Escape Room Games Pty Ltd v Escape Room Geelong Pty Ltd

[2018] ATMO 93

TRADE MARKS ACT 1995

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

Re:Oppositions by Escape Room Geelong Pty Ltd to registration of trade mark applications 1754105 (41) - Escape Room Geelong – The Mad Scientist - and 1754369 (41) - ESCAPE ROOM GEELONG THE MAD SCIENTIST with stylisation – both in the name of Escape Room Games Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Sally Curtis, Director of the Opponent

Applicant: Not represented at hearing but relied on written submissions by Andrew Ferguson, Director of the Applicant

Decision:

2018 ATMO 93

Trade Marks Act 1995 – s 52 opposition – s 62A pursued – ground not established – trade marks to proceed to registration.

Background

1. This decision is in respect of oppositions under section 52 of the Trade Marks Act 1995 (‘the Act’) by Escape Room Geelong Pty Ltd (‘the Opponent’) to the registration of the following trade marks (‘the Trade Marks’) in the name of Escape Room Games Pty Ltd (‘the Applicant’):

Trade Mark No	1754105	1754369
Trade Mark	Escape Room Geelong – The Mad Scientist
Filing Date	22 February 2016	24 February 2016
Specification	Class 41: Arranging of entertainment; Entertainment; Management of entertainment services; Party planning (entertainment); Providing facilities for entertainment; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of club entertainment services; Provision of entertainment facilities; Provision of entertainment services via an online forum	Class 41: Arranging of entertainment; Club entertainment services; Entertainment; Management of entertainment services; Organising of entertainment; Party planning (entertainment); Providing facilities for entertainment; Provision of club entertainment services; Provision of entertainment facilities

1. The Trade Marks were examined as required under s 31 of the Act. Acceptance of the Trade Marks for possible registration was advertised in the Official Journal of Trade Marks on 14 July 2016 in the case of application 1754105 and 21 July 2016 in the case of application 1754369.

2. For each of the Trade Marks, the Opponent filed a Notice of Intention to Oppose on 11 September 2016 followed by a Statement of Grounds and Particulars (‘SGP’) on 11 October 2016.

3. The Applicant filed Notices of Intention to Defend each of the oppositions on 14 November 2016.

4. In due course, the parties filed evidence in support of the oppositions, evidence in answer and evidence in reply.

5. The matters came before me, a delegate of the Registrar of Trade Marks, in Canberra on 13 March 2018. Sally Curtis, co-founder and a Director of the Opponent, made oral submissions on its behalf, supplemented by written submissions made by R J Maguire of Counsel. The Applicant did not appear at the hearing but Andrew Ferguson, founder and Director of the Applicant, made written submissions on its behalf in accordance with my directions.

Grounds of opposition and onus

1. The SGPs nominated s 62A as the single ground of opposition in both matters. As I stated at the hearing, this is the ground that I must determine the oppositions under based on the evidence before me.

2. Section 62A provides:

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

3. The Opponent bears the onus of establishing the ground of opposition.[1] Although bad faith is a serious allegation requiring cogent evidence, the standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 [145].

   [2] Ibid.

4. The date at which the rights of the parties are to be determined is the filing date of the trade mark applications;[3] that is 22 February 2016 in respect of trade mark number 1754105 and 24 February 2016 in respect of trade mark number 1754369 (‘the relevant dates’).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Evidence

1. The parties rely on the following declarations:

Evidence in support

• Declaration of Sally Lauren Curtis (Co-founder and director of the Opponent) made on 21 February 2017 with Annexures A to H (‘Curtis 1’);

• Declaration of Owen Spear (Founder and owner of “Escape Room Melbourne”) made on 18 February 2017 with Annexures A to C (‘Spear Declaration’);

• Declaration of Sam Carter (Volunteer at Escape Room Melbourne) made on 18 February 2017 with Annexure A (‘Carter Declaration’).

Evidence in answer

• Declaration of Andrew Ferguson (Director and founder of the Applicant) made on 23 May 2017 with Annexures AA to GC (‘Ferguson Declaration’).

Evidence in reply

• Declaration of Sally Curtis made on 24 July 2017 with Annexure SC-A to SC-S (‘Curtis 2’).

1. At this point it is convenient to turn to the evidence with particular emphasis on the timeline of relevant events put forward by each of the parties. Before doing so however, I think it is helpful to explain what an ‘escape room’ is, given this lies at the heart of this dispute. The Cambridge English Dictionary defines ‘escape room’ as ‘a game where people are locked into a room and have to find a way to escape by finding clues in it, and solving puzzles, or a special room where this is done’.

The Opponent and its evidence

1. Sally Curtis (‘Curtis’) and her business partner Christopher Gumley (‘Gumley’) are the founders and directors of the Opponent. In late July 2015 they met with Owen Spear (‘Spear’), the owner of the business Escape Room Melbourne which has locations in South Melbourne, Flemington and Oakleigh. At this meeting, Curtis and Gumley got Spear’s permission to open an associated business in Geelong under the name Escape Room Geelong.

2. On 30 July 2015 Escape Room Melbourne received a booking for the following day at its Flemington location. Annexure B to the Spear Declaration is a copy of the booking details and shows that Andrew Ferguson (‘Ferguson’) made a booking for 31 July 2015 at Escape Room – Flemington.

3. Sam Carter (‘Carter’), a volunteer at Escape Room Melbourne, declares that he was volunteering at the Flemington location on 31 July 2015 and was approached by a man who identified himself as Andrew Ferguson. Carter declares that Ferguson told him he was opening an escape room business in Geelong but did not indicate what he intended to call the business. 

4. On 6 August 2015 Gumley registered the domain name escaperoomgeelong.com.au. Annexure B to Curtis 1 contains a WHOIS^® extract which confirms that the above mentioned domain name is registered to Gumley. Annexure B also contains a payment receipt relating to the domain registration for escaperoomgeelong.com.au dated 6 August 2015.

5. In Curtis 1, Curtis declares that in early August 2015 she registered and published a Facebook^® page under the name Escape Room Geelong (‘Opponent’s Facebook page’). Annexure SC-A to Curtis 2 consists of a screenshot showing that the Opponent’s Facebook page was first registered on 8 August 2015. Curtis asserts that the Opponent’s Facebook page was published and available to consumers from at least 26 September 2015 onward. Annexure SC-B to Curtis 2 consists of a screenshot of the Opponent’s Facebook page showing a post from 26 September 2015.

6. On 23 August 2015 Spear entered into a licence agreement with Curtis and Gumley. He declares that conversations about this commercial arrangement began in late July 2015 or early August 2015.  He also declares that under the licence agreement he agreed to assist Curtis and Gumley in setting up a business in Geelong under the name “Escape Room Geelong (ERG)”.

7. In September 2015 Curtis registered Escape Room Geelong as a business name. Annexure SC-H to Curtis 2 contains an extract from the Australian Security and Investments Commission’s (‘ASIC’) website. The extract shows that the business name Escape Room Geelong was registered to Curtis on 15 September 2015. 

8. Annexure SC-N to Curtis 2 is a screenshot of a bank account in the name of Curtis T/as Escape Room Geelong. The screenshot shows that the bank account was opened on 15 September 2015.

9. Annexure SC-S to Curtis 2 is a Statement of Adjustments for the purchase of a property in Geelong where Curtis and Gumley’s business is now located. The Statement of Adjustments indicates that settlement took place on 2 November 2015.

10. The Opponent was incorporated on 16 October 2015. Curtis declares that on 8 December 2015 Gumley sold the first voucher for entertainment services relating to the Opponent’s escape room.

11. On 26 January 2016 Spear received an email from Ferguson. Annexure C to the Spear Declaration is a copy of that email. In the email, Ferguson acknowledges that he visited Escape Room Melbourne’s Flemington Room in August 2015. Ferguson refers to himself as the operator of Escape Room Geelong – The Mad Scientist (and to the domain name He further states that he began building his escape room in July 2015 and finished in November 2015 and opened on 3 December 2015. Ferguson also states that he understands that there is a franchise of Escape Room Melbourne under construction in South Geelong.

12. After receiving this email, Spear and Ferguson had a telephone conversation. In the Spear Declaration, Spear declares that during this conversation he told Ferguson that he was assisting with the set-up of Escape Room Geelong (Curtis and Gumley’s business) and that the owners would not be pleased with the name Ferguson had chosen for his business. 

13. Curtis declares that she first became aware of Ferguson in January 2016 after coming across an article published by the Geelong Advertiser called ‘Geelong’s newest escape room attracts super sleuths’. She subsequently conducted further online searches and found that Escape Room Geelong was being used on various platforms by another business, which turned out to be Ferguson’s business. Curtis determined that Ferguson registered a Facebook^® page under the name Escape Room Geelong in October 2015 and registered the domain name on 5 October 2015. 

14. On 28 January 2016 Curtis made a complaint to ASIC against Ferguson in relation to his use of Escape Room Geelong. Annexure SC-R to Curtis 2 contains a copy of that complaint and an email from ASIC dated 28 January 2016 acknowledging that a complaint had been made.

15. On 29 January 2016, Curtis received a message from Ferguson via the Opponent’s Facebook^® page. Annexure H to Curtis 1 is a screenshot of this message, which states:

    Hey guys – I’m Andrew Ferguson from Escape Room Games Pty Ltd. We operate Escape Room Geelong – The Mad Scientist. I just got off the phone from Owen [Spear] and he mentioned you may have some concerns regarding the branding name of one of our escape rooms affecting yours. It would be great to catch up for a coffee and have a chat sometime if you would like…

16. In February 2016, the Opponent opened its escape room.

17. Curtis asserts that there has been confusion in the marketplace between the Opponent’s business and the Applicant’s business. Annexure E to Curtis 1 contains a screenshot of the Opponent’s Facebook page showing a comment made by someone named Black Suzi on 21 August 2016. The comment praises the writer’s escape room experience and then goes on to state ‘Well done to our friendly host, Andrew’. The Opponent asserts that this shows consumer confusion as the review is in relation to the Applicant’s business but has been made on the Opponent’s Facebook page.

The Applicant and its evidence

1. Andrew Ferguson is the sole director and founder of the Applicant, which was incorporated on 2 November 2015. In paragraph 1 of his declaration he describes the Applicant’s business as follows:

   The Applicant offers themed rooms filled with puzzles and clues (Escape Rooms), which provide entertainment services to patrons who attempt to solve the puzzles to escape as quickly as possible.

2. In August 2014 Ferguson had visited an escape room in Malaysia and on 3 July 2015 he visited an escape room in Melbourne. After a positive experience in Malaysia and an underwhelming experience at the escape room in Melbourne Ferguson decided to build his own escape room.

3. On 24 July 2015 Ferguson contacted a business program and was told to undertake a feasibility study. As part of this feasibility study he attended Escape Room Melbourne’s Flemington location on 31 July 2015. At the Flemington location, Ferguson was greeted by and had a conversation with a man named Sam. Ferguson told Sam that he was designing an escape room to be built in Geelong. Ferguson declares that Sam made no mention of another escape room in Geelong or any involvement by Escape Room Melbourne in that area.

4. Ferguson declares that he began designing his escape room on 1 August 2015 and had settled on the design and commenced construction by 10 August 2015. 

5. On or about 6 October 2015 Ferguson chose the name Escape Room Geelong – The Mad Scientist. At paragraph 34 of  his declaration he states that he chose this name:

   …because it covered three key elements: The type of service (escape room), the location (Geelong) and a unique identifier, name or theme (The Mad Scientist). I believed that this would best aid any Google searches for escape rooms in Geelong and also aid those looking for the Applicant’s escape room in particular.

6. On 6 October 2015 Ferguson opened the Facebook^® page Escape Room Geelong – The Mad Scientist (‘the Applicant’s Facebook page’). Annexure AM to the Ferguson Declaration is a screenshot of the Applicant’s Facebook page and shows a post from 6 October 2015.

7. On 6 October 2015 Ferguson opened the website At paragraph 18 of his declaration he states that he chose this website address because ‘it had a close and substantial connection to the underlying business and because it would rank well in an internet search for Geelong escape rooms’.

8. On 7 October 2015 Ferguson opened a booking management account with a business named Bookeo^®, which enables bookings and payments to be taken via an online booking calendar. Annexure AN to the Ferguson Declaration is an email from Bookeo^® dated 7 October 2015. The email confirms the creation of the following Bookeo^® account:

9. On 13 October 2015 Ferguson announced on the Applicant’s Facebook page that his escape room would open on 3 December 2015. Annexure AO to the Ferguson Declaration consists of a screenshot of the Applicant’s Facebook page showing this announcement.

10. On 21 October 2015 Ferguson posted an image containing the words “Escape Room Geelong – The Mad Scientist” on the Applicant’s Facebook page. Annexure AQ to the Ferguson Declaration is a screenshot of that post.

11. On 24 and 28 October 2015 the first two paid bookings for the Applicant’s escape room were made via Bookeo^®. Annexures AR and AT to the Ferguson Declaration are the respective booking details and I note that the experience is listed as Escape Room Geelong.

12. As mentioned, on 2 November 2015 the Applicant was incorporated. Annexure AU to the Ferguson Declaration is a copy of the Certificate of Registration.

13. On 3 November 2015 Ferguson advertised gift vouchers bearing the words “Escape Room Geelong - The Mad Scientist” on the Applicant’s Facebook page. Annexure AV to the Ferguson Declaration is a screenshot of that post.

14. On 3 November 2015 Ferguson opened a bank account in the Applicant’s name, as shown in a screenshot in Annexure AW to his declaration. Ferguson also declares that he opened a PayPal^® account in the Applicant’s name on 3 November 2015.

15. Ferguson declares that the first customers came through the Applicant’s escape room on 3 December 2015.

16. On 20 January 2016 an article was published by the Geelong Advertiser in relation to the opening of the Applicant’s escape room. The article refers to the room as: “Escape Room Geelong – The Mad Scientist.”

17. Ferguson declares that on 26 January 2016 he noticed another Facebook^® page with the name Escape Room Geelong. The page contained the image of a moose head which Ferguson associated with Escape Room Melbourne. Ferguson states that the only information or activity on the page was two photographs posted on 9 November 2015.

18. On 26 January 2016 Ferguson emailed “cross marketing” invitations to two escape rooms in Melbourne, one of which was Escape Room Melbourne. Annexure CE to  his declaration contains a screenshot of the emails. The email to Escape Room Melbourne is the same email referred to in the summary of the Applicant’s evidence at [23] of this decision.

19. On 29 January 2016 Ferguson received a phone call from Spear. Ferguson declares that Spear told him that he was ringing in response to Ferguson’s cross marketing invitation. Ferguson says that during the conversation Spear told him: that he would be in Geelong the following week to meet with owners of another escape room under construction in South Geelong; the owners of the South Geelong escape room had a problem with the Applicant’s use of the name Escape Room Geelong and had asked Spear to speak to Ferguson about it.

20. That same day Ferguson sent a message via the Opponent’s Facebook page. Annexure D to the Ferguson Declaration is a screenshot of that message. The content of the message is reproduced at [27] of this decision. Ferguson declares that he did not receive a response to the message. 

21. On 9 February 2016 Ferguson noticed a paid Google^® advertisement linked to the website On that same day Ferguson:

• Searched the Australian Business Name Register for Escape Room Geelong and found it to be registered to Curtis.

• Conducted a Whois^® domain name search for < and found it to be registered to Gumley.

• Noticed that Curtis’ ABN was on a Bookeo^® page. Annexure EE to the Ferguson Declaration is a screenshot of that page. Ferguson states that there was no mention of the Opponent on that page.  That may be so.  However, I note that the words “Escape Room Geelong” are at the top of the page immediately followed by Curtis’ ABN and address details.

1. Annexure CF to the Ferguson Declaration is an invoice to the Applicant for promotional materials relating to Escape Room Geelong The Mad Scientist. The invoice is dated 12 February 2016.

2. On 14 February 2016 Ferguson enagaged Wightons Lawyers. On 16 February 2016 Wightons Lawyers wrote to Curtis regarding the Applicant’s use of the phrases ‘first in Geelong’ and ‘Geelong’s original’.

3. On 19 February 2016 Ferguson noticed a post on the Opponent’s Facebook page announcing that Escape Room Geelong was officially open.

4. Annexures EI and EJ to the Ferguson Declaration consist of email correspondence between Ferguson and Curtis and Gumley. Ferguson declares that he sent an email to Curtis on 19 February 2016 inviting her to meet him. On 21 February 2016 an agreement was reached to meet on 27 February 2016. Ferguson declares that he received an email from Gumley on the morning of 22 February 2016 asking him to cease and desist and that he had been advised to take the matter to Court.

5. Ferguson declares that in response to this perceived threat and to protect the interests of the Applicant he filed trade mark application number 1754105 on the evening of 22 February 2016.

6. On 23 February 2016 Ferguson filed a complaint with the Australian Competition and Consumer Commission (‘ACCC’) in relation to Curtis and Gumley’s use of ‘first in Geelong’ and ‘Geelong’s original’. Annexure EK to his declaration is a copy of an email from the ACCC dated 23 February 2016 acknowledging receipt of the complaint.

7. On 23 February 2016 Ferguson declares that he contacted the Dispute Settlement Centre of Victoria, a mediation service operated by the Victorian State Government, and a meeting was scheduled between Ferguson, Gumley and Curtis for 1 March 2016. At paragraph 93 of his declaration, Ferguson states that the attempted mediation between the parties failed.

8. On 24 February 2016 Ferguson then filed trade mark application number 1754369.

Discussion and reasons

1. The Trade Marks have been opposed on the basis of s 62A of the Act; that is that the trade mark applications were made ‘in bad faith’.

2. The words ‘bad faith’ are not defined in the Act. However, in Fry Consulting Pty Ltd v Sports Warehouse (No 2) Dodds-Streeton J made the following observations:

   Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

   The formulation in the United Kingdom authority of bad faith as falling short of the standard of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone…

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

   The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[4]

   [4] [2012] FCA 81 [164].

3. In DC Comics v Cheqout Pty Ltd (‘DC Comics’), Bennett J endorsed the approach taken by Dodds-Streeton J, stating: 

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The 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.[5]

   [5] [2013] FCA 478 [62].

4. Accordingly, in deciding this matter I must determine, based on the evidence before me, what the Applicant knew at the time of making the trade mark applications and then, in light of that knowledge, whether its behaviour fell short of acceptable commercial behaviour and might be described as ‘of an unscrupulous, underhand or unconscientious character’.

5. It is well established that the knowledge of a director is automatically imputed to the corporation.[6] Ferguson is the sole director of the Applicant and as such his knowledge is attributed to the Applicant.

   [6] Houghton (JC) and Co. v Northard, Lowe and Wills Ltd [1928] AC 1, 18.

6. The evidence shows that Ferguson visited Spear’s business, Escape Room Melbourne, on 31 July 2015. Undoubtedly, then, Ferguson was aware of the Melbourne business at this time. However, the evidence does not demonstrate that Ferguson knew of the Opponent before he visited Spear’s business, nor does it demonstrate that Ferguson was made aware of the Opponent or its proposed business in Geelong during that visit.  The declaration from Carter, who was volunteering at Spear’s business on the day of Ferguson’s visit, makes no mention of informing Ferguson that an escape room was being built in Geelong. In fact, Carter declares that Ferguson informed him that he (Ferguson) was opening an escape room business in Geelong, although Ferguson did not give Carter the name of the business.   

7. As mentioned, Curtis also makes reference to Spear’s, in or about late July 2015, granting her and Gumley a licence to use the name ‘Escape Room Geelong’ and all associated branding. It is unclear to me what rights, if any, Spear had in the name ‘Escape Room Geelong’ and I am unable to glean any information from the licence itself as, if it was a written licence, it was not entered into evidence. That aside, there is nothing to suggest that the arrangement between Spear and the pair was public knowledge, or known to Ferguson, in July 2015.

8. The Opponent also submits that the feasibility study conducted by Ferguson should have alerted Ferguson to the fact that Curtis and Gumley were using the name ‘Escape Room Geelong’. From the information before me, it seems that Ferguson began his feasibility study in late July 2015. It is not clear to me at what point the feasibility study was finished, or exactly what it entailed. However, it seems to me that if the feasibility study was completed by 6 August 2015 it would not have shown any results relating to the Curtis and Gumley as they had not yet taken any steps to register ‘Escape Room Geelong’ as a business name or domain name or used it on social media. The first of these steps did not occur until 6 August 2015 when Gumley registered the domain name ‘escaperoomgeelong.com.au’.

9. Additionally the Opponent also asserts that many of the screenshots put forward by the Applicant have been selectively cropped and as such are misleading. For example, the Opponent asserts that the Applicant’s evidence does not show that it uses the abbreviation ERG along with the words ‘Escape Room Geelong’. However this does not rise beyond an assertion as the Opponent’s evidence does not contain the uncropped screenshots or sufficiently specific detail about the material that has been cropped. Moreover, demonstrating that the Applicant uses Escape Room Geelong ERG does not, of itself, necessarily indicate that the opposed trade mark applications were made in bad faith.

10. In this matter it is also important to bear in mind the nature of the words common to both the Opponent’s and the Applicant’s branding. The words ‘Escape Room Geelong’ are on the face of it apt for normal description of the services offered by both parties, being provision of facilities located in Geelong to play an adventure game in which participants solve puzzles and find clues in an effort to escape a room within a set time limit. This is not a situation where the common element is unique or otherwise distinctive such that the likelihood that two parties would think of it independently was remote. ‘Escape Room Geelong’ is a convenient and essentially descriptive phrase, (as mentioned earlier the combined words “escape room” are defined in the Cambridge English Dictionary), consisting, indeed, of the very words that multiple people, independently of one another, would think of or want or need to use to describe an escape room situated in Geelong.

11. The evidence before me clearly establishes that Ferguson was aware of the following at the time of making the trade mark applications:

• 31 July 2015 – Ferguson was aware of, and visited, Spear’s business ‘Escape Room Melbourne’.

• 26 January 2016 – Ferguson became aware of the Opponent’s Facebook page and its use of ‘Escape Room Geelong’ on that page. 

• 29 January 2016 – During a conversation with Spear, Ferguson learned that there was another escape room under construction in South Geelong (the Opponent’s escape room) and that the owners of that escape room had “a problem” with Ferguson using the name ‘Escape Room Geelong’.

• 9 February 2016 – Ferguson became aware that: the business name ‘Escape Room Geelong’ was registered to Curtis; the domain name ‘ was registered to Gumley; there was a Bookeo^® page with Curtis’ ABN. With respect to this Bookeo^® page, Ferguson submitted that there was no mention of the Opponent on that page. Nevertheless the screenshots of the page in question, which constitute Annexure EE to the Ferguson Declaration, do show the words ‘Escape Room Geelong’ immediately before Curtis’ ABN.

• 19 February 2016 – Ferguson, via a post on the Opponent’s Facebook page, became aware that the Opponent had officially opened its business under the name ‘Escape Room Geelong’.

• 22 February 2016 – Ferguson received an email from Gumley asking him to cease and desist using the words ‘Escape Room Geelong’.  

1. The evidence demonstrates that from at least 26 January 2016, the Applicant was aware of use of the words ‘Escape Room Geelong’ on the Opponent’s Facebook page. However given the descriptive nature of the words, the fact that Ferguson had been using the words ‘Escape Room Geelong’ in various iterations on media platforms from at least 6 October 2015 and that the application for trade mark number 1754105 was made on the same day as Ferguson received Gumley’s cease and desist email, I am satisfied on balance that the Applicant’s filing of the opposed applications was motivated by Ferguson’s desire to protect the branding of the Applicant’s business. Ferguson declares as much at [69] of his declaration, where he states:

   On 22 February 2016 at 10.34am I received an email from Chris Gumley asking me to cease and desist saying his lawyer had advised him to take the matter to court.

   On 22 February 2016 at 8.24pm in response to this perceived threat I felt it prudent to protect the interests of the company and the brand Escape Room Geelong – The Mad Scientist so I lodged Trade Mark Application No. 1754105 (the word mark) ‘Escape Room Geelong – The Mad Scientist’ on behalf of the Applicant.

2. In summary, the Opponent has not satisfied me that the opposed applications were made in bad faith, in the sense that in all the circumstances persons adopting proper standards would so regard the decision to apply to register the Trade Marks, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

3. Accordingly, I find that the s 62A ground of opposition has not been established.

Decision

1. Section 55(1) of the Act 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 the ground on which the   application was opposed has been established.

2. The sole ground of opposition pressed has not been established. Accordingly trade mark application numbers 1754105 and 1754369 may proceed to registration one month from the date of this decision.

3. If the Registrar is served with a notice (or notices) of appeal before that time, I direct that registration shall not occur until the appeal(s) has/have been decided or discontinued and that the disposition of the application(s) should otherwise be in accordance with the Court’s order or direction.

Costs

1. The parties each sought costs. As the successful party, the Applicant is so entitled. In respect of Trade Mark 1754105 I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995. In respect of trade mark number 1754369 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[7]

   [7] [2001] ATMO 78.

Katrina Brown

Hearing Officer

Trade Marks Hearings

12 June 2018