George Defilippou v Micali Coffee Pty Ltd

[2022] ATMO 171

TRADE MARKS ACT 1995

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

Re:Opposition by George Defilippou to registration of trade mark application 2135057 (30, 35, 43) – DB DONUT BOSS (Figurative) – in the name of Micali Coffee Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Michael Buck IP Applicant: Self-represented
Decision:	2022 ATMO 171 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58 and 60 considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by George Defilippou (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Micali Coffee Pty Ltd (‘Applicant’): 

Application Number:

2135057

Filing Date:

23 November 2020

Goods and Services:

Class 30: Donuts
Class 35: Administration of the business affairs of franchises; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to the establishment of franchises; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Discount services (retail, wholesale, or sales promotion services)
Class 43: Cafe services; Cafes

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Trade Mark’)

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 4 June 2021 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58 and 60. The Applicant filed a Notice of Intention to Defend on 1 September 2021.

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 8 December 2021 by George Defilippou, the Opponent, with Exhibits GD-1 to GD-16 (‘Defilippou 1’).

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 10 March 2022 by Tina Micali, Director and Secretary of the Applicant, with Annexure A (‘Micali Declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 17 May 2022 by George Defilippou with Exhibit GD-1  (‘Defilippou 2’).

6. The entirety of the evidence filed by the Opponent, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

7. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

8. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

9. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

10. The Opponent, an individual based in Queensland, is the applicant for the trade mark listed below (‘Opponent’s Trade Mark’).  The Opponent’s Trade Mark has a later priority date than the Trade Mark.   

Number	Trade Mark	Priority Date	Goods or Services
2157604	The Doughnut Boss	21 Feb 2021	Class 30: Donuts; Doughnuts; Glazes for food; Preparations for use as rising agents in food; Bakery products Class 35: Retail services relating to bakery products Class 43: Cafe services; Cafes; Bakery services

1. The relevant claims/statements in Defilippou 1 can be summarised as follows:

   ·     The Opponent provides doughnuts and assorted business, café and bakery services under or by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has been continuously used by the Opponent since May 2019.  The Opponent adopted the mark because it was a strong brand and the Opponent thought it was unique to the industry.  

   ·     Since May 2019, the Opponent has used the Opponent’s Trade Mark in Queensland and has advertised its mark though social media, signage and promotional flyers.

2. The Exhibits to Defilippou 1 include a copy of the lease agreement for the Opponent’s first place of business (indicating a one-month rental agreement), social media promotion and turnover figures, which indicate a limited turnover characteristic of a small business operating at one site.  I note that the leases provided were short term leases and the sales reports for 2019 happen to have particular gaps (i.e., reports are provided between May 2019 and December 2020 save July 2019, August 2019 and September 2020). 

3. Defilippou 2 mostly contains submissions in response to the submissions made in the Micali Declaration that are not necessary to summarise here. The relevant claims/statements in Defilippou 2 can be summarised as follows:

   ·     The Opponent notes that there was a short closure of its store for a few weeks at the Robina shopping centre due to repairs undertaken. The Opponent notes that following the closure of its initial store at Robina it was able to open a new store at Pacific Fair shopping centre a couple of weeks later.   The Opponent has never traded ‘on the occasional Saturday’.

   The Applicant

4. The Micali Declaration makes a number of submissions about the evidence provided in Defilippou 1 which I briefly summarise below:

   ·     The Opponent has only traded in Queensland and its plans to expand to New South Wales and Victoria are of no relevance in this matter.  It is a small business with a limited reputation;

   ·     The Opponent’s Trade Mark is a word mark and it is not similar to the Trade Mark;

   ·     The Opponent has not continuously used the Opponent’s Trade Mark; rather its use was inconsistent as the Opponent’s initial lease was only for one month and its other trading appears to be on Sunday markets; and

   ·     The Applicant’s sales under the Trade Mark were consistent and uninterrupted from May 2020.

5. I note that while the Applicant asserts that its sales under the Trade Mark were consistent and uninterrupted from May 2020, the sales figures supplied only demonstrate trading from 1 August 2020. 

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

7. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the filing date 23 November 2020 (‘relevant date’), which is also the priority date for the purposes of s 60.[4]

   Discussion

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Section 58 – Applicant not owner of trade mark

8. Section 58 is reproduced below:[5]

   [5] In summarising the principles that apply with respect to s 58 I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12] (Hearing Officer Wilson).

   Section 58. Applicant not owner of 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.

   Note:For applicant see section 6.

9. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods or services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

10. The ground based on s 58 was particularised in the SGP as follows:

    2.1 The Applicant is not the owner of the Opposed Trade Mark. Specifically, the Applicant is not the first user of the Opposed Trade Mark.

    2.2. The Opponent adopted the name THE DOUGHNUT BOSS and the Opponent’s Trade Mark in or around early 2019, approximately 2 years ago, and prior to the filing date of the Opposed Trade Mark. Due to the Opponent’s business success using the Opponent’s Trade Mark, it has established a significant reputation in the Opponent’s Trade Mark, in Australia, in respect of the goods and services covered by the Opponent’s Trade Mark, prior to the priority date of the Opposed Trade Mark.

    2.3. The Opposed Trade Mark is substantially identical or deceptively similar to the Opponent’s Trade Mark, and nominates goods and services in classes 30, 35 and 43 that are the same or of a similar description to the goods and services provided by the Opponent.

    2.4. As the Applicant is not the proprietor or the owner of the Opposed Trade Mark, the Opposed Trade Mark should be rejected. The Opposed Trade Mark is substantially identical with, or deceptively similar to the Opponent’s earlier trade mark and is sought in relation to the same or similar goods and services.

11. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[9]

    [9] (1963) 109 CLR 407, 414.

12. The Trade Mark and the Opponent’s Trade Marks are set out below:

    The Doughnut Boss

13. While there are obvious similarities in the meanings of the respective marks, on a side by side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark.  In particular, the words ‘donut/doughnut’ are spelled differently, the Opponent’s Trade Mark contains the additional (albeit minor) element ‘the’ and most significantly the Trade Mark contains the distinctive and highly recognisable ‘DB’ element (being the letters DB that also evoke the image of two donuts, the second of which has had 3 bites taken of it).  The DB element is an essential feature of the Trade Mark and not one that can be disregarded for the purposes of the comparison between the two marks.  Its absence from the Opponent’s Trade Mark means that the trade marks are not substantially identical.

14. As the Opponent has failed to establish the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

    Section 60

15. Section 60 is reproduced below:

    Section 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.

16. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[10]

    [10] The present paragraph and the following paragraphs summarising the requirements under s 60 are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

17. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[12]

    [11] [2000] FCA 1335, [81].

    [12] (1992) 33 FCR 302, 343.

18. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

    [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

19. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[14] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[15]

    [14] (2000) 50 IPR 1.

    [15] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

1. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   3.1. The Opponent’s Trade Mark had, before the priority date of the Opposed Trade Mark, acquired a reputation in Australia and, as a result of that reputation, use of the Opposed Trade Mark is likely to deceive or cause confusion.

   3.2. Specifically, the Opponent has, since May 2019, used the Opponent’s Trade Mark and the words THE DOUGHNUT BOSS to such an extent that it has established a significant reputation in these words in Australia.

   3.3. The Opponent’s reputation in the Opponent’s Trade Mark and in the name THE DOUGHNUT BOSS as at the priority date of the Opposed Trade Mark, was in respect of the goods and services covered by the Opponent’s Trade Mark which are doughnuts, glazes for doughnuts, bakery products, retail services relating to bakery products and café/bakery services. These goods and services are the same as, or similar to, the goods and services nominated by the Opposed Trade Mark.

   3.4. At the time of the filing of the Opposed Trade Mark, the Opponent: (a) was using the Opponent’s Trade Mark and THE DOUGHNUT BOSS name in Australia; and (b) had a significant common law reputation in Australia for the Opponent’s Trade Mark and the name THE DOUGHNUT BOSS in relation to doughnuts, glazes for doughnuts, bakery products, retail services relating to bakery products and café/bakery services.

   3.5. As a result of the Opponent’s reputation, the use of the Opposed Trade Mark by the Applicant would be likely to cause deception or confusion.

   3.6. Given the Opponent’s reputation in the name THE DOUGHNUT BOSS and the Opponent’s Trade Mark in respect of doughnuts, glazes for doughnuts, bakery products, retail services relating to bakery products and café/bakery services, use of the Opposed Trade Mark is likely to deceive or cause confusion in the Australian marketplace.

   3.7. In particular: (a) THE DOUGHNUT BOSS is a distinctive trade mark coined by the Opponent; (b) the Applicant’s goods and services would be offered to the same segment of the market and the same customers as the Opponent; and (c) the Applicant’s goods and services would be in direct competition with the goods and services covered by the Opponent’s Trade Mark.

   3.8. Therefore, the Opposed Trade Mark should be rejected.

2. Taking the Opponent’s evidence at its highest, at the relevant date the Opponent had operated a single store (from multiple locations) selling doughnuts and related products (the market for such product in Australia being essentially the entire Australian population) for 18 months.  Its revenue was not insignificant but characteristic of a small trading enterprise.  Its spending on advertising and promotional was modest(being restricted to promotional flyers) and its social media pages had a limited number of followers. 

3. In the circumstances, I am not satisfied that at the relevant date, the Opponent had acquired a reputation in Australia in the Opponent’s Trade Mark amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.

4. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

5. Section 42 is reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   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.

6. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[16]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[17]

   [16] Advantage-Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [17] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

7. The Opponent has particularised the ground of opposition in the SGP as follows: 

   1.1. Use of trade mark number 2135057 for ‘db DONUT BOSS’ in Classes 30, 35 and 43 (the Opposed Trade Mark) is contrary to Australian Law within the meaning of section 42(b) of the Trade Marks Act 1995, because such use would be contrary to section 18 of Australian Consumer Law.

   1.2. Use of the Opposed Trade Mark by the Applicant would amount to engaging in conduct in the course of trade that is misleading or deceptive, or likely to mislead or deceive.

   1.3. Use of the Opposed Trade Mark by the Applicant would amount to engaging in conduct that is liable to mislead the public as to the nature or characteristics of the Applicant’s goods and services.

   1.4. Use of the Opposed Trade Mark by the Applicant in relation to the Applicant’s goods and services will also result in false and/or misleading representations in connection with the supply or promotion of goods and services. In particular, such conduct will falsely and/or misleadingly represent that: (a) the Applicant’s goods and services are of a particular kind, standard, quality or style; (b) the Applicant’s goods and services have the Opponent’s sponsorship, approval or endorsement; and/or (c) the Applicant has the Opponent’s sponsorship, approval, endorsement or is affiliated with the Opponent.

   1.5. The Opponent first began its doughnut and café business in May 2019. The Opponent has, since this time, been known as THE DOUGHNUT BOSS. In February 2021, the Opponent filed trade mark application number 2157604 for THE DOUGHNUT BOSS, which is still pending (Opponent’s Trade Mark).

   1.6. Use of the Opposed Trade Mark is likely to cause damage to the business and goodwill of the Opponent in Australia, including: (a) damage to the goodwill and reputation through mistaken associations; and (b) erosion of the distinctiveness of the Opponent’s brand through dilution of goodwill.

   1.7. Use of the Opposed Trade Mark is contrary to Australian Law within the meaning of section 42(b) of the Trade Marks Act 1995, because such use amounts to Passing Off at common law.

   1.8. Use of the Opposed Trade Mark would constitute a misrepresentation made in the course of trade to prospective or actual customers. In particular, such conduct would constitute a misrepresentation by the Applicant in the course of trade that: (a) the Applicant’s goods and services are sourced from the Opponent; (b) there is some form of continuing business association between the Applicant and the Opponent or that the Applicant has the Opponent’s sponsorship, approval, endorsement or is affiliated with the Opponent; and/or (c) the Applicant has been licensed by the Opponent to use the Applicant’s mark in relation to the Applicant’s goods and services.

   1.9. Such use is likely to cause damage to the business and goodwill of the Opponent in Australia. Such damage includes the following: (a) damage to the goodwill and reputation through mistaken associations; and (b) erosion of the distinctiveness of the Opponent’s brand through dilution of goodwill.

8. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[18] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [18] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

9. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[19] 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. 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)’.[20] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill 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:

   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.[21]

   [19] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [20] [2003] FCA 104, [107] (Beaumont J).

   [21] [1989] FCA 506, [40] (citations omitted).

10. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Decision and Costs

11. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2135057 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

12. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    4 October 2022