Licensing IP International S.a.r.l v Waterpro Pty Ltd

Licensing IP International S.a.r.l (the Opponent) opposed the registration of a figurative trade mark application for "LAWN HUB" (application number 2121214 in class 1) by Waterpro Pty Ltd (the Applicant). The Opponent alleged that the Applicant's trade mark application was filed in bad faith, arguing that the Applicant was aware of the Opponent's existing trade marks and reputation, and that the Applicant's use of similar colour combinations in its logo, website, and promotional materials was intended to leverage this reputation. The Applicant countered that there was no connection between its proposed goods and services and the Opponent's services, that the colours used were not uncommon, and that its trade mark application did not claim colour. The Applicant also noted it was the registered owner of the plain word mark "LAWNHUB" in class 1 and had used it without complaint prior to filing the application.

The primary legal issue before the Hearing Officer was whether the Applicant's trade mark application was made in bad faith, as defined by section 62A of the relevant Act. This required an assessment of the Applicant's intent and conduct in adopting and seeking to register the trade mark, considering whether it was aware of the Opponent's rights and sought to take unfair advantage of them. The Hearing Officer also considered the relevance of the Opponent's reputation in its trade marks as context for the Applicant's decision, but noted that mere awareness or similarity did not automatically equate to bad faith.

The Hearing Officer applied the principle that bad faith requires conduct that is unscrupulous, underhand, or unconscientious, rather than mere negligence or incompetence. While acknowledging the Opponent's established reputation, the Hearing Officer found that the evidence did not establish that the Applicant's decision to adopt and register the trade mark was motivated by an intention to take advantage of that reputation. The Applicant's stated purpose and activities clearly indicated an intention to operate a business focused on lawn care and gardening products. Consequently, the Hearing Officer was not satisfied on the balance of probabilities that the application was made in bad faith.

As the Opponent had not established any ground of opposition, the Hearing Officer decided that trade mark application number 2121214 could proceed to registration one month from the date of the decision. The Hearing Officer also awarded costs against the Opponent, as is usual when a party does not succeed in its opposition.