JLIP, LLC v Greg Weige as Trustee for the Jetlev Trust
[2013] ATMO 88
•29 October 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by JLIP, LLC to registration of trade mark application 1457715(12) - JETLEV - filed in the name of Greg Weige as trustee for the Jetlev Trust.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Written submissions by Odette Gourley of Corrs Chambers Westgarth Applicant: Did not appear or file written submissions |
| Decision: | 2013 ATMO 88 Section 52 opposition: section 62A: business negotiations between parties at the time the application was filed: application made in bad faith. Registration refused |
Background
This proceeding under section 52 of the Trade Marks Act 1995 (‘the Act’) concerns an application by Greg Weige as trustee for the Jetlev Trust (‘the Applicant’) for registration of the trade mark which appears below:
Application No: 1457715
Priority Date: 7 November 2011
Goods: Class 12: Leisure boats
Trade Mark: JETLEV
The application was examined in compliance with section 31 of the Act and subsequently advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 March 2012.
On 1 September 2012, after seeking and receiving an extension of time in which to do so, JLIP, LLC (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice includes the ground under section 62A which was subsequently argued by the Opponent and under which I will decide this matter.
The Opponent has served and filed evidence in support of its opposition to registration of the trade mark. The Applicant has not served and filed evidence in answer.
Both parties were informed of their right to be heard and the Opponent, while opting to be heard, decided (in the absence of the Applicant at the hearing) to rely on written submissions by its attorney – Odette Gourley of Corrs Chambers Westgarth.
I am a delegate of the Registrar of Trade Marks and I will decide the matter based on the material on the official file which includes the evidence in support and the submissions of the Opponent.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81; ( 2012 ) 94 IPR 551 per Dodds-Streeton J at [13] . and, most recently, DC Comics v Cheqout Pty Limited [2013] FCA 478 (22 May 2013) per Bennett J at [13].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
The Evidence
The evidence is comprised of evidence in support being statutory declarations made by:
Odette Margaret Gourley, solicitor for the Opponent
Benjamin White, President of the Opponent,
Ms Gourley’s declaration clarifies and supports some of the facts attested to by Benjamin White but I will not detail these as they are not germane to the ground under section 62A.
Mr White states:
In or around 1998, Raymond Li, conceptualised a water powered jetpack device that, among other things, allows users to levitate above water using high powered water jets. Mr Li then engaged in extensive research, concept development and testing of the jetpack product for a number of years, and at least as early as 2003 named the jetpack device ‘JETLEV’.
Mr Li filed various patent applications around the world in relation to his Jetlev jetpack product, and established the Jetlev business and group of companies, including JLIP (JLIP and its affiliates, collectively referred to as ‘Jetlev’). The JETLEV jetpack is the subject of a number of patent registrations around the world, including in Australia and the United States.
In 2005, Jetlev relocated from Canada to Dania Beach, Florida, and following a number of test flights, completed its first fully operational Jetlev prototype in March 2005.
The test flights of the Jetlev jetpacks generated a large amount of public interest, and within a few months various video clips of the Jetlev prototype were published online, resulting in a large amount of global public attention and interest in the Jetlev name and product. Further information about the various videos of the Jetlev product that have been uploaded to the Internet, including on YouTube, is provided below.
Commercial production of Jetlev's JETLEV jetpack commenced in 2011 with the introduction of the JETLEV R200 model.
Concerning publicity in Australia about the Opponent’s jetpack sold under the JETLEV trade mark, Mr White states that the jetpack sold under the trade mark JETLEV was featured in:
Yahoo! News Singapore, 28 August 2011,
at 01170.html;
Gizmag, 9 May 2011
(a free online magazine covering new inventions, innovation and emerging technologies), at /; and
Popular Mechanics, April 2011
(a online magazine covering mechanics, home improvements, DIY etc), at >
The jetpack sold under the trade mark JETLEV by the Opponent has also featured extensively on YouTube in videos such as:
(uploaded 7 Feb 2009) viewed over 3 million times
(uploaded 4 February 2009) viewed over 3.2 million times
In this second YouTube video the commentator describes the fuel and power source for the jetpack as being contained in a ‘floating mini-boat’.
Mr White further states:
In or around November, 2011, Greg Weige approached Jetlev in relation to Jetlev's JETLEV jetpack products. Mr. Weige did so for the purpose of seeking to reach a commercial arrangement allowing Mr Weige to distribute Jetlev's products in Australia under JLIP's JETLEV trade mark. After preliminary negotiations, no such agreement was reached.
At all times throughout the above-referenced negotiations, Greg Weige understood and expressly acknowledged that Jetlev owned the rights to its JETLEV technology, and that Jetlev owned the rights to the JETLEV trademark. Indeed, Greg Weige sought a license from Jetlev to enable Greg Weige to make use of Jetlev's trademark. As explained above, no agreement was reached and no such license was granted by Jetlev to Greg Weige. Accordingly, all rights to the JETLEV trademark at all times remained owned solely by JLIP.
Having been unsuccessful in obtaining a license from JLIP to make use of Jetlev's JETLEV trademark, on 7 November 2011, Greg Weige lodged Australian trade mark application No 1457715 Jetlev in class 12 (the Weige Mark) for "Leisure boats". Greg Weige filed that application without JLIP's authority, and has used JLIP's JETLEV trade mark in Australia, without JLIP's authority.
As a result of becoming aware of the Weige Mark and the confusion the use of the Weige Mark was causing, JLIP instructed its solicitors, Corrs Chambers Westgarth to write Mr Weige and his associates in relation to use of the Weige Mark and various other unlawful conduct in relation to the Jetlev name and mark. A copy of this letter appears at Annexure BJ-14.
Mr White states that this confusion included:
(a) In March 2012, JLIP's marketing director Raphie Aronowitz engaged in email correspondence with a representative of Prospera Products, and Australian based production company, in relation to use of Jetlev's JETLEV jetpack products on an Australian television program. The representative from Prospera Productions then informed Mr Aronowitz that he no longer needed to liaise with JLIP in the US as Prospera Products was now "liaising with [our] Australian company in terms of potentially featuring on [the] show" and had been speaking with Mr Greg Weige. Prospera Productions assumed that Mr Weige and JLIP were related. Mr Weige does not operate JLIP 's "Australian company'' and does not have our authority or license. A copy of the email chain at Annexure BJ-15.
(b) In April 2012, JLIP's marketing director Mr Aronowitz was sent an email, also sent to Mr Weige's email address, requesting some quality footage of our Jetlev product to be used by the Channel Seven production team in promoting the upcoming Sanctuary Cove Boat Show. Mr Weige had applied to be an exhibitor of our Jetlev jetpack products at the exhibition, without JLIP's authority or license, and the hosts of the exhibition assumed Mr Weige's business and JLIP were one and the same, when they are not. A copy of the email at Annexure BJ-16.
(c) In early 2012, a vendor of Mr Weige's who was charged with producing banners and signs called JLIP asking for addresses for Mr Weige.
(d) In May-August 2012, a potential customer, Sea World of Australia approached JLIP to purchase units and was confused by conflicting messages being provided to them by Mr Weige.
(e) In September- November 2012, a potential Australian customer, Aarron Deli, approached JLIP to purchase units and was confused by conflicting messages being provided to them by Mr Weige.
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.
This provision was the subject of recent consideration by Bennett J in DC Comics v Cheqout Pty Ltd [2013] FCA 478 (‘Chequout’) where she endorsed the approach taken by Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565. Bennett J said at [61] of Chequout:
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.
· 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.
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.
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.
Her Honour did not conclude, contrary to the Registrar’s submission, that exploitative conduct alone cannot ground a finding of bad faith.
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.
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.
Justice Dodds-Streeton concluded that Sports Warehouse had not successfully discharged its onus of proof in regards to s 62A. Pivotal to her Honour’s reasoning (at [174]) was the correspondence between Mr Fry and Sports Warehouse prior to Fry Consulting’s application for the mark. It established that:
In December 2004, Mr Fry had unequivocally indicated his willingness to cease using “Tennis Warehouse” if Sports Warehouse provided evidence of its entitlement and sought a prompt response so that he could change the name prior to expanding his business any further.
Mr Fry did not acknowledge Sports Warehouse’s ownership or rights in Australia.
Despite undertaking to do so, Sports Warehouse did not provide any documentation or evidence to Mr Fry of its entitlement or rights to the “Tennis Warehouse” mark in Australia, and their later attempt to register this mark was ultimately unsuccessful.
In the period from December 2004 to November 2006 (in which Sports Warehouse did not attempt to correspond with Fry) Fry developed his business using the words “Tennis Warehouse Australia” and commissioned a tennis ball logo that formed the composite mark which he sought to register in December 2006.
Here the Opponent alleges that Greg Weige negotiated in early November 2011 with the Opponent in terms which clearly acknowledged the Opponent’s ownership of the trade mark and when these negotiations came to naught, Mr Weige applied to register the trade mark. Mr Weige has been silent and has not addressed this allegation.
In view of the endorsement of the Federal Court of the principle that, ‘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’ the Opponent’s allegation does, I consider, transfer the onus onto the Applicant and require some kind of response from the Applicant even though the evidence which supports the Opponent’s allegation is not strong. (The bare allegation is supported by, and gains strength from, documentary evidence of the Applicant’s subsequent course of conduct in which it is alleged that the Applicant purported to be the true owner of the trade mark in Australia in relation to jetpacks).
I am mindful too of the principle in Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298, 308, 312 and 320 - 321 as explained by Owen J in Bell Group Ltd (in liq) v Westpac Banking Corporation (No 9)[2008] WASC 239; (2008) 225 FLR 1; (2008) 70 ASCR 1; (2008) 39 WAR 1at [1003]:
The unexplained failure by a party to give evidence or to call a witness or tender certain documents may, in appropriate circumstances, lead to an inference that the uncalled evidence would not have assisted the party's case: Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298, 308, 312 and 320 - 321.
The failure to call a witness or tender documents can allow evidence that might have been contradicted by such witness or document to be more readily accepted. Further, where an inference is open from facts proved, the absence of the witness or document may be taken into account as a circumstance in favour of the drawing of the inference: Jones v Dunkel 308, 312 and 320 - 321; RPS v The Queen [2000] HCA 3; (2000) 199 CLR 620 [26]. But the absence of a witness or document cannot be used to make up any deficiency in the evidence. Thus it cannot be used to support an inference that is not otherwise sustained by the evidence. The rule cannot fill gaps in the evidence or convert conjecture and suspicion into inference: Jones v Dunkel 308, 312 and 320 - 321; Schellenberg v Tunnel Holdings Pty Ltd [2000] HCA 18; (2000) 200 CLR 121 [53]; Hesse Blind Roller Company Pty Ltd v Hamitovski [2006] VSCA 121 [28].
Accordingly, I consider that the Opponent has established its opposition to registration of trade mark 1457715(12) JETLEV.
Decision
Subsection 55(1) of the Act provides:
55Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
I refuse to register application 1457715(12) JETLEV.
Costs
The Opponent, having been successful, is entitled to its costs which I award at the official scale against the Applicant.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
29 October 2013
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