Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)

Fry Consulting Pty Ltd sought an appeal against the decision of the delegate of the Registrar of Trade Marks, who refused registration of their trade mark "TENNIS WAREHOUSE AUSTRALIA". The dispute involved Sports Warehouse Inc, which opposed the registration of Fry Consulting's trade mark on various grounds, including the argument that the trade mark was deceptively similar to their own mark, "TENNIS WAREHOUSE", and that Fry Consulting applied for registration in bad faith. The case was heard in the Federal Court of Australia.

The court had to determine whether Fry Consulting's trade mark was inherently adapted to distinguish, whether it was deceptively similar to Sports Warehouse's mark, and whether the application for registration was made in bad faith. The court examined the evidence and arguments presented by both parties, including the history of use of the "TENNIS WAREHOUSE" mark by Sports Warehouse and the circumstances surrounding Fry Consulting's decision to use the same name for their online retail business. The court also considered the legal principles and precedents relevant to the assessment of bad faith.

The court found that Fry Consulting's application for registration was not made in bad faith. The court noted that Mr Fry had expressed his willingness to cease using the "TENNIS WAREHOUSE" name if Sports Warehouse provided evidence of their entitlement to the mark, and that Sports Warehouse had not provided any such evidence or made any further contact until Fry Consulting initiated contact two years later. The court held that, in the absence of any further objection or contact from Sports Warehouse, Mr Fry proceeded to develop his business using the words "TENNIS WAREHOUSE", to which he added the word "AUSTRALIA", and subsequently commissioned a logo, resulting in a composite mark. The court concluded that Sports Warehouse had not discharged the onus of establishing that Fry Consulting applied for the composite trade mark in bad faith.

The court allowed the appeal and dismissed the notice of contention. The respondent, Sports Warehouse Inc, was ordered to pay the applicant's costs of the appeal and the notice of contention. The court's decision was based on the evidence and arguments presented by both parties, and the application of relevant legal principles and precedents.