Leafshield Pty Ltd v Ma Christina Ranola

[2024] ATMO 101

TRADE MARKS ACT 1995

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

Re:Oppositions by Leafmesh Pty Ltd to registration of trade mark application numbers 2156179 LEAFSHIELD and 2184171 LEAFSHIELD (fig.) both in class 37 - in the name of Ma Christina Ranola

Delegate:

Tracey Berger

Representation:

Opponent: Trevor Dredge of Intellepro Patent & Trade Mark Attorneys

Applicant: Grayson O’Connor

Decision:

2024 ATMO 101

Trade Marks Act 1995 (Cth) – oppositions under section 52 – ss 42(b), 58, 59, 60 and 62A pursued – s 58 established for some services – no other grounds established – applicant given opportunity to amend - trade marks to proceed to registration for amended services

Background

1. This decision concerns oppositions by Leafmesh Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade marks which are the subject of the applications detailed below (collectively ‘Applications’), both in class 37 for broad services set out in Annexure A, in the name of Ma Christina Ranola (‘Applicant’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

1.     Number (‘Applications’)	2.     Trade Mark	3.     Filing Date (collectively ‘Relevant Date’)
4.     2156179	5.     LEAFSHIELD (‘Word Mark’)	6.     16 February 2021
7.     2184171	8.     (‘Logo Mark’)	9.     3 June 2021

1. The specifications of services of the Applications are not identical but there is substantial overlap.  Accordingly, in this decision I have referred to the ‘Applicant’s Services’ as indicating the services of the relevant Application or the combined services of the Applications.

2. In the opposition to the Word Mark, the Opponent filed its Notice of Intention to Oppose on 5 November 2021 followed by its Statement of Grounds and Particulars on 3 December 2021. The Applicant filed a Notice of Intention to Defend the opposition to the Word Mark on 20 March 2022.

3. In the opposition to the Logo Mark, the Opponent filed its Notice of Intention to Oppose on 20 December 2021, followed by its Statement of Grounds and Particulars on 18 January 2022.   The Applicant filed its Notice of Intention to Defend the opposition to the Logo Mark on 21 April 2022.  The parties then proceeded to file their evidence in accordance with the Regulations as set out below.

4. Once the time for filing evidence had ended, the parties were given the opportunity to request a hearing.  The parties requested an oral hearing in each case.  I heard these matters as a delegate of the Registrar of Trade Marks via video conference on 24 April 2024.  Prior to the hearing, both parties filed a written summary of their submissions.  At the hearing, Mr Grayson O’Connor appeared on the Applicant’s behalf (observed by the Applicant) and Mr Trevor Dredge of Intellepro Patent & Trade Mark Attorneys appeared on behalf of the Opponent.

   Grounds of Opposition, Onus and Relevant Date

5. In its Statements of Grounds and Particulars, the Opponent nominated grounds of opposition ss 42(b), 58, 59, 60 and 62A.  The Statement of Grounds and Particulars filed in each case are essentially identical and are hereinafter referred to as the ‘SGP’.  

6. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The required standard of proof is on the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

   [3] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone

   Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

7. The date at which the rights of the parties will be determined is the filing date of each of the Applications,[4] which is also the priority date in each case for the purposes of s 60.  Whilst there is a difference of less than 4 months in the respective filing dates of the Applications, nothing turns on this difference and any reference to the Relevant Date is a reference to the filing date of the relevant Application(s). 

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

   Evidence

8. In the opposition to the Logo Mark, the following evidence was filed:

Evidence in Support

·     Declaration of Sherrie Marie Blundell, Director and owner of the Opponent, made on 28 June 2022 with Exhibits SMB1 to SMB15 (‘Blundell 1’)

Evidence in Answer

·     Declaration of Ma Christina Ranola, Applicant, made on 6 November 2022 with Appendices 1 to 15 (‘Ranola’); and

·     Declaration of Grayson O’Connor, director of Grayson’s International Pty Ltd, licensee of the Applicant, made on 6 November 2022 (‘O’Connor’)

Evidence in Reply

·     Declaration of Sherrie Marie Blundell made on 4 January 2023 with Exhibits SMB15 to SMB19 (‘Blundell 2’)

1. In the opposition to the Word Mark, the following evidence was filed:

10.     Evidence in Support

·     Declaration of Sherrie Marie Blundell, Director and owner of the Opponent, made on 28 June 2022 with Exhibits SMB1 to SMB15

11.     Evidence in Answer (‘EIA’)

·     Declaration of Ma Christina Ranola made on 3 October 2022 with Appendices 1 to 10 (‘Ranola 2’); and

·     Declaration of Ma Christina Ranola made on 5 November 2022 with Appendices 11 to 15 (‘Ranola 3’) and Declaration of Grayson O’Conner made on 5 November 2022 (‘O’Connor 2’)

12.     Evidence in Reply

·     Declaration of Trevor James Dredge, registered patent and trade marks attorney of Intellepro Registered Patent & Trade Mark Attorneys, made on 9 February 2024 with Exhibits TJD1[5] and TJD2 (‘Dredge Declaration’)

[5] Exhibit TJD1 is a copy of Blundell 2 with Exhibits SMB15-19.

1. In the opposition to the Word Mark, Ranola 3 and O’Connor 2 were filed after the deadline.  The Applicant sought an extension of time (‘EOT’) for filing those declarations and the Registrar intended to refuse the EOT.  After further correspondence between the Applicant and this office, the Applicant requested a hearing on the EOT.  A delegate of the Registrar of  Trade Marks heard that matter on 4 December 2023 and issued a decision[6] that the EOT to file Ranola 3 and Appendices 11-15 should be granted but that there were no grounds for O’Connor 2 being filed out of time.  Accordingly, I have not had regard to O’Connor 2 in determining the opposition to the Word Mark.

   [6] 2023 ATMO 201 (Hearing Officer R. Wilson).

2. The Opponent’s evidence in each of the oppositions is essentially the same save for Exhibit TJD2 to the Dredge Declaration being details of removed registration 715533 LEAFSHIELD.  Similarly, the Applicant’s evidence in the oppositions is substantially identical[7] except for O’Connor 2 which was filed out of time in the opposition to the Word Mark.

   [7] Ranola is a combination of Ranola 2 and 3.  Hence I have referred to Ranola throughout this decision.

   Opponent’s evidence

3. According to Blundell 1, the Opponent was incorporated on 16 December 1986 as Hinterwell Pty Ltd and changed its name to Leafmesh Pty Ltd in 2006.  Ms Blundell claims she purchased the Opponent from Steve Ennis in 2006.  Since that time, the Opponent has authorised Ms Blundell’s business Leaf Shield Gutter Protection QLD (‘Opponent’s Business’) to use the mark LEAF SHIELD for guttering maintenance, cleaning and installation and the sale of related guttering and roofing components (‘Opponent’s Goods and Services’).

4. The Opponent’s Business initially operated in Queensland and Northern New South Wales but expanded to Sydney in about 2017.  Blundell 1 alleges that the Opponent’s Business and its use of LEAF SHIELD is ‘widely known within the building and construction industry’.

5. The Opponent claims to have operated a website at (‘Opponent’s Website’) since 2007.  The Opponent’s Goods and Services are promoted on the Opponent’s Website throughout Australia and customer enquiries may be referred to any business with installation capability but predominantly sales and installations occur in Queensland, New South Wales and Victoria.

6. In addition, Blundell 1 provides various advertisements, promotional materials and examples of use of the mark LEAF SHIELD.  A Custom Summary Report of the Opponent’s Business financials from 2006-2022 is also provided (‘Opponent’s Financials’).

7. Blundell 2 expands on the historical use of LEAF SHIELD and annexes correspondence between Steve Ennis’ company Leafmesh Pty Ltd and Mr Jeroen Willem de Graaf of Leaf Shield Gutter Protection Pty Ltd, which company used LEAF SHIELD in South Australia.  Blundell 2 declares that when Ms Blundell purchased Mr Ennis’ business, she and Mr de Graaf continued to co-operate by referring business in their respective States to each other.  According to Blundell 2, the Opponent and Leaf Shield Gutter Protection Pty Ltd concurrently used the LEAF SHIELD mark until Mr De Graaf retired in 2014.

8. In addition, Blundell 2 annexes:

   ·     a price list for the Opponent’s business dated 18 June 1996 showing the same logo as that used by the Opponent;

   ·     correspondence from the Applicant to the Opponent which I have not had regard to given the correspondence is ‘without prejudice’ and hence is confidential; and

   ·     details of the Applicant’s other trade marks.

Applicant’s evidence

1. Beyond the usual introductory statements, the Ranola declarations simply lists and annexes the following documents:

   ·    email from Cardytoons.com.au to Grayson O’Connor dated 4 March 2022 (after the Relevant Dates) for designs of a logo of a Hedgehog holding the Logo Mark;

   ·    five blog extracts from the website at (‘Applicant’s Website’) using the Wayback Machine, only one of which predates the filing of the Word Mark and two which predate the Logo Mark.  Each of these blogs features a section titled ‘About Leaf Shield’ and some feature the Logo Mark;

   ·    evidence that Leafshield was registered as a business name by Grayson’s International Pty Ltd (‘Grayson’s) on 13 February 2022;

   ·    copies of invoices from iScribe Creative to Grayson’s for Leafshield blogs dated 11 June 2021 and 11 March 2022;

   ·    a 6 page flyer for Leafshield Gutter Protection Mesh claiming copyright from September 2006 (‘Flyer’) and an undated flyer bearing the Logo Mark;

   ·    text messages with a customer after the Relevant Dates of the Applications;

   ·    invoice dated November 2020 for the phone number 1300 532 374;

   ·    copy of Deed of Assignment dated 12 December 2019 from LBI Holdings Pty Ltd and Theofani Groom to Grayson’s transferring all rights in the trade marks LEAFBUSTERS (word and logo), the domain name leafbusters.com.au, Leafbusters social media accounts and Assets (‘Assignment Deed’).

   ·    copies of invoices from Sun Marketing (Aust) Pty Ltd dated from 1994 bearing the mark:
    (‘1994 Invoices’); and

   ·    copy of the official file on trade mark registration 849621 LEAFSCREENER (‘849621 file’).

2. According to the O’Connor Declaration, on 12 December 2019, Grayson’s purchased the copyright and trade mark rights in LEAFBUSTERS and LEAFSHIELD from Theofani Groom (‘Thea’).  Thea gave Grayson’s all the remaining stationery and advertising including the Flyer.  Mr O’Connor claims that Thea ‘coined’ the term LEAFSHIELD and used it as far back as 1989 as ‘the original gutter guard brand’.

3. As Grayson’s already owned and used a number of gutter protection brands, Mr O’Connor declares that Grayson’s transferred ownership of LEAFSHIELD to the Applicant, his life partner and business partner, on 12 December 2019.  The Applicant licenses Grayson’s to use the LEAFSHIELD brand.  Grayson’s also operates the Applicant’s Website and owns the business name LEAFSHIELD. 

   Discussion

   Section 58

4. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

5. In the SGP, the Opponent claims that since 2006 it has continuously used the marks LEAF SHIELD, LEAFSHIELD and (‘Opponent’s Marks’) for the Opponent’s Goods and Services. 

6. Although the term ‘owner’ is not defined in the Act, it is well established that in the absence of fraud, the owner of a trade mark in Australia for particular goods and/or services is taken to be the first person to use it in respect of those goods and/or services, or apply for its registration in respect of those goods and/or services, whichever is the earlier. The courts have established three factors that must be satisfied by an opponent to prove that an applicant is not the owner of the trade mark it seeks to register.  In the context of the present matter, the Opponent must establish:

   i.the Trade Mark is identical or substantially identical to the trade mark(s) relied upon by the Opponent;[8]

   [8] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495, (1994) 31 IPR 375 (Gummow J).

   ii.the Applicant’s Services are the ‘same kind of thing’ as the goods or services for which the Opponent’s mark is used;[9] and

   [9] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 3 ALR 75 (Holroyd J).

   iii.use of the Opponent’s trade mark(s) commenced in Australia prior to whichever is the earlier of: (a) the Application or (b) any use of the Trade Mark in Australia by the Applicant.[10]

   [10]Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402, 413 (McGarvie J).

7. The test for whether marks are substantially identical was set out by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[11]

   [11] (1963) 109 CLR 407, 415.

8. More recently, the Full Federal Court considered the test for substantial identity in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[12] (‘Accor’) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd,[13] finding that the test requires that the trade marks are considered side by side while having regard to the essential features or dominant cognitive cues of the marks.  

   [12] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).

   [13] [2017] FCAFC 83 (Greenwood, Jagot, and Beach JJ).

   27.     The comparison in the present case is:
   
   

Opponent’s Marks

Trade Marks

LEAFSHIELD

LEAF SHIELD

LEAFSHIELD

1. The Word Mark is identical to the Opponent’s mark LEAFSHIELD and substantially identical to the Opponent’s mark LEAF SHIELD.  I also consider the Logo Mark to be substantially identical to the Opponent’s marks LEAFSHIELD and LEAF SHIELD.  The essential element of the Logo Mark and dominant cognitive cue is the words LEAF SHIELD.  The only other element of the Logo Mark is the shield device which is not particularly distinctive or memorable.

2. The term ‘same kind of thing’ is narrowly construed and in Accor, the court held that in the context of services it means that the two sets of services are ‘true equivalents’.[14]

   [14] Accor (n11), [198].

3. The Application covers a broad range of building, repair and installation services, cleaning, pest control, painting and in particular ‘maintaining and repair of roof guttering’ and ‘unblocking of drains’.

4. Blundell 1 claims that the Opponent’s Marks are used in respect of ‘all guttering maintenance and cleaning as well as installation of gutter leaf proofing and the sale of related guttering and roofing components including polyethylene mesh, aluminium mesh, stainless steel mesh, colorbond steel saddles, angle and flat trims and roofing screws (“the guttering related goods and services”). Generally, these goods and services relate to roofing and many of the products are installed with mesh that reaches over onto adjacent roofing so we are often called upon to advise in relation to roofing and related hydraulics’.   

5. In support of the Opponent’s claim to have used the Opponent’s Marks since 2006, Blundell 1 includes:

   ·     advertisements for the Opponent’s Business in Sunshine Coast Homemakers catalogues dated Autumn 2017 and Winter 2021, Gold Coast Homemakers catalogues Summer 2011 and Autumn 2018,  Brisbane Homemakers catalogue Spring 2003, ‘Homescene’ from 2014 and Farm Fantastic Expo 2017; all of which offer gutter guards, gutter cleaning and gutter guard installation services;

   ·     extracts from the Opponent’s Website featuring the Opponent’s Marks from 4 July 2007, 27 January 2021 and 2022 offering guttering products and services; and

   ·     Opponent’s Financials which includes costs for installation services as well as advertising and marketing including in Yellow Pages telephone directories, online, at home shows, in magazines and newspapers and sales of gutter products (‘supply only’).

6. On my assessment of the Opponent’s evidence, the Opponent has used the Opponent’s Marks since 2006 for guttering products and services which are the same or the same kind of thing as some of the services of the Application.  Further, I consider that the installation or maintenance of guttering is a roofing service; and often provided in connection with other services related to roofing.

7. I turn now to a consideration of the Applicant’s evidence.  In the event that the Applicant establishes use of the Trade Marks before 2006, I will consider whether the Opponent has established use earlier than 2006 by its predecessor.

8. It is apparent from O’Connor that the Applicant claims use of the Trade Marks by its predecessor since 1989.  There are a number of problems with the Applicant’s evidence.  Firstly, a number of the Appendices are dated after the Relevant Dates. 

9. Secondly, the Assignment Deed marks no mention of the Trade Marks.  The Assignment Deed provides that all IP rights in the ‘Relevant IP’ will vest in the assignee, Grayson’s.  The Relevant IP is defined as the ‘IP rights set out, described or referred to in Schedule 1 and does not include any rights in content on the Thea Groom You Tube Channel’.  Schedule 1 is reproduced below:

1. Schedule 2 lists details of Australian trade mark registration 821969 LEAFBUSTERS in classes 6, 19 and 37[15] and removed registration 705015 for the LEAFBUSTERS Logo[16] shown in class 19 .  Schedule 3 lists the domain name Schedule 4 lists the Leafbusters Facebook, Twitter and Hosting account.  The Assets are listed in Schedule 5 as uniforms, signage, cutting and measuring machines, trims, saddles and screws.

   [15] This registration is now registered in the name of Grayson’s.

   [16] This mark was registered in the name of LBI Holdings Pty Ltd and was removed from the Register in October 2016 after it was not renewed.

2. There is nothing in the Assignment Deed to indicate that any rights in the Trade Marks were assigned.  Furthermore, whilst the Assignment Deed purports to assign the common law rights in the unregistered LEAFBUSTERS Logo (which was the subject of removed registration 705015), common law marks can only be assigned with the goodwill in the associated business.  Accordingly, the Assignment Deed cannot have assigned the rights in the unregistered Trade Marks as there is no assignment of the goodwill in the associated business.  The Applicant argues that point 2 of Schedule 1 above includes copyright in the Trade Marks.  I am not persuaded by this argument.  Copyright does not subsist in the Word Mark.  Further, there is no evidence that at the time of the Assignment Deed the Trade Marks were being used in signage, documentation and other materials or on the online accounts.   

3. Thirdly, there is no evidence that the Assignors were the owners of the Trade Marks at the time of the Assignment Deed.  The 849621 File contains a declaration of Paul Anthony Groom, a director of the applicant Polymesh Australasia Group Pty Ltd (‘Polymesh’), in which Mr Groom declares that Sun Marketing (later name Leafbusters) developed and sold LEAFSHIELD mesh.  There is nothing in the 849621 File or the Applicant’s evidence or submissions in this matter which indicates that Sun Marketing ever assigned the LEAFSHIELD mark to Thea Groom or L.B.I Holdings Pty Ltd. 

1. Fourthly, even if the Assignment Deed had transferred rights in the Trade Marks as the Applicant claims, there is no documentary evidence of the transfer of those marks to the Applicant.

2. Accordingly, based on the evidence before me, the Opponent has used the Opponent’s Marks, which are substantially identical to the Trade Marks, before the Relevant Dates or any use of the Trade Marks by the Applicant for services which are the same kind of thing as some of the Applicant’s Services.

3. For the Word Mark, the s 58 ground of opposition is established with respect to:

   ‘Cleaning of gutters; Installation of roofing; Roofing services; Maintaining and repair of roof guttering; Unblocking of drains; Roof repair’ and services relating to the installation, repair, maintenance or cleaning of roofs, gutters, gutter guards, gutter mesh or drains.

   For clarity, the s 58 ground of opposition is unsuccessful for:

   Building services; Cleaning services; House cleaning services; Installation of roofing; Roofing services; Installation of fittings for buildings; Installation of fixtures and fittings for domestic premises; Advisory services relating to building construction materials; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Providing information, including online, about building construction, and repair and installation services; Provision of information in relation to building construction; Extermination of pests; Pest control services, other than for agriculture, aquaculture, horticulture and forestry; Proofing of buildings against pest and vermin access; Proofing of land against pest and vermin access; Proofing of premises against pest and vermin access; Proofing of structures against pest and vermin access; Erection of scaffolding; Hire of scaffolding; Scaffolding; Scaffolding dismantling; Hire of ladders; Maintaining and repair of roof guttering; Fitting services in relation to buildings; Diagnosis of building faults; Dismantling services; Roof repair; Diagnostic maintenance services; Waterproofing of buildings; House painting; Painting and decorating; Unblocking of drains; Repair services; Mending; Plumbing; Servicing of apparatus; Servicing of equipment; Waste removal (cleaning); Refurbishment; Handyman repair, maintenance and installation services; Maintenance of buildings; Property maintenance; Tailoring (repair); none of the aforementioned services relating to the installation, repair,  maintenance or cleaning of roofs, gutters, gutter guards, gutter mesh or drains’.
   
   

4. In relation to the Logo Mark, the s 58 ground of opposition is established for ‘Installation of roofing; Insulation of roofing; Unblocking of drains; Pipe fitting; Maintaining and repair of roof guttering; Clearing of tree roots from pipes and drains (plumbing services); Resurfacing of roofs; Roof repair; Cleaning of drains; Roof restoration’ and services relating to the installation, repair, maintenance or cleaning of roofs, gutters, gutter guards, gutter mesh or drains.

5. For the Logo Mark, the s 58 ground of opposition is unsuccessful for:

   Building services; Cleaning services; Maintenance and repair of cleaning apparatus; Waste removal (cleaning); Window cleaning; Home repair services; Repair services; House painting; Painting of buildings; Painting of metal surfaces; Painting, interior and exterior; Advisory services relating to the renovation of property; Project preparation relating to building renovation; Renovation of buildings; Renovation of plumbing; Sewer pipe renovation; Proofing of buildings against pest and vermin access; Proofing of land against pest and vermin access; Proofing of premises against pest and vermin access; Proofing of structures against pest and vermin access; Waterproofing of buildings; Installation of roofing; Insulation of roofing; Handyman repair, maintenance and installation services; Unblocking of drains; Mending; Fitting services in relation to buildings; Installation of fittings for buildings; Installation of fixtures and fittings for domestic premises; Pipe-fitting; Hire of ladders; Rental of ladders; Maintaining and repairing of roof guttering; Advisory services relating to building refurbishment; Building refurbishment services; Refurbishment; Diagnostic maintenance services; Site clearance; Clearing of tree roots from pipes and drains (plumbing services); Maintenance of plumbing; Plumbing; Supervision of building repair; Supervision of building work; Tailoring (repair); Resurfacing of roofs; Roof repair; Advisory services relating to building construction materials; Needlework (Repair); Erection of scaffolding; Scaffolding; Scaffolding dismantling; Scaffolding rental; Slating and tiling; Tiling services; Diagnosis of building faults; Advisory services relating to the alteration of buildings; Removal of graffiti; Rental of cleaning equipment; Cleaning of drains; Advisory services for cleaning; Advisory services relating to surfacing projects; Repair, maintenance and installation advisory services; Application of surface coatings; Washing; Extermination of pests; Pest control services, other than for agriculture, aquaculture, horticulture and forestry; Non-agricultural pest and vermin control advisory, information, and inspection services; Resurfacing of facades; Providing information, including online, about building construction, and repair and installation services; Advisory services for maintenance; Building maintenance; Home maintenance services; Maintenance and repair of buildings; Property maintenance; Servicing of apparatus; Repair of fire damage; Servicing of equipment; Dismantling services; Restoration; Restoration of buildings; Roof restoration; Rust removing; Abrasive cleaning of surfaces; Cleaning of building sites; Cleaning of property; Provision of cleaning services; Rental of cleaning apparatus; Sewer pipe cleaning; none of the aforementioned services relating to the installation, repair, maintenance or cleaning of roofs, gutters, gutter guards, gutter mesh or drains’.

6. The services of the Logo Mark for which the s 58 ground of opposition is not established encompass those services for which the s 58 ground is unsuccessful in relation to the Logo Mark.  Accordingly, those services are hereinafter referred to as the ‘Non-conflicting Services’ and I will now consider whether any of the other grounds of opposition are established with respect to these services.

   Section 60

7. Section 60 provides:

   Section 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.

8. To establish a ground of opposition under s 60, first an opponent must establish that at the Relevant Date another trade mark had acquired a reputation in Australia. The word ‘reputation’ means ‘the recognition of the [trade mark] by the public generally’.[17]  Reputation may be inferred from a high sales volume, together with substantial advertising expenditures and other promotions, without direct evidence of consumer appreciation of the trade mark.[18]  The reputation must be established as a matter of fact by the Opponent.[19] 

   [17]McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J)

   [18] Ibid, [86].

   [19]ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

9. In the SGP, the Opponent claims to have a reputation in the Opponent’s Marks for the same or similar goods/service to the Applicant’s Services.

10. Whilst the Opponent has used the Opponent’s Marks for a considerable period of time, that use and advertising appears to have been geographically limited.  No information is provided about the circulation of the Homemaker catalogues or other publications in which the Opponent advertises.  Further, no details are provided about the farm expos or home shows at which the Opponent promotes its business nor visitor traffic to the Opponent’s Website.  The gross profit for 2006-2022 is reasonable but primarily relates to installation services with only modest wholesale and low retail (only) sales of guttering products.  The Opponent has two installers in Queensland, 5 in New South Wales and 1 in Victoria.

11. On my assessment of the Opponent’s evidence, I am not satisfied that the Opponent has a reputation in the Opponent’s Marks such that use of the Trade Marks by the Applicant for the Non-conflicting Services is likely to deceive or cause confusion.

12. The s 60 ground is unsuccessful.

    Section 42

13. Section 42 is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

14. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Marks would be contrary to law under s 42(b).  The onus is on the Opponent to establish that use of the Trade Marks by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20]   The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]

    [20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    [21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

15. The Opponent claims in its SGP that because of the Opponent’s reputation in the Opponent’s Marks, use of the Trade Marks by the Applicant will contravene ss 18 and 29(g) of the Australian Consumer Law (‘ACL’) in Schedule 2 of the Competition and Consumer Act 2010 (Cth) and/or constitute passing off.

16. As noted above, the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60. Consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Marks would be contrary to s 18 of the ACL. Further, where a trade mark does not run afoul of s 18 of the ACL, neither will it breach s 29 of the ACL.[22] 

    [22] A G Professional Hair Care Products Ltd v Geagroup Invest SRL [2014] ATMO 65, [50] (Hearing Officer Wilson).

17. In Re Equity Access Pty Ltd v Westpac Banking Corporation, Justice Hill considered the relationship between the superseded s 52 of the Trade Practices Act (equivalent to s 18 of the ACL) and passing off. His Honour noted that:

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[23]

    [23] [1989] FCA 506, [40] (citations omitted).

18. Hence, I am not satisfied that the Applicant’s use of the Trade Marks for the Non-conflicting Services will constitute passing off.

19. Therefore, the Opponent has failed to establish the ground of opposition under s 42 with respect to the Non-conflicting Services.

    Section 62A

20. Section 62A provides that the registration of a trade mark may be opposed on the ground that the application was made in bad faith. I must determine whether, in all the particular circumstances, the Applicant’s knowledge at the Relevant Date was such that the Applicant’s decision to apply for registration of the Trade Marks for the Non-conflicting Services would be regarded as in bad faith by persons adopting proper standards.[24]

    [24] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) [2012] FCA 81, [24]-[26] (‘Dodds-Streeton J).

21. Justice Bennett noted in DC Comics v Cheqout Pty Ltd that:

    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.[25]

    [25] [2013] FCA 478, [62].

22. The Opponent particularised this ground of opposition in its SGP as follows:

    The Opponent’s mark has been used on its website continuously since 2007.  The Applicant would or should have been aware of the website and of the Opponent’s Trade Marks.  The oppose (sic) application was filed in bad faith, in the foreknowledge, of the Opponent’s use covering the Opponent’s Services, and effort to gain a commercial advantage over the Opponent.

23. The Opponent’s business operates predominantly, if not exclusively, in South East Queensland and Sydney.  Whilst the Applicant should have been aware of the Opponent’s Website, it is possible that the Applicant had not conducted any due diligence on the mark LEAFSHIELD because it was aware that Thea Groom or a company related to her had used the mark in Victoria for many years.  In any event, mere knowledge of the Opponent, negligence, incompetence or a lack of prudence to reasonable and experienced standards does not itself suffice to establish bad faith but rather the concept of bad faith imports conduct that is unscrupulous, underhand or unconscientious.[26]

    [26] Fry (n22), [165]-[166].

24. I am not satisfied that the Opponent filed the Applications for the Non-conflicting Services in bad faith and therefore, the s 62A ground of opposition fails.

    Section 59

25. Section 59 provides:

    Applicant 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.

26. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[27]  The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[28]  If the Opponent makes out a prima facie case, the evidentiary onus shifts to the Applicant to show its intention to use the Trade Mark at the Relevant Date.[29]

    [27] Suyen Corp v Americana International Ltd (‘Suyen’) [2010] FCA 638, [197] (Dodds-Streeton J).

    [28] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).

    [29] Suyen (n 25), [190].

27. The Opponent alleges in its SGP that the Applicant only intended to use the Trade Marks for gutter protection and not for the broader range of services specified in the Application.  There is nothing in the Opponent’s EIS to support this assertion.  Whilst it appears from the Applicant’s evidence that its interest is in the area of gutter protection, a lack of use of the Trade Marks in relation to the Non-conflicting Services does not imply an absence of an intention to use.

28. I am not satisfied based that the Opponent’s evidence establishes a prima facie case that the Applicant lacked the necessary intention to use the Trade Marks at the Relevant Dates for the Non-conflicting Services.  Hence the s 59 ground of opposition is unsuccessful.

    Decision

29. I have found that the Opponent has established a ground of opposition under s 58 in respect of some of the Applicant’s Services.

30. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

    My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[30] 

    [30] [2014] FCA 1304, [232].

31. In circumstances where an opposition has been established in respect of some but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an applicant the opportunity to amend the application to remove goods and services for which a ground of opposition has been established.

32. On 24 May 2024, I provided the Applicant with an opportunity to amend the Applications to limit them to the Non-conflicting Services.  The amendments have now been made and accordingly, trade mark applications 2156179 and 2184171 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.

33. The parties sought their costs in this matter but as both parties have had a degree of success, I decline to award costs.

    Tracey Berger

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    4 June 2024

    ANNEXURE A

    Applicant’s Trade Marks

15.     Number	16.     Trade Mark	17.     Specification
18.     2156179	19.     LEAFSHIELD	Class 37:  Building services; Cleaning services; House cleaning services; Installation of roofing; Roofing services; Installation of fittings for buildings; Installation of fixtures and fittings for domestic premises; Advisory services relating to building construction materials; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Providing information, including online, about building construction, and repair and installation services; Provision of information in relation to building construction; Extermination of pests; Pest control services, other than for agriculture, aquaculture, horticulture and forestry; Proofing of buildings against pest and vermin access; Proofing of land against pest and vermin access; Proofing of premises against pest and vermin access; Proofing of structures against pest and vermin access; Erection of scaffolding; Hire of scaffolding; Scaffolding; Scaffolding dismantling; Hire of ladders; Maintaining and repair of roof guttering; Fitting services in relation to buildings; Diagnosis of building faults; Dismantling services; Roof repair; Diagnostic maintenance services; Waterproofing of buildings; House painting; Painting and decorating; Unblocking of drains; Repair services; Mending; Plumbing; Servicing of apparatus; Servicing of equipment; Waste removal (cleaning); Refurbishment; Handyman repair, maintenance and installation services; Maintenance of buildings; Property maintenance; Tailoring (repair)
20.     2184171	21.	Class 37:  Building services; Roofing services; Cleaning services; Maintenance and repair of cleaning apparatus; Waste removal (cleaning); Window cleaning; Home repair services; Repair services; House painting; Painting of buildings; Painting of metal surfaces; Painting, interior and exterior; Advisory services relating to the renovation of property; Project preparation relating to building renovation; Renovation of buildings; Renovation of plumbing; Sewer pipe renovation; Proofing of buildings against pest and vermin access; Proofing of land against pest and vermin access; Proofing of premises against pest and vermin access; Proofing of structures against pest and vermin access; Waterproofing of buildings; Installation of roofing; Insulation of roofing; Handyman repair, maintenance and installation services; Unblocking of drains; Mending; Fitting services in relation to buildings; Installation of fittings for buildings; Installation of fixtures and fittings for domestic premises; Pipe-fitting; Hire of ladders; Rental of ladders; Maintaining and repair of roof guttering; Advisory services relating to building refurbishment; Building refurbishment services; Refurbishment; Diagnostic maintenance services; Site clearance; Clearing of tree roots from pipes and drains (plumbing services); Maintenance of plumbing; Plumbing; Supervision of building repair; Supervision of building work; Tailoring (repair); Resurfacing of roofs; Roof repair; Advisory services relating to building construction materials; Needlework (Repair); Erection of scaffolding; Scaffolding; Scaffolding dismantling; Scaffolding rental; Slating and tiling; Tiling services; Diagnosis of building faults; Advisory services relating to the alteration of buildings; Removal of graffiti; Rental of cleaning equipment; Cleaning of drains; Advisory services for cleaning; Advisory services relating to surfacing projects; Repair, maintenance and installation advisory services; Application of surface coatings; Washing; Extermination of pests; Pest control services, other than for agriculture, aquaculture, horticulture and forestry; Non-agricultural pest and vermin control advisory, information, and inspection services; Resurfacing of facades; Providing information, including online, about building construction, and repair and installation services; Advisory services for maintenance; Building maintenance; Home maintenance services; Maintenance and repair of buildings; Property maintenance; Servicing of apparatus; Repair of fire damage; Servicing of equipment; Dismantling services; Restoration; Restoration of buildings; Roof restoration; Rust removing; Abrasive cleaning of surfaces; Cleaning of building sites; Cleaning of property; Provision of cleaning services; Rental of cleaning apparatus; Sewer pipe cleaning