Emanuela Elia v Oz Derma Pty Ltd

[2018] ATMO 39

TRADE MARKS ACT 1995

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

Re:Opposition by Emanuela Elia to registration of trade mark application 1738598 (44) - OZDERM CLINIC - filed in the name of Oz Derma Pty Ltd.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: Griffith Hack – written submissions Applicant: Self represented
Decision:	2018 ATMO 39 Trade Marks Act 1995 Section 52 opposition to registration: sections 44, 58, 62, 42 and 62A not established. Opposition not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Oz Derma Pty Ltd has applied for the registration of the trade mark which appears below:

Application No:         1738598

Priority Date:             4 December 2015

Goods:Class 44: Consultancy relating to cosmetics; Consultancy services relating to personal appearance (hair, beauty, cosmetics); Cosmetic electrolysis; Cosmetic make-up services; Cosmetic treatment services; Advisory services relating to beauty treatment; Beauty consultancy; Beauty consultation; Beauty counselling; Beauty services; Beauty treatment services; Consultancy relating to beauty; Consultancy relating to beauty care; Beautician services; Consultancy relating to skin care; Advisory services relating to slimming; Consultancy relating to slimming; Slimming salon services; Slimming treatment services; Consultancy relating to surgery; Providing information, including online, about hygienic and beauty care for human beings or animals; Personal hair removal services; Lymphodrainage services; Massage; Dermatology services; Depilatory treatment services; Personal care services (medical nursing, health, hygiene and beauty care); Manicuring; Therapeutic treatment of the body; Therapeutic treatment of the face

Trade Mark:               OZDERM CLINIC

(‘the Trade Mark’)

1. The Trade Mark was examined as is prescribed by section 31 of the Act and advertised as accepted for possible registration on 28 April 2016 in the Australian Official Journal of Trade Marks.

2. On 31 May 2016 Emanuela Elia, (‘the Opponent’), filed a Notice of Intention to Oppose accompanied by a Statement of Grounds and Particulars. The Statement of Grounds and Particulars details grounds under sections 44, 58, 60, 42, and 62A of the Act.

3. On 17 June 2016 the Applicant filed a Notice of Intention to Defend.

4. Thereafter, the parties have filed Evidence in Support, Evidence in Answer, and Evidence in Reply as is further discussed below.

5. Both parties have been advised of their right to be heard or to make written submissions – neither party requested to be heard.  The Opponent has filed written submissions by its attorneys, Griffith Hack.  The Applicant has not filed written submissions.

Evidence

The Opponent

1. The Evidence in Support is a declaration by the Opponent made on 23 September 2016 with Annexures EE-1 to EE-23; the Opponent has also filed Evidence in Reply being a further declaration by the Opponent made on 4 April 2017 with Exhibits [sic] EE-24 to EE-28.

2. The Opponent is the owner of the Australian registered trade mark which appears below:

Registration No:         1591878

Priority Date:             18 November 2013

Services:Class 42: Consumer trials, product testing, skin testing (including hair and nails), clinical photography, claim substantiation, efficacy testing, independent assessment, subjective assessment, sensory testing, instrumental measurements, post marketing studies clinical trials, Advisory services relating to scientific products; advisory services relating to scientific research; compilation of scientific information; laboratory services (scientific research or analysis); management of scientific research projects; medical research (scientific research for medical purposes); preparation of reports relating to scientific research; preparation of scientific reports; preparation of statistics for scientific research; providing information, including online, about scientific and technological services and research and design relating thereto; provision of information relating to scientific research; provision of scientific information; provision of surveys (scientific); rental of scientific equipment; rental of scientific instruments; scientific advisory services; scientific and technical analysis; scientific and technological services; scientific computer programming services; scientific consultancy; scientific research; scientific research in the field of pharmacy; scientific research into the development of new products; scientific research relating to bacteriology; scientific research relating to biology; scientific research relating to chemical products; scientific research relating to chemistry; scientific research relating to cosmetics; scientific research relating to ecology; scientific research relating to genetics; scientific testing services

Trade Mark:               Ozderm

(‘the Registration’)

1. The Opponent explains:

   I am the Opponent and Managing Director of Legame Pty Ltd trading as Ozderm, Suite 1, 56-56A Thompson Street, Drummoyne NSW 2047 Australia ("Ozderm"). I have held this position since April 2011 and the company has been trading under the name Ozderm since September 2013. I authorise use of my OZDERM trade mark to Legame Pty Ltd trading as Ozderm.

2. The Opponent explains her business:

   My business, trading under the name Ozderm, was founded in September 2013. It is a clinic that specialises in efficacy testing in vivo (on humans) and clinical trials for cosmetics, personal care products, cosmetic procedures, dermatological products, dermatology-related pharmaceutical products and devices that come into contact with the skin (including, but not limited to, devices used in cosmetic clinics).

   Ozderm provides dermatological assessments, treatments and procedures including anti-ageing treatments, conducted as part of a clinical trial.

   Ozderm provides dermatological services to the general public, by way of a database of volunteers who provide their details including their particular cosmetic concerns and the treatments that they are interested in receiving. Members of the public can sign up to be a volunteer through Ozderm's website.

   Ozderm also provides dermatological services to the general public by way of advertising treatments available to trial. As a result of seeing advertisements, Ozderm receives emails and phone calls from the public who are interested in participating in trials.

3. Annexure EE-3 to the Opponent’s declaration is an historical printout of the Opponent’s webpage.  The page is headed with the trade mark that appears below and explains under the heading ‘The most EFFECTIVE way to test your products’:

(‘the Logo Trade Mark’)

Welcome to Ozderm

Ozderm is a research company that conducts independent trials for cosmetic products, consumer products, Over-The-Counter pharmaceutical products and devices.

We help clients identify the type of study that suit their product and we design protocols to meet their specific needs.

We assist clients achieving their goals with regards to

·    Claims substantiation

·    Consumer trials

·    Efficacy testing

·    Independent assessment

·    Subjective assessment

·    Sensory testing

·    Clinical photography "before and after"

·    Objective instrumental measurements

·    Post marketing studies

·    Late phase clinical trials

Our mission is to provide our trial participants with excellent professional care, and provide our sponsors with the highest quality research services.

1. Trial participants are recruited with notice board advertisements (in clubs, shopping centres, retail establishments etc) tailored to the product being tested – one such advertisement at Annexure EE-10 of the Opponent’s declaration appears below:

1. I note that there are no definitions of the Opponent’s trade marks in the Opponent’s declaration and that she refers to both the Ozderm word trade mark (‘the Word Trade Mark’) and the Logo Trade Mark as being ‘my Ozderm trade mark’ (collectively, ‘the Opponent’s Trade Marks’).

2. The Opponent provides confidential details of advertising expenditure and revenue generated in relation to the use of the Opponent’s Trade Marks.  I would characterise these figures as being modest and note that the details of advertising expenditure do not, apparently, distinguish between those related to advertising her product testing services and those related to advertising for trial participants.

The Applicant

1. The Evidence in Answer filed by the Applicant is comprised of a declaration by Leila Khalili, Managing Director of the Applicant, made on 26 December 2016, with attachments.

2. Ms Khalili says that the Applicant provides services in two locations in the Sydney metropolitan area.

3. Ms Khalili states:

   [The Applicant] bought & took over St James Medical Practice (established since 1997) in Sep 2013 we kept old name for more than a years & as we providing skin check, skin treatment  medically & cosmetically That’s why we decided to change the name to OZDERM CLINIC.

   We did research & we were aware of Ozderm in Drummoyne NSW & we [were] advised the services are different & we can use the name.

   OZDERM CLINIC is an accredited General practice with Doctors, a Registered Nurse & other staff.

   We provide Medical & Cosmetic Service with face to face consultation & treatment to many patients.

4. Ms Khalili encloses examples of the trade marks that the Applicant uses which comprise both the Trade Mark and that below:

Remarks

1. I will discuss other aspects of the parties’ evidence as it becomes relevant to my decision.

Onus and Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application.[2] I note that whilst the grounds under sections 44 and 60 specify ‘the priority date’, that date is here the same as the filing date.

Section 44

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Ground and Particulars

1. The Opponent asserts in its Statement of Grounds and Particulars:

   The Opponent is the registered owner in Australia of Australian Trade Mark Registration No. 1591878 Ozderm (“the Opponent’s Trade Mark”). Application No. 1738598 OZDERM CLINIC (“the Applicant’s Trade Mark”) has a priority date of 4 December 2015, which is after the priority date of the Opponent’s Trade Mark on 18 November 2013.

   The Applicant’s Trade Mark is substantially identical with, and/or deceptively similar to the Opponent’s Trade Mark because the dominant part of the Applicant’s Trade Mark is the word OZDERM, which is identical to the Opponent’s Trade Mark. The word CLINIC is descriptive in relation to the services of the Applicant’s Trade Mark and should be disregarded when comparing the Applicant’s Trade Mark with the Opponent’s Trade Mark. The Applicant’s Trade Mark has been filed for services that are the same as, similar or closely related[3] to the services for which the Opponent’s Trade Mark is registered. In view of these similarities, confusion and deception between the Applicant’s Trade Mark and the Opponent’s Trade Mark is likely.

   [3] There is no provision within subsection 44(2) that relates to services which are ‘closely related’ to other services.

Legal Background

1. Section 44 of the Act relevantly provides:

   44Identical etc. trade marks

   […]

   (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.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

2. Subsection 14(2) provides:

   14Definition of similar goods and similar services

   […]

   (2)For the purposes of this Act, services are similar to other services:

   (a)if they are the same as the other services; or

   (b)if they are of the same description as that of the other services.

3. In order to found the ground under subsection 44(2) is incumbent upon an opponent to establish each of the following:

   1.   That the priority date of the registered or pending trade mark is earlier than that of the opposed trade mark; and

   2.   The respective services under consideration are similar; and

   3.   The trade marks of the parties are either substantially identical or deceptively similar.

   (Respectively, the ‘first’, ‘second’, and ‘third requirements’.  Should any requirement not be established, there is no necessity to consider the remaining requirements as the ground is not established).

4. I note that, notwithstanding that the ground as detailed in the Statement of Grounds and Particulars proposes otherwise, the logic of subsection 44(2) suggests that the issues be considered in the order outlined above – there is, for instance, an implied illogicality in a finding that two trade marks are deceptively similar but that the services involved are not similar services: if the services are not similar, how can any resemblance between the trade marks be held to be deceptive?  In Registrar of Trade Marks v Woolworths[4] French J observed:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

   [4] 1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [39].

Priority Date

1. The priority date of the Registered Trade Mark is earlier than that of the Trade Mark.  The first requirement is thus established.

The Same Services/Services of the Same Description

1. The services of the parties are not the same services.

2. In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[5] Greenwood, Besanko and Katzmann JJ discussed the expression ‘services of the same description’:

   [5] [2017] FCAFC 56 at [333].

   The starting point in determining the scope of the phrase “services of the same description as that of [the registered services]” in s 120(2)(c) is the statement of principle in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 606 by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ (notwithstanding that the question involved consideration of whether goods were goods of the same description), in these terms:

   There may be many matters to be considered apart from the inherent character of the goods [or services] in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J. in In re Jellinek’s Application. Romer J. thought it necessary to look beyond the nature of the goods [or services] in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question where bought and sold. Shortly after the decision in Jellinek’s Case the AssistantComptroller elaborated on the observations Romer J. in the following manner: “In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods [or services], their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application, Romer J. classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasised that the classifications contained in the schedules to the Trade Mark Rules are not a decisive criterion as to whether or not two sets of goods are ‘of the same description’”.

   Dixon J had said much the same thing in Reckitt & Colman (Australia) Ltd v Boden [1945] HCA 12; (1945) 70 CLR 84 at 94 when his Honour observed:

   What forms the same description of goods [or services] must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments.

   There is no good reason to believe that these statements of principle do not apply in relation to services for the purposes of s 120(2)(c) and, in fact, they have been found to so apply: MID Sydney Pty Ltd v Australian Tourism Co Ltd, supra at [241], Burchett, Sackville and Lehane JJ at 243 and 244. Plainly enough, the calculus of factors may alter when the question becomes one of applying the principles to services. By way of illustration, the Full Court at 242 and 244, supra at [241] of these reasons, concluded that the services involved in conducting “an hotel business” including the accommodation of guests, the operation of restaurants and bars and the provision of conference and business facilities and other services normally offered by hoteliers (the impugned services), had different characteristics from services described as “property management services” (the registered services) and thus, those services could not be described as  services of the same description  as property management services. Those conclusions were reached by the Full Court by construing the words “property management services” and taking into account the evidence given by service providers as to the features of the various services.

   As a question of statutory construction and statutory purpose concerning s 120(2)(c), the centrality of s 20 of the Act must be kept in mind in conjunction with s 120(2)(c).

   Section 20 confers on the registered owner of the trade mark the exclusive right to use (and authorise others to use) the trade mark and the right to obtain relief for infringement. The scope of the monopoly grant (subject to the Act) is conditioned not only by a corresponding right to seek relief to stop others from using, as a trade mark, a sign substantially identical with or deceptively similar to the registered trade mark in relation to, relevantly here, the registered services, but also in relation to services of the same description as the registered services. Determining whether services are services of the same description as the registered services involves examining the essential characteristics of each.

   In the written and oral submissions the appellants again place reliance, on this issue, on the notion that the registered services of the appellants “plainly overlap”. Thus, it is said that the features of the services provided by the respondents, the subject of the findings, are necessarily features of the same description as the features of the registered services. We have already taken a different view about the extent to which it can be said that the registered services “plainly overlap”.

   As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:

   (1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

   (2) To whom are the services offered?

   (3) How are they provided?

   (4) How are they used?

   (5) What is their purpose?

   (6) Are they bundled together with other services?

   (7) Are they differentiated by the functional level at which they are provided: wholesale or retail?

   (8) Where do they originate?

   (9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

   (10) How closely contestable are the services in substance: are they in the same market or trade?

   (11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].

1. Although it is not determinative of this matter, I note by way of background that the services offered under the Registration occur in Class 42 of the International (Nice) Classification of Goods and Services (‘Nice’).  The Explanatory Note to Class 42 of Nice states:

   Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers, etc.

   This Class includes, in particular:

   -the services of engineers and scientists who undertake evaluations, estimates, research and reports in the scientific and technological fields (including technological consultancy);

   -computer and technology services for securing computer data and personal and financial information and for the detection of unauthorized access to data and information;

   -scientific research services for medical purposes.

   This Class does not include, in particular:

   -business research and evaluations (Cl. 35); 

   -word processing and computer file management services (Cl. 35);  

   -financial and fiscal evaluations (Cl. 36); 

   -mining and oil extraction (Cl. 37); 

   -computer (hardware) installation and repair services (Cl. 37); 

   -services provided by the members of professions such as medical doctors, veterinary surgeons, psychoanalysts (Cl. 44); 

   -medical treatment services (Cl. 44); 

   -garden design (Cl. 44); 

   -legal services (Cl. 45).

2. Whereas the Explanatory Note for Class 44 of Nice states:

   Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.

   This Class includes, in particular:

   -medical analysis services relating to the treatment of persons (such as x-ray examinations and taking of blood samples);

   -artificial insemination services;

   -pharmacy advice;

   -animal breeding;

   -services relating to the growing of plants such as gardening;

   -services relating to floral art such as floral compositions as well as garden design.

   This Class does not include, in particular:

   -vermin exterminating (other than for agriculture, aquaculture, horticulture and forestry) (Cl. 37); 

   -installation and repair services for irrigation systems (Cl. 37); 

   -ambulance transport (Cl. 39); 

   -animal slaughtering services and taxidermy (Cl. 40); 

   -timber felling and processing (Cl. 40); 

   -animal training services (Cl. 41); 

   -health clubs for physical exercise (Cl. 41); 

   -scientific research services for medical purposes (Cl. 42); 

   -boarding for animals (Cl. 43); 

   -retirement homes (Cl. 43).

3. Relevant to this matter, the services under the Trade Mark involve the use of various pharmaceutical products for their customers’ beautification which may include minor medical procedures.  The services under the Registration may be broadly categorised as scientific services involving the testing of various products for their efficacy or benefits on human subjects, assessing and reporting on their efficacy, and so forth.

4. The Opponent submits:

   [The] evidence demonstrates that it is common for cosmetic, beauty and medical clinics (Class 44) to also provide clinical research, testing and trial services (Class 42). The nature and purpose of the Opponent’s Services is to ensure the safety and effectiveness of the provision of the Applicant’s Services and related products which the Applicant retails and distributes within its clinics. It is often the case that both kinds of Services can and are provided by the same provider as the infrastructure and resources for both kinds of Services are the same. Therefore, as demonstrated by the evidence, the trade channels of the Opponent’s Services and Applicant’s Class 44 Services are the same or at least very closely associated.

5. I do not concur with the above submission.  The fact that a dermatologist might be involved in a medical practice and also in testing products for use on patients does not, I consider, affect the differences in the intrinsic nature of the parties’ services.  Many professionals might have a direct interface with clients and another role such as scientific/medical research, or lecturing within a university: this, however, does not bring each of scientific/medical research services, educational services, and professional client services together within the expression ‘services of the same description’.  Further, while the evidence filed by the Opponent shows that some dermatologists test products upon their patients within their practices, it is unclear from the Opponent’s evidence what fraction of dermatologists also test products and whether this practice is commonplace.  Accordingly, it is not clear with what frequency this occurs.  (I also observe in passing that the Opponent’s evidence does not establish that she is a dermatologist or other medical professional).

6. The Opponent’s services are offered to traders who want to have their products tested on people: they are not offered to the public at large.  This might concern the testing of cosmetics, but might also involve, the evidence shows, testing hair conditioners, anti-dandruff preparations, or babies’ nappies.  The Applicant’s services, in contrast, are offered to the public at large who wish to have a medical consultation or to have themselves cosmetically beautified by a medical professional.

7. In my consideration the services of the parties are not ‘services of the same description’.  The Opponent has not established the second requirement.

8. Accordingly there is no need to discuss the third requirement (that the trade marks under consideration be either substantially identical or deceptively similar).

9. The Opponent has not established the ground under section 44 of the Act.

Section 58

Ground and Particulars

1. The Opponent asserts in its Statement of Grounds and Particulars:

   The Opponent has used its Trade Mark in Australia since at least as early as September 2013 in relation to a range of services including those for which the Opponent’s Trade Mark is registered. The Opponent’s use therefore predates the priority date of the Applicant’s Trade Mark of 4 December 2015 by more than two years. To the best of the Opponent’s knowledge, the Applicant has not used its Trade Mark in Australia from a date that is before the Opponent’s date of first use.

   The Applicant’s Trade Mark is substantially identical to the Opponent’s Trade Mark because the dominant part of the Applicant’s Trade Mark is the word OZDERM. The word CLINIC is descriptive in relation to the Applicant’s services and should be disregarded when comparing the Applicant’s Trade Mark with the Opponent’s Trade Mark. The Applicant’s Trade Mark is, or is intended to be, used in respect of the same, similar or closely related services.

Legal Background

1. Section 58 of the Act provides:

   58Applicant 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.

2. Ownership of a trade mark may arise in two ways: firstly, by use of a sign as a trade mark; or, secondly, by the filing of an application for registration as a trade mark.  In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark.  In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[6] to the impugned trade mark in relation to goods or services which are, as a minimum, ‘the same kind of thing’.[7]

   [6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].

   [7] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.

Discussion

1. The Opponent submits:

   The Applicant [sic] submits that the Opposed Marks are substantially identical to the Opponent’s Trade Mark and applied to the same kind of services to the Opponent’s Services. We refer to [20]-[28] above for an analysis of the substantially identical nature of the Opposed Marks to the Opponent’s Trade Mark and the similarity between the Applicant’s Services and the Opponent’s Services.

2. Paragraphs [20] to [28] referred to in submissions, above, are found under the heading ‘Similar or Closely Related Services’ rather than ‘Services Which Are the Same Kind of Thing’.  I note that the test here is a narrower one than is that involved in consideration of ‘services of the same description’.  As I have found that the services involved are not ‘of the same description’, it should necessarily follow that neither are they ‘the same kind of thing’.

3. I additionally observe that the Opponent’s evidence suggests that it is the Opponent’s view that since medical personnel may be involved in assessing the suitability of volunteers to be trial participants, the service provided by the Opponent is similar to the Applicant’s medical services.  However, the Opponent does not offer medical services to the world at large, or (apparently) treatments for any ailments that potential participants in the testing might be suffering – the process undertaken by the Opponent includes (when appropriate) making a medical assessment of the fitness of potential cadres for whatever product is being tested.  In short the medical checking of participants, if it occurs, is an adjunct to the product testing service and is not the service being provided.

4. The services of the parties are not ‘the same kind of thing’.

5. The Opponent has not established the ground under section 58 of the Act.

Section 60

Ground and Particulars

1. The Opponent asserts in the Statement of Grounds and Particulars:

   The Opponent’s Trade Mark has been in use in Australia since at least September 2013 for a range of services including those for which the Opponent’s Trade Mark is registered. The Opponent has, before the priority date of the Applicant’s Trade Mark on 4 December 2015, acquired a reputation in its Trade Mark resulting from extensive use in Australia with respect to a range of services including the services for which the Opponent’s Trade Mark is registered.

   Use of the Applicant’s Trade Mark in consideration of its substantially identical or deceptively similar nature[8] to the Opponent’s Trade Mark, and the Opponent’s reputation in Australia in respect of a range of services including those for which the Opponent’s Trade Mark is registered, is likely to result in deception and confusion in the marketplace.

   [8] I note that it is not a requirement under section 60 of the Act that the trade marks be ‘substantially identical’ or ‘deceptively similar’.

2. Section 60 of the Act provides:

   60Trade 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.

3. In order to found this ground the Opponent must establish to the Registrar’s satisfaction that, at the priority date:

   ·    the reputation of the trade mark on which it relies[9] was such that

   ·    the use of the Trade Mark would be likely to confuse or deceive.

   [9] Under section 60 of the Act it is not necessary that the trade mark on which the Opponent relies be registered.

Reputation

1. In McCormick & Co Inc v McCormick[10] (‘McCormick’) Kenny J asked:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   [10] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

2. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[11] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[12] was to be:

   ... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

   (Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[13]

   [11] [2000] FCA 1587; (2000) 50 IPR 1.

   [12] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

   [13] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

3. Regarding the measurement of reputation, in McCormick Her Honour went on to state:[14]

   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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that 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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

   [14] Op cit at [86].

4. As I have mentioned, above, the confidential details of revenue and expenditure on advertising by the Opponent under her trade mark appear to be modest.  I have additionally remarked that it is not clear to me whether the advertising figures include both the expenditures on promoting the Opponent’s business and the advertising for participants in the product trials that she conducts.

5. I consider that the modest reputation of the Opponent’s Trade Marks exists in relation to the specialised service of product testing on human subjects.  While the Opponent submits that the ‘the Opponent also provides dermatology and beauty services which would typically be classified in Class 44’, I do not find this suggestion to be well supported by the evidence which in fact emphasises that the Opponent conducts ‘independent trials for cosmetic products, consumer products, Over-The-Counter pharmaceutical products and devices’.  The Opponent does not offer dermatology or medical cosmetic services to the public at large but, rather, tests products on selected subjects; these tests might be of cosmetic beautification products or ‘over-the-counter’ pharmaceuticals but might involve other products such as babies’ nappies.  To judge by the evidence before the Registrar, it is not possible for a member of the public to book a medical or dermatological treatment with the Opponent and pay for it.  Rather, the participants in the Opponent’s product testing are given some recompense for their time and their travel.  The Opponent’s clients are not the participants in her product testing services; her clients are the traders who engage her to test their products.

Likelihood of Confusion or Deception

1. The assessment of the likelihood of deception or confusion is moderated by the factors discussed by French J in Registrar of Trade Marks v Woolworths.[15] Absent any requirement under section 60 that the trade marks under consideration be deceptively similar, these factors are:

   [15] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

   (i) […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question […] must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

2. The terms ‘deception’ and ‘confusion’ refer to two different mental states.  The differences between ‘deception’ and ‘confusion’ were explained by Richardson J in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd:[16]

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [16] [1979] RPC 410 at 423.

1. Additionally, as Rich J said in Radio Corporation Pty Ltd v Disney:[17]

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney.” The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney.” This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion.[18] It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.

   [17] 1937] HCA 38; (1937) 57 CLR 448.

   [18] I note that the onus is now on the Opponent to establish the likelihood of deception or confusion.

2. The likelihood of ‘confusion’ may be held to exist even if it does not persist to the point of sale.  In Tivo Inc v Vivo International Corporation Pty Ltd[19] Dodds-Streeton J observed at [105]:

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

   [19] [2012] FCA 252 at [105].

3. The Opponent, in her evidence, documents several phone calls from people wishing to book the Applicant’s services.  It is not clear to me whether these have happened because of the reputation of the Opponent’s trade mark or are the result of simple mistake – people may have sought the Applicant’s phone number in a directory or on a search engine by looking for ‘Ozderm’ and have mistakenly phoned the first number than they have found.

Discussion

1. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[20] the delegate observed:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

   [20] [2012] ATMO 124 at

2. The Opponent submits that ‘The [..] Opponent’s Trade Marks are recognised by the public generally in respect of the Opponent’s Services and the Opponent’s Class 44 Services.’  As previously discussed, the evidence before the Registrar does not establish that she provides those Class 44 services.  Moreover, while a number of people have taken part as subjects in the Opponent’s consumer trials and product testing, the Opponent has not provided any details of the numbers of people involved or how many these trials were of cosmetics or beautification products or ‘over-the-counter’ pharmaceutical products.  Accordingly, (setting to one side questions about the relevance of these cadres to this enquiry) it is not possible to begin to gauge the significance of this aspect of the Opponent’s submissions. 

3. Additionally, it is not clear that the traders who are, or might be, the Opponent’s clients (those who would wish to have their products tested by the Opponent) would, because of the reputation of the Opponent’s trade mark, be confused by the Applicant’s cosmetic medical services offered under the Trade Mark.

4. In conclusion, I consider that the Opponent’s evidence before the Registrar does not establish that the use of the Trade Mark would be likely to confuse or deceive because of the reputation of the Opponent’s trade mark.

5. The Opponent has not established its ground under section 60 of the Act.

Section 42

Ground and Particulars

1. In the Statement of Ground and Particulars the Opponent asserts:

   Use of the Applicant’s Trade Mark would be contrary to the Australian Consumer Law (“ACL”) in Schedule 2 to the Competition and Consumer Act 2010 (Cth),

   The Opponent has used the Opponent’s Trade Mark in Australia since at least September 2013 in respect of a range of services including those for which the Opponent’s Trade Mark is registered. As a result, the Opponent has acquired a substantial reputation in Australia in the Opponent’s Trade Mark.

   Due to the substantial identity and/or deceptive similarity of the Applicant’s Trade Mark when compared to the Opponent’s Trade Mark, and the fact that the Applicant’s Trade Mark is, or is intended to be, used in respect to the same, similar or closely related services to the services of the Opponent’s Trade Mark, consumers could[21] be misled or deceived as to the origin of the services of the Applicant’s Trade Mark, and/or whether they have been endorsed, licensed, or approved by the Opponent.

   The priority date of the Opponent’s Trade Mark and the use by the Opponent of the Opponent’s Trade Mark predates the Priority Date of the Applicant’s Trade Mark.

   In light of the Opponent’s Trade Mark and the reputation of the Opponent in the Opponent’s Trade Mark, consumers who are exposed to the Applicant’s Trade Mark are likely to be led to believe it has some connection with the Opponent given the dominance of the term ‘OZDERM’ in the Applicant’s Trade Mark and the Opponent’s Trade Mark.

   Using the Applicant’s Trade Mark for the claimed services or for services that are similar or closely related to the claimed services, would amount to, without limitation, breaches of:

   (a) Section 18 of the ACL, which prohibits a person, in trade or commerce, from engaging in conduct which is misleading or deceptive or is likely to mislead or deceive;

   (b) Section 29(1)(g) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making false or misleading representations that the goods or services have sponsorship or approval; and

   (c) Section 29(1)(h) of the ACL which prohibits a person, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion, by any means, of the supply of goods or services, from making a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.

   [21] I note that the relevant test is at the standard ‘likely to’ rather than ‘could’.

Legal Background

1. Section 42 of the Act relevantly provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   […]

   (b)its use would be contrary to law.

2. In Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd[22] Madgwick J observed that the Registrar is to consider grounds under paragraph 42(b) of the Act and that the criterion is that the use ‘would’ not ‘could’ be contrary to law.

   [22] [2001] FCA 683; (2001) 52 IPR 24; [2001] AIPC 91-724 at [26] to [28].

Discussion

1. In Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd[23] the Court stated in relation to section 52 of the Trade Practices Act 1972, which was the similarly worded legislative predecessor of the ACL:

   In McWilliam's Wines Pty. Ltd. v. McDonalds System of Australia Pty. Ltd [1980] FCA 159; (1980) 49 FLR 455; 33 ALR 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd. [1953] HCA 73; (1954) 91 CLR 592, a decision on the Trade Marks Act 1905 (Cth), as amended, is distinguishable. I need not add to what their Honours said on this subject (1980) 49 FLR, at pp 458-459, 475-476; 33 ALR, at pp 397-398, 412-413.

   [23] [1982] HCA 44; (1982) 149 CLR 191; (1982) 42 ALR 1; (1982) 56 ALJR 715; [1982] ATPR 40-307; 1A IPR 684; 1 TPR 282 at [8].

2. It follows that, as the Opponent has not established its ground under the lower standard ‘confuse or deceive’ under section 60 of the Act, it cannot establish its ground here in relation to the higher standard ‘mislead or deceive’ under the ACL.

3. The Opponent has not established the ground under paragraph 42(b) of the Act.

Section 62A

Ground and Particulars

1. In the Statement of Grounds and Particular the Opponent asserts:

   At the time of making the application, there had been initial correspondence between the Applicant and the Opponent on the basis of which the Applicant was placed on notice of the Opponent’s concerns regarding the Applicant’s Trade Mark and the Opponent’s earlier rights in the Opponent’s Trade Mark for the same, similar or closely related services. The Applicant’s conduct in filing an application for the Applicant’s Trade Mark in such circumstances falls short of acceptable standards of commercial behaviour.

2. I note that the evidence establishes that on 20 November 2016 the Opponent wrote an email to the Applicant stating that her use of a business name (which was not specified in the email) infringed the Registered Trade Mark.  On 4 November 2016 the Applicant made application to register the Trade Mark.  On 22 January 2016 the Opponent’s attorneys, Griffith Hack, issued a ‘cease and desist’ letter to the Applicant.

3. Although the assertion in the Statement of Grounds and Particulars may be read as implying that the Applicant directly responded to either the Opponent or her attorneys, there is no evidence of such a response.

4. Ms Khalili, for her part, states that she was told that there was no conflict between her services and the services performed by the Opponent.  Ms Khalili does not state who told her this although I note that the filing for the registration of the Trade Mark was one under the Assisted Filing Service offered by the Trade Marks Office and that the advice might have come from a trade mark examiner.

Legal Background

1. Section 62A of the Act provides:

   62AApplication made in bad faith

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

2. In DC Comics v Cheqout Pty Ltd[24] Bennett J observed:

   [24] [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334 at [58].

In the absence of Australian judicial authority, Dodds-Streeton J recently considered s 62A in Fry.[25] The relevant facts were:

[25] Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565.

oThe director of Fry Consulting, Mr Fry, was well aware of the online retail store, Tennis Warehouse, as run by Sports Warehouse, the opponent to the application, and the fact that it sold goods to Australia through that website.

oHis visits to the online store run by Sports Warehouse led him to register the business name Tennis Warehouse and the domain name and to set up an online retail store in competition.

oMr Fry adopted the name “Tennis Warehouse” knowing that it would cause confusion between the stores.

oThe potential for confusion was at least partly why he chose the name.

oIn developing his website, Mr Fry took images from the Sports Warehouse website.

oAfter complaints by Sports Warehouse, Mr Fry changed the name on the website from “Tennis Warehouse” to “Tennis Warehouse Australia” but did not change the business name or domain name.

oIn the earlier factual proceedings before Kenny J (Fry Consulting Pty Ltd v Sports Warehouse Inc (No 1) [2011] FCA 1417 (Fry (No 1)), Mr Fry’s explanation regarding the change to “Tennis Warehouse Australia” was rejected and his credibility was criticised (at [67]).

oJustice Kenny in Fry (No 1) concluded (at [104]–[105]) that the conduct of Fry Consulting and of Mr Fry was not that of a trader actuated only by proper motives in the sense intended in Clark Equipment.

Justice Dodds-Streeton rejected Sports Warehouse’s submission that an application could be in bad faith if, as in that case, the applicant for the mark knew or intended that its use would cause confusion, or was aware that an overseas company which owned the mark was already operating or intending to operate in Australia (at [139]). Fry Consulting submitted that Kenny J’s finding that its use of the mark did not constitute an example of a trader actuated by only proper motives was not relevant to whether it applied to register the trade mark in bad faith, as her Honour’s findings were directed only at whether Sports Warehouse’s mark “Tennis Warehouse” had inherent distinctiveness under s 41(3) of the Act.

Her Honour considered (at [144]) the Explanatory Memorandum relating to s 62A, which stated:

oThe Act allows removal of a trade mark on the basis that there was no intention in good faith to use, authorise use of, or assign the trade mark. However, current opposition grounds do not cover instances in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith. There have been several instances in which trade mark applicants have deliberately set out to gain registration of their trade marks, or have adopted trade marks, in bad faith. Some examples of these include:

a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;

a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and

business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

When such situations occur, there is very little third parties can do to prevent registration of this type of trade mark, because existing grounds for rejection and opposition do not allow the Registrar to take these facts into account.

Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.

Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:

oBad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

oBad faith does not require dishonesty.

oBad 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.

oThe question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

oIt is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.

oThe registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.

oAll the circumstances surrounding the application to register the mark are relevant.

oAn act of bad faith cannot be cured by an action after the date of application.

Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:

... 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.

1. It is apparent that the Applicant’s conduct in filing the application for registration of the Trade Mark does not constitute ‘bad faith’: all that the Applicant has done when cautioned by the Opponent in her email of 20 November 2016 is to attempt to secure its rights in the Trade Mark by filing an application for its registration.  As established by Fry, mere knowledge of the use of a trade mark by another person prior to filing an application to register it is not (without more) an indication of bad faith.

2. The Opponent has not established the ground under section 62A.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

   Note:For limitations see section 6.

2. The Opponent has not established a ground of opposition.

3. The trade mark application may then proceed to registration one month from 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 and that the disposition of the application should be in accordance with the Court’s order or direction.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
26 March 2018