General Motors LLC v Laser Cleaning Machines Australia Pty Ltd

[2022] ATMO 94

TRADE MARKS ACT 1995

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

Re: Oppositions by General Motors LLC to registration of trade mark application numbers 2085302 (Class 25) and 2085543 (Class 16) – gmsv – in the name of Laser Cleaning Machines Australia Pty Ltd.

Delegate:	Blake Knowles
Representation:	Opponent: Julian Cooke of counsel, instructed by Baker & McKenzie. Applicant: Hayley Tarr of Tarr Lawyers.
Decision:	2022 ATMO 94 Trade Marks Act 1995 (Cth) – oppositions under section 52 – grounds of opposition pursued under ss 42(b), 60, and 62A – s 62A established – trade marks filed in bad faith – registration refused.

Background

1. This is a decision in the oppositions by General Motors LLC (‘Opponent’) to registration of trade mark application numbers 2085302 and 2085543 (‘Applications’) filed by Laser Cleaning Machines Australia Pty Ltd (‘Applicant’) for the trade mark ‘gmsv’ (‘Trade Mark’) in respect of the following goods:

   Trade Mark Number:            2085302

   Class 25: Baseball shirts; Casual shirts; Denim shirts; Dress shirts; Football shirts; Formal shirts; Open-necked shirts; Polo shirts; Printed t-shirts; Rugby shirts; Shirts; Short-sleeve shirts; Sports shirts; T-shirts; Tee-shirts; Woven shirts

   Trade Mark Number:            2085543

   Class 16: Stationery, pens, pencils, playing cards, posters, stickers, decalcomanias, flags and banners made of paper, promotional material in this class, coasters made of paper, magazines and publications

   (collectively, ‘Applicant’s Goods’)

2. I note that on 5 November 2021 trade mark number 2085302 was amended to delete Class 12 and trade mark number 2085543 was amended to delete Classes 12 and 35.

3. Trade mark number 2085302 was filed on 1 May 2020 and trade mark 2085543 was filed on 2 May 2020. As nothing turns on the difference in the respective filing dates, I shall refer to them collectively as the ‘Relevant Dates’.

4. The Applications were examined, accepted, and subsequently advertised for opposition.  The Opponent filed notices of intention to oppose on 21 October 2020, followed by statements of grounds and particulars (‘SGPs’) on 18 November 2020. The Applicant filed notices of intention to defend on 13 January 2021.

5. The parties had the opportunity to file evidence in accordance with reg 5.14.[1] The Opponent filed Evidence in Support (‘EIS’) on 15 April 2021. The Applicant filed Evidence in Answer (‘EIA’) on 21 July 2021. The Opponent filed Evidence in Reply (‘EIR’) on 22 September 2021.

   [1]   Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

6. The parties were given the opportunity to request a hearing either by videoconference or by written submissions only. Both parties requested to be heard by videoconference and prior to the hearing also filed an outline of written submissions. The matter was heard before me, as a delegate of the Registrar of Trade Marks, by videoconference on 16 May 2022. The Opponent was represented by Julian Cooke of Counsel, instructed by Byron Angelopulo and Aparna Watal of Baker & McKenzie. The Applicant was represented by Hayley Tarr of Tarr Lawyers. I make my decision based on the particulars in the SGPs, the evidence and written submissions of the parties, and the oral submissions made at the hearing.

   Grounds and onus

7. The SGPs nominate grounds of opposition under ss 42(b), 43, 44, 58, 60, and 62A. However, the Opponent presses only grounds under ss 42(b), 60, and 62A.  

8. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2]

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

9. The rights of the parties are assessed as at the Relevant Dates.[3]

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

   Evidence

10. The following evidence was filed in both oppositions:

    EIS

    Declaration of Timothy Gorbatoff, trade mark attorney and assistant secretary of the Opponent, made on 14 April 2021, with Annexures TG-1 to TG-23.

    Declaration of Judith King, trade mark attorney at Baker & McKenzie, made on 13 April 2021, with Annexures JK-1 to JK-5.

    EIA

    Declaration of Jason Spencer, director of the Applicant, made on 21 July 2021, with Exhibits A to F.

    EIR

    Declaration of Ryan Walkinshaw, director of Premoso Pty Ltd, made on 16 September 2021, with Annexures RW-1 to RW-3.

    Declaration of John A. Crennan, former Managing Director of Premoso Pty Ltd, made on 22 September 2021, with Annexures JC-1 to JC-2.

    Declaration of Timothy Gorbatoff, made on 20 September 2021, with Annexures TG-24 to TG-29.

    Declaration of Aparna Watal, lawyer at Baker & McKenzie, made on 22 September 2021, with Annexures AW-1 to AW-3.

11. The amount of evidence filed was substantial. Given that I have decided the matter under s 62A, I will in the interests of brevity focus my summary on the material relevant to that ground.

    EIS

12. Mr Gorbatoff in his declaration declares that the Opponent is a wholly owned subsidiary of General Motors Company (‘GMC’), and collectively refers to both the Opponent and GMC as ‘GM’. In his position, Mr Gorbatoff has since 1995 been responsible for searching, clearance, registration, renewal, and protection of GM’s trade marks globally.

13. Mr Gorbatoff declares that GM is one of the world’s largest manufacturers of vehicles, vehicle parts, and accessories with over 164,000 employees working in 396 facilities across six continents, including Australia. In 2019 and 2020, Fortune ranked GM at number 4 on its list of World’s Most Admired Companies within the Automotive Industry. GM has also for the last twenty-five years been ranked in the top 40 brands in the Global Fortune 500 rankings.  Figures provided indicate that GM’s annual revenue comfortably exceeded $100bn between 2007-2020 and that GM invests several billion dollars on advertising and promotion each year during the same period.

14. Mr Gorbatoff declares that the house mark ‘GM’ is central to the success of the GM business, and that ‘GM’ is recognised as one of the world’s most iconic car brands.  Mr Gorbatoff declares that a significant number of Australian consumers are aware of the GM brand and often access the GM website at Annexed to the declaration are Internet Archive Wayback Machine extracts for the GM website and figures indicating a significant number of Australians visited the website between 2018-2020. Mr Gorbatoff also declares that as of 16 March 2021, the Opponent’s Facebook page had over 800,000 followers, and its Instagram page had over 500,000 followers.  

15. Mr Gorbatoff declares that GM has a longstanding presence and reputation in Australia, with its first subsidiary established in 1926, and renamed (after a merger with Holden’s Motor Body Builders Pty Ltd) General-Motors Holden Ltd (‘GMH’). GMH sold vehicles under the HOLDEN brand for many years, and as of 2017, its dealer network comprised 200 dealerships which employed over 14,000 people.  

16. Mr Gorbatoff declares that in 1987, GMH appointed UK firm Tom Walkinshaw Racing to establish the Holden Special Vehicles (‘HSV’) business in Australia. The HSV business was operated by Premoso Pty Ltd (‘Premoso’) an Australian subsidiary of Tom Walkinshaw Racing. The business produced niche premium performance luxury cars, parts, accessories, and merchandise. The HSV business produced 90,000 vehicles branded under the HSV mark by December 2017. The HSV dealer network comprised approximately 55-60 authorised dealerships between 1990-2020.

17. Mr Gorbatoff declares that the HSV brand attracted an enormous following from Holden enthusiasts and provides details of various HSV owners clubs located in NSW, Queensland, and Victoria. Further, the Facebook page ‘Holden HSV & HDT owners club’ as of 18 March 2021 had approximately 11,000 likes and 17,000 followers. The HSV brand also gained exposure through its use in relation to motor racing, with the HSV Dealer team winning the Australian Touring Car Championship in 2006 and 2007.

18. Mr Gorbatoff declares that the merchandise program for the HSV brand has always been an important part of its marketing, and that a range of merchandise including apparel, accessories, model cars, and memorabilia incorporating the HSV trade mark have been available for purchase over many decades. Annexed to the declaration are representative examples of merchandise available between 2016-2021. The examples include apparel, coffee mugs, umbrellas, key rings, stubbie holders, and posters.

19. Mr Gorbatoff declares that the element ‘SV’ has been used extensively since 1988 in relation to car models at various times between 1988 and 2015, including SV88, SV188, SVLE, SV89, SV3800, SV5000, SV90, SV91, SV T-30, SV99, SV300, and MY15 Senator SV.  

20. Mr Gorbatoff declares that on 17 February 2020, the Opponent announced via press release (annexed to the declaration) that the HOLDEN brand would be retired from sales in Australia and New Zealand, and that its intention was to focus growth on its specialty vehicles business.

21. Mr Gorbatoff annexes an article by Joshua Dowling dated 5 March 2020 published on titled ‘Holden Special Vehicles says it’s “business as usual” as it negotiates with General Motors to establish GMSV’ (‘Drive Article’). The article refers to plans by the HSV business to operate under the names ‘General Motors Specialised Vehicles’ and ‘GMSV’, and the types of vehicles that may be sold under that brand.

22. Mr Gorbatoff declares that on 19 June 2020 the Opponent filed an application to register the trade mark ‘GMSV’ in Australia for a broad range of goods and services. A further application was filed on 31 August 2020 to register “GM Specialty Vehicles” in relation to vehicles and parts and accessories in Class 12.

23. Mr Gorbatoff annexes an article by Joshua Dowling dated 8 June 2020 published on titled ‘GMSV website and Facebook page not what they seem, warns Holden Special Vehicles’. The article refers to a Facebook page and website promoting GMSV apparel, including by use of the following image:

24. I note that the image above includes in small text the words ‘Official Licensed Merchandise’.

25. Ms King in her declaration declares that the Applicant filed several trade mark applications, including trade mark number 2085360 for “GM Special Vehicles” in Classes 12 and 25, and trade mark number 2087761 for  (‘GMSV Logo’) in Classes 6, 12, 16, 25, 35.

26. Ms King annexes Australian Securities & Investments Commission company extracts for the Applicant and two other companies, GMSV Pty Ltd and GMSV Performance Pty Ltd (both incorporated 13 May 2020). The extracts indicate that the directors of all three entities are Jason and Shaun Spencer.

27. Ms King refers to a decision on a complaint filed by the Opponent under the .au Dispute Resolution Policy (‘auDRP Complaint’) regarding the domain name gmsvshop.com.au registered by GMSV Pty Ltd. The decision in relation to the auDRP Complaint issued on 20 November 2020 held that the domain was registered and used in bad faith by GMSV Pty Ltd.

28. I note that in the auDRP Complaint, the Opponent referred to similarities between the stylisation of the GMSV Logo and the Opponent’s HSV logo, compared below:

29. I also note that in the auDRP Complaint, the Opponent refers to the business name ‘Genuine Muscle Special Vehicles’ as being registered by the Opponent on 9 June 2020. My own search of the ASIC database also confirms this.

    EIA

30. Mr Spencer declares that the Applicant was incorporated on 28 January 2020, and that he and his brother, Shaun Spencer, coined the Trade Mark prior to this date as an abbreviation for ‘Genuine Muscle Special Vehicles’ due to their passion for motor racing and love of muscle cars. Mr Spencer describes his brother and himself as “huge car enthusiasts” and that “as our interest and experience in muscle cars grew, we decided that we would start our own company in the vehicle industry along with car cleaning products, t shirts, caps and other merchandise”.

31. Mr Spencer declares that at the time the Trade Mark was adopted, he and his brother knew of the trade marks GM and HSV but did not put them together in their minds as GMSV, and that they had no knowledge that the Opponent in future would decide to launch its own trade mark GMSV. Mr Spencer also states that he and his brother had no knowledge of the Drive Article at the time of filing the Applications.

32. Mr Spencer declares “It did not occur to us that GMSV would be too similar to GM or HSV. As I will address later in this declaration, the Opponent does not have a monopoly over either GM or SV in any of the classes of the Applications, much less a monopoly over the combination GMSV. Indeed, as I will also address later in this declaration, both the Australian trade marks office and the Resolution Institute panel that issued the Administrative Panel Decision on the Complaint have confirmed that we were correct in our thinking that GMSV was distinctive over these separate marks” and “Moreover, by the time we lodged the Applications, we had seen multiple media articles, including on the internet, that the Holden operations were closing down in Australia as it was no longer a viable operation in Australia. In 20 October 2017, the last existing vehicle plant, located in Elizabeth, was closed as the production of the Holden Commodore ended”.

33. Mr Spencer refers to an annexed article published on dated 17 February 2020 by Jack Gramenz titled ‘Holden brand to disappear by the end of 2020’ (‘News.com.au Article’). I note the following passage from the News.com.au Article “GM said it would be focusing its Australian and New Zealand efforts on the “specialty vehicles business”, which is likely in reference to the HSV badge that has gone on to high-powered variants in the past”.

34. Referring to the closure of Holden manufacturing operations, the News.com.au Article, and another article in the Guardian dated 19 February 2020 which reported the retirement of the HOLDEN brand, Mr Spencer states “In these circumstances, we genuinely believed that the HSV mark had been abandoned in Australia. We had no idea that our adoption of GMSV as an acronym for Genuine Muscle Special Vehicles, would cause any problem, based on the fact that HSV and GM were each separate trade marks, owned and used by separate companies (we address this later in this declaration), neither of which had an exclusive monopoly over GM or SV in any of the classes of the Applications, in circumstances where GM and HSV had not been ‘combined’ by the Opponent at that time, nor had GMSV been adopted or used by the Opponent, and as far as we knew the Opponent had publicly announced its plans to discontinue its operations in Australia. There was absolutely no bad faith on our part”.

35. Mr Spencer opines that the Opponent only decided to adopt the GMSV name after the Applicant did, and the Opponent regrets that it had done so once it was too late. Mr Spencer states “It defies belief that with an international in-house legal team, including Timothy G. Gorbatoff as the US based trade marks attorney and premier Australian law firm Baker McKenzie providing the Australian legal advice, that the Opponent would not have applied to register the GMSV trade mark promptly after adopting the mark and at least prior to publicly announcing its adoption of the mark”.

36. Mr Spencer declares that the Applicant was not legally represented at the time the Opponent filed the auDRP Complaint and he did not understand the meaning or implications of correspondence sent by lawyers for the Opponent. Mr Spencer opines that weight should not be given to the auDRP Complaint decision due to its non-participation in the complaint process. Mr Spencer also refers to a paragraph of the decision where it was stated that “Had it been necessary for the Panel to decide, the Panel would not have been inclined to find that the Disputed Domain Name was similar to any of the Complainant’s trademarks other than the GMSV brand”.

    EIR

37. Mr Walkinshaw in his declaration declares that he has been a director of Premoso since 2012, and that he was concerned upon learning of the use of ‘GM’ and ‘GMSV’ by the Applicant.  These concerns were prompted by a Facebook page (‘GMSV Facebook Page’) being brought to Mr Walkinshaw’s attention by another Facebook user. Mr Walkinshaw refers in particular to the following Facebook post of 6 June 2020 which contains the GMSV Logo, but does not reference ‘Genuine Muscle Special Vehicles’:

38. Mr Walkinshaw also refers to his investigations of the website (‘GMSV Website’) and Instagram account official.gmsv (‘GMSV Instagram Account’). Mr Walkinshaw states that initially the GMSV Website only displayed pictures of General Motors vehicles (particularly a red Chevrolet Camaro, as shown in paragraph 23 above). Further, Mr Walkinshaw also states the GMSV Instagram Account did not appear to mention the term ‘Genuine Muscle Special Vehicle’ when he viewed it on 6 June 2020.

39. Mr Walkinshaw states that after sending several private messages to the GMSV Instagram Account holder on 6 June 2020, he was subsequently blocked from viewing the account and was also unable to access the GMSV Website. Several days later, when he was again able to access the GMSV Website, it had been updated to include images of non-GM vehicles and contained the words ‘Genuine Muscle Special Vehicles’.

40. Mr Walkinshaw declares that he was contacted by journalist Joshua Dowling on 7 June 2020 and asked whether the GMSV Facebook Page or the GSMV Website were associated with the Opponent, Premoso, or HSV.  Mr Walkinshaw advised that there was no such association.

41. Mr Crennan in his declaration declares that he was the Managing Director of Premoso between 1987-2005, Chairman of Premoso from 2006-2007, and an ambassador and advisor to the HSV and HSV DT racing team between 2007-2010. After retiring in 2018, he has continued to be a keen observer of the automotive industry and is a regular contributor for Automotive Dealer Magazine and Torque ‘N’ 8’s Magazine (published by the HSV Owners Club).

42. Mr Crennan declares that in March 2021, he wrote an article titled ‘What’s Hot and What’s Not Mk 2’ that was published in Torque ‘N’ 8’s Magazine.  While undertaking research for that article, Mr Crennan came across the GMSV Website and GMSV Facebook Page. Mr Crennan incorrectly assumed that the GMSV Logo appearing on these pages related to the Opponent, particularly due to similarities in brand getup that he perceived existed when compared to the Opponent’s HSV logo.

43. Mr Crennan also responds to statements in Mr Spencer’s declaration which he considers incorrect. The statements by Mr Spencer, and the response by Mr Crennan, relate to the ownership of various HSV related trade marks used by Premoso in Australia. This information has no bearing on my decision under s 62A, so I will not summarise it further.

44. Mr Gorbatoff in his second declaration refutes speculation by Mr Spencer that the Opponent had only decided to adopt ‘GMSV’ after the Applicant had itself adopted the mark. Mr Gorbatoff refers to an article by Damien O’Carroll dated 18 February 2020 published on titled ‘What now for Holden owners’ which referred to a statement by GM International Operations Senior Vice President Julian Blissett that GM intended to have a market presence via a small volume ‘General Motors Specialty Vehicles’ (GMSV) operation.

45. Mr Gorbatoff also goes on to discuss the ownership of HSV related trade marks, and refute other claims made by Mr Spencer. This information has no bearing on my decision under s 62A, so I will not summarise it further.

46. Ms Watal in her declaration provides the results of Google searches undertaken on 9 August 2021 regarding a phone number that she states was provided to her firm by Mr Spencer on 11 January 2021. Her searches revealed various business listings for ‘LCM Hand Sanitiser’ and a Facebook page /facebook.com/lcmhandsanitiser. Annexed screenshots of the listings show a business selling various hand sanitiser products under the brand ‘LCM’. I also note that the ABN included on one of the listings corresponds to the ABN of the Applicant.

    Discussion

    Section 62A

1. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Applications were filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Applications as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[4]  I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62] (Bennett J); Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [165] (Dodds-Streeton J).

2. I note at the outset that the questions of ownership of various trade marks relied on by the Opponent, and whether or not reputation in those marks accrued to the Opponent or some other entity, are not particularly relevant considerations under s 62A. It is sufficient to note that the Opponent and its associated entities variously used, registered, and accrued reputation in trade marks including GM, HOLDEN, and HSV in Australia over a long period. It is also clear that GM, via a local partner, operated a special vehicle business in Australia for three decades.

3. The mere adoption of a trade mark incorporating elements that are the same as or similar to a well-known brand would not in itself constitute bad faith. For example, had the evidence indicated that the Applicant adopted the Trade Mark due to some meaning it ascribed to the letters ‘gmsv’ that was entirely unrelated to the motor vehicle industry (e.g. Greater Melbourne Symphony Violinists), the Opponent’s case under s 62A would not advance very far.  However, the Applicant’s evidence indicates a clear intention to use the Trade Mark in relation to car related goods and services, and the allegation of bad faith must be considered in this context.

4. In submissions, Mr Cooke methodically cited all aspects of the evidence that in the Opponent’s view cast doubt on the Applicant’s motivations for filing the Applications. For the sake of brevity, I will not repeat every submission, and will confine my discussion to those aspects of the evidence which I consider to be most relevant.

5. The HOLDEN brand is iconic in Australia for motor vehicles. The evidence also clearly establishes that the HSV brand had its own significant and dedicated following in Australia at the Relevant Dates. I am also satisfied that the GM brand was well-known in Australia at the Relevant Dates, and many Australians would be aware of the connection between HOLDEN / HSV and General Motors / GM. The decision to retire the HOLDEN brand also attracted considerable attention in Australia. It is therefore understandable, given the large following of the HOLDEN brand, that there would be significant interest amongst a section of Australian consumers regarding GM’s plans for its special vehicle business in Australia following the retirement of the HOLDEN brand.

6. GM’s plan to adopt GMSV in relation to its special vehicle business following the retirement of the HOLDEN brand was stated in the Drive Article published prior to the Relevant Dates. However, it does not appear this fact was widely reported. I also accept that there is no direct evidence that Mr Spencer actually read the Drive Article. Nevertheless, it is clear from Mr Spencer’s own evidence that he had read the News.com.au Article which indicated that GM intended to continue its focus on its Australian special vehicle business. Further, given that Mr Spencer describes himself as a ‘huge car enthusiast’ with a particular interest in muscle cars, he is more likely to have been aware of GM’s plans with regards to ‘GMSV’ than another member of the public with no particular interest in the vehicle industry.

7. There are also other aspects of the evidence which indicate that the Applicant was likely aware of GM’s intentions regarding GMSV, and that this motivated filing of the Applications.

8. Firstly, the evidence does not demonstrate that the Applicant had any capacity to produce motor vehicles, or any history prior to the Relevant Dates of trading in relation to motor vehicle accessories or merchandise. The Applicant’s name ‘Laser Cleaning Machines Australia Pty Ltd’ indicates that the company was formed to trade in relation to cleaning related products. This inference is supported by the Removal Opponent’s searches which reveals trading activity associated with Mr Spencer’s phone number under the brand ‘LCM’ (initials corresponding to the words ‘Laser Cleaning Machines’) in relation to hand sanitisers. As such, the seemingly sudden decision by the Applicant to apply for registration of the Trade Mark for goods including motor vehicles and products that are commonly merchandised under well-known motor vehicle brands is curious to say the least.

9. Secondly, the Applicant concurrently filed the GMSV Logo (which shares similarity in stylisation with the HSV logo), and the word mark ‘GM Special Vehicles’. Both marks emphasise the letters GM, which is a well-known trade mark belonging to the Opponent.

10. Thirdly, Mr Spencer claims that the reason for selecting the Trade Mark was that it was an acronym for ‘Genuine Muscle Special Vehicles’ and that it did not occur to him that it would be too similar to either GM or HSV. However, he also states that he believed the ‘HSV’ mark had been abandoned in Australia. So, on the one hand, Mr Spencer says that the adoption of the mark had nothing to do with the GM or HSV mark, and on the other hand he says that he took the abandonment of the HSV mark into account. These statements are somewhat contradictory. If Mr Spencer did not consider there was a similarity between HSV and GMSV, then it would presumably be immaterial whether or not the HSV mark had been abandoned.  

11. Fourthly, there is no evidence that ‘Genuine Muscle Special Vehicles’ was used prior to Mr Walkinshaw expressing his concerns regarding use of GMSV on 6 June 2020. The business name ‘Genuine Muscle Special Vehicles’ was registered on 9 June 2020. The Applicant also did not apply to register ‘Genuine Muscle Special Vehicles’ as a trade mark, despite filing four applications for GM formative marks. This casts doubt on the claim that the Trade Mark was initially intended to be an acronym for ‘Genuine Muscle Special Vehicles’.

12. Fifthly, the GMSV Logo shares noticeable aspects of stylisation with the HSV logo, and the use of imagery of GM vehicles used on the GMSV Website and GMSV Facebook Page implies an association with the GM business. Further, the use of the term ‘Official Licensed Merchandise’ together with the use of vehicle imagery and a logo incorporating the American flag also implies the goods are associated with an established American motor vehicle brand.    

13. On balance, I consider it is more likely than not that the Applicant knew of the Opponent’s intentions regarding use of ‘GMSV’ in Australia. To conclude otherwise would be to accept that it was pure coincidence that the Applicant filed trade mark applications for ‘gmsv’, ‘GM Special Vehicles’, and the GMSV Logo very shortly after the Opponent’s plans were made known to the public. I also consider it is more likely than not that the Trade Mark and the other GM formative marks filed by the Applicant were selected due to the likely association many consumers would make with the well-known GM brand.  

14. In this context, I consider that a person adopting proper standards, knowing what the Applicant knew, would consider the filing the of the Applications to be in bad faith.

    Decision and award of costs

15. The Opponent has established a ground of opposition. As such, I have decided to refuse the Applications. Noting the appeal period, these refusals will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal. If an appeal is filed, the disposition of this opposition/s will be for the court.

16. The Opponent has requested an award of costs in its favour. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Applicant.

    Blake Knowles

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    14 June 2022