Ezy Auto 123 Pty Ltd v Ezyauto Pty Ltd

[2019] ATMO 125

TRADE MARKS ACT 1995

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

Re:Opposition by Ezy Auto 123 Pty Ltd to registration of trade mark application number 1824446 (classes 35,37) - Ezyauto - in the name of Ezyauto Pty Ltd

Delegate:

Cristy Condon

Representation:

Opponent: Melissa Marcus, Counsel

Applicant: Andrew Sykes, Counsel

Decision:

2019 ATMO 125

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition ss 42, 58 and 60 – none established- trade mark will proceed to registration

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘Act’) by Ezy Auto 123 Pty Ltd (‘Opponent’) to registration of the following trade mark:

Trade Mark No

1824446

Trade Mark

EzyAuto (‘Trade Mark’)

Applicant

Ezyauto Pty Ltd (‘Applicant’)

Filing Date

8 February 2017

Specification

Class 35: Car dealerships (vehicle sales) including prestige cars; advertising in relation to car sales; retailing of goods (by any means) including vehicles; vehicle dealerships (sales); advertising; advertising services provided over the internet; information, advisory and consultancy services in relation to the aforementioned services

Class 37: Servicing of cars including prestige cars; car maintenance services; tyre balancing, fitting, repair and re-treading services; car cleaning and car detailing services; car maintenance services; vehicle polishing; vehicle tuning; wheel alignment adjustment, wheel balancing and wheel repair services; information, advisory and consultancy services in relation to the aforementioned services

(‘Applicant’s services’)

1. The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 7 September 2017.

2. The Opponent filed a Notice of Intention to Oppose on 7 November 2017, followed by a Statement of Grounds and Particulars (‘SGP’) on 7 December 2017.

3. The Applicant filed a Notice of Intention to Defend the Trade Mark on 15 January 2018.

4. In due course the parties filed their respective evidence which consists of Evidence in Support, Evidence in Answer and Evidence in Reply.

5. By way of a letter to this Office dated 27 November 2019 the Opponent requested a hearing. A hearing was set down for 16 April 2019. The matter came before me, a delegate of the Registrar of Trade Marks in Canberra on the nominated date.

6. Prior to the hearing, both parties filed written submissions within the specified timeframes expressed in the Hearing Notice sent to the parties on 8 February 2019. The Opponent was represented at the hearing by Melissa Marcus of Counsel who made oral submissions which supplemented the Opponent’s written submissions prepared by Watermark Intellectual Property. The Applicant was represented at the hearing by Andrew Sykes of Counsel who made oral submissions supplementing his written submissions.

   Grounds of opposition and onus

7. In the SGP the Opponent nominates grounds of opposition under ss 42, 58, 59 and 60. At the hearing and also in its written submissions, the Opponent states that it is not pursuing the s 59 ground of opposition. The remaining grounds are pressed.

   9.     The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   10.   The rights of the parties are to be determined as at the date of the application[3] which is generally, but not always, the filing date[4]. For the purposes of s 60 which speaks of the priority date, the relevant date is 8 February 2017 which, in this case, is the same as the filing date of the application. Sections 42 and 58, however, do not refer to a filing date or a priority date. In Apple Inc. v Registrar of Trade Marks his Honour, Yates J noted:

   [T]he Act does not in terms provide a mechanism for implementing a shifting date in s 41 or, indeed, in any other provision of the Act dealing with the registrability of a given mark. I can discern no basis for reading such a mechanism into the Act.[5] [Emphasis added].

8. I will proceed on the basis that the filing date of 8 February 2017 is the ‘Relevant date’ at which to assess the grounds pressed at the hearing.

   Evidence

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592, [595].

   [4] See sections 6, 12, and 72 of the Act.

   [5] [2014] FCA 1304, [45].

9. The parties filed the following declarations as evidence in this proceeding:

   Evidence in Support

   • Leanne Michelle Oitmaa, Watermark Intellectual Property Pty Ltd, dated 22 April 2018 (‘Otimaa’) together with Annexure LMO-1
   • Annexure LMO-1 is a copy of the declaration of David Alexander Rowland, Company Secretary and General Counsel of the Opponent, dated 26 October 2017 (‘Rowland 1’) together with Annexures DAR – to DAR 9

   Evidence in Answer

   • Demetrios Carakitsos, Director of the Applicant, dated 30 July 2018 (‘Carakitsos 1’) together with Annexures DC-1 to DC-12

   Evidence in Reply

   • David Alexander Rowland dated 8 October 2018 (‘Rowland 2’) together with Annexure DAR-1 and Confidential Annexures DAR-2 and DAR-3

   Evidence filed out of time

   ·Demetrios Carakitsos dated 5 April 2019 (‘Carakitsos 2’) together with Annexure DC-1

   Preliminary matter – Evidence filed out of time and the Opponent’s new 58 argument

   13.   On 5 April 2019 the Applicant filed a further declaration of Demetrios Carakitsos which in addition to correcting a spelling error in his surname appearing in the EIA, consists of an ASIC report for the Applicant (‘Carakitsos 2’). The Applicant’s written submissions address the reasons for consideration of this further declaration. During the hearing, I allowed the parties to make oral submissions on the admissibility of Carakitsos 2. I decided during the hearing to allow Carakitsos 2 into the proceedings under reg 21.15 of the Trade Mark Regulations 1995 and that I would also allow the Opponent’s new s 58 argument. I note here that the Opponent had no objection to my consideration of Carakitsos 2 provided I allow its new s 58 argument. The argument was not detailed in the SGP and I consider that not allowing Carakitsos 2 would be prejudicial to the Applicant in terms of the bona fide nature of its evidence.

   14. In summary, this new s 58 argument is that Mr Carakitsos is the first user and therefore owner of the Trade Mark, not the Applicant. By contrast, the Opponent’s SGP argument claims the Opponent is the first user and therefore owner of the trade mark EASY AUTO 123 in relation to car dealerships (including car servicing and finance) in Western Australia. The remainder of the evidence filed in these proceeding is summarised as follows:

   Evidence In Support

   15.   Rowland 1 is Annexure LMO-1 to Oitmaa and it states that the Opponent has applied to register the following trade marks (‘Opponent’s trade marks’):

Trade Mark No.	1824951	1824958
Trade Mark	EASYAUTO123
Classes	7,12,35,36,37,39	35,36,37,39

16.   The goods and services in the table above will be referred to as the ‘Opponent’s goods and services’.

17.   The Opponent’s evidence claims that it commenced trading on 17 August 2015. It was established to provide motor vehicle sales and dealership services. It is a wholly owned subsidiary of Automotive Holdings Group Limited (‘AHG’)[6].

[6] Rowland 1, Annexure DAR-1.

18.   On 17 August 2015 the Opponent’s business name became ‘Easy Auto 123 Pty Ltd’. On 5 December 2015 the Opponent opened its first car dealership under the name EASYAUTO123 in Western Australia. It has since that time expanded its network to include three more dealerships. Mr Rowland says that the Trade Mark was chosen to be a brand extension of AHG’s trade mark ‘EASY AS 123’ which had been used for many years in relation to AHG’s dealerships.

19.   Prior to adopting the Trade Mark, the Opponent conducted ‘searches’ (it does not detail what type of searches were undertaken). It claims no conflict appeared with related businesses in relation to the sale of motor vehicles.[7]

[7] Rowland 1, [9].

20.   The Opponent states that it provides the following goods under the ‘EASYAUTO 123’ trade mark: motor vehicles and their parts and accessories, customer service, advertising of motor vehicles, retail services, motor vehicle maintenance, service and repair, roadside assistance, vehicle fleet maintenance.

21.   There are 9 Annexures attached to Rowland 1. They consist of the following:

• DAR-1 is an ASIC extract for the Opponent
• DAR-2 A copy of the AHG Annual General Meeting presentation
• DAR-3 is a copy of an article from the online publication ‘GoAutoNewsPremuim’ dated 25 November 2015. It refers to the EASYAUTO123 dealership
• DAR-4 is a copy of an article from the online publication ‘autotalk.com.au dated 16 September 2016. It also refers to the EASYAUTO123 dealership.
• DAR-5 is photographs of the EASYAUTO123 dealership at Edgewater, Western Australia dated 2 December 2015.
• DAR-6 is a copy of webpages pages printed from the website dated 25 December 2015, as indexed by the WayBackMachine Internet Archive.
• DAR-7 is a copy of webpages pages printed from the website dated 6 November 2016, as indexed by the WayBackMachine Internet Archive.
• DAR-8 is a copy of webpages pages printed from the website dated 20 February 2017, as indexed by the WayBackMachine Internet Archive.
• DAR-9 is a copy of webpages pages printed from the website. This is not dated but Rowland 1 claims it to be ‘a printout of the current webpages’[8].

[8] Rowland 1, [12].

Evidence in Answer

22.   In his first declaration Mr Carakitsos claims that he coined the Trade Mark and first used it in relation to an auto business in late 2011. Additionally, Annexure DC – 1 to Carakitsos 1 contains the Applicant’s ASIC extract which shows the Applicant was incorporated on 20 January 2012.

23.   Mr Carakitsos claims the Applicant has a reputation Australia wide and is a ‘thriving automobile sales and service business’ which has used the Trade Mark for over 6 years in relation to the Applicant’s services. It has spent approximately $180,000 collectively on its premise’s signage having moved three times. It now operates in two Melbourne locations. Mr Carakitsos states: “whenever moving to new premises the Company heavily branded the premises with the Trade Mark in the form of very large and prominently displayed signage.[9]

[9] Carakitsos 1, Annexure DC-2. This is a photograph of the Applicant’s business premises as at January 2013.

24.   The Applicant has also used the Trade Mark on its business stationery, including letterheads[10]. Mr Carakitsos claims the Applicant has spent approximately AUD$1,000,000 on advertising and marketing the Trade Mark in relation to the Applicant’s services in the last 7 years. The Applicant requests that its sales figures remain confidential and for this reason I will only state that the annual turnover of the Applicant in respect of the Applicant’s services establishes that the Trade Mark was clearly used in the commercial trade of the Applicant’s services.

[10] Carakitsos 1, Annexure DC-3.

25.   Annexure DC-2 to Carakitsos 1 is a photograph of the Applicant’s business premises and it shows the words ‘EZYAUTO’ on the building. It is not dated but Mr Carakitsos states that photograph was taken in January 2013.

26.   Annexure DC-3 to Carakitsos 1 is the Applicant’s letterhead. According to Mr Carakitsos it was used in 2013. The letterhead includes the words ‘EZYAUTO’.

27.   In Annexure DC-4 to Carakitsos 1 Mr Carakitsos also provides copies of 8 contracts of sale of motor vehicles dated from as early as 14 March 2012.[11] These contracts contain different ABN’s in some cases but I note they seem to be sold at different premises and they are all  contracts with Demetrios Carakitsos trading as EZYAUTO.

[11] Carakitsos, Annexure DC-4.

28.    Mr Carakitsos deposes that the first sales the Applicant made with reference to the Trade Mark occurred in February 2012.[12] The Applicant has sold over 5,000 vehicles since commencing operation[13] and has a customer base consisting of over 15,000 names.[14]

[12] Carakitsos, [21].

[13] Carakitsos 1, [32].

[14] Carakitsos 1, [33].

29.   Annexure DC-5 to Carakitsos 1 is a copy of an invoice indicating the sale of a used BMW and is dated 2 November 2012. The words ‘EZYAUTO’ appear on the invoice.

30.   Evidenced by Annexure DC-6 to Carakitsos 1, the Applicant obtained it’s Motor Car Trader License on 8 March 2013 and it maintains a website at which commenced 6 October 2013.[15] The Applicant also operates a Facebook® page[16] and a You Tube channel that has hosted videos or representations of the Trade Mark since October 2013. Mr Carakitsos states that the Applicant spends approximately $60,000 per annum on production costs associated with its You Tube channel. Emails from the Applicant’s business have also been provided and they also feature the Trade Mark and date from 2013.[17] Mr Carakitsos has also provided examples of invoices from suppliers identifying the Applicant by reference to the Trade Mark from 2013[18].

[15] Carakitsos 1, Annexure DC-6; Annexure DC-7.

[16] Carakitsos 1, Annexure DC-8; Annexure DC-9.

[17] Carakitsos 1, Annexure DC-12.

[18] Ibid

31. Mr Carakitsos declares that his evidence is made in support of the registration of the Trade Mark pursuant to ss 44(3) and 44(4) of the Act on the basis of the Applicant’s prior and continuous and/or honest concurrent use of the Trade Mark.[19]

[19] Carakitsos 1, [11].

32.   Mr Carakitsos argues that the Applicant will suffer serious financial detriment and reputation damage should the Trade Mark application be refused, and in any event the that the Applicant has overcome the Opponent’s opposition by providing evidence of prior use of the Trade Mark.

Evidence in Reply

33.   Rowland 2 annexes a copy of the ASIC extract for the Applicant and another two Confidential Annexes that respectively show the gross turnover figures for the Opponent’s goods and services, and the advertising and promotion spent in the promotion of the Opponent’s trade marks, in Australia, in relation to the Opponent’s goods and services. There is no breakdown of these figures. Due to the confidential nature of the annexures all I will say is that the Opponent’s annual turnover from 2015 is approximately double that of the Applicant’s in the same period but I note that the Opponent’s trade marks are used in respect of all of the Opponent’s goods and services.

Discussion of the Grounds

Section 58

1. Section 58 of the Act provides:

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

2. It is well established that in the absence of fraud, the owner of a trade mark is taken to be the first person to use it or another trade mark substantially identical to it,[20] in the course of trade in Australia in relation to the designated goods or services[21] or in relation to goods or services considered to be the ‘same kind of thing’ as the designated goods or services.[22]

   [20] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936.

   [21] Seven Up Co v OT Ltd [1947] HCA 59.

   [22] Re Hicks’ Trade Mark (1897) 3 ALR 75.

3. This ground of opposition was particularised in the SGP as follows:

   [The ] Opponent first used the trade mark EASY AUTO 123.

   In or about August 2015 the Opponent commenced use of the trade mark EASY AUTO 123 in relation to car dealership services (including car servicing and finance) in Western Australia

   37.   The Opponent’s first use of the Opponent’s trade marks was not until at least 17 August 2015 but I would be more inclined to say 25 November 2015 per Annexure DAR-3 to Rowland 1. This is approximately 3 years after the Applicant’s first use of the Trade Mark in the course of trade in relation to the Applicant’s services.

   38.   Accordingly, I have no need to consider whether the Opponent’s trade marks are substantially identical to the Trade Mark.

   39. I am satisfied that the Opponent is not the first user of a substantially identical trade mark pursuant to s 58.

4. However, as I have prefaced earlier in this decision, the Opponent has changed its argument under this ground and I assume this is so because once the Applicant had filed its Evidence in Answer it was clear that the Applicant had used the Trade Mark in the course of trade in relation to the Applicant’s services earlier than the Opponent had used the Opponent’s trade marks in the course of trade in relation to the Opponent’s goods and services.

5. The Opponent now asserts that Mr Carakitsos by reference to the Applicant’ s own evidence is the first user of the Trade Mark, not the Applicant. This is relevant because Mr Carakitsos declares that he coined the Trade Mark before the incorporation of the Applicant.

6. The Applicant submits that this change in the Opponent’s argument constitutes an impermissible ambush. It argues that the Opponent has attempted to disparage the character of Mr Carakitsos because it filed an ASIC extract of the Applicant in Evidence in Response which was months old at the time it was filed. It shows that Mr Carakitsos ceased the position of Director as at 12 February 2018. The Opponent’s evidence therefore misrepresents the Applicant’s claim that Mr Carakitsos was the current director of the Applicant as he claims in Carakitsos 1.

7. This later argument is not particularly relevant to my determination of this ground so I don’t need to discuss this issue in detail suffice to say that the Applicant’s ASIC extract in Carakitsos 2 shows that Mr Carakitsos was reinstated as Director after only a short three week break so he was indeed the Applicant’s director at the time he deposed the Applicant’s evidence.

8. Relevantly, the Applicant submits that the Trade Mark was clearly abandoned upon registration of the Applicant it was then that it proceeded to use the Trade Mark in relation to the Applicant’s services.

9. In Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA[23], Bowen CJ observed:

   [23] (1988) 93 FCR 569, [572]; 12 IPR 321, [324 (FC).

   ‘to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost.’

10. I find it more probable than not that Mr Carakitsos either abandoned any rights in the Trade Mark up on the registration of the Applicant’s company or, the creation of his company was a recognised form of transference of ownership to the Applicant. In any event, there is no evidence that Mr Carakitsos used the Trade Mark in the course of trade in Australia in relation to the Applicant’s services prior to 14 March 2012 as per the invoices in DAR-4 to Carakitsos 1. The first of the Applicant’s invoices shows a sale which occurred soon after the Applicant was incorporated on 20 January 2012. The Opponent argues that in some cases the Applicant’s contracts of sale contain different business numbers, but I note that in these cases the address is also different and in every case the contracts are with Demetrios Carakitsos trading as ‘EZYAUTO’.

    47. The onus of proving that the Applicant is not the owner of the Trade Mark rests squarely on the Opponent. Nothing before me indicates that this onus has shifted to the Applicant. I am satisfied that the evidence shows that Mr Carakitsos was not the was the first owner of the Trade Mark pursuant to s 58.

    48. The s 58 ground is not established.

    Section 60

    49. Section 60 of the Act provides:

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    50.   To succeed under this ground of opposition, the Opponent must show that a reputation existed in another trade mark in Australia amongst a significant or substantial number of people[24] at the relevant date. The second limb of this ground of opposition requires the Opponent to then establish that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.

    [24] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra Inc. v McCain Foods (Aust) Pty Ltd (‘Conagra’) [1992] FCA 159.

    51.   This ground was particularised in the SGP as follows:

    [The] Opponent has acquired a reputation in the trade mark EASY AUTO 123.

    [the] Opponent has used the trade mark EASY AUTO 123 from or about August 2015 in relation to car dealership services (including car servicing and finance). Use of the trade mark EzyAuto by the Applicant will likely deceive or confuse the public that the services of the Applicant are related to the services of the Opponent.

    52. I turn to consider the first limb of the Opponent’s opposition under s 60, that is, whether the Opponent, at the relevant date had acquired the requisite reputation in the Opponent’s trade marks.

    53.   Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (‘McCormick’)[25] by Kenny J:

    [25]McCormick & Company Inc v McCormick [2000] FCA 1335 [81] (‘McCormick’)

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

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

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

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    54.   The Opponent did not commence using the Opponent’s trade marks in the course of trade until approximately 25 November 2015, and even viewing the Opponent’s evidence in the best light and taking the 17 August 2015 as the commencement date this would be anywhere between approximately 14- 17 months use prior to the Relevant date being 8 February 2017. The Opponent submits:

    The volume of sales under the Opponent’s Prior mark, as shown in Confidential Annexure DAR-2 to the Rowland 2^nd declaration, is exceptionally high prior to the filing date of the Opposed Mark. The Financial Year 2017 figures for the Opponent’s Prior Mark detailed in Confidential Annexure DAR-2 to the Rowland 2^nd Declaration are over 2.5x those of the Applicant during the same period, the latter shown in paragraph 39 of the Carakitos Declaration. The Opponent’s strong reputation is further evidenced after the filing date in view of the very significant increase in sales for the financial year 2018.

    55.   The Opponent’s sales figures, advertising and promotional expenses are confidential as I have previously mentioned, but while the total amounts prior to the Relevant date are considerably high, there is no breakdown of these figures. Indeed Rowland 2 states ‘attached as Confidential Annexure DAR-2 is a table showing turnover figures for the EA123 business representing the goods and services sold by EA123 by reference to the EASY AUTO 123 trade mark in Australia’[26].

    [26] Rowland 2 Confidential Annexure DAR -3.

    56.   The Opponent claims that its reputation is noted by third parties in Annexes DAR-3 and DAR-4 of the Rowland 1 declaration. However, DAR-3 is an article in the on-line publication ‘GoAutoNews’. The article speaks of the future opening of the Opponent’s first warehouse site. As such it does not serve to establish the Opponent’s existing reputation but rather the start of ‘a radical warehouse concept’.[27] While the article in DAR-4 comes from another online website: autotalk.com.au and it refers to the reputation of AHG not to the EASYAUTO123 trade mark. The Opponent’s EASYAUTO123 trade mark is not even mentioned until the last paragraph under the ‘Outlook” heading

    [27] Rowland 1, Annexure Dar-3.

    57.   The Opponent trades in vehicles among other goods and services. According to Rowland 1 these vehicles include temperature control vehicles but no price has been supplied for these nor any of the other goods or services on offer by the Opponent under the Opponent’s trade marks but DAR 4 shows that it is AHG that is providing these types of vehicles rather than the Opponent. The article in DAR-3 states that the Opponent will be offering, et al, used cars at a fixed price. I can also see in the photos contained in Rowland 1 Annexure DAR-6 that the Opponent seems to offer what appear to be second hand cars.

    58.   Much of the Opponent’s arguments allege the Trade Mark lacks any reputation in connection with the Applicant’s services and discredits the Applicant’s evidence particularly with regard to the invoices the Applicant has provided when the light should really be on the Opponent to satisfy me of the Opponent’s trade marks reputation in the Australian marketplace in connection with the Opponent’s goods and services. It has failed to do so.

    59. I am not satisfied that the use of the Opponent’s trade marks prior to the Relevant date is sufficient to establish the requisite reputation under s 60. Accordingly, I have no need to consider the second limb of s 60.

    60. The s 60 ground of opposition has not been established.

    Section 42

    61. Section 42(b) of the Act relevantly provides:

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

    […]

    (b) its use would be contrary to law.

    62.   Under the s 42 (b) ground of opposition the Opponent must demonstrate that use of the Trade Mark would not could be contrary to law.[28]

    [28] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 [28].

    63. The SGP claims that the Opponent relies on ss 18 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010. The Opponent also submits that use of the Trade Mark would also amount to the passing off of the Applicant’s services as those of, or associated with, the Opponent.

    64. The Opponent has failed to establish a ground of opposition under s 60 of the Act. It is well-establish that this predicates the outcome for the Opponent under the s 42(b) ground because the test for misleading or deceptive conduct under s 18 of the ACL is a more stringent test than that for deception or confusion under s 60 and passing off.[29]

    [29] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

    65.   In the words of the hearing office in Monster Energy v USA Nutraceuticals Inc[30]:

    [30] [2017] ATMO 22, [58].

    Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[31] Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    [31] [2003] FCA 104, [107].

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[32]

    [32] [1989] FCA 506, [40] (citations omitted).

    66. Accordingly, the s 42(b) ground of opposition has not been made out.

    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 Opponent has not established a ground of opposition.

3. Accordingly Trade Mark 1824446 may proceed to registration one month from the date of this decision.

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

   Costs

5. The Applicant sought costs. As the successful party, the Applicant is so entitled.

6. I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

   Cristy Condon

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   19 August 2019