   I note that there is no evidence that these pictures were taken from the Opponent’s and the Applicant’s websites.

3. In respect of this hyperlink evidence, I note that all evidence filed with this office must be in the form of declarations with annexures or exhibits. Hyperlinks can change or become dead and I have not clicked on or had regard to either of the hyperlinks provided by the Opponent because the Opponent has not annexed or exhibited the results from these hyperlinks as part of Cooke 1. Further even if I were to click on these hyperlinks, the results would not provide a picture of how they appeared at the date of Cooke 1.

4. Cooke 1 claims that the Opponent had an unwritten licence with the Applicant for Perth and when the Opponent attempted to formalise the licence arrangement with a licence agreement, the Applicant denied there was a licence. No supporting evidence is provided for this claim.

   Summary of EIA

5. As a preliminary observation, Kretzschmar contains a blanket statement that the contents of the declaration are confidential. A statement of this nature is difficult to reconcile with the discussion of publicly available records and information in many parts of the declaration. I acknowledge the Applicant’s interests in preserving its confidential information, however, the Registrar must provide reasons for her findings. In discharging this duty, information claimed to be confidential may require discussion. This is particularly relevant when little to no effort has been made to specify the allegedly confidential information. Accordingly, where such discussion is unavoidable, broad statements will be used to minimise the risk of divulging any sensitive information.

6. Kretzschmar claims the Applicant has used the Trade Mark since 2006 in respect of the Applicant’s Services and registered the business name ELITE FITNESS EQUIPMENT OSBORNE PARK (‘Business Name’) in 2008, attaching details of the Business Name from the Australian Securities & Investments Commission Register (‘ASIC’). Kretzschmar declares that when the Trade Mark was first used in 2006, the Applicant was not aware of other trade marks containing ‘Elite Fitness Equipment’.

7. Kretzschmar states that the Applicant is well known in the community (which is not defined), has a great reputation, has approximately 75,000 customers (providing no supporting evidence) and no customers have been confused between the trade mark (which is not defined but I assume means the Trade Mark) and any other trade mark. Kretzschmar exhibits largely undated reviews and testimonials from Facebook, True Local and Google.

8. Kretzschmar attests that the Applicant has invested a substantial number of resources in the Trade Mark and significant time and money has been spent is promoting, developing and expanding the brand. In support, Kretzschmar exhibits undated printouts of the Applicant’s Website and one undated post from the Applicant’s Facebook page.

   Summary of EIR

9. Cooke 2 consist mainly of submissions rather than evidence, and where there is evidence, it is a repeat of what appeared in Cooke 1. Nothing turns on the contents of Cooke 2 and therefore I find it unnecessary to summarise its contents.

   Discussion and reasons

   Section 44

10. Section 44 relevantly provides (notes omitted):

    (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

    (a)it is substantially identical with, or deceptively similar to:

    (i)a trade mark registered by another person in respect of similar services or closely related goods; or

    (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

    (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

11. The SGP nominates the Opponent’s Marks for this ground. To this end, this Office was notified by the Applicant on 27 February 2025 that the Opponent’s Marks were not renewed and had been removed from the Trade Mark Register on 8 January 2025. Given the removal of the Opponent’s Marks, the s 44 ground cannot succeed.

    Section 58

12. Section 58 of the Act provides:

    Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

    Note:For applicant see section 6.

13. The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the original owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is earlier.[5]

    [5] Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601 (Latham CJ, Rich, Dixon, McTiernan and Webb JJ).

14. To succeed on this ground of opposition, the Opponent must establish:

    ·that the Trade Mark is identical, or substantially identical, to a trade mark(s) relied upon by the Opponent (‘First Element’);[6]

    ·that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent have been used (‘Second Element’);[7] and

    ·that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to the Application or any actual use of the Trade Mark by the Applicant, whichever is earlier (‘Third Element’).[8]

    [6] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936 (Gummow J).

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640.

    [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

15. The Act provides for registration of ownership and not ownership by registration.[9]  Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[10]

    [9] [9]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).

    [10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

16. The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[11] which in this case is 20 March 2019.

    [11] Ibid [14].

17. This ground of opposition will be established if it is found the Applicant is not the owner of the Trade Mark in respect of the Applicant’s Services.

18. The SGP identifies the Opponent’s Marks which the Opponent claims were first used by the Opponent 25 years ago in respect of the Opponent’s Goods and Services. However, the Opponent has provided no corroborating evidence to support this assertion nor any evidence to support an assertion that the Opponent first used the Opponent’s Marks (or any of them) before the Relevant Date or before any use by the Applicant.

19. Given the above, the ground under s 58 is not successful.

    Section 58A

20. Section 58A provides:

    Opponent’s earlier use of similar trade mark

    (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

    (a)subsection 44(4); or

    (b)a similar provision of the regulations made for the purposes of Part 17A.

    Note:Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.

    (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

    (a)first used the similar trade mark in respect of:

    (i)similar goods or closely related services; or

    (ii)similar services or closely related goods;

    before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

    (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

    Note:For predecessor in title see section 6.

21. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4). In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given that the Opponent’s Marks have been removed, the provisions of s 44(4) are not available to be applied in this opposition proceeding. As such this ground of opposition is not available to the Opponent.

    Section 60

22. Section 60 provides:

    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.

    Note:For priority date see section 12.

23. To establish this ground, the Opponent must demonstrate the existence of another trade mark(s) which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.

24. While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60.[12]

    [12] Ibid [89]; Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J).

25. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[13]

    [13] [2000] FCA 1335, [81] (‘McCormick’).

26. Further, Kenny J stated in McCormick that:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[14]

    [14] Ibid [86].

27. There are significant weaknesses in the Opponent’s evidence as while Cooke 1 asserts that the Opponent’s Marks have acquired a reputation in Australia for the Opponent’s Goods and Services before the Relevant Date, there is no supporting evidence in either Cooke 1 or Cooke 2 for these assertions.

28. In my assessment of the evidence, I cannot be satisfied that the Opponent had developed the necessary reputation in any of the Opponent’s Marks at the Relevant Date in respect of the Opponent’s Goods and Services. Thus, the s 60 ground of opposition has not been established.

    Section 62A

29. Section 62A provides:

    Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

30. As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

    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.[15]

    [15] [2012] FCA 81, [167].

31. In DC Comics v Cheqout Pty Ltd,[16] 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.

    [16] [2013] FCA 478, [62].

32. The SGP claims that the Opponent had an unwritten licence with the Applicant for Perth, and when the Opponent attempted to formalise the licence arrangement with a licence agreement, the Applicant denied there was a licence. Therefore, the Applicant’s intention in filing the Application was to block the Opponent from using the Opponent’s Marks. Cooke 1 repeats these claims.

33. The Opponent has not provided any supporting evidence that there was an unwritten licence with the Applicant for Perth, nor that when the Opponent attempted to formalise the licence arrangement, the Applicant denied there was a licence. Further the Opponent has not provided any evidence to support the claim that the Applicant’s intention in filing the Application was to block the Opponent from using the Opponent’s Marks.

34. The Opponent has merely made unsubstantiated claims in the SGP and the evidence as to the Applicant’s intentions in filing the Application. As the Opponent has not provided any supporting evidence that the Applicant’s filing of the Application falls below the standard of acceptable commercial behavior, the Opponent has not established the ground of opposition under s 62A.

    Decision

35. I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 1997038 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal 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

36. Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    4 March 2025