Landmark Assets Pty Ltd v Habitech Pty Limited - [2023] ATMO 217

TRADE MARKS ACT 1995

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

Re:Opposition by Landmark Assets Pty Ltd as trustee to registration of trade mark application number 2189667 (class 20) - HABITECH - in the name of Habitech Pty Limited

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Michael Buck IP

Applicant: Kate Andean and Finn Ryan from Banki Haddock Fiora

Decision:

2023 ATMO 217

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 44, 58, and 60 pressed – s 58 established for some goods – no other grounds established – opportunity to amend – trade mark refused.

Background

On 25 June 2021 (‘Relevant Date’) an application for a trade mark was filed under the Trade Marks Act 1995 (Cth)[1] in the name of Habitech Pty Limited (‘Applicant’) for the trade mark HABITECH (‘Trade Mark’) in respect of the following goods:
Class 20: Nesting boxes; birdhouses; carriers for animals (other than bags); beds for birds; containers, not of metal, for storage or transport (‘Applicant’s Goods’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and acceptance was advertised on 26 November 2021. On 11 January 2022, Landmark Assets Pty Ltd as trustee[2] (‘Opponent’) filed a Notice of Intention to Oppose and on 11 February 2022 filed its Statement of Grounds and Particulars (‘SGP’). On 28 March 2022 the Applicant filed its Notice of Intention to Defend.
[2] Other documents in these proceedings indicate that the name of the Opponent as being ‘Landmark Assets Pty Ltd as trustee for Landmark Assets Trust’. Given in each case the same legal entity is identified, being Landmark Assets Pty Ltd, nothing appears to turn on this discrepancy.
On 4 July 2022 the Opponent filed its Evidence in Support (‘EIS’) consisting of a statutory declaration of Stephen Collom, authorised officer of the Opponent,[3] dated 1 July 2022, with Exhibits SC-1 to SC-18 (‘Collom-1’).
[3] This particular declaration describes the declarant as ‘Director of the Opponent’, but this is explicitly corrected in a later declaration to the description I have reproduced here.
On 5 October 2022 the Applicant filed its Evidence in Answer (‘EIA’) consisting of:
- a declaration of Mick Callan, Founding Director and Principal Terrestrial Ecologist of the Applicant, dated 5 October 2022 with Exhibits MC-1 to MC-27, including confidential exhibits MC-7, MC-15 and MC-27 (‘Callan’);
- a declaration of Bryce Kurtzman, Senior Arborist and Founding Director of Arborspec Tree Contractor Pty Ltd, dated 4 October 2022 (‘Kurtzman’);
- a declaration of David Watson, Professor in Ecology at Charles Sturt University, dated 28 September 2022 (‘Watson’); and
- a declaration of Scott Robertson, Creative Director at Sunday Collective Pty Limited, dated 29 September 2022 (‘Robertson’).
On 12 December 2022 the Opponent filed its Evidence in Reply (‘EIR’) consisting of a declaration of Stephen Collom, dated 12 December 2022 with Exhibits SC-1 to SC-3 (‘Collom-2’).
On 21 December 2022 the Applicant requested a hearing. On 11 January 2023 the Opponent requested to be heard by written submissions only. On 6 September 2023 the Opponent filed written submissions prepared by Dominique Grigg of Counsel (‘Opponent’s Submissions’). On 14 September 2023 the Applicant filed its written summary of submissions. I heard the matter on 21 September 2023 and have decided the matter as a delegate of the Registrar of Trade Marks. The Applicant was represented by Kate Andean and Finn Ryan from Banki Haddock Fiora.

Grounds and Onus

The Opponent has the onus to establish at least one ground of opposition.[4] The standard of proof is the ordinary civil standard of the balance of probabilities.[5]
[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[5] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The Opponent by its SGP nominated ss 44, 58, 58A and 60 as grounds of opposition. The Opponent no longer presses the s 58A ground of opposition.[6]
[6] Opponent’s Submissions, [8].

Evidence

As a preliminary matter, Collom-1 and Collom-2 each contain blanket statements that their contents are confidential. This statement is difficult to reconcile with the discussion of publicly available records and information that occurs within the declaration. Plainly, the Opponent has an interest in preserving its confidential information. However, I must provide reasons for my findings. In discharging my duty, the information claimed to be confidential may require discussion. This is particularly relevant when little to no effort has been made to identify the allegedly confidential information. Accordingly, where such discussion is unavoidable, broad statements will be used to minimise the risk of divulging commercially sensitive information.

EIS

Collom-1 states that Mr Collom, ‘started the Opponent’s business as a sole trader in 2013, using “Habi-Tec” as a trading name’.[7] In 2016 he established a company named Broadleaf Habi-Tec Pty Ltd (‘Broadleaf’) of which he was a Director. At some time in 2021 Broadleaf merged with Gold Coast Horticulture Pty Ltd forming Landmark Environmental Pty Ltd.
[7] Collom-1, [4].
Importantly, Exhibit SC-4 to Collom-1 consist of an extract of registered trade mark 2181645 for the trade mark Habitec (‘Earlier Trade Mark’) for services in classes 35, 36, 37, 40, 41, 42 and 44 (‘Earlier Trade Mark’s Services’), in the name of Landmark Assets Pty Ltd as trustee for Landmark Assets Trust. It has a priority date of 26 May 2021. I reproduce the Earlier Trade Mark’s Services in full at Schedule 1 to these written reasons.
Collom-1 states that, ‘[t]he services the Opponent provides under or by reference to the [Earlier Trade Mark] are environmental services such as tree care, habitat creation services, fauna and habitat relocation services and timber recycling. The Opponent supplies and installs recycled carved log nest boxes and carved hollows as part of their habitat creation services. This is a core aspect of the Opponent’s service offering’.[8] It also lists one of the Opponent’s offerings as being, ‘habitat creation, design, supply and installation – Carved, hollows, carved log nest boxes and ply nest boxes’.[9]
[8] Collom-1, [10].
[9] Collom-1, [11].
I summarise the most relevant exhibits to Collom-1 from here. Collom-1 asserts that Exhibits SC-6 to SC-13 are together evidence of instances of actual confusion between the Earlier Trade Mark’s Services and the Applicant’s Goods or go to the likelihood of confusion. These include a declaration of Cara Parsons, ‘a sole trader doing freelance ecological work with Habit-Tec’, dated 1 July 2022, at Exhibit SC-7 (‘Parsons’). Parsons notes, ‘the Opponent’s use of the HABITEC trade mark in relation to their environmental services, since 2016 or earlier’. It also states that in discussions between Ms Parsons and Mr Callan, ‘[w]hile the technical construction of his nest boxes is different to the work of Habi-Tec, [Mr Callan] was well aware that using the business name Habitech to construct and distribute habitat solutions for wildlife would be in direct opposition, and confusion with, Habi-Tec.’[10]
[10] Parsons, [6].
Exhibit SC-15 consists of the following three declarations which say the declarants have witnessed use of the trade mark HABITEC by the Opponent upon goods, invoices and equipment:
- a declaration of Anthony Molyneux, Life Sciences Manager of National Trust Australia (QLD) Currumbin Wildlife Sanctuary, dated 30 July 2022 (‘Molyneux’);
- a declaration of Ben Stephenson, acting City Arborist at a south east Queensland Council, dated 1 July 2022; and
- a declaration of Scott Hetherington, dated 1 July 2022, which states that the Opponent is ‘recognised as a provider of the service of nest box and habitat creation’ at his organisation and the broader community with which it engages. It does not specify the organisation of Mr Hetherington.[11]
Exhibit SC-16 consists of invoices and purchase orders dated from 2017 to 2020, all in the name of Broadleaf. Exhibit SC-17 is a hyperlink titled ‘GARDENING AUSTRALIA EP 16’. While this probably links to some information about the long-running ABC television program, no copy of the linked website nor any images or video from the television show appear in evidence. Exhibit SC-18 shows awards, a nomination for an award and media articles showing recognition of the Opponent.

EIA

Callan describes the history of the Applicant. The Applicant was incorporated on 16 April 2019. It adds that Mr Callan was not aware of any other traders using the name HABITECH, or any similar name, in relation to nest boxes, at the time of adoption of the Trade Mark.[12] Robertson declares that work commenced in April 2019 on the Applicant’s branding and that whilst ‘businesses using the trading name, primarily overseas’ were identified, ‘in all instances these were unrelated industries.[13] Callan states the Applicant’s use of the Trade Mark commenced in 2019 and has been continuous since then. The Applicant first manufactured nesting boxes in October 2021. Much of the exhibits to Callan are dated after the Relevant Date, including monthly sales figures and invoices, dated between June 2021 to September 2022, for nesting boxes and bird houses. Various examples of the Applicant’s social media and other media activities by, and coverage of, the Applicant are extracted. Callan contradicts Parsons and states that, ‘[a]t no point in [discussions with Ms Parsons] did I convey that I thought there would be any confusion between our HABITECH nest boxes and [the Opponent’s] services’.[14] Both Kurtzman and Watson declare, that in their opinion, what is provided by the Opponent is different to the Applicant’s Goods and state that confusion is unlikely despite similarity in the trade marks.
[12] Callan, [28].
[13] Robertson, [9].
[14] Callan, [60].

EIR

Much of Collom-2 consists of simply objections and attempted refutations of what is said in the declarations contained in the EIA.
Paragraphs of Collom-2 which are of particular relevance include:
- Paragraph 14 states that ‘[t]he Opponent had since 2016 sold nest boxes, with both ply and recycled logs, that can be bought and affixed to the tree.’ Exhibit SC-1 to Collom-2 contains screen captures of social media posts which show trade marks consisting of, or containing, the word habi-tec on or in relation to nesting boxes. The social media posts are dated from 2016 to 2021.
- Paragraph 22 concerns the likelihood of Mr Callan having been exposed to the Opponent’s business before adoption of the Trade Mark. Again, Exhibit SC-1 to Collom-2 is offered as evidence of this.
- Paragraph 24 states that, ‘[t]he Opponent has been making nest boxes since 2013, as evidence and exhibited hereto and marked SC-1, the screenshots of social media posts of nest boxes sold by Opponent on continual basis since 2016.’ Again, Exhibit SC-1 to Collom-2 is offered as evidence of this.
- Paragraph 26 states, I ‘refer to Paragraph 57 of [Callan]. I rebut the statement … that the services offered by the Opponent are very different to the goods offered by the Applicant, and that there would be no risk of confusion in the market. First, the goods with nest boxes provided by the Applicant are the same goods and services provided by the Opponent, who also provides installation of nest boxes’. It references SC-1 to Collom-2. Exhibit SC-2 is referenced as an alleged example of confusion by a television station between the Applicant and the Opponent.
- Paragraph 27 which refers to a spelling mistake made in a Channel 7 television program where ‘Habitec’ was spelt ‘Habitech’, referring to Exhibit SC-2 to Collom-2.

Preliminary issues

Weight to be given to the EIR

The Applicant submits that, ‘paragraphs 14, 22, 24, 26 and 27 with accompanying Exhibits SC-1 to SC-3 of the [Collom-2] filed evidence that purports to show certain use of its trade mark Habi-Tec in relation to various services’.[15] It submits that the EIR in this respect is not properly in reply and so it is properly EIS, and as such this material was filed out of time.[16]
[15] Applicant’s Submissions, [4.4].
[16] Regulation 5.14.
In MBIP Nominees v Meeka Pty Ltd the delegate stated:
Declarations which are filed as evidence in reply do not need to identify what part of the evidence in answer they are replying to. However, there must be a connection between what the Applicant has asserted in its evidence in answer and what the Opponent is claiming to be evidence in reply to those assertions. What amounts to a connection must be considered in the context of the proceeding at hand. The connection need not be an absolute and direct contradiction of the evidence in answer. It can, and often will, be information that goes toward fleshing out an alternative view of the issues that were canvassed in the evidence in answer.[17]
[17] [2018] ATMO 188, [32] (Hearing Officer K Brown).
The Applicant’s EIA contains statements about the nature of what the Opponent supplies, including characterisations that the Opponent supplies services and not goods. One example is where Callan states, ‘[the Opponent] does not make nest boxes. The manufacturing of plastic nest boxes is significantly different to the work conducted by arborists, even those that do chainsaw scabbed hollows work’.[18] This assertion of a fact was open to the Opponent to reply to in its evidence. The EIR insofar as it shows examples of nesting boxes made by the Opponent demonstrates a connection to this statement and is in reply to it. I note that Exhibits SC-2 and SC-3 do not change the outcome in this matter and I need not consider whether this material is properly in reply.
[18] Callan, [56].
Accordingly, I give weight to the EIR, including evidence paragraphs 14, 22, 24, 26 and 27 of Collom-2 and Exhibits SC-1 of the Collom-2.

Consideration

Section 58

Section 58 provides, ‘registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark’. The term ‘owner’ is not defined. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files a trade mark for it in Australia, whichever is the earlier.
To establish this ground the Opponent must show:
- a person other than the Applicant used the Trade Mark, or a trade mark with additions or alterations which do not substantially affect the identity of the Trade Mark,[19] in the course of trade in Australia; and
- the use was before the filing date of the Trade Mark, or before use of the Trade Mark by the Applicant, whichever is the earlier; and
- the use was in relation to the Applicant’s Goods or in relation to goods considered to be the same kind of thing as the Applicant’s Goods.[20]
At the hearing the Applicant’s attorney submitted that the EIS and SGP state that a trade mark has been used in relation to only services rather than goods.
The SGP provides particulars for the Opponent’s s 58 ground of opposition in the following terms:
First used trademark: Habi-Tec. description of the goods and/or services: ALL ASPECTS OF PRUNING AND CANOPY CARE, HABITAT CREATION SPECIALIST, VETERAN & HABITAT TREE CARE SPECIALIST, WALKING TRACK REPAIR AND MAINTENANCE, ETHICAL TREE REMOVAL, CONSULTANCY (regarding tree problems), FAUNA MANAGEMENT FOR HOLLOW TREE REMOVALS & PRUNING, BUSH REGENERATION. Date of first use: 29 December 2013, use has been continuous. First use was before the priority date of the opposed application.
The SGP particularises the s 58 ground of opposition with the leading title text ‘goods and/or services’. It then begins a list with the words ‘all aspects of’. What follows are words vague enough to encompass both goods and services. For example, a ‘habitat creation specialist’ is a job title and could indicate either a service or a good. I view nesting boxes as ‘an aspect of’ many of things mentioned in the SGP, including of a ‘habitat creation specialist’. I also note that the parties have engaged with the question of whether there has been trade in services and/or goods, being nesting boxes and bird houses and/or services throughout the evidence.
Even if the SGP’s language is somewhat vague, the issue of whether there has been use of a trade mark by a person other than the Applicant on services and/or goods has been broadly and fairly contested throughout the proceedings.[21]
[21] See Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175, [144] (Nicholas, Burley and Cheeseman JJ).
Accordingly, in considering the ground of opposition under s 58, I should consider whether the evidence shows use of a trade mark on or in relation to not just services but also goods.
The evidence has various examples of use of the trade mark Habi-Tec (‘Habi-Tec’) at Exhibit SC-1 to Collom-2 in social media posts with the word Habi-Tec used in relation to or on nesting boxes. These include social media posts dated 6 October 2017, 12 September 2017, 12 June 2018 and 10 June 2019. A social media post at SC-11 to Collom-1 also demonstrates such use. There is no question that these social media posts are made by a person other than the Applicant.
The evidence also demonstrates Broadleaf or a related entity such as the Opponent has used Habi-Tec in relation to arborist, tree care and habitat creation services.
The use of Habi-Tec in relation to or upon the goods and services as described above occurred before the Applicant’s first use of the Trade Mark which on the basis of information in Collom-1 appears to have been at some point after 16 April 2019.
The addition of the letter ‘h’ to the end of the Trade Mark and not present in Habi-Tec, as well as the separation of ‘Habi’ and ‘Tec’ by a stroke in Habi-Tec are not additions or alterations which substantially affect the identity of the Trade Mark. I consider Habi-Tec to be substantially identical to the Trade Mark.[22]
[22] Optical 88 Limited v Optical 88 Pty Limited (No 2) (Includes Corrigendum dated 26 May 2011) [2010] FCA 1380 (Yates J). See also, Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
On the totality of the evidence, I am satisfied on the balance of probabilities that before the Relevant Date and importantly before the earliest documented use of the Trade Mark by the Applicant, a trade mark that is substantially identical to the Trade Mark had been used by Broadleaf, a related entity or a person other than the Applicant, in the course of trade in Australia, in relation to nesting boxes as well as arborist, tree care and habitat creation services.
I should next consider whether nesting boxes on the one hand and arborist, tree care and habitat creation services on the other are the same kind of thing as the Applicant’s Goods. To be the same kind of thing, the goods or services in relation to which the trade mark has been used must be ‘essentially the same’ as the Applicant’s Goods, though they may differ in size, shape and name.[23] I should focus whether these are the ‘true equivalent kind of thing or article.’
[23] Re Hicks Trade Mark (n 20); Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [14] (Kenny J) (‘Colorado Group’).
Applying this test, I am satisfied that nesting boxes are true equivalents of nesting boxes; bird houses.
My next consideration is whether nesting boxes on the one hand, and arborist, tree care and habitat creation services on the other, are the ‘same kind of thing’ as carriers for animals (other than bags); beds for birds; containers, not of metal, for storage or transport (‘Applicant’s Remaining Goods’). [24] I note that the Opponent offers no evidence regarding this question. I am not satisfied that nesting boxes or the services shown in evidence are the ‘same kind of thing’ as the Applicant’s Remaining Goods.
[24] Colorado Group ibid [89] (Kenny J).

Accordingly, I am satisfied that either Broadleaf, a related entity or at very least a person other than the Applicant is the owner of the Trade Mark for nesting boxes; birdhouses and the s 58 ground of opposition is successful with respect to these goods.
I now turn to consider whether the ss 44 and 60 grounds of opposition are made out in relation to the Applicant’s Remaining Goods.

Section 44

Section 44 relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:       For deceptively similar see section 10.
Note 2:       For similar goods see subsection 14(1).
Note 3:       For priority date see section 12.
For its s 44 ground of opposition, the Opponent relies on the Earlier Trade Mark. The Earlier Trade Mark has a priority date which is earlier than that of the Trade Mark and is in the name of a person other than the Applicant. The Trade Mark is substantially identical to the Earlier Trade Mark for the reasons given in the discussion of the s 58 ground of opposition. The remaining point of contention is whether the Applicant’s Remaining Goods are closely related to the Earlier Trade Mark’s Services.
The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths, French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods.’[25] Where the Earlier Trade Mark’s Services necessarily involve the use or sale of the Applicant’s Goods it is more likely that those goods and services will be perceived as closely related.[26] The nature, function and circumstances of the trade, such as trade channels, are also relevant. The likelihood of consumer association of the services with the goods, because they are generally offered by the same people also may be a relevant factor.[27] It can also be relevant as to whether the services are performed directly upon or by the means of the goods and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[28] It must be assumed that the trade marks will be used in a normal and fair manner in respect of all of the goods or services for which they are registered, or for which registration is being sought.[29]
[25] [1999] FCA 1020, [38] (French J). See also, Ian Horak and Mark Davison, Shanahan’s Australian Law of Trade Marks & Passing Off (7e, 2022) 490.
[26] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co (1983) 1 IPR 265, 277 (Lockhart J).
[27] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).
[28] Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).
[29] Re Smith Hayden & Co Ltd (1946) 63 RPC 97, 101 (Evershed J).
The Opponent does not indicate which of the Earlier Trade Mark’s Services it alleges are closely related to the Applicant’s Remaining Goods. Despite having the onus, other than general assertions the Opponent provides no evidence or detailed argument about whether the Applicant’s Remaining Goods are closely related to the Earlier Trade Mark’s Services.[30] I am not satisfied that the Applicant’s Remaining Goods are closely related to the Earlier Trade Mark’s Services.
[30] Greenpeace Australia Pacific Limited v Robert Denis Taylor and Margaret Vivienne Taylor [2004] ATMO 7 (Hearing Officer Murray) (‘Greenpeace’) where the delegate compared various chemicals related to plants and fertilisers and nutrients with environmental services. Noting a lack of evidence on the issue, the delegate in Greenpeace found that the opponent had not discharged the onus to show that the goods and services were closely related.
Accordingly, the Opponent has not established the s 44 ground of opposition.

Section 60

The Opponent relies upon s 60, which provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
To establish this ground of opposition the Opponent must demonstrate that a reputation has been acquired in another trade mark in Australia as at the Relevant Date. The Opponent then must show that because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion. The reputation must not be assumed, it rather must be established as a matter of fact by the Opponent.[31] A reputation can be demonstrated by various means including quantum of sales or advertising and promotional activities.[32] Advertisements or other appearances of the Earlier Trade Marks at trade fairs, on television, radio or in magazines and newspapers may also be relevant. Sometimes a reputation is established by a high volume of sales, often across a wide geographical space, together with substantial advertising expenditures and other promotions of the relevant trade mark.[33] The reputation required is one of which a significant or substantial number of persons would be aware[34], or a ‘significant section of the public’[35] and it must exist at the Relevant Date.
[31] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176, [77] (Lockhart J).
[32] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[33] McCormick & Company Inc v McCormick [2000] FCA 1335, [86] (Kenny J).
[34] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [74]-[75] (Moore, Tamberlin and Goldberg JJ).
[35] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [121] (Dodds-Streeton J).
The SGP states that the trade marks habi-tec and the Earlier Trade Mark have each acquired a reputation in Australia. The evidence shows use of trade marks which contain the words habi-tec or the Earlier Trade Mark. The Opponent has a moderate annual turnover and has a low advertising expenditure. The turnover figures do not demarcate between years and noting that the Opponent engages in a variety of activities, it does not specify any particular goods and/or services to which those figures relate. The advertising figures also do not demarcate between particular goods and/or services. The invoices or purchase orders at Exhibit SC-16 to Collom-1 relate to mostly Queensland local councils over a period of roughly five years. The figures on the invoices as a total amount and individually reflect moderate amounts at best. The social media evidence indicates minimal exposure of the trade marks habi-tec and the Earlier Trade Mark before the Relevant Date. Much of the evidence is dated after the Relevant Date and does not assist the Applicant for its s 60 ground of opposition. On my assessment the evidence is not sufficient to establish that a reputation was acquired in a trade mark before the Relevant Date.
Accordingly, the s 60 ground of opposition has not established.

Decision

Section 55 relevantly provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
The Opponent has established at least one ground of opposition under s 44 in respect of some of the Applicant’s Goods. On 30 August 2023 I contacted the attorney for the Applicant expressing my intention to refuse the application for the Trade Mark unless the Applicant agreed to the following amendment to the specification of goods (the strikethrough indicates deletion):
Class 20: ~~Nesting boxes; birdhouses~~; carriers for animals (other than bags); beds for birds; containers, not of metal, for storage or transport
No agreement to amend was received. Accordingly, the Opponent has established a ground of opposition under s 58 and I refuse to register the Trade Mark. Noting the appeal period, this refusal will be recorded one month from the date of this decision unless the Registrar of Trade Marks is served with a notice of appeal.

Costs

Both parties asked that costs be awarded in these proceedings. Costs ordinarily follow the event. I award costs against the Applicant under s 221 in accordance with Schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

21 December 2023

Schedule 1

Goods and services of registered trade mark 2181645

Class 35: Business consultancy; Commercial information research studies; Charitable services, namely business management and administration; Charitable services, namely organising and conducting volunteer programmes and community service projects; Charitable services, namely the recruitment, organisation and deployment of volunteers

Class 36: Charitable collections; Charitable fund raising; Charitable fundraising; Charitable services, namely financial services; Organising of charitable collections

Class 37: Landscaping (construction); Building construction consultancy; Building consultancy services; Civil engineering construction consultancy; Civil engineering consultancy (construction and maintenance); Cleaning consultancy and advisory services; Agricultural equipment repair and maintenance

Class 40: Coating of agricultural seeds; Drying of agricultural products; Processing of agricultural products; Recycling

Class 41: Wildlife sanctuaries; Educational research; Advisory services relating to training; Arranging and conducting of workshops (training); Charitable services, namely education and training; Coaching (training); Consultancy services relating to training; Organisation of training courses; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of training; Training; Training consultancy

Class 42: Landscape architectural services; Environment design services; Research relating to agriculture; Conducting of agricultural surveys; Environmental conservation; Energy use and conservation consultancy; Agricultural research services; Advisory services relating to scientific research; Analysis of statistical data for scientific research; none of the aforementioned being in relation to building design

Class 44: Tree clearing; Tree nursery services; Tree planting; Clearing of tree roots (tree removal services); Tree removal services; Planting of trees; Care of plants; Cultivation of plants; Plant nurseries; Planting of flora; Information services relating to flora; Consultancy in relation to occupational health and safety (therapeutic and rehabilitation services); Agricultural consultancy; Agricultural advisory services; Aerial spreading of agricultural chemicals; Aerial and surface spreading of fertilisers and other agricultural chemicals; Aerial and surface spreading of fertilizers and other agricultural chemicals