MACH Systems Pty Ltd v BlueScope Steel Limited

MACH Systems Pty Ltd (the Applicant) sought to register the trade mark SOLARBOND, which was opposed by BlueScope Steel Limited (the Opponent). The Opponent contended that the Applicant's application was made in bad faith, specifically alleging a violation of confidentiality agreements between the parties.

The central legal issue before the Hearings Officer was whether the Applicant had applied for the trade mark SOLARBOND in bad faith, as defined by section 62A of the *Trade Marks Act 1995* (Cth). This required determining if the Applicant's conduct fell short of acceptable commercial behaviour.

The Hearings Officer considered the evidence, noting that the relevant confidentiality agreement predated the Applicant's use of the term SOLARBOND and did not explicitly mention trade mark use. While acknowledging the Opponent's belief in his origination of the term, the Hearings Officer found no clear evidence that trade mark use was covered by the confidentiality agreement. Applying the principles from *Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)*, which defines bad faith as conduct of an unscrupulous, underhand, or unconscientious character, the Hearings Officer was not persuaded that the Opponent had discharged the onus of proving bad faith. The opposition was therefore unsuccessful.

As the Applicant was the successful party, the Hearings Officer awarded costs against the Opponent in accordance with the *Trade Marks Regulations 1995*.