Euro Technik Pty Ltd v Eurotech Autohaus Pty Ltd
[2024] ATMO 164
•5 September 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Euro Technik Pty Ltd to registration of trade mark application number 2090626 (class 37) – EUROTECH AUTO HAUS (figurative) - in the name of Eurotech Autohaus Pty Ltd
Delegate: | Timothy Brown |
Representation: | Opponent: David Stewart of Bennett Litigation and Commercial Law Applicant: David Thompson of counsel, instructed by Elliptic Legal and Patent Services |
Decision: | 2024 ATMO 164 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44, 60 and 62A considered – no grounds established – trade mark to proceed to registration. |
Background
This decision concerns an opposition brought by Euro Technik Pty Ltd (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:
[1] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’). Each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
| Trade Mark Number | 2090626 |
| Trade Mark | (‘Trade Mark’) |
| Owner | Eurotech Autohaus Pty Ltd (‘Applicant’) |
| Filing Date | 22 May 2020 |
| Services | Class 37: Maintenance and repair of motor vehicles, including maintenance and repair of passenger and commercial vehicles; Motor vehicle servicing, including servicing of passenger and commercial vehicles; inspections of motor vehicles for diagnostic purposes; vehicle retrofits, including retrofits to replace and/or install audio, multimedia and navigation equipment; motor vehicle diagnostic services; installation of parts for motor vehicles; motor vehicle customisation and modification services; motor vehicle tuning; motor vehicle remapping services; tyre balancing; charging of electric vehicles; cleaning of vehicles; engine conversions; engine lubrication; fitting services for tyres; insulating of vehicles; overhaul of engines; overhaul of vehicles; reconditioning of vehicle engines; advisory services relating to motor vehicle maintenance and repair; provision of information in relation to the aforesaid services (‘Applicant’s Services’) |
The Trade Mark was examined as required by s 31 and its acceptance was advertised on 15 March 2022.
On 12 May 2022, the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’) on 9 June 2022. The Applicant filed a Notice of Intention to Defend the opposition on 25 July 2022.
On 1 November 2022, the Opponent filed Evidence in Support of the opposition. The Applicant filed Evidence in Answer on 9 February 2023. No Evidence in Reply was filed.
Following the end of the evidence stages, the Opponent requested to be heard. The matter was then heard before me, a delegate of the Registrar of Trade Marks, on 6 June 2024. The Opponent was represented by David Stewart of Bennett Litigation and Commercial Law. The Applicant was represented by David Thompson of counsel, instructed by Richard Plummer of Elliptic Legal and Patent Services.
Grounds, Onus and Relevant Date
The grounds of opposition nominated in the SGP were ss 44, 42(b), 58, 60 and 62A. During the hearing the Opponent indicated that it was not pressing s 58, and I consider that ground abandoned.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is 22 May 2020 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of ss 44 and 60.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Evidence
The following evidence was filed:
| Evidence in Support |
| Declaration of Jesse Doherty, Director of the Opponent, dated 1 November with Annexures JD-1 to JD-88 (‘Doherty’) Declaration of Stewart Bailey, owner of Automatic Transmissions, dated 1 November 2022 (‘Bailey’). |
| Evidence in Answer |
| Declaration of Alex Foos, manager and former director of the Applicant, dated 9 February 2023 (‘Foos’). Declaration of Alex Foos dated 9 February 2023 with Annexures AF-1 to AF-35 (‘Foos 2’). Declaration of Tom Hirst-Smith, owner of Riley’s Vehicle Hoist Service, dated 9 February 2023 with annexure RTG-1 (‘Hirst-Smith’). |
Opponent
The Opponent operates an automotive services business that was established in or about 1 October 2014 in North Fremantle, Western Australia. In March 2022, the Opponent opened a second automotive workshop in Nedlands, Western Australia. According to the Doherty Declaration, the Opponent is ‘a leading specialist in the servicing and repair of European vehicles, including vehicles manufactured by BMW, Porsche, Mercedes, Volkswagen, Mini, Audi, Land Rover and Bentley’[4]. The Opponent’s services include vehicle diagnosis, performance improvements, vehicle modifications, tuning and repair, and navigation map updates.[5]
[4] Doherty Declaration [13].
[5] Ibid [14].
The Opponent is the owner of the following trade mark registrations (collectively, ‘Opponent’s Marks’):
| Trade Mark No. | Trade Mark | Priority Date | Services |
| 1790652 | EuroTechnik (‘Opponent’s Word Mark’) | 18 August 2016 | Class 37: Maintenance and repair of motor vehicles including maintenance of repair of prestige and luxury vehicles; motor vehicle servicing; motor vehicle inspections; motor vehicle retrofits including audio, navigation and multimedia retrofits; motor vehicle diagnostic services; motor vehicle electrical and computer system diagnosis and repair; installation of parts for motor vehicles; advisory services relating to motor vehicle maintenance and repair; provision of information, including online, in relation to the aforesaid services (‘Opponent’s Services’) |
| 1790679 | (‘Opponent’s Composite Mark’) | 18 August 2016 |
Mr Doherty declares that the Opponent has continuously used the Opponent’s Marks since 1 October 2014. Doherty annexes examples demonstrating the use of the Opponent’s Marks in relation to the Opponent’s Services, including:
Signage and billboards promoting the Opponent’s Marks from various streets in Perth.[6]
Business and promotional cards featuring the Opponent Marks.[7]
The Opponent’s website, eurotechnik.com.au (‘Opponent’s Website’), including screenshots sourced from the Wayback Machine Internet Archive showing use of the Opponent’s Marks from between 27 February 2015 and 5 March 2022.[8] Doherty also annexes data analytics from Google Analytics showing traffic to the Opponent’s Website.[9]
[6] Ibid JD-4 to JD-10; JD-19.
[7] Ibid JD-11 to JD-13.
[8] Ibid JD-63 to JD-70.
[9] Ibid JD-72 to JD-83.
Doherty includes financial data for services provided under the Opponent’s Marks from the period of 2015 to 2022.[10]
[10] Ibid [21].
Doherty outlines the Opponent’s marketing strategy for services provided under the Opponent’s Marks. Annexed to Doherty are copies of marketing strategies prepared by third party marketing companies Genie Media, Ooh Media, Bonfire and Tucker Strategic.[11] Doherty also includes the Opponent’s total marketing expenditure from the period of 2015 to 2022,[12] and tax invoices for individual marketing activities between 2016 and 2020.[13] Examples of the Opponent’s marketing its services under the Opponent’s Marks are annexed to Doherty, including:
Screen captures of the Opponent’s Instagram,[14] Facebook,[15] LinkedIn,[16]and Pinterest accounts.[17]
Screen captures of online listings, including in the Yellow Pages, au.local.online, Yelp, and the White Pages.[18]
[11] Ibid JD-14 to JD-15, JD-19-JD-20.
[12] Ibid [39].
[13] Ibid JD-53 to JD-61.
[14] Ibid JD-41.
[15] Ibid JD-42.
[16] Ibid JD-43.
[17] Ibid JD-44.
[18] Ibid JD-45 to JD-50.
According to Doherty, the Opponent was the recipient of third party industry awards received from MTA Automotive Excellence in 2021.[19]
[19] Ibid [44]; JD-83 to JD-86.
Doherty explains that Alex Foos, director of the Applicant, previously worked with Mr Doherty at the company German Auto Services in 2014. According to Doherty, between March 2020 and April 2020 Mr Doherty contacted Mr Foos regarding the use of the Trade Mark and potential legal issues with the Opponent’s Marks. Doherty annexes screenshots of messages between Mr Doherty and Mr Foos from the WhatsApp messaging service.[20]
[20] Ibid JD-21.
Doherty describes examples of alleged consumer confusion between the Trade Mark and the Opponent’s Marks, which include mistaken deliveries of vehicle parts. I note that these examples are not substantiated. Bailey describes a circumstance in which Mr Bailey mistook the Applicant’s business for the Opponent’s.
Applicant
The Applicant is an automotive services provider established by Mr Alex Foos and a partner on 20 January 2020. According to Foos 2, the Trade Mark was adopted because it referred to Europe, that is, European vehicles, and automotive technicians. Foos 2 explains that the term ‘AUTOHAUS’ was adopted as a tribute to Mr Foos’s wife who is German.[21]
[21] Foos 2 [6]-[7].
The Trade Mark was designed in conjunction with the company DesignCrowd who ran a competition through its website for the design of the Trade Mark.[22] The Trade Mark was subsequently used on signage starting on or about 23 July 2020.[23] Since then, the Trade Mark has been used on vehicles and stationery. Foos 2 annexes example photos sourced from the Opponent’s Facebook page of vehicles bearing the Trade Mark and photos of stationery bearing the Trade Mark.[24]
[22] Ibid [10].
[23] Ibid [15].
[24] Ibid AF-3 to AF-4.
Foos 2 states that the Applicant ran a Google advertising campaign in early 2021, which Mr Foos describes as ‘unsuccessful’. In 2022, the Applicant ran a new advertising campaign through Google and Facebook’s services.[25] Foos includes the marketing expenditure for the Applicant’s various advertising activities and the Applicant’s revenue data from 2020 to 2023.
[25] Ibid [23]-[25].
In answer to the alleged instances of confusion detailed in Doherty, Foos 2 states neither Mr Foos or any of the Applicant’s staff were aware of any parts or vehicles mistakenly delivered to the Applicant.[26] Foos 2 states that ‘about once every few months we receive a call from a customer enquiring whether we are Eurotechnik Nedlands’ and that ‘we received a few more calls than normal about the time that legal correspondence between the parties was initiated’.[27] Hirst-Smith expands on the circumstance involving Mr Bailey, explaining that Mr Bailey attended the Applicant’s business to inspect vehicle hoists that Mr Hirst-Smith had installed at the Applicant’s business. Mr Hirst-Smith had directed Mr Bailey to the Applicant having previously installed the hoists earlier in 2020.
[26] Ibid [57].
[27] Ibid [61].
The remainder of Foos 2 details other businesses utilising ‘Eurotech’ or similar trade marks, including ‘Eurotek Mechanicals’, ‘Euro Auto Tech’, ‘Eurotec Gold Coast’, ‘Eurotek Automotive’, ‘Eurotech Automotive’, and ‘Eurotech Motors’.
Discussion and Reasons
Section 44
Section 44 relevantly provides:
(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)the applicant’s trade mark 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.
(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.
To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of services that are similar to the Applicant’s Services.
The Opponent relies on the Opponent’s Marks as the basis for this ground of opposition. I note that the Opponent’s Marks have an earlier priority date than the Trade Mark and are held in name of another person.
The Opponent’s Marks cover services that are the same or similar to the Applicant’s Services. Each trade mark covers services related to the maintenance and repair of motor vehicles.
The final requirement is whether the Trade Mark is substantially identical or deceptively similar to either of the Opponent’s Marks.
Comparison of Trade Marks
The Trade Mark and the Opponent’s Marks are reproduced below:
| Trade Mark | Opponent’s Marks |
| Opponent’s Word Mark EuroTechnik Opponent’s Composite Mark |
The Opponent did not contend that the Trade Mark was substantially identical to either of the Opponent’s Marks. For completeness, I am also satisfied that the Trade Mark is not substantially identical to either of the Opponent’s Marks. On a side-by-side comparison there are clear differences between the trade marks. Although the element ‘EUROTECH’ is incorporated into the Opponent’s Marks, the presence of the suffix ‘-NIK’ in the Opponent’s Mark, the word ‘AUTOHAUS’ in the Trade Mark, and the device elements in both the Opponent’s Composite Mark and the Trade Mark serve to create a different overall impression.
The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[28]
[28] [1963] HCA 66, [13].
The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer.[29] Accordingly, an allowance is made for imperfect recollection of the trade marks.[30] The impression comes from the trade marks in their entirety,[31] and is informed by the look, sound and ideas conveyed by the trade marks.[32]
[29] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).
[30] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).
[31] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).
[32] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).
For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[33] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[34]
[33] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).
[34] Ibid.
The Opponent advanced a number of reasons why the Opponent’s Marks should be considered deceptively similar to the Trade Mark, in particular:
The essential feature of each trade mark is ‘EUROTECH’;
The suffix ‘-NIK’ is the primary difference between the trade marks and is likely to be slurred or mispronounced in comparison to the prefix ‘EUROTECH’;
The term ‘AUTOHAUS’ in the Trade Mark is likely to be recognised by English speakers as a German word related to automobiles and the term has a low level of distinctiveness;
The device element in the Trade Mark is a cog, which is not distinctive in the context of services relating to the repair and maintenance of vehicles.
The Trade Mark consists of the words ‘EUROTECH’ and ‘AUTO HAUS’ and a device depicting a cog. The Trade Mark is heavily stylised with the letter ‘O’, in the word ‘EURO’, integrated into the device in a manner visually resembling a spanner. The Opponent’s Marks are comprised of the word ‘EUROTECHNIK’ and, in the case of the Opponent’s Composite Mark, an additional device element above the word ‘EUROTECHNIK’.
Visually and aurally, a degree of similarity arises between the trade marks given the trade marks each begin with ‘EUROTECH’. I accept that ‘EUROTECH’ is an essential feature of the Trade Mark and forms the prefix of both the Opponent’s Marks. Regarding the latter, I also note the importance of a prefix in a comparison between trade marks.[35] However, in my view, the suffix ‘-NIK’ has a significant impact on the impression of the Opponent’s Marks. Aurally, it adds an additional syllable to the Opponent’s Marks, which is entirely absent from the Trade Mark. Visually, the suffix also forms an entirely different word, ‘EUROTECHNIK’. The Applicant submits that ‘TECHNIK’ is an anglicised variation of ‘Technic’, a Polish word meaning engineer or technician. In my view, this meaning would not likely be apparent to most consumers in an Australian market, even in the context of services connected to European motor vehicles. Rather, I consider in more likely that consumers would view ‘EUROTECHNIK’ as an invented word. Accordingly, I consider the suffix ‘-NIK’ to be a clear point of visual and aural distinction between the trade marks.
[35] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264, 279 (Sargant LJ).
The visual differences between the trade marks extend beyond the suffix. The stylistics aspects and device elements of the Trade Mark as well as the words ‘AUTO HAUS’ also serve to further differentiate the trade marks visually. The Opponent’s Word Mark lacks any device or stylised elements, and there is a lack of any resemblance between the device element present in the Opponent’s Composite Mark and the device and stylised elements present in the Trade Mark.
Both parties emphasise that elements of a trade marks possess descriptive qualities. ‘Euro’ is an obvious reference to Europe or European, and ‘Tech’ is an established abbreviation for ‘technology’. The Opponent also submits that ‘AUTOHAUS’ would be associated in the minds of consumers with a car garage. I note that non-distinctive elements of a trade mark should be afforded less weight for comparative purposes. [36] However, as observed by the Full Court in Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel,[37] ‘the authorities do not say where there is a common descriptive element in marks that the component is to be ignored for the purposes of comparison’.[38] In this case, the comparison is made more challenging because the alleged non-distinctive elements comprise the word elements of the Trade Mark and the prefix of the Opponent’s Marks. In this context, I consider the more distinctive elements, such as the ‘-NIK’ element of the Opponent’s Marks, and the device elements of the Trade Mark and Opponent’s Composite Mark to be even more visually pronounced.
[36] Re Broadhead’s Application (1950) 67 RPC 209, 215 (Evershed MR).
[37] [2021] FCAFC 8 (McKerracher, Gleeson and Burley JJ).
[38] Ibid [78].
While I am conscious of the possibility of consumers imperfectly recalling the details of the trade marks, I am satisfied that the differences between the trade marks when considered in their entirety are significant enough that consumers would not be caused to wonder whether the services offered in connection with the trade marks derive from the same trade source. Accordingly, I do not consider the Trade Mark to be deceptively similar to either of the Opponent’s Marks. The section 44 ground of opposition has not been established.
Section 60
Section 60 provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must establish:
- A reputation existing in another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.
Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[39] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[40]
[39] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[40] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[41] or providing evidence of high volume of sales,[42] advertising expenditure or other promotion of goods or services to which the trade mark applies.[43] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[44]
[41] Ibid [118].
[42] McCormick (n 39) [86].
[43] Ibid.
[44] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
Generally, the reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[45] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[46]
[45] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[46] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Opponent relies on the reputation it claims in the Opponent’s Marks. The Opponent’s evidence indicates that it has used the Opponent’s Marks since October 2014. This is supported by examples of signage, stationery and screenshots from the Opponent’s Website demonstrating use of Opponent’s Marks in relation to motor vehicle repair services. Services featuring the Opponent’s Marks have been further promoted via third party listings, and online marketing strategies which have included Google ad campaigns and social media advertising.
In my view, the Opponent’s evidence falls short of demonstrating that the Opponent’s Marks have developed a reputation amongst a substantial number of consumers in Australia. The Opponent provides maintenance and repair services for vehicles, and specialises in luxury vehicles brands, such BMW, Porsche, Mercedes, Audi, Land Rover and Bentley. These services are expensive, and in this context, the revenue figures provided for the period of 2015 to 2022 are not substantial. Similarly, the advertising expenditure outlined in Doherty are modest and do not indicate a significant investment in the businesses’ marketing activities. The modest exposure of the Opponent’s Marks is also reflected in the Google Analytics data, which shows relatively few visitors to the Opponent’s Website, and the Opponent’s social media accounts, which have few followers, likes and/or subscribers. I recognise that the Opponent has received some industry recognition and awards for the quality of its services. However, there is no evidence of any publicity associated with these awards that has resulted in promotion or recognition of the Opponent’s Marks.
For these reasons, I am not satisfied on the evidence presented at the Relevant Date that a reputation had been acquired in the Opponent’s Marks in Australia. Given s 60(a) has not been satisfied, it is not necessary to consider s 60(b). Accordingly, the s 60 ground of opposition has not been established.
Section 42
Section 42 relevantly provides:
An application for the registration of a trade mark must be rejected if:
…
its use would be contrary to law.
In the SGP, the Opponent asserts that because of the reputation of the Opponent’s Marks, use of the Trade Mark would be contrary to sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) or constitute the tort of passing off.
To succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL. [47]
[47] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Australian Consumer Law and Passing Off
The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. It imports a stricter requirement than section 60.[48] There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[49]
[48] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).
[49] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
For the same reasons outlined in relation to the s 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant services into believing the Trade Mark and the Opponent’s Marks are related.
Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[50] Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
[50] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
‘Bad faith’ is not defined in the Act. The meaning of ‘bad faith’ was considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:
For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[51]
[51] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).
In DC Comics v Chequout Pty Ltd, Bennett J summarised the principles the principles for bad faith:
Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
Bad faith does not require dishonesty.
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 fell 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.
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.[52]
[52] [2013] FCA 478, [62].
Whether the application to register the Trade Mark was made in bad faith requires the Delegate to first consider the Applicant’s state of knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.
The Opponent’s asserts in its SGP that given the reputation of the Opponent’s Marks and the Applicant’s knowledge of the Opponent’s business, the Opponent should have been aware that its use of the Trade Mark ‘would be use of a substantially identical and/or deceptively similar mark in relation to the same services in the same geographical area (Greater Perth Region)’. The Opponent further submits that the Applicant’s knowledge of the Opponent’s Marks went beyond mere awareness. In support, the Opponent relies on the communications between the parties detailed in Doherty and Foos 2; the proximity of the parties’ businesses; and the timeline of the Applicant beginning its business and adopting the Trade Mark four years after the Opponent began using the Opponent’s Marks.
I accept that given the parties knowledge of each other and proximity of their businesses that the Applicant was likely aware of the Opponent Marks. This is acknowledged by the Applicant in its submissions. However, the Applicant maintains that its awareness of the Opponent and the Opponent’s Marks does not constitute bad faith. The Applicant submits that there is no evidence of any contractual or fiduciary relationship between the parties, or any other conduct on the part of the Applicant that goes beyond mere awareness of the Opponent’s business. In my view, the Opponent’s evidence only establishes that the Applicant at the Relevant Date was aware of Opponent’s Marks. Whilst it is not necessary to establish a contractual or fiduciary relationship between the parties, there must be some conduct or behaviour that is unscrupulous, underhanded or otherwise unconscientious in character. I have already determined that the Opponent’s Marks had not acquired a reputation at the Relevant Date. Further, I have found that the Trade Mark is not substantially identical or deceptively similar to either of the Opponent’s Marks. In these circumstances, I am not convinced that the Applicant has acted in bad faith. Accordingly, the ground of opposition under s 62A has not been established.
Decision
Section 55(1) relevantly provides:
Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark number 2090626 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 in accordance with the amounts detailed in Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
5 September 2024
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