Hongyi Wu and Xia Yang v Home Box Office Inc
[2023] ATMO 56
•2 May 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Hongyi Wu and Xia Yang to registration of trade mark application number 2072158 (class 33) – GAME OF THRONES HOUSE LANNISTER (fancy) – in the name of Home Box Office Inc
| Delegate: | Benjamin Goldsworthy |
| Representation: | Opponent: Moulis Legal Applicant: Chrysiliou IP |
| Decision: | 2023 ATMO 56 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 59, 60 and 62A considered – no grounds established – trade mark to proceed to registration. |
Background
On 27 February 2020 (‘Relevant Date’) Home Box Office Inc (‘Applicant’) applied for trade mark 2072158 for ‘alcoholic beverages’ in class 33 (‘Designated Goods’). The trade mark is extracted below:
(‘Trade Mark’)
The application was examined in accordance with s 31 of the Trade Marks Act 1995 (Cth)[1] and, on 19 August 2020, its acceptance was advertised in the Official Journal.
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
On 19 October 2020, Hongyi Wu and Xia Yang (‘Opponents’) jointly filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’) was filed on 19 November 2020. The Applicant filed its Notice of Intention to Defend on 17 March 2021. The Opponents filed Evidence in Support (‘EIS’) on 17 June 2021. The Applicant filed Evidence in Answer (‘EIA’) on 22 September 2021 and the Opponents filed Evidence in Reply (‘EIR’) on 29 November 2021.
On 29 November 2021, the Opponents requested that the SGP be amended because their earlier trade mark application 1974349, which formed the subject of the s 44 ground in this opposition, was refused. The Opponents also requested amendments to the ss 60, 42(b) and 62A grounds in response to the decision by a delegate of the Registrar of Trade Marks (‘Registrar’).[2] This involved amending the names of certain persons mentioned throughout its SGP. The amendments were made under reg 5.12.
[2] Home Box Office Inc v Hongyi Wu & Xia Yang [2021] ATMO 119.
The time allowed for filing evidence ended and the parties requested to be heard. I heard the matter as a delegate of the Registrar on 1 February 2023 by teleconference. The Opponents were represented by Shaun Creighton from Moulis Legal and the Applicant was represented by Kerry Chrysiliou from Chrysiliou IP.
Evidence
EIS
The EIS consists of a declaration by Hongyi Wu (‘Wu-1’) dated from June 2021 with Annexures numbered HYW-1 to HYW-45. In summary, the Annexures include documents regarding the establishment of the Opponents’ corporation Lannister Group Pty Ltd (‘Company’), extracts from the Company’s website (‘Company’s Website’) and social media content, invoices and other documentation regarding the Company’s production activities, export and freight for wine. Copies of awards received by Hongyi Wu and the Company for wines are also included. Examples of advertising and promotion activities including by photographs and articles also feature. Sales and advertising figures are also provided.
EIA
The EIA consists of two declarations; one from Megan Martin, Chief Trademark Counsel of the Applicant dated 21 September 2021 and one from the Applicant’s Attorney, Kerry Chrysiliou dated 22 September 2021. The EIA, in summary, provides evidence concerning the popularity and distribution of the television show and books titled ‘Game of Thrones’ (‘GoT’) and the relevance of the Lannister family, which appears in the GoT story. The EIA also includes evidence about merchandise activities and partnerships, and confidential sales figures.
EIR
The EIR consists of a declaration by Hongyi Wu (‘Wu-2’) dated 29 November 2021 and a declaration of Paul Joseph Wyk (‘Wyk Declaration’), Attorney for the Opponents, dated 29 November 2021. Exhibits for Wu-2 include a translation of a decision by the Chinese National Intellectual Property Administration (‘CNIPA’), a promotional video and extracts of overseas registered trade marks which include the word ‘Lannister’. The Wyk Declaration exhibits include evidence regarding activities of the Applicant, alcohol consumption in Australia and Google search results for the words ‘Lannister wines’.
Preliminary matters
I should first deal with some preliminary matters which were raised at the hearing. Firstly, some exhibits led by the Opponents appear to be in Chinese characters, with no verified translation. All documents in proceedings must be in English[3] and otherwise should be filed with a translation and with a certificate of verification.[4] Some evidence appears to be the Opponents’ own or a machine generated translation, without a certificate of verification. Generally, I should only consider evidence accompanied by a verified translation.[5] I have inspected the material in question and need not consider it. I note that from what I can marshal on its face, such material appears to be of little weight and relevance. The Opponents or their representatives have provided a verified translation of, for example, the CNIPA document and yet did not provide one for other documents. I do recognise that the Opponents have retained new representation since the evidence stages of these proceedings. Mr Creighton offered to source translations and verifications for this untranslated material during his oral submissions at the hearing. Having now reviewed all the relevant material I need not direct the Opponents to do this since, for reasons set out further below, none of it is likely to change the outcome.
[3] Regulation 21.2(1).
[4] Regulation 21.2(2)(b).
[5] Regulations 21.2(1) and 21.2(2)(b).
At the hearing the Opponents submitted that ‘Lannister’ is a common surname and not a unique and coined word of the author of the GoT books and requested that I allow late evidence of such. The Applicant refuted that claim and countered that allowing this would amount to evidence out of time. The Australian Trade Marks Manual of Practice and Procedures notes the requirement of compelling reasons for allowing late evidence.[6] The relevant principles for allowing late evidence are canvassed in Fed Square Pty Ltd v Federation IP Pty Ltd,[7] where the delegate observed, ‘it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it ... there must be further circumstances that make it reasonable for the material to be taken into account’.[8] There is no indication of circumstances making it reasonable for such material to be allowed at such a late stage. No reasons were provided for the lateness of the evidence. Regardless, the late evidence in question would not likely change the outcome and I am not otherwise satisfied that compelling reasons exist to include this material.
[6] Part 51.2.5.
[7] [2015] ATMO 42.
[8] Ibid [55].
Grounds and onus
The Opponents have the onus of establishing at least one of the nominated grounds of opposition.[9] The standard of proof is the ordinary civil standard of the balance of probabilities.[10]
[9] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[10] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The amended SGP particularised grounds of opposition under ss 42(b), 59, 60 and 62A. The date at which the rights of the parties are to be determined is the Relevant Date, being the filing and priority date of the Trade Mark.
Discussion
Section 59
The Opponents press s 59, which provides:
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.
The burden is with the Opponents to demonstrate a prima facie case that the Applicant, at the time of filing this application, did not intend to use the Trade Mark.[11] If a prima facie case is offered, it will then generally fall to the Applicant to offer positive evidence of its intention to use the Trade Mark at the Relevant Date. On this point the Opponents simply make the allegation and then assert that no evidence exists to suggest the Applicant held the requisite intention. The act of filing an application for registration of a trade mark carries with it a rebuttable presumption that the person applying holds an intention to use a trade mark.[12] Mere lack of evidence of an intention to use a trade mark, or actual use itself does not discharge the Opponents’ burden to offer such prima facie case. This means that the Applicant has no case to answer under this ground.
[11] Amalgamated Television Services Pty Ltd v Clissold [2000] ATMO 14; New South Wales Lotteries Commission v Novamedia BV [2001] ATMO 65. See also, Tan v Tommy Hilfiger Licensing Inc [2002] ATMO 87; Suyen Corp v Americana International Ltd [2008] ATMO 4.
[12] Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 401 (Fullagar J).
Accordingly, I am not satisfied that the ground of opposition under s 59 has been established.
Section 60
The Opponents also rely upon s 60. Section 60 provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
Reputation in a trade mark cannot simply be assumed, it is for the Opponents to establish the reputation as having been acquired, before the Relevant Date, as a matter of fact.[13] The word ‘reputation’ means ‘the recognition of the [trade mark] by the public generally’.[14] What is required is something more than a reputation among a small number of persons and the size and extent of the class of persons may vary according to the circumstances of the case.[15] A reputation can be inferred from a high volume of sales, together with substantial advertising expenditures and other promotion, sometimes even without direct evidence of consumer appreciation of the trade mark.[16] In addition, the global or overseas reputation of a trade mark might operate in combination with its specific reputation in Australia.[17]
[13] ConAgra Inc. v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra Inc’).
[14] McCormick & Co Inc v McCormick [2000] FCA 1335, [127] (Kenny J) (‘McCormick’).
[15] Conagra Inc (n 13) [131]-[132] (Lockhart J) cited with approval in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [81] (Greenwood, Jagot and Beach JJ).
[16] McCormick (n 14) [80] (Kenny J).
[17] See, eg, Gain Capital UK Ltd v Citigroup Inc (No 4) [2017] FCA 519, [159] (Markovic J).
The Opponents allege that two trade marks (‘Opponents’ Trade Marks’) had each acquired a reputation in Australia through a mix of sales, promotions and export and supply chain activities. Much of the submissions does not distinguish between the two Trade Marks, yet they should be considered separately for the purposes of s 60. The Opponents appear to allege that a reputation for each was acquired before the Relevant Date and that because of the reputation for each, the use of the Trade Mark would be likely to deceive or cause confusion.
The Opponents’ Trade Marks consist of firstly one being the word ‘Lannister’; and the other being the word ‘Lannister’ combined with a shield device and what appears to be a lion (reproduced below).
Wu-1 states that the Company produces wine by either contracted out production from grapes to wine or by purchasing ready-made wine and applying the Opponents’ Trade Marks to bottles. It is asserted that the Company both exports to overseas markets, predominantly China, and sells wine to the Australian retail outlets and restaurants, including under other various trade marks bearing no resemblance to the Opponents’ Trade Marks.
Evidence of a reputation in Australia
Wu-1 states that the Opponents commenced brand development activities in around 2012/2013 and provides figures for sales in Australia for each of the years 2012-2013 to 2018-2019. Notably the Australian figures are mere estimates, are insubstantial in amount and the figures show low to moderate growth over time. In contrast, there are very specific numbers provided for exports, shown even to the single dollar. These export sales are substantial indeed.
The Opponents also rely on sales invoices. Many of the invoices include Goods and Services Tax (‘GST’) and some do not; the absence of GST amounts suggests an export only purpose.[18] No other explanation was offered by the Opponents. Some of the invoices also reference goods other than wine. Even if account is taken of the non-wine related invoices, I still would not be satisfied they support the claim to a reputation in Australia. I agree with the Applicant that to the extent that there are sales in Australia demonstrated, the quantity of sales is minimal and that sales appear to have occurred in Australia from early October 2014, based on the invoices. The amounts for Australian sales both in individual years and as a total are not substantial. The invoices and other evidence are not a substitute for the deficiencies in other materials and Australian sales figures. Many of the invoices reflect only business costs for the wine-making processes, bottling, export and shipping. These preparatory and production related supply chain dealings are not on the level of evidence of sales in Australia, which is a higher order of evidence for these purposes. Importantly, many of the invoices do not feature the Opponents’ Trade Marks. The evidence here does not show a sufficient reputation in Australia amongst sufficiently substantial number of persons, especially with such a level of reliance on pre-sales activities and invoices.[19]
[18] My understanding is that GST is payable when an enterprise has a turnover of over $75,000 for sales in Australia. Export sales are generally GST free.
[19] ConAgra Inc (n 13) [144] (Lockhart J).
Wu-2 includes a video which has a statement made by an unidentified person stating that Lannister supplies 385 restaurants. It is not clear whether this is a reference to the Company, a winery or the Opponent’s Trade Marks. The Applicant submitted at the hearing that it is not clear this number is said by the person, and it could be a lower number. Regardless of the number, this is not a clear and direct statement from the Opponents or the Company. Furthermore, the statement is from 2017, several years prior to the Relevant Date. There is no indication that the statement continues to hold leading up to the Relevant Date. The very low level of sales mentioned in Wu-1 for financial years 2016-2017 and 2015-2016 spread across these 385 restaurants leaves a very low, perhaps only a sample-size, quantity of wine being supplied to each restaurant. Without further details the statement does very little to show the necessary reputation exists.
Wu-1 states advertising expenditure figures in the years 2012 to 2020.[20] However, it does not demarcate between expenditure on advertising for its Australian or export operations. I cannot infer that the reasonably substantial amounts declared are specifically for the Australian market without further explanation. This is especially so considering such insubstantial Australian sales. It is not clear whether the statement regarding such expenditure refers to the overall business expenditure or expenditure specifically on wines bearing either of the Opponents’ Marks; it is improbable that the Opponents and the Company would expend so much for each year on advertising for so insubstantial Australian sales for the wines bearing either of the Opponents’ Marks. Therefore, I read the figures as referring to the global expenditure on advertising for the exports and/or the overall business, including for the Opponents’ other wine labels such as ‘Caudo’ or ‘Di Fabio’.
[20] Wu-1, [39].
Though not decisive, there is tellingly no evidence regarding the actual impact of such advertising activities. I must acknowledge there is some evidence of actual promotion and advertising events in Australia for the Opponents’ Trade Marks. This is mainly confined to South Australia. The evidence does not seek to explain the significance of any of the promotional events mentioned. The classic statement of the principles says that advertising expenditure and activities can sometimes compensate for a lack of sales.[21] Here, however, the advertising and promotion shown in the evidence that might reasonably have been directed toward an Australian audience does not make for an esteem otherwise unevidenced by sales figures.[22]
[21] McCormick (n 14) [80]. See for example Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159, where there was evidence of the publication of 630 articles in the Australian media, five major films screened in Australia (three of which were broadcast on television), 19 episodes of television programs broadcast in Australia and 42,100 web pages published on Australian websites all of which contained references to TiVo prior to relevant date.
[22] Hugo Boss AG v Jackson International Trading Company Kurt D Bruhl Gesellschaft MBH & Co KG (1999) 47 IPR 423, 436 (Reg).
Wu-1 notes awards for the wines of the Company or Opponents, with certificates from 2013, 2015-2017, mostly from 2015-2016, for competitions in Australia and likely overseas.[23] These are limited in potential impact. There is no explanation of the nature, prominence, participants or audiences. Some exhibits appear in Chinese characters without a verified translation and seemingly concern export markets. The competitions are few in number and appear on their face to be relatively less prominent ones for small wine makers or hobbyists, though no evidence of their prominence is provided. For example, a significant number of the awards reproduced relate to the Frankston and South Eastern Amateur Wine Show 2016. The title of this show strongly indicates that it caters to hobbyists within a confined area of the country. Some certificates do not identify that the wine being awarded includes either of the Opponents’ Trade Marks. For example, an award conferred on Hongyi Wu for a ‘Shiraz McLaren Vale old vine’ carries no hint of either of the Opponents’ Trade Marks.
[23] Wu-1, Exhibit HYW-37.
The Opponents also rely on a statement in a video of Mr James Halliday AM about the winery operated by the Opponents and Company as being in the ‘top [sic] ten new wineries in Australia’ and that he has ‘given us five stars’. I am aware that James Halliday AM is of some notability in the area of viniculture and wines. However, the origins of that statement is unclear, as is to which wine the star rating applies and what prominence the statement has enjoyed. This is also a statement from one specialist, again apparently in 2017, rather than one reflecting the broader notional purchaser of wine.
Lastly, the Company’s Website provides a list of headlines in the ‘News and Events’ section. Many of the headlines concern events regarding the export of wine to China. The Opponents also provide social media related evidence being a Facebook Group, with 50 followers. No information is provided regarding traffic to the Company’s Website. This particular evidence does little to show that a reputation existed in either of the Opponents’ Trade Marks at the Relevant Date.
Export Sales
In seeking to demonstrate that the Opponents’ Trade Marks had acquired a reputation, the Opponents allege substantial export sales for wines bearing the Opponents’ Trade Marks. A key issue here is the weight that should be given to the evidence of export activities and sales.
Evidence regarding export markets has sometimes failed to demonstrate a reputation in Australia for the purposes of s 60.[24] However, there are also cases where overseas reputation or activities have assisted in founding a reputation in Australia for the purposes of s 60. Depending on circumstances it may be possible to rely on export sales and overseas reputation to establish an extension of that reputation to Australia. In Deckers Outdoor Corporation v Luda Production Pty Ltd (‘Deckers’), the delegate found there was a reputation overseas but that it that was not significant for the purposes of s 60 in Australia.[25] In that case, just as here, the bulk of sales occurred overseas while production occurred in Australia.[26] Notwithstanding the attachment of labels to goods manufactured in Australia and the fact that exports can qualify as a ‘use’ under the Act,[27] the use there did not contribute significantly to any reputation the trade marks had in Australia.[28] Whilst there were no sales in Australia in Deckers, for the Opponents and Company here the Australian sales are insubstantial. Whilst there is both legislative and judicial authority indicating that exports can be a ‘use’ as and of a trade mark,[29] such use does not necessarily establish the type of reputation needed to found an opposition on s 60.
[24] Weili Mu v Guotai Huang [2021] ATMO 113, [30] (‘Guotai’) where a small quantity of wines had been produced solely for export and the opponent in that case failed to demonstrate a reputation in Australia.
[25] Deckers Outdoor Corporation v Luda Production Pty Ltd [2010] ATMO 88, [75]-[78] (‘Deckers’).
[26] Ibid [76].
[27] See s 228.
[28] Deckers (n 25).
[29] Steven Scott Y W Penson v John Clifford Smyth [2019] ATMO 175, [63]; Pablo Enterprise Pte Ltd v FreshFood Holdings Pte Limited [2020] ATMO 195, [14] where the delegate found that there was no use in Australia for the purposes of s 92. This decision was the subject of a successful appeal in Freshfood Holdings Pte Limited v Pablo Enterprise Pte Limited (No 2) [2021] FCA 1404 (Thawley J), which drew upon s 228. See also, Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off (7e, 2022) 206, [5.3014].
A core integer of the s 60 ground of opposition is whether a Trade Marks has a reputation acquired in Australia.[30] If a reputation does exist overseas, what is required is that it be shown to extend from there to Australia. There is no explanation or evidence here about how an overseas reputation, by its export sales, assists or extends to Australia.[31] The Opponents did reference dealings with other businesses in the preparation, bottling and transport of goods, including for export. However, this does not evidence a relevant reputation amongst purchasers of the Designated Goods. The Opponents’ evidence reflects its alleged sales as being mostly outside Australia and the self-description of them as operating a wine export business.[32] The Opponents’ own evidence shows that the wine is predominantly consumed in China.[33] I have noted that the export sales figures are substantial, yet there are insufficient details about their nature, quality and effect. The figures have a broader statement of quantity of sales in dollars and for wine and beverages, which is vague about the product. Even if a reputation is established overseas, there is no information about a ‘spill-over’ reputation or effects – this ‘spill-over’ cannot be automatic, even where overseas sales are substantial. I acknowledge that evidence of consumer appreciation is not a strict requirement for a reputation. However, where ‘spill-over’ reputation is relied upon, generally there will be evidence of substantial awareness in Australia or the impact of overseas activities. The evidence does not address this.
[30] Section 60(a).
[31] McCormick (n 14) [87] (Kenny J).
[32] Wu-1, [5] and HWY-52.
[33] Wu-2, HYW-52.
I am not satisfied that the export sales show a reputation in Australia of either of the Opponents’ Trade Marks for the purposes of s 60, even in combination with the other evidence.
Conclusion of existence of a reputation for s 60 purposes
There was some contention raised by the Applicant about whether the use relied upon by the Opponents is legitimate and bona fide use of the Opponents’ Trade Marks. It has not been necessary for me to explore this issue. Taken at its highest, the Opponents’ evidence has not established as a matter of fact that either of the Opponents’ Trade Marks had at the Relevant Date a reputation as contemplated by s 60. Accordingly, I am not satisfied that the ground of opposition under s 60 has been established.
Section 42(b)
The Opponents’ position in relation to this ground of opposition also relies upon an extant reputation in the Opponents’ Trade Marks. It follows from my discussion of the s 60 ground of opposition, and my findings of a lack of a reputation, that it is not likely that the elevated standard in ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’)[34] would be demonstrated.[35] Authorities have noted that where the broader capture of s 18 and its predecessor provisions are not established, a passing off claim will likely also fail.[36] The elements of passing off, including the requirement for a reputation, are not shown by the evidence. Considering the evidence before me, on the balance of probabilities, the ACL and passing off bases for a s 42(b) ground of opposition are not demonstrated.
[34] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36].
[35] Guotai (n 24) [35]-[36].
[36] Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).
Accordingly, the s 42(b) ground of opposition has not been established.
Section 62A
Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. The issue here is whether, ‘in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards’.[37] This question is determined as at the Relevant Date. However, events occurring after that date may be considered to infer the Applicant’s knowledge and intentions as at the Relevant Date.
[37] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [167] (Dodds-Streeton J) (‘Fry Consulting’).
In DC Comics v Cheqout Pty Ltd, Bennett J noted that:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.[38]
[38] [2013] FCA 478, [62] (‘DC Comics’).
The Opponents assert that the history of disputes with the Applicant, including disputes with the Applicant in China provide a basis for an awareness of the Opponents’ Trade Marks. They provide a verified translation of a decision from a dispute before CNIPA, and assert the application for the Trade Mark is an attempt to block the Company and Opponents’ use of the Opponents’ Trade Marks. Whilst other disputes sometimes suggest an awareness of the rights of the Company and Opponents, the awareness itself is not sufficient to demonstrate conduct relevantly falling short.[39] Even so, the awareness of the presence of the Company’s and Opponents’ rights has not necessarily been established – these are in dispute. A trade mark dispute arising in another jurisdiction is not itself evidence of an awareness of rights or activities in Australia. That the Applicant may have been unsuccessful in China means little for the relevant rights of both parties in Australia. Regardless, the existence of a dispute about rights does not itself enliven s 62A. If the disputes here show anything, they reflect that there has been prompt action to challenge and clarify the respective rights of the parties, across various jurisdictions.
[39] Fry Consulting (n 37) [167] (Dodds-Streeton J).
The evidenced reputation of the GoT book and television series also militate against the argument that a knowledge of the Opponents’ Trade Marks was such that the application would be regarded as in bad faith. Even if the Applicant held relevant knowledge at the Relevant Date, it also held concurrent knowledge of an anterior mass-popularity of the television series and books, featuring the characters and storyline regarding the house of Lannister. These provide reasonable grounds for the Applicant to believe that it may have rights in Australia to the Trade Mark. There has been no apparent acknowledgement of any rights of the Company or Opponents by the Applicant; which is an element that, whilst not necessary, is often present in bad faith cases. As at the Relevant Date, the Applicant had been using its intellectual property in the Game of Thrones trade mark (‘GoT Trade Mark’) on various merchandise, including alcoholic beverages. The Applicant registered its GoT Trade Mark prior to the Opponents’ activities and expanded merchandising to new categories of goods, filing applications in several jurisdictions in the years leading up to the Relevant Date. All this combined, including the prompt actions to clarify and defend rights, appears ordinary commercial conduct not falling short of acceptable commercial standards.
The Opponents have not demonstrated that the application for the Trade Mark falls below the standard of acceptable commercial standards. I am not satisfied that a s 62A ground of opposition has been established.
Decision
Section 55(1) provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
…
The Opponents have not established any ground of opposition. Accordingly, the Trade Mark may proceed to registration 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 the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court’s order or direction.
Costs
The Applicant sought costs in this matter. It is usual for costs to follow the event. I see no reason to depart from that principle. I award costs against the Opponents according to the official scale set out in Schedule 8 of the Regulations.
Benjamin Goldsworthy
Hearing Officer
Delegate of the Registrar of Trade Marks
2 May 2023
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