Emark Analytics APAC Pty Ltd v Martin Kostic

[2023] ATMO 107

TRADE MARKS ACT 1995

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

Re:Opposition by EMARK ANALYTICS APAC PTY LTD to registration of trade mark application number 2214020 (classes 9, 35, 38 and 42) - EMARK - in the name of Martin Kostič

Delegate:

Katrina Brown

Representation:

Opponent: Baxter Patent Attorneys Pty Ltd

Applicant: Mark My Words Trademark Services Pty Ltd

Decision:

2023 ATMO 107

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 58, 59, 60 and 62A – no ground established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by EMARK ANALYTICS APAC PTY LTD (‘Opponent’) to registration of the following trade mark:

Trade mark number:  2214020

Trade mark:  EMARK (‘Trade Mark’)

Applicant:  Martin Kostič (‘Applicant’)

Filing date:  4 October 2021

Specification:  Classes 9, 35, 38 & 42[1] (‘Applicant’s Goods and Services’)

[1] See Annexure A for full specification.

1. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 5 March 2022.

2. The Opponent filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 3 June 2022.

3. The Applicant filed a Notice of Intention to Defend on 1 August 2022.

4. Neither party filed evidence.

5. After the period for filing evidence ended, the Applicant requested that the matter be decided without a hearing.

6. The matter has been allocated to me, a delegate of the Registrar of Trade Marks (‘Registrar’), to decide based on the material described in [3] of this decision.

Grounds of opposition, onus, and relevant date

1. The SGP adequately particularised grounds of opposition under ss 42(b), 58, 59, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

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

3. The date at which the rights of the parties are to be determined is 4 October 2021 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 58

1. Section 58 of the Act provides:

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

2. In the SGP, it is asserted that the Applicant is not the owner of the Trade Mark because the Opponent (or its parent company) was the first user of a substantially identical trade mark in Australia.

3. The Opponent did not file any evidence in this matter. As such, no documentary evidence has been provided to substantiate the assertion that the Opponent, or its parent company, was the first user of a substantially identical trade mark in Australia.  

4. In the absence of evidence, I cannot be satisfied that the Applicant is not the owner of the Trade Mark.

5. The ground of opposition under s 58 of the Act has not been established.

Section 59

1. Section 59 of the Act provides that registration of a trade mark may be opposed on the ground that the applicant does not intend to use, or authorise use of, the trade mark in Australia.

2. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[4] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[5] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[6]

   [4] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).

   [5] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).

   [6] Suyen Corp v Americana International Ltd (n 4) [190].

3. In support of the Opponent’s prima facie case, the SGP states the following:

   The Applicant is the director of the parent company of the Opponent, and is intimately aware that it is the Opponent and its parent company who properly own the mark the subject of the Opposed Mark. Further, the only use of the subject mark in Australia is by the Opponent and its parent company. There has been no use of the Opposed Mark by the Applicant.

4. The Opponent did not file any evidence in this matter. As such, no documentary evidence has been provided to substantiate a relationship between the Applicant and the Opponent, or its parent company. Furthermore, mere non-use on the part of the Applicant does not, of itself, imply a lack of intention to use the Trade Mark. In Suyen Corp v Americana International Ltd Dodds-Streeton J pointed out that:

   There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[7]

   [7] Ibid [207].

5. The Opponent has not made out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date. Consequently, the ground of opposition under s 59 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. In this matter, it is asserted in the SGP that the Opponent, or its parent company, has a reputation in Australia in respect of a trade mark that is identical to the Trade Mark.

4. For the purposes of s 60 reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[8] The Opponent did not file any evidence in this matter. As such, no documentary evidence has been provided to substantiate, as a matter of fact, that the Opponent, or its parent company, had a reputation in any trade mark in Australia at the Relevant Date.

   [8] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

5. Consequently, the ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would rather than could be contrary to law.[9]

   [9] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. In the SGP, it is asserted that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). It is also asserted that use of the Trade Mark would amount to the common law tort of passing off.

ACL

1. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in s 18 of the ACL and ‘false or misleading’ in s 29 of the ACL.[10]

   [10] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

2. In the SGP, it is asserted that due to the reputation of the Opponent (or its parent company) in an identical trade mark, relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods and Services, or as to them having some connection with the Opponent, or its parent company.

3. As already stated in relation to the s 60 ground of opposition, the Opponent has not provided documentary evidence to substantiate that it, or its parent company, has a reputation in any trade mark in Australia. Where the case is framed as relying upon reputation (as it is in this matter), the absence of such evidence is fatal.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[11]

   [11] [1989] FCA 506, [40] (Hill J).

3. Section 18 of the ACL is the equivalent of s 52 of the TPA.[12] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [12] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

4. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

5. The ground of opposition under s 42(b) of the Act has not been established.

Section 62A

1. 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.

2. The SGP includes the following in respect of this ground of opposition:

   By reason of the Opponent’s (and its parent company’s) reputation in the mark the subject of the Opposed Mark, and that the Applicant of the Opposed Mark is the director of the Opponent’s parent company, the Applicant was, or should reasonably have been aware, that the Opponent and its parent company enjoyed such a reputation and that it owned the mark the subject of the Opposed Mark in Australia.

   The Applicant sought to take advantage of the Opponent’s (and its parent company’s) reputation by filing, in bad faith (within the meaning of sections 62A of the Trade Marks Act 1995 (Cth)), an application that is substantially identical with, or deceptively similar to, the Opponent’s (and its parent company’s) mark and in relation to goods and services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Mark is sought to be registered.

3. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[13]

   [13] [2009] ATMO 26 [12].

4. In this matter, the Opponent has not provided any evidence to support its assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith.

5. Accordingly, the ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

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

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

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

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

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2214020 may proceed to registration one month from the date of this decision.

3. If the Registrar is 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 otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

7 August 2023

Annexure A

Class 9 - Application software; Computer software; Computer software products; Computer software downloaded from the internet; Downloadable computer programs and recorded software distributed online; Downloadable software applications (apps); Application software; Computer software; Computer software products; Computer software downloaded from the internet; Downloadable computer programs and recorded software distributed online; Downloadable software applications (apps); all the aforesaid in the field of business operations, business performance management data integration, data and business analysis, data strategy and excluding the field of digital stamps

Class 35 - Business management assistance; Business management consultancy; Consultancy relating to personnel management; Commercial or industrial management assistance; Business investigations; Business management and organization consultancy; Business organization consultancy; Business research; Advisory services for business management; Computerized file management; Professional business consultancy; Providing business information; Outsourcing services (business assistance); Compilation of statistics; Compilation of information into computer databases; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Maintenance of registers (for others)

Class 38 - Providing access to databases; Transmission of digital files; Streaming of data

Class 42 - Computer programming services for search engine optimisation; Creating indexes of web-based information for searching purposes (computer programming); Design and development of computer software; Updating of computer software; Advisory services relating to computer hardware (design and development); Rental of computer software; Research and development of new products for others; Recovery of computer data; Maintenance of computer software; Computer system analysis; Computer system design; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating and maintaining websites for others; Installation of computer software; Conversion of computer programs and data, other than physical conversion; Computer software consultancy; Computer virus protection services; Website design consultancy; Software as a service (SaaS); Scientific research; Server hosting; Off-site data backup (online); Electronic data storage; Cloud computing; Technological consultation services; Providing information relating to computer technology and programming via a website; Information technology services provided on an outsourcing basis; Information technology (IT) consultancy; Computer security consultancy; Internet security consultancy; Data encryption services; Monitoring of computer systems by remote access; Monitoring of computer systems to detect breakdowns; Monitoring of computer systems for detecting unauthorised access or data breach; Platform as a Service (PaaS); Development of computer platforms; Telecommunications technology consultancy; Research in the field of telecommunications technology; all of the aforementioned excluding the field of digital stamps.