Jannike Seiuli v Failepou Peni

[2018] ATMO 101

TRADE MARKS ACT 1995

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

Re:Opposition by Jannike Seiuli to registration of trade mark application 1754033 (35, 41) – PACIFIC RUNWAY FASHION (Device) - the name of Failepou Peni

Delegate:

Nicholas Smith

Decision on the Written Record

Decision:

2018 ATMO 101

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 62A considered – ground established – registration refused

Background

1.  This is an opposition brought by Jannike Seiuli (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Failepou Peni (‘Applicant’). 

Application Number:

1754033

Filing Date:

22 February 2016

Services:

Class 35: Fashion show services (advertising or promotional services); Organisation of fashion shows for promotional purposes; Production of fashion shows for advertising or promotional purposes; Production, organisation and presentation of fashion shows for advertising or promotional purposes

Class 41: Fashion show services (entertainment); Organisation of fashion shows for entertainment purposes; Production of fashion shows (entertainment); Production, organization and presentation of fashion shows (entertainment)

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

2.  Following the examination process, the Trade Mark’s acceptance for possible registration was advertised on 14 July 2016 in the Australian Official Journal of Trade Marks.  The Opponent filed a Notice of Intention to Oppose on 18 July 2016.  The Opponent then filed a Statement of Grounds and Particulars on 18 August 2016.  The Statement of Grounds and Particulars was assessed by this office as inadequate and a revised Statement of Grounds and Particulars (‘SGP’) was filed on 21 September 2016. The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 24 September 2016.

Evidence and Submissions

3.  The Opponent filed Evidence in Support of its opposition (‘EIS’) on 28 January 2017.  This evidence consists of a declaration made on 28 January 2016 by Jannike Seiuli, the Opponent (‘Seiuli Declaration’).  No evidence in answer or evidence in reply has been filed. 

4.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 3 August 2017 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any submissions. 

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs:

(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 Opponent

6.  The Opponent is an individual. 

7.  The Seiuli Declaration contains the following claims/statements:

·     The Opponent has hosted an annual event since 2012 called Pacific Runway.

·     In 2015 the Applicant approached the Opponent to collaborate on the Pacific Runway event and in 2015 the Applicant assisted with the operation of the 2015 Pacific Runway event.  However there was no agreement to transfer any rights in the event or the name to the Applicant.

·     In 2016 collaboration ceased and the Applicant sought to run an identical event using the name ‘Pacific Runway’.

8.  The Seiuli Declaration contains a number of attachments including:

·     A flyer for the 2012 Pacific Runway event which uses the words ‘pacific runway’ but not the Trade Mark itself.  The event appeared to involve fashion design, visual arts and various exhibitions connected to the Pacific Islander community.

·     Letters from third parties (including the director of Carriageworks, an arts centre in NSW), referring to the Opponent as the individual who put the Pacific Runway event together as a vehicle to present emerging creative artists from the Pacific Islander community in Sydney.

·     A flyer for the 2013 event referred to as ‘Navigation Pacifica’.

·     A flyer for the 2014 event referred to as ‘Pacifica Gods’.

·     A letter dated 26 January 2017 from Del-ray Fruean, a graphic designer, attaching an email dated 14 October 2014 from her to the Opponent.  This email contains a copy of a logo consisting of the words ‘Pacific Runway’ and a hibiscus flower (‘Pacific Runway Logo’).  The letter from Del-ray Fruean states that he created the Pacific Runway Logo and provided it to the Opponent for her use on 14 October 2014. 

·     A 2015 newspaper article in the Campbelltown Advertiser referring to an event called Pacific Runway being a fashion show taking place in Carriageworks on 19 October 2015.

·     A letter from a third party that appears to indicate that the Applicant and Opponent each held fashion events under the name Pacific Runway on October 2016.  

The Applicant

9.  The Applicant has provided no evidence and, therefore, I am unable to provide any information about the Applicant other than what is set out in the EIS and the Register. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of the abovenamed grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 62A. Accordingly, I have found it necessary to address/discuss this ground only. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

2. The onus of proof in an opposition rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which the rights of the parties are to be determined is 22 February 2016 (‘relevant date’), being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[3]

Discussion

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

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

Section 62A

1. Section 62A of the Act is reproduced below:

   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.

2. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in 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.

1. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) is a leading authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[4]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[5]

   [4] [2004] EWCA Civ 1028; (2005) FSR 10.

   [5] [2012] FCA 81, [147].

2. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[6]

   [6] Ibid [165]-[166].

3. Her Honour also noted with approval a number of cases in which bad faith were found in specific circumstances as set out below:

   In William Leith New Century Marquees (SRISO/018/00, UK Registry), the applicant applied to register a trade mark in respect of marquees, tents and related goods, although aware that NEW CENTURY was the opponent’s trade mark in the United States of America and that the opponent had started to trade in the United Kingdom under the trade mark. He was himself a customer and the delegate found that he should have been aware that the opponent could be expected to expand that trade, if it had not already done so. He had previously proposed a licence arrangement with the opponent although its terms were not clear. The delegate of the Registrar concluded:

   Mr Leith subsequently adopted the sign NEW CENTURY MARQUEES as his own trade mark, and he used it in the UK. When he was challenged about this he sought to register the mark in combination with his own name. In my view, the mark he has applied to register is confusingly similar with the mark NEW CENTURY.

   
   

   ...

   
   

   It is difficult to see how a person who applies to register a mark in his own name which he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. I do not believe that combining the mark with the applicant’s own name is any answer to that criticism.[7]

   …

   In Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, Hearing Officer Nancarrow held that applications to register the trade marks HARD COFFEE MAIN BEACH and HARD COFFEE were made in bad faith within the meaning of s 62A, where a company controlled by the applicant’s controller had previously obtained a licence from the opponent’s predecessor in title to use the HARD COFFEE MAIN BEACH trade mark, acknowledging in that context that it had not purchased any right, title or interest in the names and that the vendor retained title to all related intellectual property rights. The Hearing Officer considered that in the circumstances, the director clearly understood that the trade mark in question remained the property of the opponent in respect of coffee shops.[8]

   …

   In Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46, the delegate upheld opposition to the registration of a trade mark for, inter alia, cooling towers and like apparatus and related services, on grounds including bad faith under s 62A of the Act. The delegate found that the applicant’s controller had a prior business connection with and knowledge of the opponent, such that a person standing in his shoes should have known that he should not apply for the registration of a trade mark deceptively similar to that used by his former business partner (at [42]).[9]

   [7] Ibid [151].

   [8] Ibid [153].

   [9] Ibid [156].

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

   In 2015 The opponent approached me to do a collaborative fashion event.  It was agreed that this event was a collaboration and certainly not a partnership; hence we continued under my name Pacific Runway.  The opponent changed the name to Pacific Runway Fashion Show I did not oppose as I believed this to be my name and my event.  In hindsight this simple change was more than likely the origins of a takeover.  Utilising my long established networks I secured the prestigious Carriageworks as the location for the event further compounding the successes of Pacific Runway and the interest of several corporate investors.  It was evident earlier this year that both my focus and vision for Pacific Runway was different to the opponents and I sought to end the collaboration with a signed agreement.  The opponents disagreed and began the current process of applying to TM my event and its name believing she had rights to do so.  I genuinely believe she does not.  Pacific Runway is my Intellectual Property.  It is supported by my personal networks and Pacific communities.  I associate with those networks continuously and am most concerned that the invaluable work I have done will be ‘hijacked’ by a person who does not share the sincerity and passion I have to improve the social and professional interests of my community.  This belief is founded on the opponent’s motivations for applying for the TM (1754032) and (1754033) 24hrs after her refusal to signed (sic) the proposed end of collaboration agreement.  Having modified my motif design further to replace my flower with coat hangers does not mean the opponent TMs are original it is an attempt to be deceptive and acquire that which I have worked to establish.  This is a most deceptive and unfair trading practice.  This application is worthy of a challenge and should not be permitted.

5. In the absence of any evidence in answer I accept the evidence of the Opponent in this matter.  At the relevant date the Opponent had run, and on the face of it appears to be the registered owner of all intellectual property rights in, two fashion shows (in 2012 and 2015) that had operated under the name and trade mark Pacific Runway (‘Pacific Runway Mark’).  It also appears likely that the Applicant knew that the Opponent intended to run a third show in 2016 under the Pacific Runway Mark.  The Applicant provided services to the Opponent in connection with the 2015 Pacific Runway show, but absent any information to the contrary, I have no basis to assume that the provision of those services resulted in the Applicant either using or obtaining any ownership rights to the Pacific Runway Mark.  Although the evidence is unclear, it appears that in 2016 a disagreement arose between the Applicant and Opponent and shortly after that disagreement the Applicant applied to register the Trade Mark.

6. While the fact that the Applicant was aware of the Opponent’s business and its trade mark is not of itself fatal[10], the act of applying to register a trade mark in circumstances where there is a prior business relationship, such that a person standing in the applicant’s shoes should have known that they should not apply for the registration, has previously been held to support a finding that s 62A has been established.[11]  In the present case the Applicant had a prior connection with the Opponent and her Pacific Runway event and was aware of the Opponent’s use of and rights in the Pacific Runway Mark, though the mark was not registered. 

   [10] Next Group Plc v Nexcorp Australia Pty Ltd [2016] ATMO 34, [77].

   [11] Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46.

7. The Applicant then chose to register as a trade mark a sign that consists of the words ‘pacific runway’, the descriptive word ‘fashion’ and a device that consists of 3 coathangers, which alludes to the services offered under the Trade Mark, being fashion shows.  While the Trade Mark is not identical to the Pacific Runway Mark, I find that the marks are sufficiently close, and share the ‘Pacific Runway’ element, that the Applicant, at the relevant date, ought to have been aware that they should not have applied to register this logo. [12]  On the balance of probabilities, I am satisfied that the Applicant’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[13] 

   [12] See the discussion on the nature of bad faith in Jackson International Trading Company Kurt D. Bruhl Gesellschaft m.b.H & Co. KG v Hugo Boss AG [1999] ATMO 23.

   [13] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].

8. A case that considered similar issues is the case of Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd.[14] In that case, which also involved an applicant with a prior business connection with the opponent, the fact that the relevant trade marks (extracted below) had different device elements (but shared the common word ‘Pritchard’) was not a barrier to a finding of bad faith under s62A.

[14] [2011] ATMO 46.

1. I find that the Opponent has established the ground of opposition under s 62A.

Decision

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 62A of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark.

Nicholas Smith

Hearing Officer

Oppositions and Hearings

27 June 2018