FITMYCAR Pty Ltd v McCade Family Tyres Pty Ltd as trustee for the McCade Family Trust

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by FITMYCAR Pty Ltd to registration of trade mark application number 2149166 – FIT MY 4WD (stylized) - in the name of McCade Family Tyres Pty Ltd as trustee for the McCade Family Trust

Delegate: Bianca Irgang

Representation:
Opponent: Andrew Sykes of counsel instructed by Macpherson Kelley

Applicant: Luke Merrick of counsel instructed by K&L Gates

Decision: 2024 ATMO 238
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 44, 58, 60, 62A and 62(b) pressed at hearing – section 44 established and partially overcome with evidence – no other ground of opposition established.
Background

McCade Family Tyres Pty Ltd as trustee for the McCade Family Trust (‘the Applicant’), filed trade mark application number 2149166 on 14 January 2021 in class 37 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.
Trade mark:   (‘Trade Mark’)
Trade mark number:           2149166
Filing Date:  14 January 2021 (‘Priority Date’)
Specification:  Class 37: Installation, maintenance and repair services; maintenance of vehicles including all wheel drive vehicles, four wheel drive vehicles, vehicles having an off road capacity and vehicles converted to have an off road capacity; repair of vehicles including all wheel drive vehicles, four wheel drive vehicles, vehicles having an off-road capacity and vehicles converted to have an off-road capacity; installation of vehicle components to convert or upgrade vehicles to all wheel drive or four wheel drive vehicles; automotive workshop services in this class, including custom modifications and restorations to motor vehicles; automotive services being the maintenance, repair, servicing, restoration and reconditioning of motor vehicles and structural parts thereof; automotive construction services being the dismantling, rebuilding and upgrading of motor vehicles and structural parts thereof; automotive detailing services being the cleaning, restoration and finishing of the interior and exterior of motor vehicles and structural parts thereof; motor vehicle customisation services being the installation and integration of interior and exterior accessories, parts and fittings of motor vehicles; provision of information, advisory and consultancy services in respect of the foregoing (‘Applicant’s Services’)
Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 21 October 2022. Subsequently, FITMYCAR Pty Ltd (‘the Opponent’) filed its Notice of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].
[1] Which together constitute ‘the Notice’.
The Applicant then filed its Notice of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).
I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 8 October 2024. The Applicant was represented by Luke Merrick of counsel instructed by K&L Gates. The Opponent was represented by Andrew Sykes of counsel instructed by Macpherson Kelley.
Grounds of Opposition
The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and all of those grounds of opposition being sections 42(b), 44, 58, 60, 62A and 62(b) were pursued at the hearing. The onus is upon the Opponent to establish one or more of its grounds of opposition. The Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.
[2] [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] [2006] FCA 1663, [26].
Evidence
The evidence in this matter consists of the following declarations:
Evidence in Support
·Declaration of James Frederick Goldsworthy Tinsley, director of the Opponent, (‘Tinsley 1’) made on 24 May 2023 including Exhibits JT-1 to JT-36 and JT-60:
ØIncluding the Declaration of Troy McCade dated 29 August 2022
Evidence in Answer
·Declaration by Troy McCade, director of the Applicant, made on 28 August 2023 with Annexure TM-1 and Confidential Annexure TM-2 (‘McCade’);
·Declaration by Merv Renton, retired Director and Technical Support Specialist for RS Net, made on 16 August 2023 with Annexure MR-1 (‘Renton’);
·Declaration by Craig Felton, Regional Sales Manager for South Australia, Northern Territory and West Australia of Exclusive Tyre Distributors Pty Ltd, made on 21 August 2023 with Annexure CF-1 (‘Felton’);
·Declaration by Steven Moore, Training Manger of REDARC Electronics Pty Ltd, made on 22 August 2023 with Annexure SM-1 (‘Moore’);
·Declaration by Kym Biggins, Director of Biggins Carpets, made on 22 August 2023 (‘Biggins’);
·Declaration by Shaun Ryan, Director of Site Marketing Group Pty Ltd, made on 26 August 2023 with Annexure SR-1;
·Declaration by Paul Bailey, Business Development Manager of the Applicant, made on 28 August 2023 with Annexure PB-1 (‘Bailey’); and
·Declaration by Phoebe Naylor, Lawyer at K&L Gates, made on 25 August 2023 with Annexure PN-1.
Evidence in Reply
·Declaration by Luke Matthew Samuels, Marketing Manager of the Opponent, made on 27 October 2023 with Annexures LS-1 to LS-3;
·Declaration by James Frederick Goldsworthy Tinsley made on 30 October 2023 with Annexures JT-1 and JT-2;
·Declaration by Nick Stanley, co-founder and Cahir of the Opponent, made on 30 October 2023 with Annexures NS-1 to NS-13;
·Declaration by Nicholas Williams, Content Creator of the Opponent, made on 30 October 2023;
·Declaration by Stuart Gibson, Principal Lawyer of Macpherson Kelley, made on 30 October 2023 with Annexures SG-1 to SG-11; and
·Declaration by Michael Simonetti, Business and Digital Strategist and owner of AndMine, made on 30 October 2023 with Annexures MS-1 to MS-8.
Discussion
Section 44
Section 44 provides:
44 Identical etc. trade marks
(1)    Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a)    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.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Section 10 - Definition of deceptively similar
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
In the SGP the Opponent nominated trade mark number 1704902 (‘Opponent’s Trade Mark’) as the basis for this ground of opposition. The details of the Opponent’s Trade Mark are as follows:
Trade mark number:            1704902
Trade mark:     FITMYCAR
Priority date:   3 July 2015
Specification: Class 9: Apparatus for displaying the position of vehicles; Audio apparatus for vehicles; Audio products for use in vehicles; Electric control apparatus for vehicle engines; Electric door locks for vehicles; Electric locks for vehicles; Electrical devices for security purposes in vehicles; Fire extinguishers for use in land vehicles; Jump leads for vehicles; Land vehicle aerials; Loudspeakers for use in vehicles; Mechanical locks (electric, non-metallic) for use in motor vehicles; Microprocessors for use on motor vehicles; Navigation apparatus for vehicles (on-board computers); On-board computers for vehicles; Speed indicators for land vehicles; Strategic telecommunication apparatus for land vehicles; Telephones for vehicles; Vehicle stereos
Class 12: Alarms for motor vehicles; Bodies for motor vehicles; Chassis for motor vehicles; Cigarette lighters for motor vehicles; Light alloy wheels for motor vehicles; Light metal wheels for motor vehicles; Mats adapted (shaped) for use in motor vehicles; Motor vehicle bodies; Motor vehicles; Storage systems adapted for use in motor vehicles; Trays adapted for motor vehicles; Tyres for motor vehicles; Wheels for motor vehicles; Body parts for vehicles; Bodywork parts for vehicles; Car body modification parts for sale in kit form; Car body parts made of plastic materials; Commercial land vehicle body parts; Reversing sensors and cameras (parts of vehicles); Vehicle windshield cleaning apparatus (parts of the vehicle); Apparatus for towing vehicles; Automotive vehicles; Carriers for use on vehicles; Containers adapted for use in vehicle interiors; Covers for vehicle seats; Covers for vehicle steering wheels; Cushions for vehicle seats; Retractable covers for goods carrying vehicles; Rims for vehicle wheels; Roll bars for vehicles; Safety alarms for vehicles; Safety belts adapted for use in vehicles; Scratch guards for vehicles; Shaped covers for vehicles; Shaped seat covers made of plastics for use in vehicles; Shaped seat covers made of textile for use in vehicles; Ski carriers for use on vehicles; Storage containers adapted for use in vehicles; Sunshields for use on vehicles; Tarpaulins adapted (shaped) for use with vehicles; Tires for vehicle wheels; Towing apparatus for vehicles; Trailers (vehicles); Transmission apparatus for land vehicles; Tyre inflation apparatus (vehicle accessories); Upholstery for vehicles; Bars and other protective fittings specially adapted for use with vehicles (roo bars, bull bars, roll bars, roll cages); Interior fittings (trim) for vehicles
Class 25: Apparel (clothing, footwear, headgear); Motorists' clothing; Baseball caps; Sports caps; Hats; Sports headgear (other than helmets); T-shirts; Uniforms; Jumpers (sweaters)
Class 27: Mats for vehicles (not shaped)
Class 35: Retailing of goods (by any means); Presentation of goods on communication media, for retail purposes; Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Business advertising services relating to franchising; Business consultancy relating to franchising; Business franchising services (group purchasing, group advertising); Conducting of market research
Class 37: Advisory services relating to the repair of motor vehicles; Cleaning of motor vehicles; Fitting of windows in motor vehicles; Fitting of windscreens in motor vehicles; Maintenance and repair of motor vehicles; Motor vehicle maintenance and repair; Repair of motor vehicles; Advisory services relating to vehicle maintenance; Advisory services relating to vehicle repair; Installation of parts for vehicles; Installation of vehicle security devices; Overhaul of vehicles; Refurbishment of vehicles; Maintenance or repair of automotive vehicles; Fitting services; Tyre fitting
Class 42: Design of land vehicle parts; Design of vehicles; Development of vehicles; Vehicle design services; Retail design services
(‘Opponent’s goods and services’)
To establish its opposition in terms of section 44 of the Act the Opponent must show all of the following:
·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
·the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
·the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
In the event that each of these requirements is satisfied, it may still be possible for me to accept the Trade Mark (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make acceptance of the Application for registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s Trade Mark.
I say now that the Opponent’s Trade Mark has a priority date earlier than the Priority Date of the Trade Mark. The next consideration is whether the Applicant’s Services are similar, or closely related to the Opponent’s goods and services. I am satisfied that the broad claims encompassed within the Applicant’s Services are similar to and/or the same as the Opponent’s goods and services. Therefore, two requirements of establishing the s 44 ground of opposition have been established. The remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the Opponent’s Trade Mark. I have reproduced the respective trade marks below:

Opponent’s Trade Mark

Trade Mark

FITMYCAR

The Opponent has argued that the respective trade marks are substantially identical. I am not persuaded by this argument. It is obvious that the Opponent’s Trade Mark is not substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4]. While both of the respective trade marks contain the prefix ‘FIT MY –‘ this is where the similarities between them end. They each have a different third word which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity. The Opponent has argued that the words CAR and 4WD are descriptive of vehicles and that the striking, memorable and distinctive elements of the respective trade marks is the identical term “FIT MY”.
[4] (1963) 109 CLR 407, 414.
I do not agree with the argument. The Opponent attempts to create a false impression of substantial identity by effectively “deleting” the words CAR and 4WD from the respective trade marks and then asserting that the relevant comparison is simply between the words “FIT MY-”.
In Australian Ezy Tax Systems Pty Ltd v Ezy Tax Solutions Pty Ltd[5] it was noted that:
“A descriptive element within a trade mark may be to some extent discounted in a comparison (or to paraphrase Hornsby, a certain risk of confusion due to the presence of that element may be accepted), but those descriptive elements cannot be entirely ignored in the overall comparison.
[5] [2016] ATMO 62[22]
Rather, the correct approach is that the marks must be compared as wholes, rather than broken into their constituent parts: In Food Channel[6] the Full Federal Court unanimously (Keane CJ, Stone and Jagot JJ) said at [92]:
“In our respectful opinion, the judge erred in principle in two respects. First, her Honour expressly declined to consider the comparison of the marks as a whole. Secondly, her Honour failed to appreciate that the necessary comparison was of marks used in different trades and that the evidence of Mr Allen was directed to the “Australian Television industry and the media generally” rather than the general public who may not be acculturated to equate the terms “Channel” and “Network”.
[6] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (‘Food Channel’)
Fundamentally, contrary to the Opponent’s assertions and repeated throughout their submissions, ‘CAR’ is a word, and ‘4WD’ is an acronym. Accordingly, the word ‘CAR’ and ‘4WD’ acronym would each be pronounced very differently being phonetically and visually dissimilar. I am satisfied that the trade marks are not substantially identical.
I now consider whether the Trade Mark is deceptively similar to theOpponent’s Trade Mark. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the Opponent’s Trade Mark, to the impression they would get from the opposed trade mark.[7] The probability of deception must be finite and non-trivial.[8]
[7] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).
[8] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).
The test to determine whether trade marks are ‘deceptively similar’ is set out in The Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415 where Windeyer J. stated:
‘The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]’
His Honour added at 416, that:
‘[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.’
The principles laid out in these tests have not been challenged.
A consideration of the respective trade marks does show some striking similarities in the structure of each mark. As discussed, the trade marks share the same beginning words being ‘FIT MY-’ followed by what amounts to a word and an acronym which is descriptive of a vehicle. Given the structure of the Trade Mark, I consider it probable that consumers who know of the Opponent’s Trade Mark upon seeing the Trade Mark used for automobile services are likely to believe that the services come from the same trade source or are related to the services bearing the Opponent’s Trade Mark. I am satisfied that the trade marks are deceptively similar.

However, a finding of a s 44 ground of opposition is not necessarily fatal to an application. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for an application to proceed to registration on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the Applicant’s evidence.
Consideration of acceptance under section 44(3) of the Act – Honest Concurrent Use
While there has been argument and debate surrounding the Applicant’s evidence. I will only consider the corrected evidence and will address arguments about errors surrounding dates in later grounds of opposition.
The Applicant was registered as a company by its current name in June 2012, but according to McCade the business began as the local tyre and mechanical store "Jack Baker Tyres" in 1955. McCade avers that he purchased the business in 2011 and began diversifying the business into selling four wheel drive accessories and fitting out four wheel drive vehicles. He states that around 2013, the name "No Limits Offroad" was being used for the Applicant’s Services but that about a year later, as the business matured, he had discussions with various friends and colleagues about the business about wanting to change the business name. Mr McCade explains that he began brainstorming a new 10 year plan and direction for the business, and ultimately landed on the name "FIT MY 4WD".
Briefly, the Applicant’s evidence demonstrates:
·The Applicant purchased the domain name " (4WD Domain) on 13 August 2015[9];
[9] Annexure TM-1 [page 30] accompanying McCade [25], Annexure MR-1 [page 8] accompanying Renton [13]
·A website template was purchased on 19 August 2015 by the name of "Wheels and Tires Free PrestaShop Theme" from Template Monster and the Applicant began developing a website to be hosted at the 4WD Domain. The website remained in development with McCade and although the public were able to access it, it was not actively promoted;[10]
[10] McCade and accompanying Annexure TM-1.
·The first subscriber to the Applicant’s website was a business supplier on 4 December 2016. The Applicant currently has over one thousand subscribers;[11]
[11] McCade and accompanying Annexure TM-1 [page 352].
·In December 2015 the Applicant registered an Instagram account with the handle "@fitmy4wd" which actively began to promote the Trade Mark since June 2017;[12]
[12] McCade and accompanying Annexure TM- 1 [pages 357-388].
·The Applicant’s Facebook page was established in 2013 using the Applicant’s original branding. On 4 February 2017, the Applicant updated the name of the Facebook page to "No Limits Offroad / Fit My 4WD";[13]
·In 2015 the Applicant began advertising the new branding and business focus, which was providing four wheel drive modification services by way of the Trade Mark, to suppliers, colleagues and consumers at the Adelaide 4WD & Adventure Show (Adelaide 4x4 Show) in South Australia, in approximately October 2015 which continued with each subsequent show;[14]
·The Applicant began actively promoting the 4WD Website at the start of 2017[15] and on 4 February 2017, Mr McCade updated the name of my business' Facebook page (4WD Facebook) to be "No Limits Offroad / Fit My 4WD" to reflect the business name update;[16]
·In around March 2017, About Today was engaged to develop a digital marketing strategy and deliver search engine optimisation (SEO) for the Applicant's FIT MY 4WD business;[17]
·On 30 May 2017 the Applicant made its first sale through the 4WD website;[18]
·In August 2020, Mr McCade held further discussions with Shaun Ryan of About Today regarding a modernisation of the FIT MY 4WD brand and in September of 2020 About Today provided the Applicant with a proposal for modernisation of the Trade Mark;[19]
·The Applicant’s website has had reasonable traffic for the years 2021 to 2023;[20]
·The Applicant advertised its Trade Mark and services through a number of mediums including industry publications[21], social media[22] and physical media;[23]
·The Applicant’s advertising expenditure from 2015 until 2022 is reasonable;[24] and
·The revenue generated from sales of services and goods provided under the Trade Mark has also been reasonable. [25]
[13] McCade and accompanying Annexure TM- 1[pages 389-476].
[14] McCade and accompanying Annexure TM- 1[pages 70 -81, 270-320], Bailey [13], Biggins [7].
[15] McCade and accompanying Annexure TM-1 [pages 321 -351].
[16] McCade and accompanying Annexure TM- 1[page 69], Felton [10] and accompanying Annexure CF-1, Moore [18-19] and accompanying Annexure SM-1 [pages 7-14].
[17] McCade and accompanying Confidential Annexure TM-2 [pages 1-9].
[18] McCade and accompanying Annexure TM-1[page 91].
[19] McCade and accompanying Annexure TM- 1[pages 92-267].
[20] McCade and accompanying Annexure TM- 1[pages 353 -356].
[21] McCade and accompanying Annexure TM- 1[pages 512 -519].
[22] McCade and accompanying Annexures TM-1 [pages 389-511] and Confidential Annexure TM-2 [page 10].
[23] McCade and accompanying Annexure TM- 1[pages 520-531, 563-564].
[24] McCade [76]
[25] McCade and accompanying Confidential Annexure TM-2 [pages 11-12]
I accept that the Applicant has used the Trade Mark since at least late 2017 along with other branding in the business. The Trade Mark was then eventually used exclusively on its own. The Applicant has claimed that the Trade Mark has been applied to all the Applicant Services but the evidence doesn’t establish such broad usage. Taking into account all of the above, I am not satisfied that the current circumstances make it proper to apply the provisions of s 44(3)(a) for all the Applicant’s Services. The Applicant’s evidence has demonstrated that its services specifically are targeted and applied to all wheel drive and four wheel drive motor vehicles and are not as broad as the specification applied for.
The evidence demonstrates that the Applicant has used the Trade Mark on:
Installation, maintenance and repair of canopies, awnings, drawer systems, fridges and fridge and freezer slides, front bullbars, antennas, tyres, roof screens/DVD, subwoofer box, lighting, long range tanks, suspension upgrades, lockers, storage, nudge bars, rear bars, battery chargers, airbags, seat covers, winches and winchbars, exhausts, side steps and rock sliders, underbody protection, for all wheel drive vehicles, four wheel drive vehicles, vehicles having an off road capacity and vehicles converted to have an off road capacity; installation of vehicle components to convert or upgrade vehicles to all wheel drive or four wheel drive vehicles; automotive workshop services in this class being custom modifications and restorations to all wheel drive or four wheel drive vehicles; automotive services being the maintenance, repair, servicing, restoration and reconditioning of all wheel drive or four wheel drive vehicles and structural parts thereof; automotive construction services being the dismantling, rebuilding and upgrading of all wheel drive or four wheel drive vehicles and structural parts thereof; automotive detailing services being the cleaning, restoration and finishing of the interior and exterior of all wheel drive or four wheel drive vehicles and structural parts thereof; motor vehicle customisation services being the installation and integration of interior and exterior accessories, parts and fittings of all wheel drive or four wheel drive vehicles; provision of information, advisory and consultancy services in respect of the foregoing in regards to all wheel drive or four wheel drive vehicles. (‘Applicant’s Limited Services’)
I am satisfied that the s 44(3)(a) would apply to the above Applicant’s Limited Services.
I now need to consider the remaining grounds of opposition as applied to the Applicant’s Limited Services.
Section 58 - Ownership
Section 58 of the Act provides:
Applicant not the owner of the trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[26] in relation to particular goods or services[27], or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing. The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount[28].
[26] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413].
[27] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 [639-40].
[28] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).
The trade mark for which an opponent claims prior use must be at least substantially identical to the opposed mark[29].
[29] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 68 (Gummow J).
As the Opponent has failed to demonstrate that the Opponent’s Trade Mark is substantially identical to the Trade Mark under s 44, it fails at the first hurdle in establishing the s 58 ground of opposition. As the Opponent bears the onus of establishing it is the first to use the trade mark or a substantially identical mark for the relevant services or the same kind of thing, the Opponent has not discharged this onus and this ground of opposition is unsuccessful.
Section 60 - Reputation in Australia
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
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 the ground of opposition under s 60 the Opponent is relying predominantly on its use of and reputation in the trade marks below:
FITMYCAR
I note from the evidence that that these two marks are often used in close proximity to each other and I will refer to them collectively for the remainder of this decision as the Opponent’s Trade Mark. I further note that the Opponent’s goods and services are the same/ similar or closely related to the Applicant’s Services.
The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths: [30]
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.
It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[31]
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”
[30] [1999] FCA 1020 [50].
[31] [1973] HCA 43; (1973) 129 CLR 353, 362.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[32] by Kenny J:
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?
[32] [2000] FCA 1335 [81].
For background, Tinsley 1 avers that the Opponent was incorporated on 24 August 2015. The original owner of the Opponent’s Trade Mark was Tracksformation Pty Ltd (‘Opponent’s Predecessor’). Tinsley 1 states that while the Opponent’s Trade Mark was assigned to the Opponent on 22 April 2022, the Opponent took over ownership of the mark from 30 November 2015 being the relevant completion date pursuant to a Contract of Sale.[33]
[33] Confidential Annexure JT-2 accompanying Tinsley 1.
According to Tinsley 1, the Opponent’s Predecessor had a clear plan for the Opponent’s Trade Mark. To support this claim, Annexures JT-6A to JT-6D contain copies of documents including domain name purchases, website building quotes and the competition entries for the competition the Opponent’s Predecessor ran to design to the Opponent’s Trade Mark all dated in early 2015.
Tinsley 1 asserts that the Opponent built a strong reputation in the automobile industry in relation to the sale of vehicle products and repair, maintenance, cleaning and installation services. The Opponent has advertised and sold vehicle products and services within Australia since December 2015. Annexure JT-4 accompanying Tinsley 1 contains copies of the Opponent’s website from the WayBackMachine dated from 2 June 2016 which demonstrate use of the Trade Mark on goods and services which are the same and/or similar to the Applicant’s Services.
The Opponent has argued that it has established a reputation in its trade marks because:
·Automotive goods and services have been continuously sold by reference to the Opponent’s Trade Marks since late 2015;[34]
·Sales of the Opponent’s goods and services bearing the Opponent’s Trade Marks contained in paragraph 82 of Tinsley 1 demonstrate a growing and substantial revenue from 2015 until 2023;
·The approximate expenditure on advertising and promotion of automotive goods and services is substantial and typically increases each year from 2015 until May 2023[35];
·The Opponent’s automotive goods have been promoted in Australia through a variety of mediums including print advertisements, blogs, brochures and email marketing, website advertisements and social media platforms[36];
·Examples of advertisement and promotion through the blog and website are included in the evidence which demonstrate significant and growing internet traffic each year[37];
·Other examples of advertisement and promotion in the nature of business cards, brochures, merchandising and emarketing are included in Tinsley 1 [71–77] and Annexures JT-13 to JT-16;
·The Opponent has also been the subject of a number of published articles which refer to the Opponent’s Trade Mark as well awards[38];
·The automotive goods and services sold under or by reference to the Opponent’s Trade Marks have been advertised via the Opponent’s social media accounts with some material which is specifically directed towards 4WD owners dated in 2022. Extracts from Facebook® during the period 2022 are included in Annexure JT-11; and
·Examples of advertisement and promotion via social media channels such as Facebook®, Instagram®, Twitter ® and YouTube® since 2015 are included in Annexures JT-9 to JT-12 accompanying Tinsley[39]
[34] Annexures JT-4 to JT-26 accompanying Tinsley 1.
[35] Tinsley 1 [86].
[36] Tinsley 1 [57].
[37] Tinsley 1 [58-63] and accompanying Annexures JT-7 and JT-8.
[38] Tinsley 1 [91 to 101] and accompanying Annexures JT-19 to JT-26.
[39] Tinsley 1 [64-70].
The evidence before me is considerable. It is clear that the Opponent has used its trade marks in regard to its automotive goods and services which are in relation to automotive fitments being carpet floormats, boot liners, dash mats, plastics and an expanding range of accessories which can be customized to fit most vehicles with the consumer being able to select colours, trims and embroidery. The evidence demonstrates that the first few years of business for the Opponent were modest in generating revenue but grew considerably as time passed.
Given that the Applicant commenced actively promoting the Trade Mark in late 2017, while I am satisfied that the Opponent was developing a reputation, I am not satisfied that the Opponent had established such a reputation that s 60 would be triggered.
The Opponent has pointed me to seven instances of confusion[40] in the marketplace over the course of two years. I note that these limited instances of confusion are from 2022 and 2023 which are after the Priority Date and indicate that the customers were looking for the Applicant and its services rather than the Opponent. As I determined that the trade marks are deceptively similar under s 44, I am not overly surprised that there have been a few instances of confusion given the parties are concurrently using their trade marks in the Australian marketplace. However, I am not satisfied that the Applicant’s use of its Trade Mark will result in any significant degree of confusion or deception in the marketplace. The Opponent has not established the s 60 ground of opposition.
[40] Tinsley 1 [35] and accompanying Annexure JT-3.
Section 42(b) - Contrary to Law
Section 42 of the Act provides:
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
Section 42(b) prevents registration of a trade mark that would be contrary to law.
The Opponent claims that use of the Trade Mark will breach s18 and/or s 29 of the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth), as well as constitute passing off.
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[41]
[41] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Hasbro Inc v Imagination Holdings Pty Ltd (2005) 66 IPR 636; [2005] ATMO 43.

As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Limited Services is likely to deceive or cause confusion. It therefore follows that under the stricter test requirements of the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.
Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[42] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation[43] that:
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.[44]
[42] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer R.Wilson).
[43] [1989] FCA 771.
[44] Ibid, [40].
Sections 52 and 53 of the Trade Practice Act 1974 (Cth)were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to ss 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.
For the above reasons, the ground of opposition under section 42(b) has not been established.
Section 62A – Application made in bad faith
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Justice Bennett in DC Comics v Cheqout Pty Ltd[45] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [46], wherein her Honour commented:
Bad faith, in the context of s62A, 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 standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].
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.
[45] [2013] FCA 478; (2013) 101 IPR 334.
[46] [2012] FCA 81; (2012) 94 IPR 551, [164].
The Opponent has based its bad faith ground of opposition on the basis that given the Opponent’s history of use of, and reputation in its trade mark it is clear that the Trade Mark is likely to be recognised in Australia as a trade mark related to the Opponent. Coupled with this, the Opponent pointed out that the Applicant purchased goods from the Opponent in 2018 but claimed that they were unaware of the Opponent’s Trade Mark when it filed the application for the Trade Mark in 2021. Additionally, the Applicant did not negotiate use with the Opponent.
Therefore, the Opponent concluded that the Applicant had acted in bad faith because:
Turning to the facts, it beggars belief how Mr McCade could have purchased goods from the Opponent’s website in 2018 and completely forgot about its trade marks and get up, only to file an application to register a strikingly similar logo 2 years later.
The Opponent simply does not accept this reasoning from Mr McCade and nor should the Registrar. It would appear more logical that Mr McCade and the Applicant have sought to benefit from the Opponent’s reputation. Taking into account all of the circumstances, it is clear that a person in the position of the Applicant adhering to normal commercial standards would not have sought to register the Opposed Mark.
I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the Priority Date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behavior.
The Applicant’s evidence demonstrates that the Applicant chose the Trade Mark in 2015 and commenced a rebranding of its business starting in late 2017 culminating in the Trade Mark becoming the sole brand of the Applicant’s Limited Services in 2019.
The Applicant stated:
Mr McCade conducted Google searches, and had his accountant conduct business name searches, for variations of FIT MY 4WD in approximately July 2015. The Opponent's business was not located in any of these searches. Conducting searches for variations of FIT MY 4WD through the Australian Business Names website search did not provide the Opponent's business as a search result when these searches were conducted in August 2023[47].
[47] McCade [22-23].
What I have before me is a case of two traders who have individually struck upon the somewhat descriptive expression FIT MY- as forming the beginning of their respective trade marks followed by a completely descriptive term for vehicles. The Applicant’s desire to seek to apply to register the Trade Mark after having purchased some goods from the Opponent in 2018 is also not an indication of behavior that falls short of acceptable commercial behavior. The Applicant had already commenced using the Trade Mark at that stage.
Additionally, the Applicant’s decision not to negotiate with the Opponent is also not an indication that the Trade Mark was applied for in bath faith. Paragraph 125 of Tinsley 1 states that the Opponent's legal representatives issued a letter of demand dated 9 May 2022 to the Applicant with claims of trade mark infringement, misleading and deceptive conduct, and passing off. At the time of receiving this letter of demand, the Applicant had already filed the Trade Mark and was in the process of gathering evidence of use to address the section 41 and 44 objections raised in the adverse examination report issued by IP Australia[48].
[48] McCade [97].
Indeed, the evidence before me does not support the Opponent’s assertions that the Applicant applied for the Trade Mark in bad faith and I find that the Opponent has not established this ground of opposition.
Section 62(b)
Section 62(b) provides:
62 Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
[…]
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
The Opponent sought to add s 62(b) as a late ground of opposition. The Applicant did not object and the SGP was amended to include this ground. The Opponent particularises the s 62(b) ground of opposition as follows:
A. The Opposed Mark was accepted on the basis of the following material particulars:
(a) In the Applicant’s Declaration dated 29 August 2022 (“August 2022 Declaration”), the Applicant claimed at paragraph 7, that the Applicant purchased the website from PrestaShop in 2013. The Applicant has since declared in their Evidence in Answer via the Declaration of Troy McCade dated 28 August 2023 (“Evidence in Answer”) at paragraph 17, in an explicit correction of their August 2022 Declaration, that the year quoted was in error and that the aforementioned website was purchased in 2015;
(b) In the August 2022 Declaration, the Applicant claimed at paragraph 8 that they had begun using the Opposed Mark exclusively for the past 5 years. The Applicant has since declared in their Evidence in Answer at paragraph 19, in an explicit correction of their August 2022 Declaration, that they were only using the Opposed Mark exclusively for the past 3 years; and
(c) In the August 2022 Declaration, the Applicant claimed at paragraph 16 that the Opposed Mark was first used at the Adelaide 4WD & Adventure Show (“Adelaide Show”) in 2015. The Applicant has since declared in their Evidence in Answer at paragraphs 52 – 54, contrary to the August 2022 Declaration, that the Opposed Mark was used at the Adelaide Show between 2017 and 2023; (‘False Representations’).
B. The Applicant’s application for acceptance of the Opposed Mark pursuant to Section 27 was false and is unable to be rectified.
C. The Registrar accepted the Applicant’s application on the basis of the False Representations. In the August 2022 Declaration, the Applicant was required to provide evidence of use and intended use under subsection 41(4) of the Act. The Applicant used the False Representations as evidence of the length of time that the Opposed Mark was being used. The evidence the Applicant provided for an initial date of use of the Opposed Mark is now 2 years later than what was previously represented to the Registrar. As such, there was a clear causal connection between the False Representations and the Registrar’s acceptance[49].
[49] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Societe des Produits Nestle SA [2010] FCA 639 [20].

66. The Applicant responded to the Opponent’s arguments stating:
The Opponent is attempting to attribute deceitful intent to honest mistakes. Mr McCade has directly addressed each instance and made subsequent efforts to verify the accuracy of all the information contained in his later declaration and note where he was uncertain of precise facts[50].
[50] McCade [18].
In light of the above, the Applicant contends that the 4WD Mark was not accepted on the basis of evidence or representations that were false in material particulars. The errors raised did not solely result in acceptance of the 4WD Mark on the basis of honest concurrent use. Rather, the examiner considered all the evidence and circumstances before her and accepted the 4WD Mark for registration

67. The Applicant’s evidence has clarified and explained when it commenced using the Trade Mark and how some of the errors in dates occurred. In addressing the Opponent’s first point, the Applicant states it commenced investigating use of the Trade Mark as a brand name from as early as 2013, and formalised its choice of the Trade Mark as a brand in 2015. Attached and marked Annexure TM-1 accompanying McCade is a print out of a page of the third party website "PrestaShop”, the Applicant's website designer and developer, stating that the Applicant's website page was created in 2013. The Applicant believed this information to be accurate, as Mr McCade had no reason to believe that information displayed on PrestaShop's website would be inaccurate. He did not have access to the Applicant’s records from this time due to theft of personal property.
68. When confronted with the error and upon deeper investigation, including discussions with Mr McCade’s colleagues and associates, examination of records of other third parties, and contact with PrestaShop, Mr McCade believes that the year 2013 was quoted on PrestaShop's website in error. This third party error formed part of the evidence the Applicant put forward to overcome the grounds of rejection against the Trade Mark during the examination stage.
69. Additional errors regarding dates of first use of the Trade Mark along with wording in the McCade declaration dated in August 2022 (‘McCade 2022’), have been pointed out by the Opponent and then clarified and explained by the Applicant in its evidence during the opposition.
70. While there have been a number of errors present in the McCade 2022 evidence presented to the Registrar during the examination stage, these errors were not material to the basis on which the Trade Mark obtained acceptance for possible registration. All of the Applicant’s evidence was considered and the use and growing exposure of the Trade Mark, along with the revenue figures from 2021 to 2022 and total advertising expenditure since promotion of the Trade Mark was taken into account.

Section 62(b) requires the Opponent to demonstrate a causal connection between the false representation and the decision to accept the Application[51]. However, I see nothing before me which indicates that the Trade Mark was accepted solely on the basis of the Applicant’s website being purchased in 2013 according to a third party document relied on or any of the other errors in the evidence. Rather, I am persuaded that the Trade Mark was accepted under s 44(3) and the provisions of honest concurrent use because of the totality of the evidence provided which includes the revenue generated in 2021/2022, advertising expenditure and examples of use of the Trade Mark.
[51] Mars Australia Pty Ltd (formerly Effem Foods Pty Ltd) v Société des Produits Nestlé SA [2010] FCA 639 (Bennett J).

72. The ground of opposition under s62(b) is not established.
Decision

Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: Forlimitationssee section 6.
I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44 with regards to the some of the Applicant’s Services.
Accordingly, I wrote to the Applicant on 27 November 2024 advising them that I would provide them with two weeks in which to delete the conflicting services from the Trade Mark specification. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to registration pending any appeal from the Opponent. I also advised that if the Applicant did not amend the specification to delete those goods in conflict that I would be issuing a decision whereby the Trade Mark would be refused in its entirety. The Applicant has responded and requested an amendment that deletes the services in conflict.
Accordingly, I accept for possible registration trade mark application number 2149166 in respect of the amended specification being the Applicant’s Limited Services, subject to an endorsement that the provisions of ss 44(3)(a) applied.
Costs
The Opponent has requested costs. However, as both parties have been successful to some extent I determine that each party should bare its own costs.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
2 December 2023

[2024] ATMO 238

2 December 2024