Intellectual Property Development Company Pty Ltd v CUB Pty Ltd

This matter concerned oppositions to the registration of several trade marks by Intellectual Property Development Company Pty Ltd (the Applicant) against CUB Pty Ltd (the Opponent). The dispute centred on whether the Applicant's trade mark applications were made in bad faith or without an intention to use the marks, as alleged by the Opponent. The decision was made by Cristy Condon, a Hearing Officer.

The legal issues before the court were whether the Applicant's trade mark applications should be refused registration on the grounds that they were made in bad faith under section 62A of the *Trade Marks Act 1995* (Cth), or that the Applicant did not intend to use the trade marks in Australia under section 59 of the Act. The Opponent contended that the Applicant's applications were filed reactively, in response to the Opponent's interest in licensing or acquiring the heritage brands, and were intended to prevent the Opponent from using them rather than for genuine commercial use.

The Hearing Officer considered the evidence presented by both parties, including declarations regarding the history of the trade marks and the Applicant's commercial strategies. The Applicant argued that its heritage brands were an important part of its business model and that it had plans for future commercial releases, supported by evidence of past limited releases and ongoing discussions with retailers. The Opponent relied on email communications suggesting the Applicant's awareness of the Opponent's interest and alleged that the Applicant's actions, such as refiling registered trade marks and failing to renew others, indicated a pattern of "trade mark banking" rather than genuine use. The Hearing Officer applied the principles from cases such as *Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2)*, which define bad faith as falling short of acceptable commercial behaviour and involving conduct of an unscrupulous or unconscientious character.

Ultimately, the Hearing Officer found that the Opponent had not established the grounds of opposition under either section 62A or section 59 of the Act. The Hearing Officer was satisfied that the Applicant had a genuine intention to use the trade marks, supported by its commercial strategy and planned releases, and that its conduct did not amount to bad faith. Accordingly, the oppositions failed, and the Applicant's trade mark applications were permitted to proceed to registration, with costs awarded in favour of the Applicant.