Jason Bosco Elvis Soares v Australian Postal Corporation

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Jason Bosco Elvis Soares to registration of trade mark application 1604611 (9, 16, 20, 35, 36, 37, 38, 39, 40, 41, 42, 45) - MY POST - filed in the name of Australian Postal Corporation.

Delegate: Debrett Lyons

Representation: Opponent: Chris Round of K&L Gates, solicitors
Applicant: Luke Merrick of Counsel instructed by Ashurst Australia

Decision: 2016 ATMO 10
s52 opposition to registration: section 41 not established; sections 58, 59 and 62A established.
Trade Mark refused registration.
Background

In this matter Australian Postal Corporation (‘the Applicant’; referred to herein from place to place as ‘Australia Post’)) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark, details of which appear below:
Application No:  1604611
Priority Date:  17 February 2014
Goods/Services:  Class 9: Computer software; Computer hardware; Databases; Data storage devices; Electronic devices for information processing; Electronic devices for transmitting data; Electronic apparatus for data processing; Automated teller machines (ATM); Credit card terminals; Card reading apparatus; Magnetically encoded cards; Secure digital cards ;Secure transmission apparatus; Storage cards (smart cards); Electronic verification apparatus; Electronic funds transfer machines; Electronic publications (downloadable); Electronic and recorded multimedia publications; Electronic publications including those sold and distributed online; Electric advertising apparatus with alternative displays; Recording discs for use with computer programmes; Video display units; Video screens
Class 16: Adhesives for stationery purposes; Articles of paper stationery; Envelopes (stationery); Stationery; Address plates; Adhesives for household purposes; Non-adhesive labels (card); Non-adhesive labels (paper); Non-textile adhesive labels; Printed self adhesive labels; Self-adhesive labels of paper; Self-adhesive labels of plastics; Articles being office requisites; Artists' materials; Books; Bookbinding material; Business forms; Cardboard; Cardboard articles; Drawing instruments; Drawing materials; Diaries (printed matter); Greeting cards; Ink cartridges for writing instruments; Ink pads; Instructional materials (other than apparatus); Paint brushes; Paper; Marking (writing) implements; Packages (packaging materials); Articles of paper for packaging; Packaging boxes of card; Packaging boxes of cardboard; Packaging boxes of paper; Plastic materials for packaging; Corrugated cardboard containers; Postage stamps; Philatelic products; Philatelic sheets and carriers; Philatelic stamps; Stamp albums; Printed matter; Printed publications; Advertising publications; Magazines (periodicals); Instruction manuals (printed matter); Teaching materials (except apparatus); Printed matter for educational purposes; Photographs (printed); Posters; Tickets
Class 20: Containers made of plastic; Plastic boxes for packing; Plastic capsules; Storage chests made of plastic
Class 35: Retail services; Wholesaling of goods (by any means); Provision of business information; Business administration; Business consultancy; Business information; Business management; Business research; Business surveys; Charitable services, namely organising and conducting volunteer programmes and community service projects; Computerised business information services; Computerised database management; Consultancy relating to business document management; Collection of data; Compilation of mailing lists; Compilation of statistics; Computer data processing; Data management; Data processing; Export agency services; Import agency services; Marketing; Marketing advisory services; Market research; Providing information, including online, about advertising, business management and administration and office functions; Conducting of marketing studies; Online advertising on a computer network; Promotional advertising services; Procurement services for others (purchasing goods and services for other businesses);Sponsorship (promotional and marketing services); Organisation and management of customer loyalty programmes; Sales promotions through customer loyalty programmes (for others); Discount services (retail, wholesale, or sales promotion services); Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Logistics services (business management and organisation of facilities and resources); Inventory management services; Inventory control services; Office functions; Photocopying services
Class 36: Electronic banking; Banking services in relation to the electronic transfer of funds; Payment of bills and accounts for others; Bank account services; Commercial lending; Credit card services; Debit card services; Deposit accounts services; Deposit services; Electronic funds transfer services; Electronic payment services; Financial services; Financing services; Insurance services; Internet banking; Money deposit services; Money lending; Charitable fundraising; Charitable services, namely financial services; Financial sponsorship of education, training, entertainment, sporting or cultural activities; Financial sponsorship
Class 37: Electrical installation services; Maintenance, installation and repair of electrical items and equipment; Office equipment installation; Installation, maintenance and repair of computer hardware; Providing information, including online, about building construction, and repair and installation services; Machinery installation, maintenance and repair; Repair, maintenance and installation advisory services
Class 38: Electronic communication services; Operating of electronic communications networks; Communication services for the electronic transmission of data; Communication services for the electronic transmission of images; Communication services for the transmission of information; Computer data transmission services; Computer aided transmission of messages and images; Data transmission; Telecommunications and postal communications services; Electronic mail; Provision of electronic mail facilities; Data transmission by electronic mail; Provision of access to electronic messaging systems; Communication by electronic mail systems; Communication by electronic mail systems; Data transmission by electronic mail; Electronic transmission of documents; Facsimile communication services; Internet portal services (providing user access to a global computer network); Providing access to databases; Providing access to computer networks
Class 39: Parcel collection services; Collection of freight; Collection of goods; Collection of letters; Collection of packages; Courier services (messages or merchandise); Distribution (transport) of goods; Delivery of correspondence; Delivery of goods; Delivery of letters; Delivery of parcels; Mail forwarding; Packaging services; Packing; Packing of freight; Packing of goods; Transportation logistics; Transportation of goods; Transportation of freight; Transportation of parcels; Storage; Storage services for goods; Storage services for freight; Warehousing services; Warehousing of freight; Warehousing of goods; Loading of goods; Unloading of goods; Goods collection services; Freight forwarding; Freight services; Freight transportation services; Logistics services ( transport, packaging, and storage of goods); Provision of delivery information via an online calculator; Location and tracking of goods by computer; Tracking and tracing services for letters and parcels; Charitable services, namely distribution of goods such as foodstuffs, toys, clothing, furniture and household items
Class 40: Photographic film printing; Photographic printing; Printing; Enlarging of photographic prints; Photographic film development; Reproduction of photographic prints; Laminating; Binding of books or documents; Treatment of materials
Class 41: Educational services; Electronic publication of information on a wide range of topics, including online and over a global computer network; Providing facilities for educational purposes; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of education services via an online forum; Charitable services, namely education and training; Cultural activities; Cultural information; Event management services (organisation of educational, entertainment, sporting or cultural events); and Entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; Organising of entertainment and social events
Class 42: Computerised data storage services; Electronic data storage; Provision of online non-downloadable software (application service provider); Computer software development; Computer network services; Computerised data storage services; Conversion of data or documents from physical to electronic media; Data encryption services; Data storage (other than physical storage); Design and development of computer hardware (for others); Design and development of computer software (for others); Design of commercial products; Design of marketing material; Design of packaging; Design of printed matter; Design services relating to printing; Design services relating to the layout of documents; Design services; Digital imaging services (digitisation and scanning of images); Digital signature verification services (electronic cryptology services); Hosting computer sites (web sites); Hosting of databases; Installation and maintenance of computer software; Hosting of software as a service (SaaS); Rental of computer software; Rental of computer equipment
Class 45: Security services; Security services for the protection of property and individuals; Identity theft and fraud prevention services; Identity verification.
(‘the Specification’)
Trade Mark:  MY POST
(‘the Trade Mark’)
The Trade Mark was examined as is mandated by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 10 July 2014.
On 8 September 2014 Jason Bosco Elvis Soares (‘the Opponent or ‘Mr Soares’) filed both Notice of Intention to Oppose the registration of the Trade Mark and a Statement of Grounds and Particulars which detailed grounds under sections 41, 58, 60, 59, and 62A of the Act. The ground under section 60 has subsequently been abandoned by the Opponent.
Subsequently the parties have filed their evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).
Both parties requested to be heard. The hearing was before me as a delegate of the Registrar of Trade Marks on 16 November 2015. The Opponent was represented by Chris Round of K&L Gates, solicitors; the Applicant was represented by Luke Merrick of Counsel instructed by Ashurst Australia.
Onus and Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1]Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132].
The relevant date at which the grounds must be considered is the filing date of the Trade Mark[2] which is here the same as the priority date: 17 February 2014 (‘the Relevant Date’).
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592; The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211; Rael Marcus v Sabra International Pty Ltd (1995) 30 IPR 261 at 266.
Evidence
The evidence in this matter is comprised of the following declarations:
Evidence in Support
Jason Bosco Elvis Soares made on 3 February 2015 with exhibits JBS-1 to JBS-16 (First Soares Declaration);
Evidence in Answer
Liam Jon Nankervis made on 26 May 2015 with annexures LJN-1 to LJN-10 (Nankervis Declaration);
Joanne Whyte made on 26 May 2015 with annexures JW-1 to JW-45 (Whyte Declaration); and
Evidence in Reply
Jason Bosco Elvis Soares made on 26 June 2015 with exhibits JBS-17 to JBS-21 (Second Soares Declaration).
Evidence in Support
Mr Soares states that since March 2000 he has been running a business under the trading name ‘Clinux’ providing IT related services. In 2009 Mr Soares expanded the Clinux business and began selling IT and electronics goods through the online auction site eBay®. By 2010, says Mr Soares, the sales through the eBay® site had expanded significantly. Mr Soares goes on:
I soon realised that there was an opportunity to expand my business to include the provision of delivery services and courier services. Many of the items which I sold through eBay were fragile electronics and I realised there was an opportunity to provide a delivery service which would ensure prompt and secure delivery of electronics without the risk of breakage which can occur through traditional mail services. I also realised that there was a market for after hours courier services which were not provided by many other couriers or which were offered only at a significant premium on ordinary courier rates.
In or about May 2010, I resolved to begin offering a courier and delivery service.
Thereafter Mr Soares thought of a “name” for the service:
In early May 2010, I spent time thinking of a name for the courier service which would satisfy two conditions. First, the name needed to be one which was not used by any other business and for which there were no registered trade marks and secondly, the business needed to have a strong primary domain name which I could secure.
I considered a number of different options for the name of the courier service but ultimately settled on "MyPost". In or about mid May 2010, I conducted searches through the ATMOSS database and determined that there were no other traders using [the trade mark MyPost] or close equivalents. I also conducted domain name availability searches which revealed that the domain name was available. On 17 May 2010, I registered the licence to the domain name Annexed and marked JBS-1 is an email from auDA confirming the creation date of the domain name.
Mr Soares states that as a number of his trade mark applications had been rejected under section 41 of the Act he decided not to apply to register the trade mark MyPost as it would (in his view) also be rejected under section 41.
Concerning the use of his trade mark MyPost, Mr Soares states:
From mid 2010, I have offered and continue to offer a courier service for the delivery of electronics and IT equipment by reference to the MyPost Trade Mark. I initially sourced packaging, tape and other supplies from OfficeWorks® to help me conduct the business. As the volume of orders increased I began to source bubble wrap, boxes, packaging and tape from wholesalers including Signet.
Whenever a parcel was hand delivered through the "MyPost" service, the delivery driver would ask the customer to sign an acknowledgement confirming receipt of their parcel. Annexed and marked Confidential Exhibit JBS-3 is a sample of a delivery acknowledgement dated 19 June 2013 bearing the MyPost Trade Mark. This is a parcel which I personally hand delivered.
Between mid 2010 and February 2014, I continuously offered courier services by reference to the MyPost Trade Mark. I was paid for all of these courier deliveries. At the point of delivery, each addressee signed an acknowledgement in substantially the same form as the acknowledgment set out at Confidential Exhibit JBS-3. I estimate that between mid 2010 and February 2014 approximately one hundred customers of the MyPost courier service signed delivery acknowledgements in the form set out at Confidential Exhibit JBS-3. I do not have a policy of retaining the delivery acknowledgements and consequently, many of these documents have now been thrown away.
Since October 2012, I have also provided a service booking and facilitating courier services through TNT. These deliveries were typically for areas that were unable to be serviced by MyPost. This included interstate deliveries.
Concerning the advertising or promotion of his delivery service Mr Soares says:
In early to mid March 2014, I began to promote the MyPost courier service online from the domain name mypost.com.au. Annexed and marked JBS-4 is a screenshot of the MyPost website as it appeared in early April 2014. This screenshot shows the website in substantially the same form as it appeared in March 2014. Since March 2014, I have continued to promote a range of courier services by reference to the MyPost Trade Mark and have also retailed various packaging products from the MyPost website. Annexed and marked JBS-5 are samples of screenshots from the MyPost website showing the website as it has appeared since April 2014 and as it appears today.
On 15 April 2014, I acquired the Smartnumber 1800 697678 (1800 MYPOST). Annexed and marked JBS-6 is a printout from the website of the Australian Communications and Media Authority confirming the date that I acquired the Smartnumber. The Smartnumber was activated on 28 April 2014 and has been used for the purpose of taking courier bookings since May 2014.
Mr Soares also describes a course of dealings with Ms Barb Pasternak of CSC Digital Brand Services who were representatives of the Applicant in these dealings:
On 24 January 2014, I received an email from Barb Pasternak of CSC Digital Brand Services asking whether I was interested in selling the domain name mypost.com.au. I did not respond to the email.
On 31 January 2014, I received a further email from Barb Pasternak of CSC Digital Brand Services asking whether I was interested in selling the domain name mypost.com.au for AUD$1,000. I did not respond to the email.
On 5 February 2014, I received a third email from Barb Pasternak of CSC Digital Brand Services offering to buy the mypost.com.au domain name for AUD$5,000 plus escrow fee.
I did not respond to the email.
On 7 February 2014, I received a fourth email from Barb Pasternak of CSC Digital Brand Services offering to buy the mypost.com.au domain name for AUD$8,000.
On 13 February 2014, I responded to Barb Pasternak's email and notified her that I was running a business with the mypost.com.au domain name and was not interested in selling unless a very generous offer was made. I also stated that I would need to discuss the sale of the domain name with my business partners.
On 15 February 2014, I received another email from Barb Pasternak of CSC Digital Brand Services offering to buy the mypost.com.au domain name for AUD$50,000.
On 17 February 2014, I sent an email to Barb Pasternak indicating that I was not prepared to sell the domain name for AUD$50,000 because of the significant expenses which I had incurred in running the MyPost business and because the rebranding of the MyPost business would be a costly exercise. In my email, I indicated that AUD$125,000 was a more realistic figure. The figure of AUD$125,000 was a rough figure and I had not given significant thought to all of the costs of rebranding such as the costs required to secure a strong primary domain name.
On 19 February 2014, I received an email from Barb Pasternak of CSC Digital Brand Services indicating that it agreed to pay AUD$125,000 to purchase the mypost.com.au domain name. Barb Pasternak subsequently sent me a link for the payment of AUD$125,000 in consideration for the sale of the domain name. At this time, it was 1.25 am in the morning, I was tired and had not thought fully about the sale and the significant rebranding costs which I would need to expend. I did not complete the sale realising that it was a mistake.
Mr Soares’ declaration then addresses the grounds of opposition under sections 41and 59 of the Act: I will discuss this material as it becomes relevant in my deliberations of those grounds.
I will remark now that I regard Mr Soares’ declaration to be a truthful statement of the facts as he understood them to happen with one or two omissions that are addressed in the Applicant’s evidence in answer (which evidence corroborates his statements on facts central to this decision).
Evidence in Answer

Ms Whyte is General Manager of Brand & Postal Services Marketing of the Applicant, a position which she has held since July 2014. I note that July 2014 is after the Relevant Date. In this regard Ms Whyte states:
In particular, I have been involved in the development of the MY POST brand. My particular role in that has been as follows:
(a) I had managerial responsibility for working with the marketing manager and project stakeholders to develop the brand strategy for MY POST;
(b) I have supported my brand strategist and the legal team to seek registration of the MY POST trade mark and the digital channels team for domain registrations and purchases; and
(c) I have facilitated discussions between my team, Legal and the Chief Marketing Officer (as required), to assess our position and recommend the required next steps for best managing and protecting MY POST and the overall reputational impact to Australia Post.
Obviously such activities by Ms Whyte took place after the Relevant Date.
Ms Whyte attests to the Applicant’s use of the word ‘post’ in various of its business activities and trade marks:
As discussed in more detail below, one of the hallmarks of the Applicant's branded goods and services is the prominent use of the word POST and/or the incorporation of the word POST into the specific brand names and trade marks used to signify the Applicant's various goods and services.
The Applicant's primary brand, AUSTRALIA POST, is often abbreviated to "Post" and the Applicant is commonly referred to by members of the public by the name "Post". As a clear identifier of the Applicant, the word "Post" has been adopted in a large number of brands used by the Applicant. The MY POST trade mark therefore has a very close and strong connection with the Applicant's AUSTRALIA POST brand, and its range of other trade marks containing the word "POST". In this declaration, I refer collectively to the Applicant's trade marks which contain the word "POST" as the Post-Formative Marks.
Examples of the Post-Formative Marks used by the Applicant which prominently feature the word POST (aside from its core brand, AUSTRALIA POST), some of which date back to at least 1990, include but are not limited to:
(a) EXPRESS POST, from at least 1982;
(b) KEYPOST, from at least 1983;
(c) INTELPOST, during the 1980s;
(d) E-POST, during the 1980s;
(e) POST SHOP, from at least 1990;
(f) POST PAK, from at least 1990;
(g) Parcel POST, from at least 1991;
(h) POST DIRECT, from at least 1995;
(i) POST eParcel, from at least 2002;
(j) POSTbillpay from at least 2000;
(k) POST Express, from at least 2002;
(I) POST Courier, from at least 2001;
(m) Office POST, from at least 2001;
(n) Courier POST, from at least 2001;
(o) Business POST, from at least 2001; and
(p) Platinum POST, from at least 2002.
Two further examples of Post-Formative Marks which highlight the clear identifying function of the word "POST" are Pay it @ Post and Bank @ Post. The use of the "at sign" preceding the word POST signifies that the word POST is referring to the Applicant or its premises. Further details of the Applicant's use of these two marks are as follows:
(a) Pay it@ Post - this trade mark has been used by the Applicant since in or about 2000 in relation to an online sales solution designed to help broaden the customer base of online businesses. The Applicant has a dedicated website located at in relation to the services offered under the Pay it @ Post mark and also provides information about the service at Print outs from the "Pay it @ Post" pages of the Applicant's website are provided in Annexure JW-3;
(b) Bank@ Post - this trade mark has been used by the Applicant in relation to a service which allows consumers to access banking services provided by various financial institutions at a number of the Applicant's post offices nationwide. Print outs from the "Bank @ Post" pages of the Applicant's website at are provided at Annexure JW-4;
POSTbillpay is another Post-Formative Mark that has been used extensively for more than 10 years. This trade mark has been used in relation to a bill payment facility. This service is referred to on the Applicant's main website at and also operates through a separate domain name held by the Applicant, Copies of pages from these websites are provided at Annexure JW-5.
Some of the most frequently supplied services offered by the Applicant are under Post-Formative Mark product brands, such as Courier POST, Parcel POST and EXPRESS POST. These marks relate to services provided by the Applicant as alternatives to regular mail delivery services. Print outs from the Courier POST,
Parcel POST and EXPRESS POST pages of the Applicant's website are provided at Annexure JW-6.
The Applicant owns many Australian trade mark registrations for many of its Post-Formative Marks, including registrations for some of the marks listed above. Particulars of the Applicant's trade mark registrations in Australia in respect of Post-Formative Marks (including those listed above) are provided at Annexure JW-7.
Ms Whyte addresses what she terms “the ubiquity of the Applicant’s post-formative marks”:
Due to the size of the Applicant's business and its connection in one way or another to almost every person in Australia, the Applicant's brands and, particularly is primary brand, AUSTRALIA POST, has been ubiquitous in Australia since 1975. The Applicant and its AUSTRALIA POST brand is almost universally known among ordinary members of the Australian community.
The Applicant's POST brand has been visible on countless metropolitan streets on the Applicant's post boxes, which have been seen every day by people posting mail or passing by. There are approximately 15,995 AUSTRALIA POST branded letter boxes in Australia. The most prominent word on these boxes is POST, as shown in the image below:
Of course, the above images do not consist only of the words AUSTRALIA POST and Ms Whyte’s comment that one of the “hallmarks of the Applicant's branded goods and services is the prominent use of the word POST” must be understood in the light of the decisions of the Courts in Australian Postal Corporation v Digital Post Australia Pty Ltd[3] and Australian Postal Corporation v Digital Post Australia[4] (and of a delegate of the Registrar of Trade Marks in Australian Postal Corporation)[5].
[3] [2012] FCA 862.
[4] [2013] FCAFC 153; (2013) 308 ALR 1; (2013) 105 IPR 1.
[5] [2000] ATMO 108.
Ms Whyte also discusses the dealings between the parties. She states:
In or about January 2014, the Applicant resolved to rebrand its digital mailbox services under the MY POST trade mark. The Applicant considered obtaining a MyPost Domain registration for mypost.com.au. The Applicant conducted searches and found that the mypost.com.au domain name was registered by Mr Soares, but that the domain name was not in use. To the best of the Applicant's knowledge, the domain name was never been used by the Opponent prior to at least March 2014. There was no indication in the Applicant's searches which suggested that the Opponent had used either the domain name or the words MY POST in connection with any goods or services.
The Applicant engaged an agent, CSC Digital Brand Services (CSC), to contact the Opponent to try to acquire the registration for the Soares Domain. During the period from January 2014 to February 2014, CSC contacted the Opponent and offered to purchase the Soares Domain for $8,000.
On 14 February 2014, CSC informed the Applicant that that the Opponent had rejected the Applicant's offer to transfer the Soares Domain, saying he would not be willing to sell the MyPost Domain unless the Applicant made "a very generous offer".
On 14 February 2014, the Applicant instructed CSC to make an offer of $50,000 to purchase the Soares Domain from the Opponent. On 18 February 2014, CSC informed the Applicant by email that the Opponent had rejected the Applicant's further offer and made a counter-offer to transfer the Soares Domain to the Applicant for $125,000. The Applicant instructed CSC to agree to the Opponent's offer to transfer the Soares Domain for $125,000.
On 20 February 2014, CSC informed the Applicant by email that the Opponent had increased the minimum purchase price for the Soares Domain to $200,000. The Applicant rejected the Opponent's offer of 20 February 2014 and ended the negotiations. A copy of each of CSC's emails referred to in paragraphs 82 to 85 is provided at Annexure JW-38.
It is notable that in the Soares Declaration and Annexure JSB-7 to the Soares Declaration, the Opponent has omitted the final email in the chain of emails between he and CSC, being the email referred to in CSC's email to the Applicant dated 20 February 2014. In paragraph 24 of the Soares Declaration, the Opponent claimed he "was tired and had not thought fully about the sale" and "did not complete the sale realising it was a mistake", having received an email from CSC at 1.25am. The comments in paragraph 24 of the Soares Declaration are contradicted by the content of the email omitted by the Opponent. In that email, the Opponent stated that the decision not to proceed on the basis of the $125,000 selling price (offered by the Opponent in his email to CSC at 9.45am on 17 February 2014) had come about after an "afternoon meeting" in which "all partners are now reluctant to sell at $125,000". The Opponent went on to make a further offer stating "the new minimum figure we find to be $200,000 AUD".
On 17 February 2014, while negotiations surrounding purchase of the Soares Domain took place between the Applicant and the Opponent, consistent with its decision to rebrand its digital mailbox services under the MY POST trade mark, the Applicant filed the presently opposed Australian Trade Mark Application No. 1604611 for MY POST.
Contrary to the Opponent's claim in paragraph 30 of the Soares Declaration that he had told CSC he was "running a business", he did not do so. The Opponent's email of 13 February 2014 stated that he was "currently running a business concept with the domain name". The Opponent gave no detail of what the "concept" was and there was no use of the domain name at that date or any other indication of any business being done in connection with the Soares Domain. Consequently, the Applicant concluded that there was no business. Nothing in any of the Opponent's subsequent correspondence gave the Applicant any detail of any business actually being conducted, and there was reason to change its initial view that there was, in fact, no business.
On 4 March 2014, about 12 days after the Applicant had rejected the Opponent's offer to sell the Soares Domain for $200,000, the Applicant noticed that the website to which the Soares Domain resolved had been updated. The webpage purported to promote a courier and delivery business. Copies of screen prints from the website at the Soares Domain as it appeared on 27 October 2014 are provided at Annexure JW-39.
I note that the above events took place before Ms Whyte became General Manager Brand & Postal Services Marketing in July 2014 and the source for her information about the detailed substance of the negotiations between the Opponent and Applicant in February 2014 is not clear. Neither is it clear what steps the Applicant then took to enable it to conclude that there was no “other indication of any business being done in connection with the Soares Domain” or whether this was an assumption on the part of the Applicant.
I also note now that I consider the Opponent’s version of events, being that Mr Soares told CSC Digital Brand Services that he was running a business under the ‘brand’ MyPost, to be coherent both with the sudden escalation of the amounts of money being offered to him for ‘purchase’ of the domain name and with the email correspondence between the Applicant and CSC Digital Brand Services which is attached to Ms Whyte’s declaration. The more than doubling of the offer to the Applicant of $50,000 to $125,000 by CSC Digital Brand Services on 14 February 2014 does, to my mind, lend support to Mr Soares’ claim to have told CSC Digital Brand Services on or around 13 February 2014 that he was running a business under that ‘brand’ and that the Applicant apprehended it as such. This is confirmed by the previously mentioned email correspondence.
Ms Whyte further states concerning investigations of the Opponent:
In October 2014, the Applicant arranged for investigations aimed at determining whether the Opponent was, in fact, conducting any business under the MY POST trade mark. The Applicant's investigations have not found any evidence that the Opponent promoted the services he purports to have offered under the MY POST trade mark or did anything which could have acquired any reputation in the MY POST brand before the Application was filed.
The physical address provided on the website in connection with the Opponent's purported business is 8 Walsh Street, Maroubra, NSW, 2035. The Applicant's investigations showed that the Opponent's Maroubra address noted above is his electoral roll address. The address is a residential premises and there is no signage or evidence to suggest that the Opponent operates a courier/delivery business from this address, or any other business. Copies of photographs of the property located at 8 Walsh Street, Maroubra, NSW, taken on 16 October 2014, are provided at Annexure JW-40.
Many people, of course, conduct their businesses from a residential address: buying and selling goods over the Internet needs only a means of accessing the Internet to conduct the business – packaging the goods for delivery may need as little as a lockable garage. The fact that such a business is alleged to be conducted from a residential address thus signifies little.
Ms Whyte also states:
The Opponent is the registrant of many of the domain names which are the same as or similar to registered trade marks owned by third parties in Australia. A list of such domain names owned by the Opponent which the Applicant is aware of, and print outs of the WHOIS database searches for these domain names conducted on 27 March 2015, is provided as Annexure JW-44. Copies of print outs from IP Australia's on line trade marks database showing ownership of trade marks which are the same as or similar to domain names owned by the Opponent are provided at Annexure JW-45.
It would appear that Ms Whyte is suggesting that the Opponent might have registered the domain name in 2010, having anticipated that the Applicant might wish to register it as such in 2014. Given that the Applicant has no monopoly in the word ‘post’ as signifying only its services it is not obvious how the Opponent might, in 2010, have discerned that the Applicant would desire the domain name for use in 2014.[6]
[6] In a directly related domain name dispute, Australian Postal Corporation v. Jason Soares, WIPO Case No. DAU2015-0003, the Panel Member concluded, “In this case, whilst the Complainant's [Applicant’s] case is weak, it cannot be doubted that it has convinced itself of the impropriety of the Respondent's [Opponent’s] conduct and this has caused it to take these somewhat pre-emptive proceedings. In the circumstances, the Panel is unable to conclude that the Complainant has engaged in Reverse Domain Name Hijacking.”
As with the first declaration of Mr Soares, I will address the evidence of Ms Whyte which goes to sections 41 and 59 in my deliberations of those grounds.
Mr Nankervis is a senior associate employed by the law firm Ashurst, the solicitors for the Applicant. He states:
On 27 October 2014, I searched the Australian Yellow Pages and White Pages for entries relating to "My Post". I found no references to the Opponent or any business conducted by the Opponent under the name MY POST. The Yellow Pages search found one result for ALL-MY-T minidiggers, "Post Hole Contractors & Equipment" located in Glenorchy, Tasmania. The White Pages search found two results, one being for Australia Post and one being for "Morty's Complex". Further searches showed that Morty's Complex is a shopping centre in Launceston, Tasmania.
Annexure LJN-1 contains print outs of the results of my searches on the Yellow Pages and the White Pages.
On 27 October 2014, I searched the internet using the Google search engine for the term "my post" in Australia. I found no references to the Opponent or any business conducted by the Opponent under the name MY POST. Annexure LJN-2 contains print outs of the first two pages of results of my Google searches.
I note here that Ms Whyte states in her declaration that the Opponent commenced use of his MyPost domain name in March 2014. It is not clear why, seven months later on 27 October 2014, Mr Nankervis’s Google® search did not locate the Opponent’s website.
Evidence in Reply
In his declaration in reply Mr Soares states:
Further, I refer to paragraph 11 and Annexure LJN-10 of the Nankervis Declaration. Mr Nankervis states that the Applicant engaged investigators to investigate the identity of Paul Renino, who is an employee of IP Trading, and that those investigations have "found no record of any person by the name of Mr Renino on Australian electoral rolls or elsewhere, nor any employee by the name of "Paul" at IP Trading". I confirm that I have made additional deliveries to IP Trading where Mr Renino has signed for the delivery other than that instance referred to in the statutory declaration of Hilton Schwartz dated 5 March 2015. I cannot speak to the accuracy of the investigation report enclosed in Annexure LJN-10, but I can confirm that the man I know as Mr Renino is featured in an image on the IP Trading website at the domain name www. iptrading.com.au (IP Trading Website) on the "Get to know us" page. Annexed and marked JBS-18 is a print-out of the "Get to know us" page of the IP Trading Website with the man I know as Mr Renino circled in the image on page 2 as well as additional MyPost delivery receipts signed by Mr Renino.
Mr Soares further states in reply:
I refer to paragraph 99 of the Whyte Declaration. Ms Whyte states that based "on [her] review of the history of the Applicant's interactions with the Opponent, [she considers] that the Opponent has filed an opposition to the Application purely because the Opponent sees this as an opportunity to profit from the Applicant's interest in the trade mark." I confirm that I have been trading by reference to the MyPost Trade Mark since mid May 2010 and therefore my interest in the Opposition is as a result of a desire to protect my legitimate business interests. In particular, I note that the business promoted by reference to the MyPost Trade Mark has been offering delivery services for purchasers of goods from my other business Clinux for this period. When a consumer purchases goods to be delivered from Clinux, the MyPost business is wholly responsible for the shipping of the goods to the consumer. Annexed and marked JBS-21 are copies of various PayPal receipts (with consumer information redacted) for purchases made from Clinux and I confirm the MyPost business delivered these goods and received the "Postage and Packing" or "Shipping" fees. Each of these deliveries would have involved the consumer signing a MyPost delivery receipt. As a result, this further evidences the operation of the business promoted by reference to the MyPost Trade Mark since mid May 2010.
Observations
It is not clear who CSC Digital Brand Services are, where they are located, or why Ms Barb Pasternak of CSC Digital Brand Services was not asked to put in a declaration on the Applicant’s behalf when her evidence concerning the negotiations between the Applicant and the Opponent is obviously pivotal in rebutting the allegation made by the Applicant that he told her that he was using the trade mark MyPost in relation to his business. I consider that it is open to me to conclude that Ms Pasternak was not requested to make a declaration on behalf of the Applicant because her evidence would not have supported the Applicant’s position: Jones v Dunkel[7].
[7] [1959] HCA 8; (1959) 101 CLR 298; [1959] ALR 367; 32 ALJR 395.

Further, as Ms Whyte commenced in her position after the Relevant Date, she is not well-placed to attest to the circumstances surrounding the inception of the Trade Mark by the Applicant before and at the Relevant Date.
Other
Shortly before the hearing the Applicant requested that I exercise the Registrar’s powers under section 202(a) of the Act and require Mr Soares to attend the hearing as a witness for examination by the Applicant. I declined to do so: Mr Soares’ evidence is uncontroversial and is, as will be seen in particular as it relates to the sections 59 and 62A grounds, corroborated by evidence the Applicant itself has adduced.
Section 41
Section 41 of the Act provides:
41Trade mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2:For goods of a person and services of a person see section 6.
Note 3:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
In terms of section 41 of the Act the initial step is to consider whether the Trade Mark is not capable of distinguishing the Applicant’s specified goods or services from the goods or services of other persons. In this forum the onus is on the Opponent to satisfy me that, on the balance of probabilities, the Trade Mark was not, at the Relevant Date, capable of distinguishing the Goods and Services from the similar goods and services of other traders. In some cases the requisite degree of satisfaction may be based on (for example) the definitions in dictionaries or technical manuals of the word(s) that comprise the trade mark; in other cases the requisite degree of satisfaction will be based on evidence that shows that other traders are making use of the word(s) in relation to their goods and/or services in the manner alluded to by Kitto J in Clark Equipment Co. v. Registrar of Trade Marks[8]:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[8] [1964] HCA 55; (1964) 111 CLR 511 at [5].
The High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[9](‘Cantarella’) noted the following part of Kitto J’s test:
…in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess…
[9] (2014) 109 IPR 154 at [26]-[30] per French CJ, Hayne, Crennan and Kiefel JJ.
The Opponent’s evidence concerning the section 41 ground is:
I have conducted company and business name searches which suggest that there are a number of third parties that have evinced an intention to trade by reference to the words "My Post" in Australia. In particular,
(a) Van Phuong Thi Nguyen has owned and operated a company named MyPost Pty Ltd since 10 February 2012;
(b) Zane Murray has been the registrant of the business name MyPost Direct since 10 July 2012; and
(c) the business names MY POST CHECKFREE, MY POST CHEQUEFREE and MY POST ONLINE VENTURES were registered in Victoria and New South Wales.
I have been unable to determine who registered these business names or the exact dates that they were registered. However, each of the business names has been allocated a Victorian or NSW business name number meaning that they must have been registered prior to the commencement of the national register of business names in May 2012.
Annexed and marked JBS-15 are copies of these searches.
I have conducted online searches to determine whether there are any other parties trading by reference to the name "My Post" or similar names. My searches revealed:
(a) a business platform relating to mail deliveries operated by Swiss Post under the name "My Post Business";
(b) a 24 hour parcel collection service operated by Swiss Post under the name "My Post 24"; and
(c) a US based GPS software system called "Manage My Post" which allows consumers to use GPS tracking to monitor deliveries.
Annexed and marked JBS-16 are printouts from the websites of each of Swiss Post and Manage My Post.
At one level, the uses of the words ‘My Post’ referred to by the Opponent, above, establish only that people other than the Applicant and Opponent have thought those words to be potential trade marks to use in relation to their businesses. This does not of itself necessarily signify that the expression ‘my post’ lacks inherent capacity to distinguish when used as a trade mark. At another level, I am not satisfied that in the contexts of the above business name usages that the words ‘My Post’ are being used only for the sake of the signification that they ordinarily possess: business names may lack inherent adaptation to distinguish but may also be adopted because those names reflect the trade marks used by the businesses. The existence of business names similar to the Trade Mark before the Relevant Date therefore do not establish that the Trade Mark is not capable of distinguishing the goods and services within the Specification. The past existence of those business names is thus equivocal as evidence which might go to support this ground.
As regards the dictionary definitions of the words ‘my’ and ‘post’, Mr Soares states:
I have conducted searches of various dictionaries for the words "MY" and "POST". Annexed and marked JBS-9 is a bundle of dictionary extracts for the word "MY" from the Macquarie Dictionary, Collins Dictionary and dictionary.com. Annexed and marked JBS-10 is a bundle of dictionary extracts for the word "POST" from the Macquarie Dictionary, Collins Dictionary and dictionary.com.
However, the words under consideration are not ‘my’ and ‘post’ considered individually but as a combination. , It is trite trade mark law that, when assessing its capacity to distinguish, a trade mark must be considered as a whole: Diamond T Motor Car Company[10].
[10] [1921] 2 Ch 583.
I do not find that the abovementioned definitions establish to my satisfaction that the Trade Mark is not capable of distinguishing the Applicant’s goods or services in respect of which the Trade Mark is sought to be registered from the goods or services of other persons. In his submissions Mr Round said:
... the Opponent refers to Part 13.3 of the Trade Marks Office Manual of Practice and Procedure that states that:
""My" trade marks consist of the word “My” followed by a descriptive word/s associated with the applicant’s goods or services (e.g. MY PLUMBER for plumbing services and MY FLORIST for florist services).
Where research shows that the combination of the word “My” and word/s describing the goods or services (or some attribute of the goods or services) is a commonly used and understood expression, section 41 grounds for rejection should be raised. If research does not indicate this, section 41 grounds for rejection should not be raised."
For the reasons stated at [41], above, the Opponent’s own evidence establishes that the combination of the words “My” and “Post” is not (to paraphrase the above) a commonly used and understood expression used by other traders in relation to the goods or services (or some attribute of the goods or services).
The Opponent has not established its ground under section 41.
Section 59
Section 59 of the Act provides:
59Applicant 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.
In his first declaration Mr Soares states:
I have reviewed the specification of goods and services claimed in the application for the APC Trade Mark. I believe that many of the goods and services claimed in the application are not offered by the Applicant by reference to the APC Trade Mark, the trade mark "Australia Post" or any other trade mark owned by the Applicant. In relation to the goods and services claimed in the application, I make the following comments:
(a) Many of the goods claimed in class 9 are components of computers and computer systems and are not offered for sale by the Applicant by reference to the APC Trade Mark, the trade mark "Australia Post" or any other trade mark. Annexed and marked JBS-12 are two recent Australia Post catalogues showing the computer peripheral devices and electronics being sold by the Applicant. The products are overwhelmingly supplied by third parties such as Logitech, Toshiba, Lexar, Windows, Canon, HP, Seagate, Sandisk and Pendopad.
(b) Further many of the goods in class 9 are complex machines which would be supplied to the Applicant but are certainly not manufactured by the Applicant for sale to others under the APC Trade Mark, the trade mark "Australia Post" or any other trade mark. Such goods include "Automated teller machines (ATM)" and "Electric advertising apparatus with alternative displays".
(c) Many of the goods claimed in class 16 are offered for sale in Australia Post retail outlets but are not offered for sale by reference to the APC Trade Mark, the trade mark "Australia Post" or any other trade mark. The catalogues annexed at JBS-12 show that the stationery items and books sold by the Applicant are overwhelmingly supplied by third parties such as Reflex (paper), Grant Studios (stationery gift sets), Esselte (stationery sets), Peppa Pig, Mr Men and Giant (books), Pretext (document wallets and document boxes) and Penline (pens).
I believe that many of the services claimed in the APC Trade Mark application are actually internal business functions which are incidental to the operation of many businesses. However, these are not services which are provided to consumers. Nor are they services for which the Applicant earns revenue. For example, the Applicant:
(a) does not offer "business surveys" or "market research" services. These are services which would be offered by an organisation such as "Roy Morgan";
(b) does not offer "promotional advertising services" or "marketing advisory services”. These are services which would be offered by a specialist marketing agency such as "Leo Burnett";
(c) does not offer "distribution of goods (not being transport services) (agent, wholesale, representative services, by any means)", "logistics services (business management and organisation of facilities and resources)", "inventory management services" or "inventory control services". These are services which would be offered by a freight and logistics company such as "Toll";
(d) does not offer "commercial lending", "deposit services", "'financial services" or "money lending". These are services which would be offered by a bank or financial institution such as "Westpac" or "Commonwealth Bank";
(e) does not offer "electrical installation services", maintenance, installation and repair of electrical items and equipment. These are services which would be offered by an electrician;
(f) does not offer "providing information, including online, about building construction, and repair and installation services". To my knowledge, the Applicant has never had any involvement in the construction industry;
(g) does not offer all the services in class 40 of the Nice Classification system which fall under the claim for "treatment of materials" which include "brewing of beer", "butchery" and "carpet dyeing".
(h) does not offer " computer software development", "data encryption services", "design and development of computer hardware (for others)", "design and development of computer software (for others)", "digital signature verification services (electronic cryptology services)", "hosting of software as a service (SaaS)" and "rental of computer software". These are services which would be offered by specialised IT providers; and
(i) does not offer "security services" and "security services for the protection of property and individuals". These are services which would be offered by a company such as "Chubb Security".
I have conducted searches of the Australia Post website which revealed that the APC Trade Mark is being used in three contexts.
(a) Firstly, the APC Trade Mark is being used as part of the name "MyPost Digital Mailbox", being a service which allows consumers to receive, store and manage mail and pay bills in a secure online mailbox (Digital Mailbox Service). My searches suggest that the Digital Mailbox Service was rebranded to "MyPost Digital Mailbox" in or about April 2014.
(b) Secondly, the APC Trade Mark is being used as part of a service named "MyPost Deliveries" which allows consumers to collect their parcels from a 24/7 parcel locker. Consumers are asked to sign up for a 'MyPost card' to access this service. My searches suggest that this service was launched in November 2014.
(c) Thirdly, the APC Trade Mark is being used in relation to a service known as the "MyPost Concession Account" which allows consumers to access stamps at a concession rate. My searches suggest that this service was launched in March 2014.
In evidence in answer to the above Ms Whyte states in her declaration:
The Applicant's traditional business function has been to supply postal services within Australia and between Australia and places outside Australia. However, the range of goods and services provided by the Applicant is far more extensive than just postal services and has rapidly grown in recent years.
In addition to postal and delivery-related services, the Applicant also provides a wide range of other goods and services. The wide variety of goods and services currently provided by the Applicant includes:
(a) Mail collection and delivery;
(b) Parcel collection, tracking and delivery;
(c) Courier services;
(d) Sale of postage stamps and other collectables;
(e) Provision of mail redirection and mail management services;
(f) Electronic communication and information storage services;
(g) Packaging materials;
(h) Stationery;
(i) Printing supplies;
(j) Art and craft supplies;
(k) Home and office products;
(I) Educational materials, including text books;
(m) Magazines;
(n) Kitchen and cleaning supplies;
(o) Furniture;
(p) Hardware and tools;
(q) First aid and medical goods;
(r) Electronic devices, computers and computer peripherals;
(s) Mobile telephones and related goods;
(t) Insurance for travel and motor vehicles;
(u) Re-loadable debit cards;
(v) Foreign currency exchange;
(w) International money transfers;
(x) Bill payment facilities for invoices issued by third parties;
(y) Secure on-line payment facilities for businesses;
(z) Access to banking services provided by banks and financial institutions;
(aa) Gift cards for third party retailers;
(bb) Gift items and novelty products;
(cc) Passport applications and processing;
(dd) Various identity checking and verification services;
(ee) Customer research and collection and analysis of marketing data;
(ff) Processing births, deaths and marriage certificate applications on behalf of the New South Wales Government; and
(gg) Processing tax file number applications for the Australian Tax Office.

If the above is intended to address the Opponent’s statement in support of the ground under section 59, I find it to be somewhat of a non sequitur in that it does not explicitly state that the Applicant uses any of its trade marks or, indeed, the Trade Mark, in relation to the above-listed goods and services. Nor do the goods and services listed above match those within the Specification which is somewhat broader in its scope.
Rather Ms Whyte states at [44] of her declaration:
The Applicant's strategy and evolving business structure is indicative of the broad scope of the Applicant's business. The Applicant's March 2015 MY POST brand strategy sets out an overview of the business, dividing its services into four broad categories of deliveries, payments, identification and trusted services. Confidential Annexure JW-22 contains a document entitled "MyPost - Brand Strategy and Brand Proposition" which includes an overview of the division of business into these four areas. The Applicant's "deliveries" services are well known to consumers, and in recent years the Applicant's payment services have been increasingly well known. Examples of the identification services are noted above in paragraph 42. Trusted services is a broad banner which includes communication, citizenship, recreation, education, health and wealth-related services.
And at [48] of her declaration Ms Whyte states:
The name and trade mark MY POST was coined by the Applicant as an extension of the branding and reputation the Applicant enjoys in its Post-Formative Marks, which are discussed above.
In developing the MY POST brand, the Applicant focused on developing a brand which could:
(a) convey some indication of the service being offered;
(b) link clearly to the AUSTRALIA POST master brand; and
(c) evoke in consumers sentiments of future benefits.
Further, Mr Whyte states at [52] of her declaration:
Since the inception of the MY POST brand, the Applicant has planned to expand its use [of] the MY POST trade mark across a wider range of services continually over time. The Applicant has always considered the MY POST trade mark to be a brand which could be used across its entire business. That is, the MY POST brand has been developed to complement the AUSTRALIA POST primary brand, such that ultimately both may be used in connection with the Applicant's entire range of goods and services. At the time of filing the Application, the Applicant intended that it would in the future use the MY POST trade mark in relation to all of the goods and services specified in the Application.
Since Ms Whyte did not commence in her position with the Applicant until July 2014, the source for her knowledge about the Applicant’s plans at the inception of the Trade Mark is unclear.
Ms Whyte also states at [54]
Since at least 24 March 2014, the Applicant has used the MY POST trade mark in relation to products, discussed further below, with the following branding:
(a) MYPOST DIGITAL MAILBOX;
(b) MYPOST CONCESSION ACCOUNT;
(c) MYPOST ACCOUNT; and
(d) MYPOST DELIVERY.
On 24 March 2014, the Applicant relaunched its digital mailbox platform under the MYPOST DIGITAL MAILBOX trade mark (it was previously branded AUSTRALIA POST DIGITAL MAILBOX) and has promoted services under the MY POST trade mark since then.
The MYPOST branded digital mailbox is a digital mail solution and personal online management tool involving the secure delivery of communications which have traditionally been delivered by physical mail. As it is currently deployed, the MYPOST DIGITAL MAILBOX service enables consumers to:
(a) receive essential communications in one central online location, receive reminders to pay bills and receive messages from organisations that they are engaged with on an opt-in basis;
(b) pay their bills using the platform via their choice of payment mechanism; and
(c) store important digital mail, such as the bills and statements they receive using the platform, with the added functionality of uploading copies of other important documents, such as birth certificates and passports.
The Applicant's digital mailbox service was identified as an ideal starting point for the MY POST brand. In the online or "digital" world, convincing consumers that a service is safe and secure can be challenging. Consumers are familiar with spam (unsolicited junk emails), computer viruses and the prospect of identity theft and fraud (i.e. one often needs to provide credit card details, and consumers do not want this information stolen). Consequently, many consumers are initially cautious when deciding whether or not to shift their behaviour online.
Further, Ms Whyte discusses the results of a survey showing the degree of trust that consumers have in the Opponent and its digital mail “solutions” and states at [59] of her declaration:
To leverage that trust in the Applicant for the digital mailbox service, the Applicant first launched the product as AUSTRALIA POST DIGITAL MAILBOX. However, it was later decided that it would be preferable to differentiate the innovative digital service offering through a separate brand, but one which was still clearly linked to the Applicant. The MY POST brand met those criteria.
In Suyen Corporation v Americana International Ltd[11] (‘Suyen’) Dodds-Streeton J discussed the factors which affect the consideration of section 59 of the Act:
1.When the intention to use the mark in Australia must exist
2.The nature of the evidentiary onus to establish the requisite intention
3.Presumption of intention
4.Nature of the intention
5.The fact that absence of intention should not be inferred from non-use per se
[11] [2010] FCA 638; (2010) 187 FCR 169; (2010) 87 IPR 262; [2010] AIPC 92-389.
I consider that the Opponent’s evidence and observations which I quote at [48], above, are cogent, coherent and to match my experience of the Applicant’s scope of offerings as regards goods and services. It is difficult to understand how, to pick an obvious example, the Applicant would ever provide a sporting service – it might sponsor a sports person or a team but this does not amount to providing a sports service.
I further consider that the Opponent has done sufficient to shift the onus onto the Applicant. In this regard, I note that in relation to point 5 of [56], above, Dodds-Streeton J said in Suyen at [213]:
In Food Channel,[12] the Full Court observed that “only a low threshold has been set with regard to intention to use” (at [67]). Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of “cybersquatting” and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).
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] Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437.
In the paragraph immediately above Dodds-Streeton J presumably had in mind Health World Ltd v Shin-Sun Australia Pty Ltd[13] where Jacobson J said at [162]-[163] that:
However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.
[13] [2008] FCA 100; (2008) 75 IPR 478.
It is difficult to rationalize Ms Whyte’s statement that the Trade Mark was adopted to differentiate its digital services offerings with her prior statement that “The Applicant has always considered the MY POST trade mark to be a brand which could be used across its entire business.” If the Trade Mark were to be used by the Applicant in relation to the entire Specification, there is a grave risk that it would no longer differentiate the Applicant’s digital service offering.
Ms Whyte also states that the Trade Mark “brand strategy sets out an overview of the business, dividing its services into four broad categories of deliveries, payments, identification and trusted services”. The “business” referred to by Ms Whyte is presumably that planned to be carried out under the Trade Mark. Many of the goods and services within the Specification have no place within this brand strategy, or, if they have a place, this is not addressed by the Applicant.
In my consideration, at the time of filing the application to register the Trade Mark, at least, the Applicant did not have the requisite intention to use the Trade Mark in relation to the broader offering of goods and services within the Specification.
I find that the Applicant’s evidence does not properly address the Opponent’s allegations under section 59 and, considered in detail, that evidence on balance indicates that at the Relevant Date the Applicant intended to use the Trade Mark only in relation to its digital service offerings.
The Opponent has established its ground under section 59 of the Act and I refer to paragraph 86 of the decision below.
Section 58
Section 58 of the Act provides:
58Applicant 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
To establish its section 58 ground the Opponent must establish that a party other than the Applicant first used the Trade Mark, or a trade mark substantially identical[14] to the Trade Mark, in Australia, for goods or services found to be “the same kind of thing”[15] as those occurring within the Specification. The use must have taken place before the Relevant Date, or before the Applicant’s first use of the Trade Mark in relation to relevant goods and/or services, whichever is the earlier.
[14] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375.
[15] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636.
For the sake of completeness, I note that the Trade Marks under consideration are substantially identical[16].
[16] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at [41].
As the Applicant did not use the Trade Mark until after the Relevant Date it is appropriate to consider whether the Opponent has, on the balance of probabilities, established his use of the Trade Mark prior to that date and if so, in relation to what goods or services.
While the Opponent has only adduced one delivery slip, dated 19 June 2013, (which bears the Trade Mark ) in support of his allegation of prior ownership of the Trade Mark, the case law establishes that this is all he has to do[17]. I accept the veracity of this document. Whilst the consignment is to a particular person and the person who signed it has a different name and signs only with his forename, I do not see that as anything other than indicative of the ordinary and, to a degree, casual manner in which these things are handled. Put another way, if the slip had been altered or was a bogus document, the person who had altered or invented it would have been more likely to match the signature to the consignee’s name.
[17] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592; 4 ALR 687; 48 ALJR 456; 1A IPR 511.
Notwithstanding the above observations, I note that in Mr Nankervis’ declaration he states :
On or about 6 March 2015, in a domain complaint proceeding commenced by the Applicant in relation to the domain name the Opponent filed and served on the Applicant a copy of a statutory declaration given by Mr Hilton Swartz on 5 March 2015 in which he identified the purported recipient of the item referred to in the delivery slip as "Paul Renino", an "employee of IP Trading". The Opponent made no claim to confidentiality in the statutory declaration or its annexure. On 29 April 2015, on behalf of the Applicant, I engaged investigators to investigate the identity of the people connected with the claimed delivery slip. Those investigations found no record of any person by the name of Paul Renino on Australian electoral rolls or elsewhere, nor any employee by the name of "Paul" at IP Trading. Annexure LJN-10 contains a copy of the statutory declaration of Hilton Swartz on 5 March 2015 and a copy of the investigation report provided to me by the investigators noting their findings discussed in this paragraph.
To repeat what Mr Soares had to say about this:
I confirm that I have made additional deliveries to IP Trading where Mr Renino has signed for the delivery other than that instance referred to in the statutory declaration of Hilton Schwartz dated 5 March 2015. I cannot speak to the accuracy of the investigation report enclosed in Annexure LJN-10, but I can confirm that the man I know as Mr Renino is featured in an image on the IP Trading website at the domain name (IP Trading Website) on the "Get to know us" page. Annexed and marked JBS-18 is a print-out of the "Get to know us" page of the IP Trading Website with the man I know as Mr Renino circled in the image on page 2 as well as additional MyPost delivery receipts signed by Mr Renino.
Of course, the implication in the above passages is that the investigator was able to identify the individual to whom the consignment was addressed but was not able to identify Mr Renino who signed for it with his forename. Mr Soares has provided additional delivery receipts signed by Mr Renino including one signed with his full signature. I do not consider that the inability of the investigator to identify the person who signed for the consignment with what might have been a pseudonym is sufficient to negative the veracity of the consignment receipt. Nor does whether or not Mr Renino is listed on the Australian Electoral Roll establish his existence or non-existence.
While one instance of use is sufficient to establish the Opponent’s ownership of the Trade Mark in relation to packaging services, courier, and delivery services and to the goods packaging materials, this instance must be viewed in relation to the Opponent’s claims to have made some 100 such deliveries under the Trade Mark before the priority date. These claims appear to me to be coherent with the Opponent’s other claims about his adoption of the Trade Mark and the development by him of its use.
The Opponent has established his opposition under section 58 to the registration of the Trade Mark by the Applicant in relation to packaging, courier, and delivery services and packaging materials.
Section 62A
Section 62A of the Act provides:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In DC Comics v Cheqout Pty Ltd[18] Bennett J discussed the decision of Dodds-Street J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 1)[19] and stated at [60]-[67]:
[18] [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334.
[19] [2011] FCA 1417.
60. Her Honour considered (at [144]) the Explanatory Memorandum relating to s 62A, which stated:
1.The Act allows removal of a trade mark on the basis that there was no intention in good faith to use, authorise use of, or assign the trade mark. However, current opposition grounds do not cover instances in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith. There have been several instances in which trade mark applicants have deliberately set out to gain registration of their trade marks, or have adopted trade marks, in bad faith. Some examples of these include:
a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;
a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and
business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.
When such situations occur, there is very little third parties can do to prevent registration of this type of trade mark , because existing grounds for rejection and opposition do not allow the Registrar to take these facts into account.
61.     Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.
62.     Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:
◦Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
◦Bad faith does not require dishonesty.
◦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.
◦The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
◦It is difficult to see how a person who applies to register, in his own name, a mark 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. Combining the mark with the applicant’s own name is no answer to that criticism.
◦The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
◦All the circumstances surrounding the application to register the mark are relevant.
◦An act of bad faith cannot be cured by an action after the date of application.
63. Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:
... 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.
64.     Justice Dodds-Streeton accepted that certain aspects of the behaviour described in Fry may well have been regarded as being in bad faith. Her Honour also accepted (at [171]–[172]) that subsequent modifications to a mark or name appropriated in such circumstances would not necessarily negate improper motivation and noted that Kenny J had previously held that the use of the trade mark , although including a subsequently added device, did not evidence use actuated only by proper motives.
65.     Her Honour did not conclude, contrary to the Registrar’s submission, that exploitative conduct alone cannot ground a finding of bad faith.
66.     Her Honour said (at [170]) that:
Mr Fry’s conduct was exploitative and designed to acquire a springboard or advantage for his fledgling business. While it is unnecessary to decide the question, given his knowledge as at September 2004, an attempt to register the words “TENNIS WAREHOUSE” at that time may well have been regarded as in bad faith according to proper or ordinary commercial standards.
67.     Her Honour’s finding that the “exploitative” conduct was not sufficient to establish the requisite bad faith was grounded in the facts of that case, and in particular, on the fact that Mr Fry’s application for the relevant trade mark was not lodged until November 2006, more than two years after the exploitative conduct. Furthermore, her Honour’s statement regarding unscrupulous behaviour was made in the context of her conclusion (at [166]) that:
... 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.

Here the Opponent submits that the bad faith on the part of the Applicant stems from the course of dealing between the Applicant and the Opponent in their negotiations for the sale by the Opponent of the domain name mypost.com.au to the Applicant and the Applicant’s subsequent filing of the application to register the Trade Mark.
The Opponent’s statement concerning his use of the ‘brand’ My Post and the Applicant’s knowledge of it prior to the Relevant Date is at [14], above.
The Applicant had been told of the Opponent’s use of the words ‘My Post’ as a brand: in an email dated 18 February 2014 from CSC Digital Brand Services to Darren Boyle who I gather was then, at least, an employee of the Applicant, Ms Barb Pasternak wrote:
Hi Darren,
The registrant responded:
I have had a long discussion with my partners, but we still find the figure is not near high enough to offset the huge expenses we incurred in developing our business idea. And there would be further significant outlays for developing a different brand name from scratch.
We estimate that 125,000 AUD would give us ample leverage to offset our lost revenue.
I understand this is far beyond the last offer you made, but it reflects the difficult situation we'd put ourselves in should we sell.
Let me know if you can meet us at this level.
Please advise if you would like to make another counter offer or close this case.
The Applicant decided to meet the Opponent’s demand. Of course, the Opponent later changed his mind. However, the email reflects the knowledge of the Applicant that the Opponent was using the words ‘My Post’ as a brand before the Relevant Date and acknowledgement of that fact which may be inferred by the Applicant’s attempts to buy the domain name registration from him for a considerably increased sum of money.
In my consideration this set of circumstances fits squarely within those endorsed by the Courts as being ‘bad faith’ in DC Comics and Tennis Warehouse, above:
It is difficult to see how a person who applies to register, in his own name, a mark 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. Combining the mark with the applicant’s own name is no answer to that criticism
Although the Opponent is not resident overseas, the Applicant had been told well before the Relevant Date of the Opponent’s use of the words ‘My Post’ as a brand name; the Applicant had offered to purchase the domain name from the Opponent at a cost which reflected his use of the domain name as a trade mark; and, when these negotiations proved fruitless on terms acceptable to the Applicant, the Applicant went on and applied to register the Opponent’s ‘brand name’ as its own trade mark.
This constitutes ‘bad faith’ within the meaning of that expression in the Act.
The Opponent has established his opposition under section 62A of the Act.
Decision
Section 55 of the Act relevantly provides:
55Decision
(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.
Note:For limitations see section 6.
The opposition has been unsuccessful under section 41 and has succeeded under sections 58, 59 and 62A. While it may have been appropriate to restrict the scope of the Specification in the light of my findings under sections 58 and 59, the finding under section 62A does, in my consideration, affect the entire application.
I refuse to register the Trade Mark.
Costs
Having been successful in these proceedings the Opponent is entitled to his costs which I award against the Applicant at the scale set out in Schedule 8 to the Regulations.
Debrett Lyons
Hearing Officer
Trade Marks Hearings
3 February 2016

[2016] ATMO 10

3 February 2016

Key Legal Topics

Areas of Law

Intellectual Property

Statutory Interpretation

Legal Concepts

Statutory Construction

Costs

Delegate:	Debrett Lyons
Representation:	Opponent: Chris Round of K&L Gates, solicitors Applicant: Luke Merrick of Counsel instructed by Ashurst Australia
Decision:	2016 ATMO 10 s52 opposition to registration: section 41 not established; sections 58, 59 and 62A established. Trade Mark refused registration.