Luke Butterfield v Joseph Phillips - [2024] ATMO 198

TRADE MARKS ACT 1995

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

Re:Opposition by Luke Butterfield to registration of trade mark application number 2237513 (class 37) – BLUEY’S PLUMBING & GAS FITTING - in the name of Joseph Phillips

Delegate:	Benjamin Goldsworthy
Representation:	Opponent: Self-represented Applicant: Jacqui Pryor of Mark My Words Trademark Services Pty Ltd
Decision:	2024 ATMO 198 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42(b), 44, 58A and 60 – substantially identical trade mark in relation to similar services – s 44(4) applicable – no grounds established – trade mark to proceed to registration

Background

On 22 December 2021 (‘Relevant Date’) Joseph Phillips (‘Applicant’) filed trade mark application 2237513 under the Trade Marks Act 1995 (Cth),[1] details of which are reproduced below:
Priority date: 22 December 2021
Trade mark: BLUEY’S PLUMBING & GAS FITTING (‘Trade Mark’)
Specification: Plumbing; Maintenance of plumbing; Maintaining and repair of drain pipes; Unblocking of drains; Maintenance and repair of gas installations and equipment; Pipe-fitting; Installation of apparatus for sanitation; Kitchen equipment installation; Installation of heating apparatus (‘Applicant’s Services’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
[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 27 March 2023. On 4 April 2023 Luke Butterfield (‘Opponent’) filed a Notice of Intention to Oppose. On 14 April 2023 the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 28 June 2023.
The Opponent filed Evidence in Support (‘EIS’) being a declaration of Luke Butterfield, dated 1 October 2023, with various unnumbered annexures (‘Butterfield-1’).[2]
[2] Note this was treated as having been filed on 4 October 2023 by a delegate of the Registrar under reg 21.4(1)(b).
On 12 December 2023, the Applicant filed Evidence in Answer (‘EIA’) being a declaration of Joseph Phillips, dated 11 December 2023 with Annexures JP01 to JP13 (‘Phillips’) and a declaration of Jacqueline Louise Pryor, Attorney for the Opponent, dated 11 December 2023, with Annexures JLP-1 to JLP-5 (‘Pryor’).
On 28 January 2024 the Opponent filed their Evidence in Reply (‘EIR’), consisting of a declaration of Luke Butterfield (‘Butterfield-2’).
Once the time allowed for filing evidence ended, none of the parties requested to be heard and the Opponent requested a decision without a hearing. I am to decide the matter as a delegate of the Registrar of Trade Marks.

Evidence

EIS

Butterfield-1 consists of a number of statements and assertions about the history of the Opponent’s use of signs which contain the word ‘Bluey’ in relation to various construction, plumbing, rendering and related services. Whilst I have carefully considered every part of the evidence filed in the EIS, I need not summarise every single aspect and have mentioned the most relevant parts of this evidence below.
The Opponent is the registered owner of the following trade marks (‘Opponent’s Trade Marks’):
Trade mark number:           2231329
Priority date:  25 November 2021
Owner:   Luke Butterfield
Trade mark:   Bluey’s (‘2231329’)
Specification:   Classes 42 and 44 (see Schedule 1)
---
Trade mark number:           2133284
Priority date:  4 November 2020
Owner:  Luke Butterfield
Trade Mark:
(‘2133284’)
Specification: Class 37 (see Schedule 2) (‘Opponent’s Services’)
Butterfield-1 and its attachments assert that the Opponent’s Trade Marks were first used in 2004. Butterfield-1 also discusses the experience and working history of Mr Butterfield.
The documents which accompany Butterfield-1 include one which is titled as a declaration of Luke Butterfield, dated 13 August 2023, (‘Butterfield-3’) with Exhibits 1 to 51. Also included is a video of a news segment about a person raising money for charity which appears to be wearing a vest which bears the ‘Bluey’s’ stylised word trade mark. Relevantly, Butterfield-3 also declares turnover figures for the Opponent in the years 2021, 2022 and 2023 for sales occurring in Victoria.[3]
[3] Butterfield-3, 113-114.
The Exhibits to Butterfield-3 include a variety of invoices and receipts which display the word ‘Bluey’s’. Also included are examples of advertising material, such as social media posts and receipts for expenses associated with websites. Some of the material concerns the qualifications of Luke Butterfield.
The EIS also includes information which purports to be about the Applicant. Exhibit 19 to Butterfield-3 shows undated screen captures of a Facebook page of an individual named Joseph Phillips. Exhibit 17 shows the LinkedIn page of the Applicant and is undated. Exhibit 18 consists of undated screen captures of a notice of proposed voluntary deregistration of a company known as Joe Phillips Plumbing & Maintenance Pty Ltd. The Australian Business Number (‘ABN’) status of that company is described as cancelled from 1 October 2015.
Examples of work apparently performed by the Opponent are also shown by way of photographs, screen captures of social media posts, photographs or newspaper articles.
Various declarations of individuals who have used the Opponent’s Services attest to Luke Butterfield trading and/ or using the trade mark ‘Bluey’s’.
Numerous examples of the Opponent’s promotional activities appear in the EIS. These include images of promotional goods which appear at Exhibit 20 and Exhibit 22. Exhibits 24 to 27, 30, 31, 33, 34 36, 40, 43 to 45, 47, 48 and 51 all again concern promotional and sponsorship activities and include examples of promotional goods in relation to the Opponent’s Trade Marks.
Exhibit 37 shows information about, or screen captures of, the website addresses blueysco.com.au, blueys.net, blueys.store and blueys.business.site. These are either undated or dated within 2023, without any relevant services specified. Exhibit 38 consists of emails addressed to Luke Butterfield, dated in 2022, which discuss the potential development of an app of unspecified functionality.
Exhibit 49 consists of text messages apparently between Mr Butterfield and unnamed persons who appear acquainted with Mr Butterfield. Two of these exchanges are dated 28 July 2021 and 19 October 2021. Another is dated 16 February 2020 and includes a message which says, ‘I seen a Blueys rendering ute, thought it was you’.
Exhibit 50 is dated 23 June 2023 and is evidence of apparent enforcement activities concerning the Opponent’s Trade Marks by the Opponent. I need not further summarise this Exhibit.
I otherwise refer to the Exhibits to Butterfield-3 and attachments to Butterfield-1 where relevant throughout these written reasons.

EIA

On 12 August 2014 a business name was registered for ‘blueys Plumbing & Gasfitting’ with the Australian Securities and Investments Commission (‘ASIC’). At Confidential Annexure JP02 to Phillips is an email addressed to Joseph Phillips from a business directory for ‘your business Bluey’s Plumbing & Gasfitting’ for a listing account, dated 21 August 2014. At Annexure JP03 to Phillips is an email dated 12 February 2015 from a graphic artist to Mr Phillips, which attaches a design for a business card which includes the text: ‘BLUEY’S PLUMBING & GASFITTING’, the name Joe Phillips and the ABN of the Applicant.
In early 2015, the Applicant purchased advertising on the website (‘WeSaveYouMoney’). Annexure JP04 is an undated email and an attached direct debit form, signed on 16 February 2015, for this advertising. Another email at Annexure JP05, dated 2 March 2015, from an employee of WeSaveYouMoney to Mr Phillips, requests comments about a design for advertising.
Annexure JP06 is a tax invoice, dated 27 February 2015, for the registration of the domain name (‘Applicant’s Website’), addressed to ‘blueys plumbing & gasfitting’. Annexure JP07 also contains an email and attachment, dated 2 March 2015, concerning the design of an advertisement. This email is from the employee of a business named Weavers Newspapers and the advertisement contains the text ‘BLUEY’S PLUMBING & GASFITTING’, the name Joe Phillips and the ABN of the Applicant.
Annexure JP08 to Phillips consists of a social media post, apparently by Mr Phillips, dated 27 May 2015 and on the Whitehorse Noticeboard, Melbourne Australia. The social media post includes the following text: ‘Bluey’s Plumbing Gasfitting specials all labour, call out & materials included in these complete prices if interested call me…’. Also included in the social media post is an image and text concerning hot water services. Annexure JP08 also contains an undated screen capture of a Facebook page which features the Trade Mark as the title.
Phillips states that the internet archive Wayback Machine indicates that the Applicant’s Website was first indexed as early as March 2016.[4] Annexure JP09 to Phillips consists of undated and dated screen captures of the Applicant’s Website showing use of the Trade Mark. One of such screen captures shows that the domain address for the Applicant’s Website appears to have been active from 2016. However, the earliest and only dated screen capture of the Applicant’s Website showing use of the Trade Mark in relation to various plumbing services is dated 2 March 2020.
[4] Phillips, [17].
Confidential Annexure JP10 consists of invoices and receipts which appear to be for website traffic services or ranking, one appearing to be dated between 3 December 2019 and 17 November 2023. These are all addressed to a business named ‘Bluey’s Plumbing and Gasfitting’. At Annexure JP11 is a screen capture dated 23 November 2023 for a business directory listing for Bluey’s Plumbing and Gasfitting. The listing mentions the business as established in 2013. Similarly, screen captures of the websites of another business directory listing are dated 23 November 2023.
Annexure JP12 is a current company extract from the ASIC regarding a company named ‘JOE PHILLIPS PLUMBING & MAINTENANCE PTY. LTD’. The name ‘Joseph Phillips’ does not appear anywhere on the company extract as an officer or shareholder of the company.
Pryor provides copies of the examination reports for the application to register the Trade Mark and attaches copies from the Australian Trade Marks Register of trade marks which contain the word ‘bluey’. Pryor also provides some historical background behind use of the name ‘bluey’ generally to refer to a person who has red hair.

EIR

Butterfield-2 in summary is a mixture of uncorroborated statements which respond to Pryor and Phillips. There is a mixture of arguments and submissions concerning the grounds of opposition, allegations as to the facts and uncorroborated statements which I need not summarise.

Grounds and Onus

The SGP nominates grounds of opposition under ss 42(b), 44, 58A and 60. The Opponent has the onus of demonstrating one or more of the grounds of opposition, on the balance of probabilities.[5] The assessment of the rights of the parties is as at the Relevant Date.[6]

Discussion

[5] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Section 44

Section 44 relevantly provides:
44 Identical etc. trade marks
…
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
…
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
For its s 44 ground of opposition the Opponent relies on the Opponent’s Trade Marks. The Opponent’s Trade Marks have priority dates which are before the Relevant Date. The Opponent’s Trade Marks are also in the name of a person other than the Applicant.
The closest services for each of the Opponent’s Trade Marks are the Applicant’s Services in 2133284. 2133284 also has a priority date which is earlier than that of the 2231329. If the Opponent does not succeed in respect of 2133284, then they will also not succeed in respect of 2231329, for the ground of opposition under s 44. Therefore, the focus of my discussion has been on 2133284.
Both trade marks contain the word ‘Bluey’. The additional words PLUMBING & GAS FITTING in the Trade Mark are merely descriptive of the Applicant’s Services. There is a total impression of resemblance that emerges on a side by side comparison of the trade marks.[7] The Applicant offers no evidence or argument otherwise and I find that the Trade Mark is substantially identical with 2133284.
[7] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12] (Windeyer J).
The final consideration is whether the Applicant’s Services are ‘similar’ to the services of 2133284. In this regard, s 14 relevantly provides that ‘services are similar to other services… (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services’.
Plainly, all of the Applicant’s Services that are forms of plumbing are either the same as or are notionally included in 2133284’s ‘plumbing and maintenance services’. I also consider that the Applicant’s Services relating broadly to gas fitting would be provided by the same traders as the broad plumbing and handyman services in 2133284. They are directed at similar consumers and they have a similar nature and purpose. I consider that the various handyman services and plumbing services to be of the same description as the Applicant’s ‘maintenance and repair of gas installations and equipment’ and ‘installation of heating apparatus’. Accordingly, I consider the services of 2133284 to be similar to all of the Applicant’s Services.
In conclusion, I find that the requirements of s 44(2) have been established. However, that is not the end of the matter as the Applicant relies on s 44(4) as an answer to 2133284.

Section 44(4) – prior use of the Trade Mark

In order for s 44(4) to be of assistance to the Applicant, they must demonstrate use of the Trade Mark in relation to the Applicant’s Services from before the priority date of 2133284 continuously until the Relevant Date.
In support of the Applicant’s submissions that s 44(4) is applicable, the EIA shows advertising activities from August 2014 to May 2015, displaying the Trade Mark used in relation to the Applicant’s Services as supported by Annexures JP02 to JP05 and JP08. The next potentially documented use of the Trade Mark in the EIA in relation plumbing and gas fitting services in Australia is an invoice addressed to ‘Bluey’s Plumbing and Gasfitting’ dated 3 December 2019, which is apparently for promotional services which occurred from 27 November 2019 to 3 December 2019 using the campaign descriptions, ‘NO JOB TO (sic) BIG, SEWER REPLACEMENT, FIRST PHASE TODAY’, ‘another happy customer today, not a big job today…’ and ‘THIS LOCAL PLUMBER’. It is not clear if the Trade Mark or a substantially similar trade mark was used in these campaigns. However, the social media post, dated 27 May 2015, at Annexure JP08 to Phillips refers to ‘Bluey’s Plumbing and Gasfitting’ in relation to the Applicant’s Services.
A screen capture of the Applicant’s Website, dated 2 March 2020 at Annexure JP09, shows a heading ‘How to get in touch’ under which is the text, ‘[y]ou can contact Bluey’s Plumbing and Gasfitting anytime…’ followed by a phone number in relation to ‘plumbing and gas situations’. Another screen capture of the Applicant’s Website at Annexure JP09, also dated 2 March 2020, contains the following flyer:

I consider at least the evidence dated 2 March 2020 to show use of the Trade Mark in relation to plumbing and gas fitting services. The other evidence corroborates that, on the balance of probabilities, the use of the Trade Mark has also been continuous since 2 March 2020. For example, a customer review in Annexure JP11 to Phillips, dated 8 September 2020 notes, ‘I recently had a blocked pipe that I was unable to fix, so I called Blueys Plumbing and Gasfitting’. Phillips also declares there to have been, ‘revenue and marketing expenditure in relation to the Services promoted under and by reference to the Trade Mark’ for each year including 2019/2020, 2020/2021 and 2021/2022. Phillips also states that the examples of business directory listings at Annexure JP11 ‘appeared in much the same way since being listed…’.[8] The Opponent’s evidence does not challenge the veracity of these statements.
[8] Phillips, [21].
Overall, I am satisfied that the Applicant’s use of the Trade Mark has been continuous from, at the latest, 2 March 2020, which is before the priority date of 2133284, until the Relevant Date. Therefore, s 44(4) is applicable and I must not refuse registration of the Trade Mark because of 2133284.
Accordingly, the ground of opposition under s 44 is not established. I now consider the other grounds of opposition.

Section 58A

The Opponent also relies upon s 58A, which provides
58A Opponent’s earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
…
Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the first‑mentioned trade mark has been continuously used since before the priority date of the other trade mark.
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.

I note that the application to register the Trade Mark was accepted under the provisions of s 44(4) of the Act and 2133284 was particularised in the SGP as being the similar trade mark for the purposes of s 58A(2). Section 44(4) would be applicable for the reasons outlined in paragraphs [37]-[42] of these written reasons. A remaining issue to be determined is whether the Opponent has continuously used a substantially identical or deceptively similar trade mark in relation to the Applicant’s Services since before the use of the Trade Mark by the Applicant.
Smith Bartlet & Co v British Pure Oil Grease & Carbide Co Ltd[9] concerned continuous use in another statutory context, where it was found that the requirement is more than evidence of pure abandonment. Justice Maugham there noted that the word ‘continuous’ requires that there be ‘not an occasional user… but a continuous user’.[10] It was held that three occasions in six years was not continuous. Ultimately this issue will turn on the evidence. Lengthy periods of time in which there is no example of documented use of the Trade Mark in relation to similar services may cause problems for establishing a ground of opposition under s 58A.[11]
[9] (1934) 51 RPC 157 (Maugham J).
[10] Ibid, 163.
[11] For example, Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 [210] (Gleeson J) where it was concluded that the ‘substantial gap in sales of the goods … … between at least 2007 and April 2014 means that there is no “prior continuous” use’; Outsystems Software EM Rede SA v OutSystems Pty Ltd [2022] ATMO 164, [35]-[36] (Hearing Officer K Brown) where there was a relevant gap in use of the trade mark in the evidence between 2002 and 2009. See also, Wizard Automotive Systems Pty Ltd v Smart Repair Australia Pty Ltd [2013] ATMO 33 (Hearing Officer Kirov).
Much of the evidence does not assist the s 58A ground of opposition. Exhibits 10, 17, 19, 20, 22, 24, 29, 33, 34, 37, 40, 44, 47, 48 and 51 to Butterfield-3 all appear to be undated. Exhibits 3 to 5, 11, 12, 14, 15, 25 to 27, 29 to 32, 34 to 37, 39, 43, 44, 45 and 50 all appear to be dated after 2 March 2020. Also, many of the Exhibits are completely vague about the specific services that have been provided under any trade mark, such as Exhibits 13, 16, 38, 41, 42 and 46 and/or do not mention any substantially identical or deceptively similar trade mark, such as Exhibits 13 and 38. Accordingly, none of these Exhibits, including in combination with the other evidence, assist the Opponent in establishing that the Opponent’s use of any trade mark occurred prior to the use relied upon for the purposes of s 44(4).
Butterfield-3 states that the ABN of the Opponent has been active and trading since 2004. Exhibit 1 to Butterfield-3 shows the ABN details from the Australian Business Register for an ABN in the name of Luke Butterfield and mentions the registration of the business name ‘Bluey’s Rendering and Handyman Services’ as occurring since 14 November 2019. Exhibit 21 to Butterfield-3 also shows the registration of a company apparently held by Luke Butterfield which contains the word ‘Bluey’. The issue with this evidence is that I cannot determine the nature of any use of a trade mark by the Opponent since 2004 from this evidence. The registration of a trading name is not itself sufficient to demonstrate use of a trade mark and the nature of the specific services cannot be gleaned from this evidence. I note the distinction between a business name, which serves an administrative function, and use of a trade mark in respect of goods and/or services.[12]
[12] Shahin Enterprises Pty Ltd v Exxonmobile Oil Corporation [2005] FCA 1278, [73] (Lander J).
At Exhibit 7, an invoice dated in 2009 (‘2009 Invoice’), appears to relate to the installation of hot water systems and shows the word ‘Bluey’s’, which I consider to plainly be substantially identical to 2133284. Exhibit 8 corroborates the 2009 Invoice by a declaration, dated 6 June 2023, from the apparent customer of the services referred to in the 2009 Invoice. Specifically, the 2009 Invoice states that services for the installation of a hot water system occurred in March 2009 at an Australian address.[13] The Applicant offers no answer to this evidence and there is no reason for me to doubt it’s accuracy. I accept that the 2009 Invoice demonstrates that services specifically for the install of a hot water system, being at least within the description plumbing services, occurred on a date which is prior to the Relevant Date.
[13] Butterfield-3, Exhibit 8.
Several other declarations suggest that Luke Butterfield has been trading or using the word trade mark ‘Bluey’s’ and appear at Exhibits 6, 9, 12 and 23. However, all of the declarations are vague about the specific dates and/or the nature of any services provided. For example, Exhibit 6 consists of a declaration of Dale Butterfield, the Opponent’s father and book keeper, dated 10 July 2023, which declares that Luke Butterfield has been, ‘using the name Bluey since he was a small child’ and ‘from 2008 he was known as Bluey in business, and continued to trade under that name until this current time…’. Another example is a declaration of Loraine Mary Wing, dated 5 July 2023 (‘Wing’). Wing declares that, ‘I have been a client of Bluey’s since 2010’ and ‘I have hired him on numerous occasions over the years to install new sink and plumbing…and also adjusted shelving… and other services he provides, e.g. Roof leak detection and one of his many subcontractors for stove and hot water…’. A declaration of Bob Sakac, subcontractor to Blueys, dated 10 July 2023, provides general statements including that Mr Sakac ‘has been working alongside Bluey since 2008’. A declaration of William Geer, Accountant, dated 13 July 2023, declares that, ‘Luke Butterfield has been trading as Bluey’s Rendering & Handyman Services since he first become a client in October 2013’. A declaration of Jen Hacking, dated 14 July 2023, states, ‘we have been completing (sic) marketing and design work for Bluey’s for the last 3 years’. Exhibit 12 is a declaration of Bruce Murrel, Sales Manager at Radio Ballarat, dated 14 July 2023, which states that, ‘Bluey has advertised with us on our radio stations for more than two years’.
The problem with the various declarations at Exhibits 6, 9, 12 and 23 is that that they are not precise. It is not clear to me when and for how long, other than perhaps at some time in or after 2009-2010, any services mentioned have been offered by the Opponent. Further, it is often not clear what specific services have been offered by the Opponent. Moreover, the declarations often do not differentiate between the use of the name Bluey as referring to Luke Butterfield as a person, as opposed to as a trade source.
I note that Exhibit 28 contains several photographs of apparent work sites, including sometimes in relation to 2133284. One photograph appears to be dated in 2014. However, it is not clear on its face what specific services have been offered or delivered. What appears is a non-descript work site without any context or clear explanation. Whilst dated in 2014, this cannot assist in demonstrating prior and continuous use of a trade mark.
Exhibit 49 contains text messages dated in February 2020 which may suggest that there have been activities by the Opponent occurring at that time, or before, under a trade mark containing the word ‘Bluey’s’. These messages include an inquiry to Luke Butterfield from an unspecified person about a van that they had seen, asking if it was Luke Butterfield’s van. The problem with this evidence is that it does not clearly indicate any specific trade mark in use by the Opponent or the specific services. Based on the other evidence, such as the social media posts in June 2020 at Exhibit 28, this potentially could have only referred to rendering services. Examining the nature, use and trade channels, I am not satisfied that rendering services are similar to those of plumbing or gas fitting. Accordingly, even if these text messages are dated prior to 2 March 2020, they do not assist the Opponent in establishing prior use of a trade mark in relation to similar services by the Opponent. Regardless, because there are no specific details about the relevant trade mark and any relevant services, I am not satisfied that this evidence establishes use of a trade mark prior to 2 March 2020.
I acknowledge that the evidence appears to show that use of the trade mark ‘Bluey’s’ likely occurred in 2009 in relation to services of hot water system installation. However, the overall problem with the Opponent’s evidence is that the earliest dated use of the Opponent’s Trade Marks by the Opponent in relation to plumbing services that clearly dates after the 2009 Invoice and services mentioned in Wing, occurs after the prior dated use by the Applicant, on 2 March 2020. There is an evidentiary gap of about 10 years between the 2009 Invoice and any other documented use of a substantially identical trade mark in relation to similar services, which I cannot ignore. It is precisely within that gap that the Applicant’s use of the Trade Mark has occurred. In these circumstances, I cannot be satisfied that the Applicant has continuously used the Opponent’s Mark in relation to plumbing services, or similar services, as required by s 58A(2)(b) of the Act.
Accordingly, I am not satisfied that the ground of opposition under s 58A has been established.

Section 60

The Opponent also relies on 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.
A relevant ‘reputation’ for the purposes of s 60 cannot simply be assumed.[14] It is the Opponent who must establish that a reputation exists as a matter of fact.[15] The word ‘reputation’ here means ‘the recognition of the [trade mark] by the public generally’.[16] The Opponent may demonstrate such a reputation by a variety of means, including quantum of sales or advertising and promotional activities.[17] Advertisements or other appearances of the other trade mark on television, radio or in magazines and newspapers may also be relevant. The required reputation is often inferred from a high volume of sales, together with substantial advertising expenditures and other promotions.[18] Direct evidence of consumer appreciation of a mark, while often harder to produce, is another avenue which can assist in demonstrating that a reputation exists.[19]
[14] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
[15] Ibid. See also, Sara Lee Corp v Bali Blue Pty Ltd [2003] ATMO 81 (Hearing Officer Skivington).
[16] McCormick & Co Inc v McCormick [2000] FCA 1335 (‘McCormick’), [127] (Kenny J).
[17] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
[18] McCormick (n 16) [80] (Kenny J).
[19] Ibid.
The SGP most relevantly states that the Opponent relies on an alleged reputation in the Opponent’s Trade Marks for the s 60 ground of opposition. The various evidence of the Opponent is mostly not clear about what specific works were undertaken, are undated or dated after the Relevant Date. Turnover figures for the years 2020 and 2021 have been provided which I consider to be relatively low. The turnover figures also appear to refer to unspecified goods, in addition to unspecified services. The advertising activities and appearances in media as shown by the evidence are not extensive. I would not consider these be of such an impact that I would find there is recognition of the public generally. Whilst Exhibit 49 to Butterfield-3 contains what appears to statements about unknown persons driving a vehicle which bears the word ‘Bluey’s’, the specific details of these circumstances are not clear and the images of the vehicles referred to in the text messages are not available for my review. I am unable to draw conclusions such that this evidence would assist the Opponent in establishing a reputation. Overall, the low volume of sales, overall paucity of relevantly dated evidence and paucity of evidence specific for the services means the evidence does not elucidate a relevant reputation for any other trade mark. Since no reputation has been established, it is not possible to consider the test in s 60(b).
Accordingly, I am not satisfied that the ground of opposition under s 60 has been established.

Section 42(b)

Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[20]
[20] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The SGP identifies the Competition and Consumer Act 2010 (Cth) (‘CCA’), without further specification, as a law alleged to be contravened. The SGP also particularises that use of the Trade Mark would constitute passing off. It is not clear that I should even consider the issue of ss 18 and 29 of the ACL, or another provision of the CCA since none of these were specifically and fairly identified in the SGP as the basis for the ground of opposition under s 42(b).
The Australian Consumer Law (‘ACL’) forms Schedule 2 of the CCA. The ACL includes ss 18 and 29. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading.
As already indicated in respect of s 60, I am not satisfied that there is a reputation in another trade mark. Therefore, the use of the Trade Mark for the Applicant’s Services would not contravene the law of passing off. I observe that it would also likely follow that on the stricter test posited by the ACL, compared to s 60, I am not satisfied that use of the Trade Mark is likely to mislead or deceive, or amount to a false or misleading impression under ss 18 and 29 of the ACL.
The SGP also mentions the Copyright Act 1968 (Cth) (‘CA’). I have similar concerns about the way this is pleaded in the SGP. It is difficult to draw any conclusions about this basis for a ground of opposition s 42(b) as little further details are provided. However, I note that the EIR refers in a general way to copyright infringement occurring by the Applicant’s use of the word ‘BLUEY’S’ in a different font and rendered in the colour blue.[21] I make the following observations.
[21] For example, EIR, 19-20.
The correct approach in deciding a matter concerning copyright infringement under the CA would be to first identify a work in which copyright subsists.[22] A prerequisite to infringement under the CA is the subsistence of copyright in, for example, an original literary or artistic work. Additional elements to demonstrate copyright infringement would also require that there be a reproduction of a substantial part of the original work.[23] This requires objective similarity with and copying of the substantial part of the original work.[24]
[22] Copyright Act 1968 (Cth) (‘CA’) ss 32 and 36.
[23] CA ss 36 and 14.
[24] SW Hart & Co Pty Ltd v Edwards Hot Water Systems [1985] HCA 59, [4] (Gibbs CJ).
It is not at all clear from the SGP or evidence in what subject matter copyright is claimed to subsist, though the Opponent might be alleging that copyright subsists in the word ‘Bluey’s’ as appearing in the Opponent’s Trade Marks or that the Opponent’s Trade Marks or any elements within the trade marks should be considered artistic or literary works. If so, the Opponent does not provide any authority or submissions supporting the proposition that a single word, as appearing in the Opponent’s Trade Marks, qualifies as an original literary or artistic work under theCA. I note that the authorities would suggest otherwise.[25] Regardless, I am not satisfied that, for example, the use of the Trade Mark would result in a reproduction of a substantial part of any original work such that copyright would be infringed.
[25] For example, concerning copyright in a single word or small number of words as literary works: State of Victoria v Pacific Technologies (Australia) Pty Ltd (ACN 065 199 439) (No 2) [2009] FCA 737 (Emmett J); Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd [1940] AC 112; [1939] 4 All ER 192 (Wright LJ); Exxon Corp v Exxon Insurance Consultants International Ltd [1982] RPC 69 (Lord Oliver). See also, Navitaire Inc v Easyjet Airline Co and Bulletproof Technologies Inc [2006] RPC 3, [80] (Pumphrey J). Concerning stylised collocations of words as artistic works see, Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197 (Lindgren, Goldberg and Bennett JJ). See also, Pinnacle Strategic Holdings Pty Ltd v Trustd Figures Pty Ltd [2023] ATMO 200, [21]-[29] (Hearing Officer Wilson).
The Opponent has not established that the use of the Trade Mark would be contrary to law. Accordingly, the ground of opposition under s 42(b) has not been established.

Decision and costs

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.
Note: For limitations see section 6.
The Opponent has not established any ground of opposition. Accordingly, trade mark 2237513 may proceed to registration one month from the date of this decision.
If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.
The Applicant has requested costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Opponent under s 221 in the amounts according to Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 October 2024

Schedule 1

Class 42: Advisory services relating to architecture; Advisory services relating to building design; Advisory services relating to construction planning; Advisory services relating to industrial engineering; Advisory services relating to interior design; Advisory services relating to the planning of premises; Architectural services; Architectural services relating to land development; Bathroom design services; Building design services; Cartography services; Civil engineering design services; Civil engineering drawing services; Consultancy services in the field of carbon offsetting; Design services for architecture; Design services relating to civil engineering; Design services relating to interior decoration; Electrical engineering services (design); Engineering services relating to architecture; Graphic design services; Graphic art designing services; Interior design services; Local planning authority services; Location of utility lines (mapping services); Locksmithing services being the design of locks and locking systems; Logo design services (graphic design); Mapping services; Mechanical engineering services (design); Providing information relating to the location of utility lines (mapping services); Retail design services; Shopfitting design services; Structural engineering services (design); Technical drawing services; Town planning advisory services; Town planning consultancy services.

Class 44: Clearing of tree roots (tree removal services); Tree removal services; Pest control services for agriculture, aquaculture, horticulture and forestry; Tree surgeons' services; Tree nursery services

Schedule 2

Class 37: Application of rendering; Advisory services relating to property development building and construction services; Building and construction of real estate subdivisions and developments; Building and construction services; Development of property (building and construction services); Housing development (building and construction services); Property development (building and construction services); Real estate development (building and construction services); Clearing of tree roots from pipes and drains (plumbing services); Maintenance of plumbing; Plumbing; Plumbing and glazing services; Renovation of plumbing; Rental of plumbing apparatus; Handyman repair, maintenance and installation services; Services of electricians; House painting; Painting and decorating; Painting and decorating of buildings; Painting and interior decorating services; Painting of buildings; Painting of furniture; Painting of metal surfaces; Painting of signs; Painting of vehicles; Painting or repair of signs; Painting, interior and exterior; Sign painting services; Spray painting; Spray painting automobiles; Advisory services relating to the renovation of property; Furniture renovation; Renovation of buildings; Renovation of furniture; Renovation of kitchens; Sewer pipe renovation; Furniture restoration; Restoration; Restoration of buildings; Restoration of furniture; Restoration of works of art; Roof restoration; Concrete pumping services; Repair of concrete; Bricklaying; Masonry; Masonry services; Plastering; Abrasive cleaning of surfaces; Building cleaning; Car cleaning services; Carpet cleaning; Ceiling cleaning services; Cleaning and servicing of portable toilets; Cleaning consultancy and advisory services; Cleaning of building exteriors; Cleaning of building interiors; Cleaning of building sites; Cleaning of buildings (exterior surface); Cleaning of buildings (interior); Cleaning of commercial premises; Cleaning of domestic premises; Cleaning of fabrics; Cleaning of factories; Cleaning of floor coverings; Cleaning of floor surfaces; Cleaning of footwear; Cleaning of furnishings; Cleaning of furniture; Cleaning of hospitals; Cleaning of hotels; Cleaning of industrial premises; Cleaning of motor vehicles; Cleaning of offices; Cleaning of property; Cleaning of public buildings; Cleaning of schools; Cleaning of shops; Cleaning of structures; Cleaning of upholstery; Cleaning of vehicles; Cleaning of wall surfaces; Cleaning services; Cleaning services for decluttering homes; Cleaning services for decluttering offices; Domestic cleaning; Domestic cleaning services; Environmental remediation services, namely, waste disposal [cleaning services]; House cleaning services; Industrial cleaning services; Janitorial cleaning services; Maintenance and repair of cleaning apparatus; Office cleaning services; Polishing (cleaning) of floors; Sanitation (cleaning services); Vehicle cleaning; Waste removal (cleaning); Window cleaning; housekeeping services (cleaning services)