Mark Leishman v Bramco International Pty Ltd

[2025] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Mark Leishman and Gil Leishman to registration of trade mark application number 2115845 (classes 9 and 37) - BRAMCO - in the name of Bramco International PTY LTD

Delegate:

Sheona Robertson

Representation:

Opponent: Self-represented

Applicant: Baxter Patent and Trade Mark Attorneys

Decision:

2025 ATMO 1

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds nominated under ss 43, 58 and 60 – s 58 ground established – registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Mark and Gil Leishman (‘Opponents’) to registration of the trade mark which is the subject of the application for registration detailed below (‘Application’) in the name of Bramco International PTY LTD (‘Applicant’).

Trade Mark:	BRAMCO (‘Trade Mark’)
Number:	2115845
Filing Date:	30 August 2020
Goods:	Class 9: Electrical and electronic equipment including; relays, switches, voltage and current regulators, controllers, protection relays; communication systems including two and three wire communication systems, generators, alternators, ammeters, amplifiers, computers, analogue to digital converters, control systems, calibrating equipment, capacitors and filters, transformers, current amplifiers, electric motors and machines, computers, diodes, diode switches, transducers, ignition coils, multipliers, electrodynamometer instruments, transistors, relays for protection of underground mining equipment, electrical equipment for down loading and receiving operational parameters of plant and equipment, equipment for data transmission, acquisition, control and display, analysers, adapters, alarms, barriers, batteries, battery chargers, cable counters, couplers, earthing equipment and electrical equipment enclosures therefor, fibre optic equipment, flameproof equipment, hazardous area equipment, instruments, micro chips, microprocessors, neutral earthing resistors, power supplies, paging systems, radio communications, resistors, starters, telephones and systems, timers, vacuum switchgear, variable speed drives, silicon controlled rectifier starters, thyristor switching and control devices, wire control relays, monitoring devices, substations, circuit breakers, power factor correction equipment, load and level switches, pullkeys
Services:	Class 37: Installation, maintenance and repair of electrical and electronic products, apparatus and equipment, including equipment and apparatus for data acquisition, transmission control and display, relays, switches, voltage and current regulators, controllers, protection relays, communication systems including two and three wire communication systems, generators, alternators, ammeters, amplifiers, computers, analogue to digital converters, control systems, calibrating equipment, capacitors and filters, transformers, current amplifiers, electric motors and machines, computers, diodes, diode switches, transducers, ignition coils, multipliers, electrodynamometer instruments, transistors, relays for protection of underground mining equipment, electrical equipment for down loading and receiving operational parameters of plant and equipment, equipment for data transmission, acquisition, control and display, analysers, adapters, alarms, barriers, batteries, battery chargers, cable counters, couplers, earthing equipment and electrical equipment enclosures therefor, fibre optic equipment, flameproof equipment, hazardous area equipment, instruments, micro chips, microprocessors, neutral earthing resistors, power supplies, paging systems, radio communications, resistors, starters, telephones and systems, timers, vacuum switchgear, variable speed drives, silicon controlled rectifier starters, thyristor switching and control devices, wire control relays, monitoring devices, substations, circuit breakers, power factor correction equipment, load and level switches, pullkeys, repair of cables; and consultancy services relating to all of the foregoing; information technology services being the installation of computer hardware

1. A reference to ‘Applicant’s Goods’ or ‘Applicant’s Services’ in this decision is a reference to the goods in class 9 and services in class 37 listed above.

2. The Application was examined as required by s 33 of the Act and was advertised as accepted for possible registration on 15 March 2022.

3. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 12 May 2022, followed by a Statement of Grounds and Particulars (‘SGP’), later rectified, on 14 June 2022. The Applicant filed a Notice of Intention to Defend on 15 August 2022.

4. In support of their opposition the Opponents filed as evidence in support a declaration made on 17 November 2024 by Mark Leishman, one of the Opponents, together with six exhibits (‘Leishman 1’).

5. The Applicant filed as evidence in answer a declaration made on 15 March 2023 by Paul Ekes, Director of the Applicant, and Schedule A and exhibits A to J (‘Ekes’).

6. The Opponents filed as evidence in reply a declaration made on 26 November 2023 by Mark Leishman with exhibits (‘Leishman 2’).

7. Once the time allowed for filing evidence has ended the parties were given an opportunity to request a hearing. The Applicant requested an oral hearing on 20 December 2023. The Applicant filed written submissions on 9 October 2024 (‘Applicant’s Submissions’). The Opponent did not file written submissions.

8. The matter was scheduled to be heard by video conference on 16 October 2024. Neither the Applicant nor the Opponents attended the hearing.

9. As a delegate of the Registrar of Trade Marks, I have decided this matter on the basis of the SGP, the evidence filed and the Applicant’s Submissions.

   Grounds of opposition, onus and standard of proof

10. The rectified SGP nominated grounds of opposition under ss 43, 58 and 60 of the Act.

11. The Opponents bear the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard on the balance of probabilities.[2]

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

    [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

    and Edelman JJ).

12. The date at which the rights of the parties are to be determined is 30 August 2020 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.

    The Evidence

13. Though there are many statements in the evidence which are unclear or lacking in sufficient detail, I have attempted to summarise the evidence provided as follows.

    The Opponents

14. The Opponents trade in advanced mining control products. The name ‘Bramco’ was first used in 1945. ‘Bramco’ stems from the original company name ‘Balcombe Radio and Manufacturing Company’. The Opponents claim use of the Trade Mark since 1984, when Rynand Pty Ltd (‘Rynand’), a company controlled by Gil Leishman (one of the Opponents) and unspecified members of his family, (together, ‘the Leishmans’), acquired the Bramco business.

15. Since that time, the Leishmans have continued development efforts in relation to mining focused technologies, including:

    ·individual electronic control relays (offered under several names including ‘Bramco IMI’ and subsequently the Bramco ‘i-Series’);

    ·combined motor control and protection systems (‘Bramco CPMI’ range);

    ·conveyor control, monitoring and protection packages for conveyor systems (‘Bramco ICMS’);

    ·micro-processor controlled individual relays (‘Bramco ELF’, ‘Bramco SCOLm’);

    ·emergency safety pullkeys (‘Bramco BK400’); and

    ·temperature compensation systems.

16. Exhibit A to Ekes contains a company extract for Bramco Electronics Pty Limited (‘Bramco Electronics’), which was first registered in November 1979, but which has been externally administered since December 2013. One of the Opponents, Mark Leishman, is a director of Bramco Electronics and the sole shareholder is ‘Gilbert’ Leishman, being the other Opponent. Mark Leishman is the son of Gil Leishman. It is clear from the Bramco Electronics company brochure annexed to Leishman 1 that this company name is frequently shortened to ‘Bramco’.

17. The nature of Bramco Electronics’ products is such that clients have input in the product design process. The engineering of each of the Bramco products is tailored to meet each client’s requirements, whether by way of customisation of existing Bramco products or the development of new products. The Bramco services include customer support, equipment audits, preventative maintenance, equipment upgrades, project execution management, commissioning and troubleshooting.

18. Bramco Electronics distributed design services and products worldwide including in South Africa, China, New Zealand, Türkiye, Zambia, Canada, Ghana, Ukraine, United States of America, Brazil, Peru, Chile, and the United Kingdom.

19. Ekes makes reference to a second company, Bramco Group Australia Pty Limited (‘Bramco Group’) which was registered from February 2014 until July 2017. No further information is provided about this entity.

20. Leishman 1 contains several documents bearing a ‘Bramco’ trade mark, namely:

    ·     a company brochure for Bramco Electronics published in 2012. Many of the product images included in the brochure are unclear but those products that are decipherable are branded ‘bramco electronics’;

    ·     product information sheets dated September 2007, August 2009 and July 2012 clearly labelled with the company name ‘Bramco Electronics’. Because the product images are not clear it is not possible to determine whether they are labelled with a ‘Bramco’ trade mark;

    ·     a product information sheet dated May 2014 headed with a ‘BRAMCO’ logo and containing images of products labelled ‘bramco electronics’. Copyright of the product information sheets is attributed to ‘Bramco Group Australia’;

    ·     a document titled ‘Conveyor Installation Overview’ that includes images of products labelled ‘bramco electronics’. This document is undated.

21. Leishman 2 contains other product information sheets, undated, which are variously attributed to Bramco Electronics, Bramco Group Australia, and Bramco International (the Applicant).

22. Leishman 1 contains a case study document dated 2009 for a project for the Lake Lindsay Mine in Queensland. It is stated that Bramco Electronics identified the issues, installed a conveyor control system, ICMS control and monitoring system with pullkey and temperature compensation unit. Leishman 2 contains further overviews of worldwide projects including in Dawson and Lake Lindsay in Queensland, United Colliery and Chain Valley in New South Wales, and Karara in Western Australia.

23. Bramco Electronics acquired approvals and certifications exclusively related to the intellectual property and products developed by the Opponents, which are mandatory to comply with industry standards and mine department approvals. Leishman 1 contains:

    ·     a Notice of Supplementary Approval issued by the New South Wales Department of Mineral Resources to Bramco Electronics on 21 February 1994 in respect of its Earth Leakage Relay product;

    ·     a Notice of Approval from the Department of Industrial Relations issued to Bramco Electronics dated 13 August 1984 in respect of an Electronic Speed Switch; and

    ·     a Certificate of Conformity issued to Bramco Electronics by Standards Australia Quality Assurance Services on 25 September 1996 in respect of control and protection units.

24. It is declared in Ekes that these departmental approvals and certifications have either expired or been revoked, and that they ceased to be valid upon the liquidation of Bramco Electronics.

25. Leishman 1 contains a document titled ‘Bramco Electronics Training Course’, which is dated August 2002. Each sheet in the presentation is headed with a ‘Bramco Electronics’ logo. The presentation contains information about various Bramco products. It is not clear where or to how many people the presentation was delivered.

26. Bramco Electronics was the owner of two now expired trade mark numbers 821776 ‘ULTIMEX’ and 1041600 ‘GHS’, both in class 9. These trade marks were marketed and sold as sub-brands of the ‘Bramco’ brand. The Opponents declare that they “are commencing steps to re-register” these trade marks but there is no evidence of new applications having been filed.

27. It is declared in Ekes that Mark Leishman formed a new company, M-Tronix Pty Limited (‘M-Tronix’) “to be a direct competitor to [the Applicant]”.[3] Leishman 1 contains product information sheets branded ‘m-TRONIX’. It is stated on each sheet that “m-Tronix is your authorised and exclusive, distributor of the range of Bramco electronics products, industry leaders since 1945. Utilising these designs, as continuously developed by the Leishman family and their engineers, m-Tronix builds, services and supports these advanced, innovative products, known and widely used, as Bramco”. The information sheets are not dated.

    [3] Ekes, [A.8].

28. Leishman 2 contains an exclusive licence agreement dated 5 October 2021, being after the Relevant Date, governing the licensing to M-Tronix of unspecified intellectual property belonging to the Opponents. No mention is made of the Trade Mark within this agreement.

29. Leishman 2 also contains product information sheets dated December 2022 and branded ‘M-Tronix Bramco’ for which the listed contact is M-Tronix.

30. It is declared that the Opponents have since 1984 remained the owners of the intellectual property associated with the Bramco business, including the BRAMCO trade mark, and that they have granted licenses to the following entities for the sale and distribution of Bramco products:

    ·From at least May 2008: Bramco Electronics

    ·From May 2014: Bramco Group

    ·From March 2016: the Applicant. The Opponents claim to have been taking steps to reverse the Applicant’s access to Bramco products and associated intellectual property.

    ·From 2022: M-Tronix

31. The Opponents claim to have previously opposed trade mark application number 1718730 BRAMCO in classes 9 and 37 in the name of AMPCONTROL Pty Ltd. I note in this regard the opponent in that opposition was Bramco International Pty Ltd, being the name of the Applicant.

    The Applicant

32. The Applicant commenced its business in March 2016. The Applicant has sold Bramco branded products since this time. It is declared in Ekes that the Applicant has invested “considerable money”[4] in research and development and has “completely modified the Bramco product line”[5], but no specifics have been provided.

    [4] Ekes, [B.7].

    [5] Ibid.

33. One of the Opponents, Mark Leishman, worked as a consultant for the Applicant between March 2016 and January 2022. It is declared in Ekes that Mark Leishman ceased working for the Applicant when it became apparent to Mr Ekes that Mark Leishman was operating M-Tronix. The other of the Opponents, Gil Leishman, was also employed by the Applicant as a consulting engineer between June 2018 and February 2022.

34. It is declared in Ekes that the application for the Trade Mark was filed at the behest of Mark Leishman. Exhibit F to Ekes is a copy of an email from Mark Leishman to Paul Ekes in which Mark Leishman enquires whether Mr Ekes would like to apply for the ‘Bramco’ trademark. In Leishman 2 it is declared that Mark Leishman allowed the Applicant to file the Application on the understanding that he was to become a partner in the Applicant’s business, and that when the Applicant failed to honour the agreement between the parties the Applicant was no longer entitled to manufacture, sell, distribute, support or otherwise deal in Bramco products. In support of this account of events, the Opponents have provided letters to Paul Ekes dated 4 March 2022 regarding the revocation of a lease to the Applicant of equipment by the Opponents, as well as Mark Leishman’s resignation from his consulting role for the Applicant.

35. According to the Opponent the Applicant did not know of the Opponent’s clients until it allowed the Applicant “access [to the Trade Mark] for build and distribution”[6] in 2016.

    [6] SGP.

36. Leishman 1 contains several product information sheets for which the relevant contact is ‘Bramco International’ at the Applicant’s contact address. The sheets are branded with a ‘Bramco’ logo and include images of products clearly labelled ‘BRAMCO’. The sheets are not dated. It is the Applicant’s contention that two of the product information sheets are the Applicant’s current data sheets.

37. The Opponents acknowledge that they allowed the Applicant access to the web domain <bramco.com.au> (‘Domain Name’), which has existed for over 20 years, but state that they have taken steps for the domain name to be returned to them. The Applicant disputes that the Opponents have taken any action in relation to the domain name. Exhibit J to Ekes contains WHOIS search results for the Domain Name showing the Applicant is the registrant of the Domain Name. Many of the product information sheets referred to in paragraph 21 above advertise the Domain Name as being the website belonging to Bramco Electronics.

    Discussion

    Section 58

38. Section 58 of the Act provides:

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

39. To succeed under this ground, the Opponents must establish:

    (i)the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponents[7] (‘Requirement (i)’);

    (ii)the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponents have been used[8] (‘Requirement (ii)’); and

    (iii)a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponents prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark by the Applicant in Australia, whichever is the earlier[9] (‘Requirement (iii)’).

    [7] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

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

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

40. In the first instance, I note the trade mark relied upon by the Opponents is ‘Bramco’, being a trade mark that is substantially identical to the Trade Mark. Requirement (i) is satisfied.

41. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[10] Authorship in this context refers to the first party to adopt the trade mark with an intention of using it in Australia in respect of the Applicant’s Goods or Services, or goods or services of the same kind.[11]

    [10] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

    [11] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

42. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (‘Moorgate’), Deane J discussed the nature of use required to establish ownership and commented:

    The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.[12]

    [12] (1984) 156 CLR 415, 432.

43. A shifting onus of proof does not apply to s 58 of the Act; the onus remains with the Opponents.[13]

    [13] Food Channel (n 1) [39].

1. The particulars provided in the SGP in relation to the s 58 ground of opposition are lengthy and often unclear, however I am able to discern the following particulars from the SGP that are relevant to this ground:

   ·the Opponents and companies owned by the Opponents hold intellectual property, products and capabilities which have been linked to the Trade Mark since 1945.

   ·first use of the Trade Mark by the Opponents or companies under their control occurred many years before the Relevant Date, as is evidenced by the development and sale of products under the Bramco name which the Opponents continue to use.

2. It is the Applicant’s submission that the s 58 ground of opposition is not made out because the Opponents have failed to establish that:

   ·the Applicant is not the owner of the Trade Mark;

   ·the Opponents acquired a reputation in the Trade Mark prior to that of the Applicant;

   ·the Opponents used the subject mark continuously throughout the relevant period;

   ·use of the Trade Mark by the Applicant is likely to deceive or cause confusion, having regard to the Opponents use of the BRAMCO trade mark.

3. I note in this regard that the reputation of the Trade Mark and the likelihood of deception or confusion are irrelevant for the purposes of the s 58 ground of opposition.

4. The Applicant submits that there is no earlier trade mark registration or “any other proven ownership issues”[14] that could be a barrier to the Applicant’s registration of the Trade Mark.

   [14] Applicant’s Submissions, [8].

5. The Applicant submits that there are substantial gaps and inconsistencies in the Opponents’ evidence. In particular, the Applicant notes that the Opponents have not identified how its alleged ownership of the Trade Mark “passed through two liquidations”.[15] Presumably this is a reference to Bramco Electronics and Bramco Group, although the relevant entities are not identified.

   [15] Applicant’s Submissions, [6].

6. The Applicant cites Kraft Foods Group Brands LLC v Bega Cheese Limited[16] as authority for the principle that transfers of trade mark rights need to be clear and proven. The Applicant notes in this regard that:

   The Opponents have failed to provide any documentation or other such evidence connecting their claim to the rights to the mark with a valid assignment or other transfer of rights.

   The parties identified by the Opponents are not the same, nor shown to be relevantly commercially connected.[17]

   [16] [2020] FCAFC 65.

   [17] Applicant’s Submissions, [14]-[15].

7. The Applicant further submits that the Opponents claim to be the successors in title of the Trade Mark but they have failed to identify any means of a transfer of trade mark rights from predecessor entities to themselves “or a suitably connected entity”.[18]

   [18] Applicant’s Submissions, [15].

   Authorship

8. I accept the Opponent’s account of the authorship of the Trade Mark, namely that the company established in or around 1945 which was later purchased by Rynand first used the Trade Mark in Australia as an abbreviation of the company name ‘Balcombe Radio and Manufacturing Company’. The Applicant does not dispute this account.

9. Requirement (iii) may therefore be established if the Opponents are able to establish prior use of the Trade Mark. The Applicant claims use of the Trade Mark since its incorporation in March 2016, but no documentary evidence has been provided of the Applicant’s use of the Trade Mark prior to the Relevant Date. The Opponents therefore need only provide evidence of use of the Trade Mark by a person other than the Applicant before the Relevant Date.

   Prior Use of the Trade Mark

10. It is apparent from the evidence that there has been, at some stage, a business relationship between the parties which appears to have deteriorated over time. There is some suggestion in the evidence of several ongoing disputes between the parties, but the evidence in relation to these disputes is lacking in detail which is relevant to the present opposition. The information provided is insufficient for me to make a definitive assessment of the veracity of either party’s account of their intentions regarding proprietorship and sharing of rights with respect to the Trade Mark. Accordingly, based on the limited evidence available I must determine which party has the stronger claim to ownership of the Trade Mark.

11. There are several deficiencies with the Opponents’ evidence as it relates to ownership and control of the Trade Mark. The evidence does not clearly establish that the Opponents are the legitimate owners of the Trade Mark. Details of the chain in title of the Trade Mark have not been disclosed. Leishman 1 contains claims, which are unsupported by documentary evidence, of licences being granted by the Opponents in respect of ‘Bramco’ intellectual property such as the Trade Mark. It is declared in Leishman 1 that the Opponents granted the Applicant “access to the products named Bramco” in March 2016, but that the intellectual property therein always remained under the ownership and control of the Opponents. Mention is made of the Trade Mark and other products or property having been licensed to the Applicant and other Bramco entities prior to the Relevant Date, but the exact date of commencement, the intended duration of these licenses and their specific terms as they pertain to use of the Trade Mark by the licensees are not disclosed.

12. However, it is not necessary for the Opponents to establish that they are the owners of the Trade Mark to establish the s 58 ground of opposition. All that must be established is that, on the balance of probabilities, the Applicant is not the owner of the Trade Mark.

13. Based on the evidence provided, it is apparent that companies trading under names that contain the word ‘Bramco’ have sold and installed electrical equipment targeted towards the mining industry since at least 1984, being around 36 years before the Relevant Date. I have reached this conclusion based on the following evidence:

    ·approvals and certifications granted between 1984 and 1996 in respect of products manufactured by Bramco Electronics, namely an electronic speed switch, an earth leakage relay and explosion protected control and production units;

    ·product information sheets dated between September 2007 and July 2012 that are branded ‘Bramco Electronics’, as well as two dated May 2014 branded ‘BRAMCO’ for which copyright is attributed to ‘Bramco Group Australia’. The sheets relate to pump controls, live line indicators, control and protection modules, earth leakage modules and earth leakage relays. Based on the absence of the word ‘Australia’ in the address details listed on the product information sheets, and the use of the top level domain ‘.au’ in the Domain Name, it is possible to infer that the product information sheets are directed at Australian consumers;

    ·a case study document dated 2009 describing the work undertaken by Bramco Electronics for a coal mine project in Queensland, involving the installation of various control systems;

    ·a company overview for Bramco Electronics published in 2012 which includes references to the company’s product design, technical support, engineering, customer support, equipment audits, preventative maintenance, equipment upgrades, project execution management, commissioning and troubleshooting services.

14. For completeness, I note the evidence listed above includes references to electrical and electronic equipment, and systems comprising such equipment, as well as installation, repair and maintenance services for such equipment. I consider these goods and services to be the ‘same kind of thing’ as the goods and services of the Application. Requirement (ii) is therefore satisfied.

15. Although there is no evidence of actual sales of the goods or services by Bramco Electronics or another entity before the Relevant Date, it is possible to infer from the company brochure and product information sheets, some of which contain images of products bearing the Trade Mark, combined with case studies describing services supplied by Bramco Electronics at various locations around Australia, that one or more entities other than the Applicant traded in the relevant goods and services before the Relevant Date.  It is not necessary that the use of the Trade Mark prior to the Relevant Date be extensive.

16. No detail is provided regarding ownership and control of the corporate entity of the Applicant. The evidence is silent as to the circumstances surrounding the creation of the Applicant and whether it was intended that the Applicant be a continuation or expansion of the corporate group of pre-existing Bramco entities that were the prior users of the Trade Mark. Based on the information available, it appears that the Opponents are former employees of the Applicant’s business but were not at any stage in positions of ownership or control of the Applicant. Accordingly, it appears that it was the intention that the Applicant operate as a separate entity from the Bramco entities which had previously used the Trade Mark. In such circumstances, on the balance of probabilities the Applicant would not have derived rights in respect of the Trade Mark by way of being part of the same corporate group as the earlier Bramco entities, or inherited such rights after the earlier Bramco entities ceased trading in or around 2016.

17. Exhibit F to Ekes contains a copy of email correspondence between Paul Ekes and Mark Leishman, including an email from Mark Leishman to Paul Ekes dated 15 January 2018, being before the Relevant Date, which reads: “Want to apply for the trademark name Bramco?”. Based on the email address and the email signature used in an earlier email in the email chain between Mark Leishman and IP Australia, it is clear Mark Leishman made this query in his capacity as an employee of the Applicant. The email does not make it clear whether it was the intention that an application for the Trade Mark should be filed in the name of the Applicant or another person. I also note the considerable time lag between the email chain and date on which the Application was filed. In light of the evident degradation in the relationship between the parties, it is possible that, to the extent Mark Leishman consented to the Applicant filing an application for the Trade Mark at the time of the email chain, such consent had been withdrawn by the time the Application was filed. Accordingly, the Applicant’s claim that the filing of the Application was done with the authority of Mark Leishman is without substance and does not support the Applicant’s claim to ownership of the Trade Mark. To the contrary, if the Applicant relies upon authority granted by one of the Opponents, this suggests that the Applicant recognises that ownership of the Trade Mark rests with one or both of the Opponents and not with the Applicant.

18. Although the evidence is unclear as regards ownership of the Trade Mark, on the evidence before me I am satisfied, on the balance of probabilities, that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on the use of an identical Trade Mark for goods and services that are the same kind of thing as the Applicant’s Goods and Services prior to the Relevant Date. The s 58 ground of opposition has been established.

19. Given the s 58 ground has been established, it is not necessary for me to consider the remaining grounds of opposition.

    Decision

20. Section 55 of the Act relevantly provides:

    (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.

21. The Opponent has established the ground of opposition under s 58 of the Act. Accordingly, I refuse to register the Trade Mark.

22. If the Registrar is served with a notice of appeal before that time, I direct that registrations shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.

    Costs

23. The Applicant sought an award of costs in its favour. However, it is the Opponent who has succeeded. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

    Sheona Robertson

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    6 January 2025