Enterprise Above & Beyond Pty Ltd v Queensland Rugby Football League Limited

[2018] ATMO 180

TRADE MARKS ACT 1995

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

Re:Opposition by Enterprise Above & Beyond Pty Ltd to registration of trade mark application 1580593 (16, 24, 28, 41) – MAROONS – in the name of Queensland Rugby Football League Limited

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: Shelston IP
Decision:	2018 ATMO 180 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42, 43, 44, 58, 58A and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Enterprise Above & Beyond Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Queensland Rugby Football League Limited (‘Applicant’): 

Application Number:	1580593
Filing Date:	16 September 2013
Goods and Services:	Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; sporting picture programmes, programs, diaries, calendars and posters in this class; trading cards (printed matter); score cards, score books and score boards in this class; stickers, sticker books, napkins, serviettes, place mats and table cloths in this class; magazines in this class; publications in this class; books including instructional and educational books; pre-paid telephone calling cards in this class (not magnetically encoded); stamps; wrapping paper; swing tickets; book covers; pencil cases and rulers; mats for beer glasses; transparencies; decalcomanias Class 24: Textiles and textile goods, not included in other classes; bed and table covers; manchester; bedding; sheets; blankets; quilts; bedspreads; pillow cases; towels; tea towels; golf towels; textile wall hangings; textile serviettes; table napkins; textile place mats; textile bar runners; flags in this class; banners; covers for cushions; textile coverings for furniture, and other household items Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; arcade, board, interactive and trading card games; toys; soft toys; yoyos; cubby houses; footballs; golf equipment, apparatus and accessories including golf tees and golf bags; billiard and snooker apparatus and accessories; dart boards and dart accessories; sporting bags; balls; kicking tees; corner flags; goal posts; tackling pads; padding for goal posts; protective padding including shoulder pads; shin pads; electronic games; toy action figures and accessories therefor; action games and accessories therefor, balloons, kites; playing cards; trading cards (card games); parts, fittings and accessories for all the foregoing Class 41: Educational, recreational, sporting, coaching and training activities in this class; gambling services in this class; publication services in this class; production and distribution of pre-recorded video cassettes, video tapes and videodiscs; production and distribution of pre-recorded audio cassettes, audio tapes, audio discs and phonograph records; providing on-line information in the field of entertainment, sport, training and cultural activities; educational services relating to sport and physical education; provision of sport and physical training; teaching and coaching services relating to sport and physical education; sport and physical recreation; entertainment including sport and stadium entertainment and audience participation events; sporting and cultural activities; organising sporting competitions, matches, exhibitions and events; organisation of functions and entertainment including luncheons, cocktail parties, dinners and other forms of entertainment; hosting and organising sport award functions; sports mascot performances, cheer leader performances and dance team performances; providing sports facilities; rental of sports equipment; publishing of books, magazines, texts and printed matter; television and radio entertainment; film, video and radio production; hire of film, video and sound recordings; recording and reproduction (being production and publication) of sounds, images and data (information) related to rugby league matches, services and events, being entertainment, sporting and cultural activities; sports information services; online (electronic) publication of news and other texts (‘Applicant’s Goods and Services’)
Trade Mark:	MAROONS	(‘Trade Mark’)
Endorsements	Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.

2. Following the advertisement on 30 June 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 22 August 2016.  The Opponent then filed a Statement of Grounds and Particulars on 5 September 2016 and then a slightly revised Statement of Grounds and Particulars on 30 September 2016 (‘SGP’). The SGP raised grounds of opposition under ss 41, 42, 43, 44, 58, 58A and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 18 October 2016.

Evidence

3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 24 January 2017.  This evidence consists of a declaration by Fred Nugent, the owner of the Opponent, made on 23 January 2017 and various attachments described as exhibits or annexes marked A-H, L-X (‘Nugent 1’).

4. The Applicant filed Evidence in Answer (‘EIA’) on 26 April 2017.  This evidence consists of a declaration made on 10 April 2017 by Peter Giurissevich, Senior Legal Counsel for National Rugby League Ltd, of which the Australian Rugby League Commission (‘ARLC’) is the sole member, with Exhibits PG-1 to PG-86 (‘Giurissevich Declaration’).

5. The Opponent filed Evidence in Reply (‘EIR’) on 27 June 2017, after an earlier unsuccessful attempt on 26 June 2017.  This evidence consists of a declaration made on 26 June 2017 by Fred Nugent, with Exhibits A-L (‘Nugent 2’). 

6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 18 May 2017 the Applicant filed its submissions (‘Applicant’s Submissions’).  By letter issuing from IP Australia on 25 July 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any (or in the Applicant’s case, any additional) written submissions they wished to reply upon.  Neither party filed any further material.

7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

The Opponent

8. I note that much of the evidence filed by the Opponent is not strictly relevant to the present proceeding, which concerns the opposition to the Trade Mark, and not rights in the phrase ‘State of Origin’, the website at or various other disputes between the Applicant and Opponent.  While I have reviewed all the material provided by the parties, in my summary of the evidence I will focus on the information relevant to determining the various grounds of opposition to the registration of the Trade Mark.

9. According to the evidence filed the Opponent is a distributor and online seller of clothing and other accessories.  The Opponent was established in 1999.

10.     The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1061690	MAROONS WORKWEAR (‘Workwear Mark’)	23 June 2005	Class 25: Clothing including workwear and safetywear included in Class 25: footwear; headgear (‘Workwear Goods’)
1623852	MAROONLAND (‘Maroonland Mark’)	20 May 2014	Class 25: Football shirts; Polo shirts; Printed t-shirts; Rugby shirts; Shirt fronts; Shirt jackets; Shirts; T-shirts; Tee-shirts; Baseball caps; Bathing caps; Beach caps; Caps (headwear); Desert caps; Flat caps; Slumber caps; Sports caps; Swimming caps; Football jerseys; Jerseys (clothing); Rugby jerseys; Sports jerseys; Polo neck jumpers; Polo sweaters; Polo tops

11.     The Nugent Declarations contain the following claims/statements:

·    The Opponent sells merchandise relating to the rugby league State of Origin (as well as other state of origin matches in other sports) from its website at The Opponent has been using the Trade Mark actively in the market place since 2013, on several different products but has sold merchandise advertising the Queensland Maroons state of origin team since at least 2003, when its website at was established.  The Opponent has sold its products online including through eBay and at a wholesale level to various retail outlets. 

·    Over the last two years the Opponent has spent $10,000 in advertising and has a long history of advertising with Rugby League Week magazine.  The Applicant has purchased State of Origin products from the Opponent.

·    The Opponent was a former distributor of the Applicant’s State of Origin merchandise pursuant to a merchandising agreement but the relationship has broken down and the Applicant seeks to stop the Opponent from selling State of Origin products through its website.  Furthermore the Applicant has purchased products from the Opponent which they have sold on their own website.  Prior to this dispute the Applicant and Opponent had entered into an agreement to allow the website to be the official website for State of Origin products but the agreement has now broken down. 

·    The colour maroon is the official colour of the state of Queensland and is used for Queensland’s sporting teams, including Rugby Union and Soccer.  The Queensland State of Origin team is nicknamed the Maroons because of the colour of their clothing, the traditional Queensland colours.  Other sporting bodies need to be able to use the Trade Mark when they play representative sports.

·    There is a high chance of confusion between the Trade Mark and the Opponent’s Trade Marks.

12.     The EIS or EIR does not clearly state when the Opponent started using either of the Opponent’s Trade Marks, but from my reading of the EIS and EIR it appears that there is no evidence of any use from before the relevant date.  The vast majority of clothing offered by the Opponent makes reference to the Rugby League State of Origin and the participants in that series (including the Queensland Maroons) but does not display either of the Opponent’s Trade Marks.  The EIS provides no information about the extent of the Opponent’s sales of products bearing either of the Opponent’s Trade Marks, nor any significant detail about advertising featuring the Opponent’s Trade Marks prior to the relevant date (as opposed to more general advertising undertaken by the Opponent).   

The Applicant

13.     The Applicant is a member of the ARLC and in conjunction with the ARLC, is the body that governs the sport of rugby league in Queensland, including the administration of the Queensland rugby league team that competes in the State of Origin series against New South Wales. 

14.     The Giurissevich Declaration contains the following claims/statements:

· At examination stage the Workwear Mark was initially cited against the Trade Mark. The Applicant then made a divisional application that had the impact of removing goods in Class 25 goods from the specification for the Trade Mark. Following this application the examiner confirmed that the Workwear Mark did not provide any basis for objection under s 44 of the Act and the Trade Mark proceeded to acceptance. No objections were raised to the registration of the Trade Mark under s 41 of the Act, or any other grounds.

·    As related entities, the Applicant licences to the ARLC various trade marks and intellectual property rights held by the Applicant to promote rugby league.  The ARLC is also assisted by Velocity Brand Management (‘VBM’) in managing its intellectual property and licensing its intellectual property to third parties.

·    Rugby league teams from NSW and Queensland have competed against each other since 1908 and a regular annual series, that following changes in player selection and eligibility criteria became known as the State of Origin, has existed since 1980.  Since 1908 the Queensland team has worn maroon as a team colour and has colloquially been known as the Queensland Maroons.  The NSW team has worn blue colours and has colloquially been known as the NSW Blues.  The State of Origin is a very popular sporting event, with the 2012 series having over 10 million television viewers across 3 games nationally and three million spectators having attended State of Origin games between 2000 and 2014.

·    The Trade Mark has been used in Australia in various formats by the Applicant and ARLC and their predecessors and licensees for over 100 years and particularly since 1980.

·    The Applicant manages a merchandise licensing program with the assistance of VBM and grants rights to various licensees to use its intellectual property in relation to particular categories of merchandise.  The Trade Mark and variations such as Queensland Maroons and QLD Maroons Team have been applied to a range of products, merchandise and memorability associated with the Queensland Rugby team and sold by the Applicant, related entities and licensees since at least 1980.  This includes a large variety of clothing, sporting equipment and miscellaneous merchandise.  Annexed to the Giurissevich Declaration are copies of various catalogues dating back to 2001.

·    The Applicant has controlled the use of the Trade Mark by way of a style guide, that sets out exactly how the Trade Mark and related trade marks can be used by its licensees including what goods it can be applied to and how it can be displayed.  The presence of the style guide is evidence that the Trade Mark was created and licenced to third parties by the Applicant since at least 2012.

Grounds of Opposition, Onus and Standard of Proof

15. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

16.     The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 16 September 2013 (‘relevant date’), being the priority date of the application in Australia.[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

Section 41

17. Section 41 of the Act is set out below:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:      For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)This subsection applies to a trade mark if:

(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the

18. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’ which I note for completeness also applies at the opposition stage and in an appeal under s56 of the Act.[4]  As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

[4] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 70 IPR 59, 602.

Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[5] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

[5] (1998) 40 IPR 498, 505.

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”.  The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][6]

[6] [2017] ATMO 25, [38]-[40].

19.     In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:

(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71]. [7]

[7] [2017] FCAFC 56 at [236]

20. The ground based on s 41 of the Act is particularised in the SGP as follows:

The applicant TM is needed by other parties and traders, Maroon is the official state colour of Queensland, and other parties need to use the word Maroon / Maroons. This mark can not be allowed to be registered. The applicants TM in its own right is not capable of distinguishing any parties goods and or services.

21. I consider that the Trade Mark is to some extent, but not sufficiently inherently adapted to distinguish in respect of the Applicant’s Goods and Services to be registrable without evidence of use, that is it falls within the category set out in s 41(4)(a) of the Act. In evaluating the Trade Mark I distinguish it from the word ‘maroon’ which as a colour would most likely lack any inherent adaption to distinguish the Applicant’s Goods and Services as it simply indicates a characteristic of those goods and services.[8]  However I am not persuaded by the evidence before me that the plural word ‘maroons’ has the same effect.

[8] See also Woolworths Limited v BP p.l.c. [2013] ATMO 61.

22. Rather, I find that the word ‘maroons’ is used to describe sporting teams other entities or groups that wear the colour maroon. As such I find that the the Trade Mark only has a limited capacity to distinguish the Applicant’s Goods and Services as it indicates that the Applicant’s Goods and Services concern entities that are referred to by, otherwise associated with, or wear the colour ‘maroon’. However, that is not the end of the story with respect to s 41. For this ground to be successful the provisions of s 41(4)(b) need also to be established. Thus it will be necessary to consider the Applicant’s evidence of use of the Trade Mark.

Evidence of use

23.     The Applicant has put on evidence that the Trade Mark is the name of the Queensland rugby league team that competes in the State of Origin series with NSW.  The name ‘Maroons’ (or ‘Queensland/QLD Maroons’) has been the colloquial name of the Queensland rugby league team since 1907-08 and since 1980 the Trade Mark has been used for the Queensland rugby league team in the State of Origin series. 

24. The Giurissevich Declaration includes the statement that the Trade Mark has been used by the Applicant on television broadcasts, official playing equipment and merchandise since 1980. It contains as exhibits, clear evidence of clothing (shirts, scarves, hats, hoodies, jerseys, jackets and beanies) that have had the Trade Mark (or marks substantially identical to the Trade Mark) applied to various merchandise including goods in classes 16, 24 and 28 since 2001 and I accept the statement in the Giurissevich Declaration that the Trade Mark has been used in a similar manner by the Applicant, its predecessors and related parties, since 1980. The Trade Mark, as applied to merchandise and associated promotional material, is used in a manner that indicates that the product bearing the Trade Mark is an officially licensed product by the Applicant/ARLC, and hence has been used as a Trade Mark pursuant to s 17 of the Act. The Applicant/ARLC licenses the use of the Trade Mark, through its licensing programme managed by VBM which includes a requirement that licensees comply with a style guide that controls the use and display of marks featuring ‘Maroons’ (and other similar marks).

25.     The evidence of use of the Trade Mark between 2001 and the relevant date is substantial with the Applicant/ARLC receiving significant royalties as a result of their State of Origin licensing programs, a portion of which involves the licensing of the Trade Mark.  There is also significant evidence that the Applicant and licensed third parties engage in a considerable amount of paid and unpaid promotion of both apparel and general merchandise featuring the Trade Mark.  

26. I am satisfied that as a result of the use of the Trade Mark by the Applicant, ARLC and various authorised users and licensees in respect of a broad range of merchandise relating to the State of Origin series since at least 2001, the Trade Mark is capable of distinguishing the Applicant’s Goods and Services from those goods of third parties. At the priority date consumers regarded the Trade Mark as a badge of trade origin in the sense that they would see the Trade Mark and conclude that the Applicant’s Goods or Services were produced by or under licence by the Applicant. I find that the Opponent has failed to establish the ground of opposition under s 41.

Section 44

27. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

Section 44 - Identical etc. trade marks

(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) 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 goods or closely related services; or

(ii)            a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).

(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.

(3)If the Registrar in either case is satisfied:

(a)that there has been honest concurrent use of the 2 trade marks; or

(b)that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

Note:  For limitations see section 6.

(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a)beginning before the priority date for the registration of the other trade mark in respect of:

(i)             the similar goods or closely related services; or

(ii)            the similar services or closely related goods; and

(b)ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1) or s44(2), i.e. that at least one of the trade marks upon which it relies:

   ·    has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·    is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·    is in respect of similar goods/services, and/or services/goods which are closely related to, the Applicant’s Goods and Services (‘the third requirement’).

2. In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

3. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  The Maroonland Mark postdates the relevant date and hence does not satisfy the first requirement, while the Workwear Mark does have a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied for the Workwear Mark. 

   Similar goods and similar services

   31. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

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

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

   (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.

   32.     McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Workwear Mark is registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods 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 (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of 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, 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 emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods 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’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [9] 

   [9] [2000] FCA 1335 [17].

   Closely related goods and closely related services

   33.     The recent case of Paypal, Inc v Braintree Communications Pty Ltd summarises the legal principles applicable when determining if the services for which the Trade Mark is sought to be registered are closely related to the goods for which the Workwear Mark is registered as follows:

   In Qantas Airways Ltd v Edwards[10] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[11]:

   [10] [2016] FCA 729 at [111].

   [11] (1999) 93 FCR 365; [1999] FCA 1020 at [37].

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 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. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [12] 

   [12] [2017] ATMO 90, [28]-[29].

   34.     As the Applicant’s Goods and Services cover a wide variety of goods and services it is necessary to break down the Applicant’s Goods and Services and make a number of separate comparisons.  They are:

   a)Are the Applicant’s Goods in Classes 16 and 28 similar to the Workwear Goods? 

   b)Are the Applicant’s Goods in Class 24 similar to the Workwear Goods? 

   c)Are the Applicant’s Services in Classes 41 closely related to the Workwear Goods? 

   35.     With respect to the first question, I note that the Workwear Goods are essentially clothing footwear and headgear.  The Applicant’s Goods in classes 16 and 28 consist of a variety of printed materials and a variety of sporting equipment.  Such products are of a different nature, used for a different purpose and generally sold through different trade channels.  The respective goods are not similar.

   36.     With respect to the second question, while the Applicant’s Class 24 Goods are textiles, they are not similar to the Workwear Goods.  Textiles such as towels, bedding, and furniture covers are of a different nature, used for a different purpose and generally sold through different trade channels than clothing, footwear and headgear.

   37.     With respect to the third question, the Applicant’s Services in classes 41 are a fairly broad range of services relating to entertainment, sport, training and cultural activities.  There is no particular relationship between these and the Workwear Goods is no basis to conclude that these services are closely related to the Workwear Goods.  

1. I fail to identify any of the Applicant’s Goods and Services that are similar or closely related to the goods for which the Workwear Mark is registered. I find that the Opponent has failed to establish the ground of opposition under s 44 of the Act.

   Section 58A

   39. Section 58A of the Act is reproduced below:

   (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.

   (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.

2. The ground of opposition pursuant to s 58A of the Act was particularised in the SGP as follows:

   Enterprise can establish prior and continues use before the priority date in the same category, which the applicant is well aware of.  We use the tm on merchandise in the same categories.

3. This section only applies to marks that were accepted because of on the basis of s 44(4) of the Act. As noted in the EIA, the Trade Mark was not accepted on the basis of of s 44(4) of the Act. Furthermore I have found above that the Opponent has not established its s44 ground of opposition with respect to the Opponent’s Trade Marks without referring to s44(4). In these circumstances the s58A ground of opposition does not apply.

4. The s 58A ground of opposition is not established.

   Section 58

   43. Section 58 of the Act is reproduced below:[13]

   [13] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. 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.

5. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[14]

   [14] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[15] and

   [15] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·    that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[16]

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

6. The ground based on s 58 of the Act was particularised in the SGP as follows:

   Enterprise Above & Beyond Pty Ltd has "Prior Commercial use" of the applicants intended word mark dated before the priority date. We are a commercial business and currently use the intended mark in trade in the same market place as the Applicant before the priority date. We Supply wholesale/retail goods to sports stores, Gift Stores via several websites.

   We use the mark ongoing and in different categories. We also carry stock of items with the intended mark in the same goods and services classes.

7. The Opponent’s evidence on its past use of the Trade Mark is unclear and contradictory, with some evidence stating that it has used the Trade Mark on apparel and miscellaneous supporter merchandise since 2013, while other evidence states its use dates back to 2003.  In any event I accept from the Applicant’s detailed evidence that it or its various licensees first applied the Trade Mark to apparel and miscellaneous supporter merchandise since before 2003 (the evidence being since at least 1980 as deposed and since 2001 in exhibits attached to the Giurissevich Declaration).  I do not find that the Opponent has established that it has used the Trade Mark or a mark substantially identical to the Trade Mark before the Applicant has used the Trade Mark.

   47. In the interests of completeness, in the event that I am wrong that the Applicant’s application of the words ‘Maroons’ to merchandise promoting the Queensland Maroons rugby league team is use as a trade mark pursuant to s 17 of the Act, then I would also find that the Opponent’s application of ‘Maroons’ to its merchandise promoting the Queensland Maroons rugby league team is not use as a trade mark. In that circumstance I would find that the Opponent did not use the Trade Mark before the Applicant applied to register the Trade Mark.

   48. I find that the Opponent has failed to establish the ground of opposition under s 58.

   Section 42

   49. Section 42 of the Act is reproduced below:

   42 Trade mark scandalous or its use contrary to law

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

   (a) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

   50. The ground of opposition pursuant to s 42 of the Act was particularised in the SGP as follows:

   Substantially identical/deceptive similar to registration number, registration number 1061691 Maroons Workwear TM 1061690. Registration no 1623852, Maroonland (Word). We have been using the mark along with other organisations in connection with different goods and classes. With the registration of these marks above in class 25, we have acquired a good reputation in Australia, in view of this if the applicant’s registration if completed it would be contrary to Australian Consumer Law SS 18, 29, that prohibits misleading or deceptive conduct. TM act sect 44 2a.

   51. It appears from the particulars that this ground is limited to the s 42(b) ground of opposition as there is no allegation (nor would I otherwise find) that the Trade Mark consists of or contains scandalous matter. With respect to the s 42(b) ground of opposition the onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[17]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[18]

   [17] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

   [18] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004]59 IPR 343, 353.

   52. For the Registrar to be satisfied that the use of the Trade Mark would be in breach of ss 18 and/or 29 of the Australian Consumer Law (‘ACL’)[19] (as particularised in the SGP), the Opponent would need to show, at the very minimum, that a reputation existed in the Opponent’s Trade Marks as at the relevant date.  The EIS and EIA do not provide any details about when the Opponent started using either of the Opponent’s Trade Marks and there is little evidence of any use of the Opponent’s Trade Marks (as opposed to broader reference to the State Of Origin or the Queensland Maroons Rugby League Team) before the relevant date.  There is no information about the extent of the Opponent’s sales of products bearing any of the Opponent’s Trade Marks, nor any significant detail about advertising featuring the Opponent’s Trade Marks (as opposed to advertising of the Opponent’s business, which sells a range of apparel and merchandise, most of which does not bear the Opponent’s Trade Marks) prior to the relevant date.

   [19] Set out in Schedule 2 of the Competition and Consumer Act 2010 (Cth).

   53.     Given the Applicant commenced use of the Trade Mark prior to the Opponent commencing use of the Opponent’s Trade Marks, is it not reasonable to conclude that the Applicant’s use was motivated by any intention to cause confusion with the Opponent and the Opponent’s Trade Marks.

   54. According the grounds particularised by the Opponent, the Opponent must establish that use of the Trade Mark by the Applicant would be in breach of either ss 18 to 29 of the ACL.[20] Given the absence of any evidence of reputation in the Opponent’s Trade Marks as at the relevant date, I am not satisfied that the Opponent has met this burden. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   [20] The ground of opposition in respect of s 44 of the Act, apparently particularized in respect of this ground, having been discussed earlier in the decision.

   Section 43

   55. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   56. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [21]

   [21] [2006] FCA 1663; (2006) 70 IPR 599, [53].

8. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [22]

   [22] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

9. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

   The use of the work TM would clearly convey a connection with EAB, its likely to deceive or confuse consumers. The mark has been used in connection with other IP namely logos thus there has been minimal confusion in the market place thus fare. Under sect 41 (4) the trademark in its own right by itself doesn't distinguish the applicants goods from other traders.

   59. The Opponent has not provided any submissions to clarify the particulars in the SGP. However, when reading the SGP as a whole, it appears that the statement in the SGP ‘convey a connection with many EAB’ is a reference to the Opponent and in particular the reputation the Opponent claims in its various marks. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations in this matter. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties.

   60. With respect to the final sentence in the particulars for this ground, I have dealt with the Opponent’s ground of opposition under s 41 earlier in this decision.

10. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods and Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

    Section 62A

11. Section 62A of the Act is reproduced below:

    62A 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.

12. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

13. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[23]:

    [23] [2004] EWCA Civ 1028; [2005] FSR 10.

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[24]

    [24] [2012] FCA 81, [147].

14. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[25]

    [25] Ibid [165]-[166].

    66.     The Opponent has particularised this ground of opposition in the SGP as follows:

    The applicant is aware that other parties use the applied trademark as its needed in general trade. The applicant and its related parties is willing to lie and be dishonest and brake the law to achieve a favorable outcome for themselves.

    67.     It is clear from the Opponent’s evidence that there are a number of broader disputes between the Opponent and the Applicant relating to their past relationship and both sides seeking to register various trade marks connected with the State of Origin series and with respect to the offering or products for sale on eBay.  I do not need make a finding with respect to the Opponent’s various claims, rather this ground simply relates to whether the application to register this particular Trade Mark was made in bad faith. 

    68. It is not clear what the Opponent is referring to in its statements that the Applicant is willing to lie and brake (sic) the law. The particulars in the SGP do not reflect the non-exhaustive examples of applications made in bad faith. With respect to the claim that the Trade Mark is needed in general trade I have already addressed this issue needing to use the Trade Mark under the section 41 ground of opposition.

    69.     The evidence establishes that the Applicant/ARLC has applied the term Maroons to apparel and various other merchandising products since at least 1980 and it is, at least colloquially, the name of a rugby league team operated by the Applicant/ARLC.  As such I find it difficult to conclude that the Applicant’s decision to apply to register a trade mark that it has continuously used for that period and is closely associated with is conduct that is unscrupulous, underhanded or unconscientious.

15. In the absence of any evidence that the Applicant sought or seeks to gain some benefit from any association with the Opponent or any related parties, I am not satisfied that the application was made in bad faith. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

    71.     The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade Mark application no. 1580593 may proceed to registration not less than 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 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

16. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    6 November 2018