Giga Pty Ltd v Neville Klaric

[2010] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Giga Pty Ltd to registration of trade mark application nos. 1247961 Maximum Adult Hardcore Matchmaker; 1247962 Adult Hardcore Matchmaker; 1245441 Hardcore Matchmaker; 1245442 Maximum Hardcore Matchmaker (45) - filed in the name of Neville Klaric.

Delegate:

Heath Wilson

Representation:

Opponent: Ben Fitzpatrick of Counsel instructed by Actuate IP Patent & Trade mark Attorneys.

Applicant: Written submissions only.

Decision:

2010 ATMO 121

Section 52 opposition – grounds pressed under sections 59, 60, 44, 42(b) and 62A of the Trade Marks Act 1995 –sections 59 and 60 established – applications refused registration – costs awarded against the applicant.

Background

1.     On 10 June 2008, Neville Klaric (“the applicant”) applied to register “Hardcore Matchmaker” (1245441) and “Maximum Hardcore Matchmaker” (1245442) as trade marks. He subsequently also applied to register the trade marks “Maximum Adult Hardcore Matchmaker” (1247961) and “Adult Hardcore Matchmaker” (1247962) on 24 June 2008. All four of the above applications claim the following services in class 45:

Compilation, creation and maintenance of a register of domain names; registration of domain names.

2.     The first two applications were advertised as accepted in the Australian Official Journal of Trade Marks on 9 October 2008 and the latter two applications on 23 October 2008. Giga Pty Ltd (“the opponent”) filed notices of opposition in relation to the four trade mark applications under section 52 of the Trade Marks Act 1995 (“the Act”). Evidence was duly filed and served by both parties (as detailed below) and the opponent then requested to be heard in relation to the opposition.

3.     On 13 October 2010 I heard this matter in Canberra as a delegate of the Registrar of Trade Marks. Ben Fitzpatrick of Counsel, instructed by Actuate IP, Patent & Trade Mark Attorneys appeared on behalf of the opponent and the applicant provided written submissions in lieu of appearing at the hearing.

Evidence

4.     Evidence from both parties has been filed and served for each of the applicant’s four trade marks. However, the only differences between the content of the declarations/ exhibits are the trade marks themselves and their numbers, so I will hereafter refer to the statutory declarations and exhibits in a collective manner:

Evidence in Support

·Statutory declarations of Peter Somogyi dated 29 June 2009 with exhibits PJS-1 to PJS-47 (“the Somogyi declarations”).

Evidence in Answer

·Statutory declarations of Neville Klaric dated 20 October 2009 with attached exhibits NMK-1 to NMK-30 (“the Klaric declarations”).

Evidence in Reply

·Statutory declarations of Daniel Yu-Xi Lo dated 20 April 2010 with attached exhibits DYL-1 to DYL-17 (“the Lo declarations”).

Onus and Reasons

5.     I confirm I am proceeding on the basis that the Opponent need only establish one (or more) of its grounds on the balance of probabilities.[1]

[1] Pfizer Products Inc v Karam (2006) 70 IPR 599; (2007) AIPC 92-232 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009); (2009) 82 IPR 1: (2009) AIPC 92-355; (2009) 258 ALR 545, at [22] to [26].

6. The grounds pressed by the opponent were sections 59, 60, 44, 42(b) and 62A of the Act and, for convenience, I will address them in the order argued by the opponent’s counsel. For the sake of completeness, I find that the remaining nominated grounds of opposition have not been established.

Section 59: Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

7. Under section 59 of the Act, a trade mark applicant possesses a prima facie presumption of intention to use its mark arising from the application for registration. However, this presumption may be rebutted where the opponent’s evidence readily gives rise to the drawing of an adverse inference[2], and shifts the onus to the applicant to prove its intention to use. If that evidence remains unchallenged and unrebutted by the applicant section 59 may be established on the balance of probabilities. The requisite intention to use the applicant’s trade marks must exist at the time of filing the application.[3]

[2] See Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft (2002) 55 IPR 638.

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, and see comments of Justice Dodds-Streeton in Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010) [at 147].

8.     The Somogyi declarations submitted by the opponent question the applicant’s intention to use the trade marks and refer to TELECAFE - being the trade mark of another trader operating in the dating and introductory services industry in Australia. The applicant has applied to register the trade mark “Hardcore Telecafé” (1259814), notably claiming computer dating services; dating agency services and dating services. This trade mark application has since lapsed. The applicant additionally registered the Internet domain names “ and “ In the evidence in support, the opponent clearly puts the applicant on notice with regard to intention to use the trade marks, stating[4]:

It is clear…..that the Applicant does not and has never intended to use the various trade marks for which the Applicant has sought registration, including the trade mark the subject of the Opposed Application.

[4] Somogyi declarations, paragraph 44.

9.     The Lo declarations submitted on behalf of the opponent highlight a pattern of conduct from the applicant involving the registration of Internet Domain names similar to the names of other companies in the matchmaking industry. As these domain names include the addition of the words “Hardcore” or “Maximum,” the possible inference is that this pattern of conduct has carried over into the application for the opposed trade marks.

10.   The Internet domain names owned by established online businesses in the field of dating and personal services include AdultCafe.com; AdultDating.com; Match.com.au; and AdultShop.com. The evidence indicates that the applicant has now registered the following related domain names “adulthardcorecafe.com”, “hardcoreadultcafe.com”; “adulthardcoredating.com”, “hardcoreadultdating.com.au”; “maximummatch.com” and “hardcoreadultshop.com”. It appears that none (or very few) of these registered websites resolved to active websites at the time of the declaration. Viewing this evidence as a whole, I am of the view that the connection between online dating websites and the inclusion of “Maximum” or “Hardcore” by the applicant must be more than coincidence. I find that an adverse inference can be drawn and the onus has shifted to the applicant to establish its intention to use the trade marks.

11.   In my view, the applicability of this ground depends on the interpretation of apparently conflicting statements from the applicant regarding the intention to use the trade marks. In response to the allegation and evidence relating to a lack of intention to use the trade marks, the applicant concedes that he had not used the trade marks at the time of the opposition, and made the following statement regarding use of the word “hardcore”:[5]

…As the Applicant is also involved in the matchmaking industry, this word is used many times to relate to the public what service this Hardcore business is offering.

And in relation to the trade marks (with my emphasis):

…These 4 Trade marks, as noted by the opposition, are registered in class 45, although under the title of: “Compilation, creation and maintenance of a register of domain names; registration of domain names” the applicant has stated, his genre is the hardcore market, in doing so, the applicant intends on using these websites for the promotion of other hardcore sites as the applicant has shown previously in NMK-13, the list of domain names which are covering the hardcore genre…The Applicant has provided this evidence to show that he has already entered into the matchmaking industry with Café Hardcore and Café Hardcore. (sic) [6]

[5] Klaric declarations, paragraph 5.

[6] Klaric declarations, paragraph 11.

12.   The applicant’s response indicates that he has registered the trade marks “Hardcore Café” (1246380) and “Café Hardcore” (1275206) and that he has already entered the “match making industry” (which is similar to the online dating services provided by the opponent). Additionally, the Klaric declarations display the design for the home page of “cafehardcore.com”, and “maximumhardcore.com.au” owned by Island Paradise Design Pty Ltd,[7] a company of which the applicant is the director. The home pages clearly indicate that the websites are (or will be) offering adult dating services and support the contention that the applicant is intending to operate, or is currently operating in the same field of business as the opponent. If the above examples and statements of intention from the applicant are accurate, that intention to use the trade marks appears to be in respect of dating/match making services. Most importantly, there was an absence of stated intention to use in relation to the actual services claimed, namely the Compilation, creation and maintenance of a register of domain names; registration of domain names.

[7] Klaric declarations, exhibits NMK 10-11.

13.   It is evident that the applicant also operates other websites which do provide the claimed services (Orbitaldomains.com and Universalstallion.com), but there is no indication that the opposed trade marks would be used for this purpose. In addition, the ordinary meaning of the words which comprise the opposed trade marks would appear to favour an intention to use in relation to “match-making” rather than a register of domain names. The inference to be drawn is that the applicant intends to use the trade marks in conjunction with his corresponding registered domain names[8] for services other than those specified. If this were the extent of the material before me, I would find the ground of opposition under section 59 to have been established on the balance of probabilities. However, there is available additional information to assist me and on which I can draw in reaffirming that finding.

[8] Klaric declarations, exhibit NMK-14.

14.   The written submissions of the applicant contain comments regarding intention to use the trade mark for the claimed services which appears to be inconsistent with the previous statements from the Klaric declarations:

The four Websites of the trade marks in question are at the moment operational on the internet under the correct classification of the required class for that trade mark registration.[9]

and:

The use of the trade marks are absolutely intended for the use of the classification I have registered these trade marks in and as explained are directly linked to their domain registration website.[10]  

[9] Page 3, Applicant’s written submissions.

[10] Page 8, Applicant’s written submissions.

15.   The apparently contradictory nature of these statements when compared with those in paragraph 11 raises questions regarding the intention to use. As a result, I find it necessary to analyse the likelihood that the applicant intends to use the trade marks as trade marks in relation to the claimed services.

16. The opponent’s argument supporting the section 59 ground of opposition was twofold. The primary argument of the opponent (as addressed above) was that the applicant does not to intend to use the trade marks in relation to the Compilation, creation and maintenance of a register of domain names; registration of domain names, but for other unrelated services. The secondary argument was that even if the applicant did have that intention, it would not involve using the relevant names as trade marks. It is evident from the case of Ritz Hotel Ltd v Charles of the Ritz Ltd[11] that the relevant intention to be established is:

…a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time… (My emphasis)

[11] Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 203; (1988) 12 IPR 417 at 464; (1989) AIPC 90-546 at 38,796.

17.   The evidence indicates that these trade marks will be used with reference to registered domain names made available for sale from the applicant’s websites orbitaldomains.com or universalstallion.com. The applicant states that the trade marks will be linked to the website the website which performs the actual function of the claimed services, that is, as a register of domain names.

18. The most likely explanation is that the applicant instead intends to sell these trade marks as domain names on the above website. If assigning (or authorising the use of) the trade marks to another trader at the time of filing this may constitute the requisite intention under subsection 59 (a) or (b) of the Act. However, I am not satisfied that the intention at filing was to distinguish services in the course of trade by a person from services provided by any other person.[12] In Suyen Corporation v Americana International Limited[13] Justice Dodds-Streeton also commented in relation to section 59 that:

Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

[12] Section 17 of the Act.

[13] Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010); (2010) AIPC 92-389 per Dodds-Streeton J (at 214).

19.   In summary, I find that the evidence establishes a prima facie case for a lack of the intention on the applicant’s part to use the trade marks, whether it is for the claimed services, or as trade marks. The applicant’s response fails to rebut the opponent’s evidence, but rather compounds the issue. On the balance of probabilities, the ground of opposition under section 59 of the Act has been established in relation to each of the applicant’s four trade marks.

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.

20. Section 60 of the Act does not require the services of the conflicting trade marks to be similar or of the same description, and neither do the trade marks need to be substantially identical or deceptively similar for the ground to succeed. The opponent must, however, establish an Australian reputation existing in its trade mark(s) on the applicant’s respective priority dates, being 10 and 24 June 2008. The reputation must be sufficiently significant for the use of the opposed trade marks within the Australian marketplace to deceive or cause confusion.

Extent of Reputation

21.   The opponent’s trade mark is “Adult Match Maker” and has been promoted to Australian consumers since April 2002 for dating and introductory services including online chat rooms, provided over the internet.

22.   The number of new members for the opponent’s “Adult Match Maker” website has significantly grown between 2002 and 2005. In addition, membership to the opponent’s online services was widespread in all Australian states as at June 2008.[14] In ConAgra Inc v McCain Foods[15], Lockhart J commented that:

…[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.

[14] Somogyi declarations, paragraph 13. 

[15] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; (1992) 23 IPR 193 at 234; (1992) AIPC 90-892 at 38,419.

23.   The expression “Adult Match Maker” has been extensively promoted in Australia by the opponent utilising numerous links and banner advertisements to its website through a network of affiliates. It has also engaged online advertising agencies to promote its services and it has advertised on a number of popular mainstream websites. The prominence of online advertisements for the trade mark is demonstrated to my satisfaction from search results of the major search engines, “Google Australia” and “Yahoo”.

24.   Notably, the name or trade mark “Adult Match Maker” has featured in 21 of the opponent’s television commercials across the commercial television channels regularly broadcast in various forms during the period from April 2002 to November 2008. Those commercials are also accessible online. Further promotional activities have included trade mark use on posters, t-shirts, discount cards, newsletters and mention of the trade mark in articles of major Australian newspapers. After the priority dates of the opposed applications, the opponent has achieved still further growth in the number of members who would be familiar with its trade marks.

25. Accordingly, I find that the opponent’s trade mark “Adult Match Maker” enjoyed a substantial reputation for online dating services in Australia as at June 2008. Having established its trade mark reputation, the opponent must satisfy the second element of section 60 - that is, that as at 2008 use of the applicant’s trade marks would be likely to deceive or confuse the Australian public because of the reputation of the opponent’s trade mark.

Likelihood of Confusion

26.   While there is no requirement that the trade marks be substantially identical or deceptively similar, the extent of similarity between the trade marks is still a factor relevant to determining the level of reputation required to be established by the opponent. While two of the applicant’s trade marks contain the operative words “Adult” and “Match maker” (being words which constitute the entirety of the opponent’s trade mark), the only similarity with the remaining applicant’s marks is the fact that they both contain the word “matchmaker”. The level of requisite reputation in the opponent’s trade mark would accordingly need to be higher than that demonstrated by the opponent in order for the use of the trade marks “Hardcore Matchmaker” and “Maximum Hardcore Matchmaker” to cause confusion in Australia. 

27.   The applicant has provided evidence indicating the commonality of the separate words “Matchmaker” and “Adult” on Google, Yahoo and Australian Trade Marks Online Search System (ATMOSS).[16] However, it is the combination of these elements and their dominant presence in the applicant’s trade marks that would be likely to cause confusion. The fact that those words when considered separately have readily recognizable meanings does not necessarily preclude the opponent from attaining a reputation in respect of the use of a combination of the two words as a trade mark for particular services. While the use must be use as a trade mark, a mark may serve a descriptive function and still be able to function as a badge of origin.[17]

[16] Klaric declaration, exhibits NMK-15 to 16.

[17] See Aldi Stores Partnership v Frito-Lay Trading Company GmbH [2001] FCA 1874.

28.   The first two trade marks of the applicant include the words “maximum” and/or “hardcore” and both of these words also have laudatory or descriptive qualities in relation to matchmaking services. The remaining words in the applicant’s marks would be recalled due to the opponent’s aforementioned reputation. The applicant has not claimed match making services, but (as previously outlined).section 60 does not require the services of the applicant and the opponent to be similar.

29. With reference to the reputation established by the opponent, I find a clear likelihood of confusion between the applicant’s first two trade marks and the opponent’s trade mark “Adult Match Maker”. The ground of opposition under section 60 of the Act has been established for trade marks 1247961: “Maximum Adult Hardcore Matchmaker” and 1247962: “Adult Hardcore Matchmaker”. However, the opponent’s reputation in its “Matchmaker” name is not sufficient for the use of the two remaining trade marks containing the expression “Matchmaker” with differing descriptive terms (namely, nos. 1245441 “Hardcore Matchmaker” and 1245442 “Maximum Hardcore matchmaker”) to result in confusion for Australian consumers.

Section 44: Identical etc. trade marks

30. The relevant provisions of section 44(2) of the Act state:

(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.

31. The opponent has relied on its earlier trade mark registration no. 1063789 for the section 44 ground of opposition, details of which are:

Class 41: Entertainment

Class 45: Dating and personal services

32. The most evident obstacle for the opponent in establishing section 44 is the fact that entertainment services; dating and personal services are quite different in nature to the items compilation, creation and maintenance of a register of domain names; registration of domain names, despite parts of the specifications residing in the same class.

33.   The fact that the opponent’s and applicant’s services are in the same class does not mean that those services are of the same description.[18] The applicant made clear this point in its written submissions and Mr Fitzpatrick did not attempt to argue the issue at the hearing. For completeness, however, I will briefly address this ground. The question is a factual one of whether dating and personal services are similar services to the registration of domain names. Even in the broadest possible application of the relevant tests in Jellinek's Application[19], I could not find those services to be similar. The fact that the opponent’s and the applicant’s services are offered via the same medium (i.e. via the Internet) does not alter my finding in this regard, and goods (or services) are not necessarily of the same description because they may be used in close association.[20]  Consequently, I find that it would be an unnecessary exercise (under this ground) to address whether particular elements in the respective trade marks are descriptive, or whether the inclusion of a device in the opponent’s trade mark could alter the consideration of deceptive similarity between the two marks.

[18] See for example, Twentieth Century Fox Film Corp v Die Hard Pty Ltd (2001) 52 IPR 455.

[19] Jellinek's Application (1946) 1A IPR 393; 63 RPC 59.

[20] See "Atlas" Trade mark [1979] RPC 59.

34. As the nature and uses of the respective services in the relevant trade marks are clearly different, I am not satisfied there would be a real and tangible danger of deception or confusion between the opponent’s trade mark and the opposed applications. The ground of opposition under section 44 has not been made out.

Section 42(b): Trade mark use contrary to law

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

(b)its use would be contrary to law.

35. Mr Fitzpatrick referred to the evidence of reputation established in support of section 60 when submitting that the use of the applicant’s trade marks would be contrary to law. The opponent alleged that “misleading and deceptive conduct” would occur under section 52 of the Trade Practices Act 1974 (Cth) (“the TPA”), or the state equivalent (as the applicant is an individual and not a corporation). The opponent further argued that subsections 53(c) and (d) of the TPA would be breached as the applicant is allegedly falsely representing that he is affiliated with the opponent or that he has their sponsorship or approval. The opponent bears the onus of establishing that the use of the applicant’s trade mark “would”, not “could”, be contrary to law.[21] This suggests that a breach of the TPA under the above sections would require more substantial evidence from the opponent than was provided in support of the reputation under section 60.

[21] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32.

36. As section 60 was not established for the latter two trade marks of the applicant, it follows that there are not a reasonably significant number of potential purchasers that are likely to be aware of the opponent’s product and then misled, by the applicant’s use of its trade mark. In addition, I am not satisfied that either sections 52 or 53 of the TPA would be breached by the applicant’s use of its trade marks featuring the words “adult” and “matchmaker”. As a consequence, the opponent has not established the ground of opposition under section 42(b) of the Act for any of the applicant’s trade marks.

Section 62A: Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

37. In support of this ground, the opponent highlighted the numerous instances (extracted under the section 59 ground) where the applicant has applied for trade marks and/or domain names consisting of other trader’s trade marks with the addition of the words “Hardcore” or “Maximum” (or both). This trend appears to have continued with the opponent’s registrations of websites relevant to the opposed trade mark applications:

adulthardcorematchmaker.com

adulthardcorematchmaker.com.au

hardcoreadultmatchmaker.com.au maximumadulthardcorematchmaker.com.au maximumhardcoreadultmatchmaker.com maximumhardcoreadultmatchmaker.com.au

The inescapable conclusion is that the applicant is attempting to cover the online dating field in relation to trade marks, in much the same way as it appears to have done with domain names. This conduct may not have been questionable had the similarities with the other trader’s trade marks and their domain names not become apparent. The issue is whether the above actions establish that the opposed trade marks were applied for in bad faith.

38.   I find that the above set of circumstances raises an inference of bad faith which requires a response from the applicant. The applicant did not refute the accuracy of the opponent’s evidence or provide evidence in response. In addition, the applicant’s submissions stop short of providing an explanation for the specific conduct highlighted by the opponent. Instead, the applicant has attempted to provide an explanation by highlighting his ownership of other domain names which are not similar to other trader’s domain names. He further states:

In the future we plan to sell & lease out hundreds more domain names, many of which are relating to the ‘Hardcore’ industry as well as host and design their accompanying websites…[22]

And later propounds:[23]

Every person in the world is allowed to purchase as many domain names as they wish and it is in no way illegal or a crime to do so unless they are intentionally typo-squatting on existing trademarked names or cyber-squatting. If they are not intentionally doing this then they are free to register as many domain names as they feel necessary within reason.

[22] Applicant’s written submissions, page 5.

[23] At page 7 of the submissions.

39.   The applicant appears to have also applied this reasoning to the registration of trade marks. While it is not illegal to apply for the registration of numerous trade marks, an applicant must have the intention to use (or authorise the use of) the trade marks at the time of filing.[24] If a trade mark is applied for with the express purpose of selling to another trader, the intention to use that trade mark is lacking and such applications are open to opposition under section 59 of the Act. This requirement of an intention to use goes to the very definition of a trade mark.[25]

[24] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58.

[25] See section 17 of the Act.

40. In relation to section 62A, a person who trades in trade marks is also potentially open to a finding that the trade mark application was made in bad faith. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) set out some examples of bad faith:

·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

41.   It is arguable whether any of the above examples are analogous to the current facts, but it is worth noting that those examples are not meant to be exhaustive. The bad faith ground should not fail simply because the applicant sees nothing wrong with his behaviour.[26] However, in those circumstances,

…the evidence would need to show that the circumstances were such that the ‘reasonable man’ standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration. [27]

[26] Demon Ale Trade Mark [2000] RPC 355 (with reference to Royal Brunei Airlines Sdn Bhd –v- Philip Tan [1995] 2 AC 378 (PC).

[27] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26 (at para 11).

42.   The fact that the applicant’s trade marks have been registered for quite different services and have certain visual differences, support a finding that the opposed trade mark applications were not made in bad faith. While it is clear that the applicant was aware of the opponent’s trade mark, I am not satisfied that a “reasonable man standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration”.

43. Despite the inadequate explanation from the applicant, a finding of bad faith is not something that can be made lightly and it is arguable whether the heavier burden required to make out bad faith has been met on the current facts. The applicant’s general approach to trade marks (and domain names) is arguably unconventional, but I find that the act of applying for these particular trade marks falls short of intentional dishonesty. Therefore, on the balance of probabilities, I am not satisfied that these particular trade mark applications have been made in bad faith. The ground of opposition under section 62A has not been established in relation to the applicant’s trade marks.

Decision

Section 55: Decision

(1) Unless the proceedings are discontinued or dismissed, 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:  For limitations see section 6.

44. The opponent has established grounds of opposition under the Act in relation to all trade mark application nos. 1247961, 1247962, 1245441 and 1245442. As a result, the applicant is unsuccessful in its trade mark applications, and I refuse to register those trade marks.

Costs

45.   As the opponent has been successful in these matters, it is entitled to an award of costs. For the first opposition, I award costs against the applicant to the extent allowed under the Official Scale contained in Schedule 8 of the Trade Mark Regulations 1995. The taxing of costs for the second and subsequent oppositions will be weighted as per Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd, (2001) 53 IPR 591.

Heath Wilson

Hearing Officer

Trade Marks Hearings

1 December 2010