Main Road Real Estate Pty Ltd v Yught Pty Ltd

[2024] ATMO 199

TRADE MARKS ACT 1995

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

Re:Opposition by Main Road Real Estate Pty Ltd to registration of trade mark application 2280044 (9, 16, 35, 38, 40, 41, 42) – Mainroad Marketing – in the name of Yught Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Written submissions by YIP Legal Pty Ltd

Applicant: Written submissions by Griffith Hack

Decision:

2024 ATMO 199

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Main Road Real Estate Pty Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Yught Pty Ltd (‘Applicant’): 

Application Number:	2280044
Filing Date[1]:	29 June 2022
Goods and Services:	Class 9: Motion picture films (recorded); Motion picture films for television use; Motion picture films for theatrical use; Motion pictures; Pre-recorded motion picture videos; Pre-recorded motion picture films Class 16: Photo books; Photo albums; Picture books; Paintings (pictures) framed or unframed; Picture cards made of paper; Picture cards made of plastics; Picture cards; Pictures; Pictures framed or unframed; Reports on real estate; Graphic prints; Graphics (printed matter); Graphic designs; Computer aided design generated drawings; Computer aided design generated plans; Drawings generated by computer aided design; Individually designed printed brochures; Portraits Class 35: Administration relating to marketing; Advice relating to marketing management; Arranging and conducting promotional and marketing events; Business advice relating to marketing; Business consultancy services relating to marketing; Collection of information relating to market analysis; Collection of information relating to market research; Collection of market research information; Conducting of market research; Conducting of marketing studies; Consultancy relating to marketing; Consumer market information services; Consumer profiling for commercial or marketing purposes; Demographic survey services for marketing purposes; Development of marketing plans; Direct marketing; Direct market advertising; Influencer marketing; Interpretation of market research data; Market analysis reporting services; Market analysis services; Market assessment consultancy; Market assessment services; Market campaigns; Market reporting consultancy; Market reporting services; Market research; Market research data collection services; Market research data retrieval services; Market research for advertising; Market research studies; Market studies; Market survey analysis; Market surveys; Marketing; Marketing advisory services; Marketing agency services; Marketing analysis; Marketing and sales channel management; Marketing assistance; Marketing consultancy; Marketing forecasting; Marketing information; Marketing management advice; Marketing research; Planning of marketing strategies; Planning services for marketing studies; Preparation of marketing plans; Marketing studies; Preparation of reports for marketing; Product marketing; Production of sound recordings for marketing purposes; Promotional marketing; Provision of advice relating to marketing; Provision of information relating to marketing; Research services relating to marketing; Search engine optimisation services (marketing services); Social media marketing; Sponsorship (promotion and marketing services); Targeted marketing; Telephone marketing services; Compiling real estate brokerage listings; Organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; Production of advertising material; Production of advertising films; Production of radio advertisements; Production of radio television and cinema advertisements; Production of sound recordings for advertising purposes; Production of visual advertising matter; Production of video recordings for marketing purposes; Production of video recordings for advertising purposes; Production of video recordings for publicity purposes Class 38: Electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums Class 40: Photographic retouching; Electronic recording of photographic images; Photographic image processing Class 41: Distribution of motion picture films (rental services); Motion picture production; Motion picture studio services; Producing of motion pictures, plays and videos; Production of motion pictures; Providing motion picture facilities; Production of audio and/or video recordings, other than advertising; Production of audio recordings, other than advertising; Production of films, other than advertising films; Production of sound recordings, other than advertising; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Digital imaging services (editing of images); Photographic imaging services by drone; Video imaging services by drone Class 42: Advisory services relating to interior design; Commercial interior design; Design of building interiors; Design of interior decor; Design of interior decoration; Commercial and graphic art designing; Graphic art design; Graphic art designing services; Graphic arts design; Graphic design of corporate branding; Graphic design of logos; Trade mark design (graphic design); Logo design services (graphic design); Graphic design services; Graphic design of trade marks; Graphic design of promotional matter; Graphic design of promotional materials; Business card design; Commercial design services; Creating and designing web pages for others; Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Creating and designing website based indexes of information for others using information technology; Creating and designing website-based indexes of information for others (information technology services); Design consultancy; Design of furniture; Design of furnishings; Design of packaging; Design of restaurants; Furniture design; Furnishing design services; House design; Interior design; Interior design services; Interior decorating design; Interior decor design; Layout design of books and magazines; Logo design services; Shopfitting design services; Styling (industrial design); Website design; Website design consultancy; Visual design (‘Applicant’s Goods and Services’) [2]
Trade Mark:	Mainroad Marketing	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

[2] The Applicant initially sought to register the Trade Mark for additional services, including real estate services in class 36, but amended the application to remove those additional services prior to the hearing.

2. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

3. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (subsequently amended, the amended version being known as the ‘SGP’ for the purposes of this decision) on 28 February 2023.  The SGP raised grounds of opposition under ss 42(b), 58, 59, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 5 May 2023. 

Evidence

1. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Ray Mirza, Founder and director of the Opponent (‘Ray declaration’)	25 July 2023	RM-1 to RM-10
Evidence in answer
Long Yin Hobirch, director of the Applicant (‘Hobirch declaration’)	3 November 2023
Evidence in reply
Dhania Mirza, Founder and director of CX and strategy for the Opponent (‘Dhania declaration’)	18 December 2023	DM-1 and Confidential DM-2

5. On 11 January 2024 the Applicant requested a hearing by written submissions.  The matter was set down for a hearing by written submissions on 18 July 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 13 June 2024 which contained a schedule for the provision of written submissions to be filed prior to the hearing.  The Opponent filed written submissions on 4 July 2024 (‘Opponent’s Submissions’).  The Opponent’s Submissions indicated that the Opponent no longer pressed the s 59 ground of opposition and I do not need to consider this ground further.  The Applicant filed written submissions on 11 July 2024 (‘Applicant’s Submissions’). 

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of   the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is an Australian company, established in 2020, that trades under the name MAIN ROAD REAL ESTATE (‘Opponent’s Trade Mark’) and a related logo.  

3. The relevant claims/statements in the Ray and Dhania declarations can be summarised as follows:

   ·     The Opponent has been providing real estate agency services in and around the western and northern region of Melbourne under the Opponent’s Trade Mark since 2020.  It promotes its services from its website, social media pages and promotional materials.  Between 1 February 2020 and 31 December 2022, the Opponent listed 282 properties for sale. 

   ·     The Applicant’s business maintains a website where it offers real estate marketing solutions and promotes its services relating to marketing and real estate.  The Applicant’s office is only 45 kms away from the Opponent, and due to the common practice of real estate agencies engaging third party marketing agencies to assist in the preparation of marketing campaigns for property, confusion between the two entities is likely.  Furthermore, many of the Applicant’s Goods and Services are those commonly offered by real estate agencies, such as the Opponent.  

   9. The annexures to the Ray and Dhania declarations display various marketing material that use the Opponent’s Trade Mark, in various formats and also online reviews of the Opponent.  The Opponent also provides confidential financial figures, which support the overall impression I have of the Opponent in its evidence, namely that it operates a small real estate agency in outer suburban Melbourne (Essendon) which at the relevant date had been trading for just under 2.5 years.

   The Applicant

4. The Applicant is an Australian company, established in 2018.  

5. The relevant claims/statements in the Hobirch declaration can be summarised as follows:

   ·     The Applicant first conceived of the Trade Mark on 14 October 2020 and registered the domain name mainroad.com.au on 15 October 2020 and the business name Mainroad Marketing on 16 December 2020.  It did this after confirming that there were no conflicts (including checking the ASIC[AM1]  registry).  The Applicant adopted the Trade Mark because its work is regularly displayed on billboards on busy (e.g. main) roads.  The Applicant checked the Register of Trade Marks and found no trade marks corresponding to the Trade Mark at the time of its application.  The Applicant was unaware of the existence of the Opponent and its business prior to applying to register the Trade Mark.

   ·     The Applicant provides business to business services, being a suite of content creation and marketing services for real estate agencies and agents, including photography, floorplans, videography, copyrighting and other types of content creation. The Applicant also provides advisory services to real estate agencies and other similar services, again targeted at real estate agencies and agents rather than the public.  Due to the different client base, there is little likelihood of confusion; in particular the Applicant’s customer base consists of sophisticated businesses rather than the general public. 

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 59, 60 and 62A but does not press the s 59 ground.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

   13.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[5]

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

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 58 – Applicant not owner of trade mark

   14.     Section 58 is reproduced below:

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   15.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J)..

   · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

   [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

   16.     The ground based on s 58 was particularised in the SGP as follows:

   The Opponent has used the substantially identical trade mark MAIN ROAD REAL ESTATE since 14 January 2020 in relation to the promotion and provision of its real estate agency services, which are identical to the real estate agency services claimed by the Applicant in class 36. The Applicant only registered its business name Mainroad Marketing on 16 December 2020, almost a year after the commencement of the Opponent's business. Accordingly, the Opponent was the first user of the trade mark MAIN ROAD REAL ESTATE in relation to real estate agency services in Australia, and therefore the true owner of the Applicant's trade mark.

   17.     In respect of the second factor, the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[9] stated as follows:

   The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[10].

   18.     The s 58 ground of opposition particularised by the SGP is limited to the real estate agency services under class 36 that the Applicant (at the time) sought to register the Trade Mark for.  The Applicant has deleted the class 36 real estate agency services from its application  to register the Trade Mark and as such the second factor cannot be established with respect to the ground as particularised and hence the s 58 ground is moot. 

   19.     The Opponent’s Submissions submit that certain marketing services that are part of the Applicant’s Goods and Services are the same kind of thing as the Opponent’s real estate agency services.  I do not accept that submission as it goes beyond the ground as particularised (and I note that the Opponent has had the opportunity (and indeed has taken the opportunity) to amend the SGP and chose not to in respect of the s 58 ground.   In any event I also accept the Applicant’s Submissions that the Applicant’s Goods and Services, which include marketing services that relate to real estate, are not the same kind of thing as real estate services as one is a bundle of services provided to a homeowner seeking to sell or rent a house and the other is an input provided to a real estate agency seeking to provide real estate services; they are services provided for a different purpose to a different customer base.  

   20.     As the Opponent has failed to establish the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 60

   [9] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14] (Hearing Officer Worth).

   [10] Colorado Group Limited v Strandbags Group Pty Ltd (‘Colorado’) [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

7. Section 60 is reproduced below:

   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, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

9. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[11]

   [11] [2023] FCA 487, [20]-[21] (Kennett J)

1. In McCormick & Co Inc v McCormick[12], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[13]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]

   [12] [2000] FCA 1335.

   [13] Ibid, [81].

   [14] (1992) 33 FCR 302, 343.

2. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[15]

   [15] (1999) 47 IPR 423, 436.

3. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

   [16] [2000] FCA 1587.

   [17] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

4. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The trade mark/s have been used before the priority date of the trade mark being opposed The Opponent has been operating business as a real estate agency under the name MAIN ROAD REAL ESTATE since its incorporation on 14 January 2020. Similarly, it has used the MAIN ROAD REAL ESTATE logo attached since that time to promote its real estate agency business. The Opponent provides real estate agency services in and around the suburb of Essendon, Victoria and Melbourne's Western suburbs and is promoted through its website as well as its social media pages, including Facebook and Instagram. The Opponent currently has 6 active real estate agents and has acted as agent in multiple property sales across the Western suburbs of Melbourne as well as being highly rated on realestate.com.au and on its Google My Business page. Since January 2020, the Opponent has developed a significant reputation in connection with the MAIN ROAD REAL ESTATE name and logo, and use of the opposed mark would be likely to result in confusion to consumers.

5. The Opponent had operated a small, single-office, real estate agency for approximately 2.5 years prior to the relevant date.  The turnover, sales figures, and number of employees and customer reviews is reflective of that fact.  While the Opponent has received some positive reviews from its customers the evidence before me is in no way sufficient to establish that, at the relevant date, its MAIN ROAD REAL ESTATE mark had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market (real estate agency services).  As the Opponent has not satisfied the requirements under s 60(a) I do not need to consider whether the use of the Trade Mark would be likely to deceive or cause confusion.  I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

6. 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.

7. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[18]  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’.[19]

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

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

8. The Opponent has particularised the ground of opposition in the SGP as follows: 

   Competition and Consumer Act 2010; Tort of passing off

9. I note that the Opponent has not particularised what grounds of the Competition and Consumer Act would be breached by the use of the Trade Mark, though the Opponent’s Submissions refer to ss 18 and 29 of the Australian Consumer Law (‘ACL’). Nor has it particularised why the Applicant’s conduct would breach those provisions. Noting that the Applicant has not objected to this, I will consider the Opponent’s Submissions on this basis and assume that it relies on a reputation in similar marks as particularised under s 60. As previously stated 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,[20] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [20] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

10. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[21] where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[22] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered 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]

    [21] [2014] ATMO 65, [50] (Hearing Officer Wilson).

    [22] [2003] FCA 104, [107] (Beaumont J).

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

11. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b[AM2] ).

    Section 62A

12. Section 62A is reproduced below:

    62A Application made in bad faith

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

13. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

14. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[24]

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[25]

    [24] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [25] [2012] FCA 81, [147].

15. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[26]

    [26] Ibid [165]-[166].

16. The Opponent has particularised this ground of opposition in the SGP as follows:

    Reasonable searches and enquiries would have alerted the Applicant to the registration of the Opponent's company name and use of its website at the time that the Applicant applied for registration of its business name Mainroad Marketing. Accordingly, the Applicant was, or should have reasonably been, aware of the use of the trade mark MAIN ROAD REAL ESTATE by the Opponent at the time of selecting its business name and accordingly refrained from choosing this name in respect of the operation of its business.

17. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[27]  Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark containing the word ‘mainroad’ in respect of the Applicant’s Goods and Services, was a decision made to take advantage of the reputation of the Opponent’s Trade Mark (which I have already found was insufficient for the purposes of s 60(a)).  The Applicant conceived the Trade Mark approximately 9 months after the Opponent commenced use.  It has provided an explanation for its conception of the Trade Mark, provided sworn evidence that it was unaware of the Opponent at the relevant date and that it conducted searches of the ASIC Register and the Register of Trade Marks prior to the relevant date.  Furthermore, the Opponent provides no evidence about the Applicant that would suggest that the Applicant was aware of the Opponent at the relevant date other than suggesting that the Applicant should have visited the Opponent’s website and ceased any use of the Trade Mark, notwithstanding that the parties are not direct competitors.  In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [27] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    Decision and Costs

18. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2280044 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

19. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    15 October 2024

    
    

[AM1]Better tell the reader what ASIC stands for - maybe as a footnote

[AM2]what about passing off - which is in the Opponent’s subs