Mindstore International Limited v Biofeedback International Pty Ltd and Jeremy Fitzpatrick

TRADE MARKS ACT 1995

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

Re:Opposition by Mindstore International Limited to registration of trade mark applications 1330326(10, 41) and 1330308(35) – MINDSTORE AUSTRALIA WITH DEVICE - filed in the names of Biofeedback International Pty Ltd and Jeremy Fitzpatrick.

Delegate:	Nicole Worth
Representation:	Opponent: no representation, but written submissions prepared on behalf of the Opponent were submitted by Davies Collison Cave Patent & Trade Mark Attorneys. Applicants: Sue Chrysanthou of Counsel, instructed by Hazan Hollander Intellectual Property and Trademark Lawyers.
Decision:	2013 ATMO 45 Section 52 oppositions – s58, 59, 60, and 62A grounds – s59 partially established in respect of application 1330326, Applicants allowed opportunity to amend it – no grounds established in respect of application 1330308 – no award of costs

Background

In this matter Biofeedback International Pty Ltd and Jeremy Fitzpatrick (‘the Applicants’) jointly filed applications under the Trade Marks Act 1995 (‘the Act’) to register two trade marks, relevant details of which are:

Trade Mark:

Application No: 1330308

Filing Date: 12 November 2009

Services: “Retailing of goods (by any means)” in class 35

Trade Mark:

Application No: 1330326

Filing Date: 12 November 2009

Goods/Services: “Computer controlled training apparatus for therapeutic use” in class 10; and
“Arranging and conducting of workshops (training); computer based training; computerised training; life coaching services (training or education services); lifestyle counselling and consultancy (training); mentoring (training); personal development training; personal trainer services (fitness training); providing courses of training; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of training; provision of training courses; sports training; staff training services; training; vocational guidance (education or training advice); vocational training services” in class 41

The applications were examined and both were advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 18 March 2010.
On 13 May 2010 Mr. Damian McConnell filed Notices of Opposition (‘the Notices’) to the registration of the trade marks. The Notices were subsequently amended on 18 June 2010 to show that Mindstore International Limited (‘the Opponent’) was the party opposing registration, and that it expanded its grounds of opposition to include most of those available under the Act to oppose registration.
At the end of the evidentiary stages, described in more detail below, the Applicant requested that the matter be heard. The hearing was held before a delegate of the Registrar in Sydney on 15 October 2012. Sue Chrysanthou of Counsel, instructed by Giulia Fimmano of Hazan Hollander Intellectual Property and Trademark Lawyers, represented the Applicant. The Opponent was not represented at the hearing but written submissions prepared on its behalf were filed by Davies Collison Cave Patent and Trademark Attorneys.

Evidence

The evidence served and filed by the parties in this matter comprises statutory declarations by:
Evidence in support
·     Jack Black, founder and Managing Director of Mindstore International Limited, a UK company, with Exhibits 1 to 17, made 12 October 2010.
·     Klaus Nigel Pertl, licensee and Managing Director of ‘Mindstore Germany’, made 12 October 2010.
·     Damian John McConnell, licensee and Joint Owner of the business name Mindstore Australia, with Exhibit 1, made 24 September 2010.
·     Dawn Heaney Kirkbride Logan Keeffe, attorney with Davies Collison Cave Patent and Trademark Attorneys, with Exhibits 1 and 2, made 21 October 2010.
Evidence in answer
·     Jeremy John Fitzpatrick, Company Director of Biofeedback International Pty Ltd, with Exhibit JJF-1 consisting of Tabs 1 to 28, made 17 January 2012 (‘Fitzpatrick’).
Evidence in reply
The Opponent did not file evidence in reply.
Mr. Black’s declaration states that the information it contains is strictly confidential, particularly as it relates to sales and advertising figures. As this decision is to be published I am potentially left in a difficult position because it is Mr. Black’s declaration which outlines the history of the Opponent and the use of its trade marks. Were I to apply the claim for confidentiality strictly I would be unable to give reasons for the grounds of opposition pursued and must hence find that the Opponent cannot establish its opposition.
The claim to confidentiality is overstated. Many of the exhibits are publicly available via various websites and through the Internet Archive[1]. Accordingly, I feel that I am free to discuss those parts of Mr. Black’s declaration as necessary. In other respects I can preserve the confidentiality of any sensitive commercial material by considering it in broad terms only.
[1] The Internet Archive is an organisation that aims to build and archive an internet library, including by capturing web pages over time and making such material available via its ‘Wayback Machine’.
Here follows a summary of what I consider to be the relevant facts and events.

Background of the Opponent

The Opponent was formed in the UK in May 1989 to provide training programs in relation to “personal development, positive mental attitude, whole brain thinking and performance excellence”. Mr. Black’s evidence is that he chose the name MINDSTORE because it represented the services the Opponent provided and because of a future strategy to expand into retail stores selling associated products.
It is declared that the Opponent provided its services in numerous countries around the world and generated a significant international reputation. It appears that in 1998 the Opponent opened an office in Germany via a licensee and in 2006 opened offices in France and Switzerland via another licensee.
In 1994 and 1995 Harper Collins published the Opponent’s books ‘Mindstore, the Ultimate Fitness Programme’ and ‘Mindstore for Personal Development’. The Opponent states that the books were distributed internationally and “it is my understanding that [they were] made available for sale in Australia”. The evidence indicates one sale in Australia of ‘Mindstore, the Ultimate Fitness Programme’ in 2003.
In 1998 the Opponent began to use the website where it advertised its training courses and books. Both archived and current website material is in evidence, and shows that the website uses the word MINDSTORE as well as a logo:
The Opponent claims an awareness of its trade mark in Australia since 1999 on the basis of enquiries and orders it received from Australian based customers. It provides summary tables of either goods ordered or courses attended in the UK by Australian based customers. The earliest entry in respect of training courses is 1994 and the earliest entry in respect of books is 2000 (being a book with the title ‘Nightbook’).
In 2003 the Opponent entered into a license agreement with two individuals residing in New Zealand, permitting them use of the trade mark throughout New Zealand and Australia. There is no evidence that they promoted or provided services in Australia.
In late 2007/early 2008 the Opponent began discussions with an Australian company with a view to it being a licensee, but again there is no evidence that any promotion or provision of services by that company was provided in Australia.
Later in 2008 Damian McConnell (current licensee of the Opponent and one of the declarants listed in ‘Evidence’, above) enquired whether a course of the Opponent’s was accessible in Australia. Mr. McConnell had attended a course 10 years previously in Glasgow, and he and his wife had been “Mindstore members” for 12 years. They moved to Australia in 2006, and in 2008 Mr. McConnell suggested to the Opponent that he help develop the Mindstore business in Australia.
It is declared that discussions were held over the next 12 months, and in early 2010 the Opponent and Mr. McConnell entered into a license agreement. Mr. McConnell and his wife registered the business name MINDSTORE AUSTRALIA on 15 January 2010 and they have established a website at The McConnells have allegedly offered training and development services under the trade mark ever since.

Background of the Applicants

Jeremy Fitzpatrick is the Director of Biofeedback International Pty Ltd (‘Biofeedback’). On 21 April 1999 he incorporated Mind Gym (Aust) Pty Ltd, and states that he chose that name because it suggested the products sold were products which exercised the mind. He also registered the domain name Subsequently a UK company advised that it used the name Mindgym and demanded that Mr. Fitzpatrick cease using it. He agreed to do so and to that end, on 24 August 2004, he changed the name of the company to Biofeedback International Pty Ltd.
In the meantime on 8 July 2002 Mr. Fitzpatrick incorporated Mindlab Pty Ltd. He claims that he developed training courses named ‘Mindlab Training’ which ran during 2003, 2004 and 2005.
Mr. Fitzpatrick declares that he developed the name ‘Mindstore Australia’ in keeping with the “mind theme”, in or around August 2004, under which he intended to run a store selling products that exercised the mind. In conjunction with a number of third party designers he developed various logos in relation to the Mindlab and Mindstore businesses. Documents entitled “Mindlab development” and “Mindstore development” are in evidence, which appear to be authored by a third party designer. They tabulate various versions of logos along with the dates they were developed (in the case of ‘Mindstore’ the earliest date shown is 20 September 2004). Invoices from the same third party designer are included, one of which contains the description “Design logo for Mindstore” and is dated 25 September 2004.
In February 2008 Mr. Fitzpatrick registered the domain name and a sales report shows the first sale of goods from it occurred in August 2008. The only historical pages in evidence from that website are from 2011 and show that goods such as mind training and biofeedback software and devices, electroencephalography (EEG) apparatus, books, DVDs, juicing machines, ionisers and air purifiers are available upon the website. The only reference to training services is a link named ‘Mindlab training’.
Development of the website has taken place since 2004. Invoices from November 2004 are provided relating to the design and build of it, as well as ‘mock ups’ of web pages dating from 2004.
A ‘Mindstore Australia’ eBay® store has also been operating since April 2008, pages of which are in evidence, as is an invoice dated 18 April 2008. The eBay® store appears to sell goods similar to those available at Applicants’ website.
It is declared that in March 2009 the Applicants opened a physical store in Melbourne. I note that there is a discrepancy between the declared address of the store and that shown in photographic exhibits of it. The store is declared to be at the address Suite 1124, 1 Queens Road, Melbourne but the number displayed on the door in the photographs is 1361, which corresponds with another address used by Mr. Fitzpatrick. Nevertheless it does appear that a store exists.
Mr. Fitzpatrick claims that the Applicants have taken part in the biannual ‘Mind, Body and Spirit Festival’ in the years 2009, 2010 and 2011. Undated photographs of the stall, and undated advertising materials which were displayed or distributed at the festival, are in evidence. All prominently display the trade mark. Invoices for attendance fees at the festival are in evidence for the years 2010 and 2011.
In respect of the provision of courses Mr. Fitzpatrick declares “The Mindstore Australia store includes a room where I intend to run the courses which were formely [sic] called the ‘Mindlab Training Series’. I intend to promote the seminars under the name ‘Mindstore Mindlab Training Series’ ”.

Parties’ dealings with each other

The parties became aware of each other in July 2009. At that time, Mr. Fitzpatrick and/or the third party designer were conducting “search engine spider tests” and “testing of” the domain name mindstore.com.au. The third party designer mistakenly sent an invoice to the Opponent (by omitting the “.au” from the email address), thereby bringing the Applicants’ business to the Opponent’s attention. The Applicants became aware of the Opponent’s business through the tests they were conducting, but Mr. Fitzpatrick claims he was unconcerned “as I was not aware of the opponent having any trade mark or presence in Australia. Following discovering the opponent, I became aware of them having presence in the United Kingdom (“UK”) only and only in relation to training. I had never heard of the Opponent in Australia” and “I was of the opinion that our respective goods and services were markedly different”.
Later that month the Opponent wrote to Mr. Fitzpatrick asserting its trade marks rights and inviting discussions, which were held in the period August to November 2009. Initial discussions appear to have been with a view to creating a business relationship or co-existing in the market place, possibly by an agreement between the parties. However on 10 November 2009 Mr. Klaus Nigel Pertl, the Opponent’s licensee in Germany, took part in the discussions and he was not amenable to coexistence. He declares “I was personally concerned that having invested an estimated half a million Euros (an estimated A$1milion) in my business and the MINDSTORE brand, that authorizing the use of the MINDSTORE trade mark by an external party may affect the integrity and strength of the Opponent’s trade mark rights”.
The Opponent declares that following this discussion, it received no further communication from Mr. Fitzpatrick (although I note there was at least one further email between the two, dated 8 December 2009[2], as well as the discussion referred to in paragraph 33 below.) Mr. Fitzpatrick states this was because at that point discussions were no longer cordial, and the Opponent appeared to be no longer interested in working with the Applicants but was instead intent on commencing business in Australia via the licensee Damian McConnell. Mr. Fitzpatrick declares that he therefore made the decision to protect the ‘Mindstore Australia’ marks as soon as possible, leading to the filing of the subject applications on 12 November 2009.
[2] Tab 26 in Exhibit JJF-1 of Fitzpatrick.
Despite the above circumstances, Mr. McConnell declares he held a further discussion with Mr. Fitzpatrick on 2 December 2009 regarding the possibility of a co-existence agreement. Nothing appears to have come of it.
Lastly, both parties refer to an instance in July 2009 wherein a UK customer requested products from the Applicants’ website to be sent to her in the UK. The actual request is not in evidence, and neither party suggests that the request was sent as the result of confusion or deception on the customer’s part. In any event, Mr. Fitzpatrick responded by saying that he would be happy to supply her with products as long as she understood that he was not associated with the UK company. He says he did so “in good faith and so that I could provide my Mindstore products to the person in the UK without falsely misrepresenting myself”.

Grounds and Onus

The Opponent’s written submissions advised that it relied upon grounds of opposition under sections 58, 59, 60 and 62A of the Act. For completeness I find that the other grounds in the Notices have not been established.
I proceed on the basis that the Opponent bears the onus of establishing at least one of the grounds on the ordinary civil standard of the balance of probabilities[3], and that the date at which the rights of the parties are to be determined is the date the applications were filed.[4]
[3] See Pfizer Products Inc v Karam [2006] FCA 1663; 70 IPR 599 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 per Sundberg J at [22] to [26]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435 per Greenwood J at [16] to [32]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].
[4] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595; Suyen Corporation v Americana International Limited [2011] FCA 300 (31 March 2011).

Section 58 – Applicant not owner of trade mark

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.
Note: For applicant see section 6.
It is well established in law that, in order to succeed under this ground of opposition, the Opponent must establish three factors being the use of another trade mark:
i) that is either identical or substantially so to the applied-for trade mark[5],
ii) in relation to goods and services which are ‘the same kind of thing’ as that for which registration is sought[6], and
iii) which occurred prior to the application to register or any actual use of the applied-for trade mark, whichever is the earlier.[7]
[5] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; 31 IPR 375 (1994).
[6] Hick's Trade Mark (1897) 22 VLR 626, per Holroyd J at 640.
[7] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.
The Opponent relies upon use of its trade marks in the forms MINDSTORE (simpliciter) and ‘ to establish that the Applicant is not the owner of the applied-for trade mark. The comparison is therefore between the following:

Opponent’s marks

Applicants’ mark

MINDSTORE

I note that whether or not the website address was used as a trade mark and whether the domain name elements “ and “.com” substantially affect the identity of the trade mark are relevant inquiries. However, for the purposes of the discussion below I will assume that the Opponent’s use of was use of a trade mark wherein the domain name elements did not substantially affect its identity, thereby placing the Opponent’s case at its highest. Should it be necessary I will revisit this issue.
The determination of substantial identity involves a side by side comparison, as set out by Windeyer J in Shell Company of Australia v Esso Standard Oil (Australia) Ltd[8]:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
[8] [1963] HCA 66; (1961) 109 CLR 407 at 414-415.
The Applicants’ trade mark contains, as well as the word ‘Mindstore’, an abstract image of perhaps a four-bladed impeller and the word ‘Australia’. It was stressed in Carnival Cruise Lines Inc. v Sitmar Cruises Ltd[9] that in order to establish a ground under section 58, the marks in question must at a minimum be substantially identical:
When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity will suffice…It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.
[9] supra, at note 5
I cannot agree with the Opponent’s submission that the trade marks under consideration are substantially identical. In a side by side comparison the most obvious difference is that the Applicants’ trade mark contains a prominent device element whereas the Opponent’s do not. The device is a highly distinctive feature. It has no apparent reference to the goods and services, nor is it an illustration of the textual component of the mark.[10] Nor is the device overwhelmed by other material - its size and placement is such that it makes as much of an impression upon the mind of the consumer as the word does. For these reasons I distinguish it from those cases cited by the Opponent wherein simplistic logos or font variations were found by the Registrar’s delegates not to affect the substantial identity between marks.[11]
[10] As was the case in E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15; (2010) 241 CLR 1447, wherein the addition of a image did not substantially affect the identity of the mark because image was merely an illustration of the word.
[11] The cases cited by the Opponent are in respect of the following trade mark comparisons:

In assessing these marks as a whole I consider the prominent device in the Applicant’s trade mark precludes a finding of substantial identity. The use of the Opponent’s trade marks is therefore not use of essentially the same trade mark as that applied for, and the ground fails at this hurdle.

Section 59

Section 59 provides:

Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

A mere allegation of non use is not enough by itself to shift the onus of proof to the Applicants, however where a prima facie case against them have been made then it is for the Applicants to rebut the allegation[12] – the Applicants are, after all, best placed to know their own business and show evidence of intent when it is properly challenged.[13] The time at which the intention must exist is the date the applications were filed, being 12 November 2009.[14]
[12] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.
[13] Danjaq, LLC v Resource Captial Australia Pty Ltd [2004] ATMO 18; Wal-Mart Stores, Inc v Ozark London Ltd [2004] ATMO 33.
[14] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437; Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.
The nature of the intention has been described variously as “a real and definite intention to use the mark publicly in Australia as a trade mark, although not necessarily immediately or within any limited time”[15], “some definite and present intention to deal in certain goods…and not a mere general intention of extending his business at some future time to anything which he may think desirable”[16], and “a resolved or settled purpose which has been reached at the time when the mark is to be registered”[17], (all quoted by Dodds-Streeton J in Suyen Corporation v Americana International Limited[18]).
[15] Ritz Hotel Ltd v Charles of Ritz Ltd and Another (1988) 15 NSWLR 157.
[16] Re John Batt & Co’s Registered Trade Marks [1898] 2 Ch. 432.
[17] Re Ducker’s Trade Mark [1929] 1 Ch 113.
[18] [2010] FCA 638; (2010) 87 IPR 262.
Although not explicitly stated so, I take the Opponent’s arguments in respect of section 59 to be in relation to class 41 only. Its submissions are directed at class 41, and the Applicant’s evidence sufficiently rebuts any allegation in respect of classes 10 and 35 (by showing the development of the trade mark and website from 2004 and actual use of the trade mark in respect of those goods and services before and after the priority date). I find therefore, as a preliminary determination, that the section 59 ground has not been established in relation to any of the class 10 goods or class 35 services. From this point on I will confine my discussion of section 59 to the services claimed in class 41.
The Opponent submits that the presumption of an intention to use deriving solely from the act of filing the application is a prima facie one, and only slight evidence is required to shift the onus to the Applicants. It further submits that “The Applicants did not use the trade mark MINDSTORE or the Opposed Logo in respect of class 41 services at any time prior to filing of the trade mark on the Relevant Date and the Fitzpatrick Declaration makes clear that the Applicants had no intention of expand [sic] their business into this area”.
The Opponent does not point to precisely which statements in the Fitzpatrick declaration make clear the Applicants had no intention of expanding into class 41 services. It does however also point to a statement made by Mr. Fitzpatrick which is contained within an email to the Opponent. At the hearing the Applicants’ representative claimed that the email within which the statement was contained was “without prejudice communication”. So as to avoid becoming distracted by a potential debate over the email’s status I will not consider or discuss its contents, save only to say that I do not consider the specific statement pointed to by the Opponent shows any “admission” regarding intent but that other statements made by Mr. Fitzpatrick within the email are congruent with his declared statement that he considered the goods and services of the parties “markedly different”.
The Applicants, for their part, deal only briefly with the allegation of no intention to use. As stated previously Mr. Fitzpatrick declares “The Mindstore Australia store includes a room where I intend to run the courses which were formely [sic] called the ‘Mindlab Training Series’. I intend to promote the seminars under the name ‘Mindstore Mindlab Training Series’ ”. In oral submissions at the hearing the Applicants’ representative submitted that the Applicants have, by virtue of this declared statement, met any onus which may have shifted to them.
I consider that there is a prima facie case which shifts the burden to the Applicant. There are circumstances which appear, on the face of it, to cast doubt upon the Applicants’ intentions in respect of class 41 services at the time they filed the applications, and although on notice that their intention was in issue the Applicants’ have not provided an explanation.
These circumstances are that upon discovering the Opponent Mr. Fitzpatrick was unconcerned because, inter alia, he believed the respective goods and services of the parties were “markedly different”. He also declares that he was amenable to some kind of coexistence agreement and even to the parties assisting each other in the promotion of their “respective goods and services”. The parties were apparently still exploring coexistence options up until 2 days prior to filing (at which time Mr. Pertl became involved and discussions were no longer cordial), and it was the threat of the Opponent entering the Australian marketplace regardless of any coexistence agreement that prompted the filing of the applications at that time and in those classes. Additionally, although use is not required to prove intention I note that the only training as yet promoted by the Applicants has been under the name Mindlab (emphasis added).
The Applicants’ statement referred to in paragraph 48 provides a positive, although unsupported, statement that the Applicants intended to use the trade mark in respect of class 41 services as at the time the declaration was made in 2011. Although not raised by the Applicants or their representative, I note further that their evidence shows at Tab 4 of exhibit JJF-1 (being various designs for potential promotional material developed during 2004-2008) three instances of the word Mindstore in combination with the word “train”.[19] It does not appear that these designs progressed beyond their initial development as potential logos to use.
[19] I note that only one of these instances shows the trade mark as applied for, the other two involve a different logo. I note further that there are nine instances of ‘Mindlab’ in combination with ‘training’.
As such it appears that the Applicants considered the possibility of using the word Mindstore in relation to training at some time during 2004-2008. However this does not appear to have evolved into any “real and definite intention”, particularly when considered in light of the circumstances described above. The Applicants do not provide any explanation for the contradiction between believing the respective goods and services of the parties were “markedly different” (when the prospect of negotiating an agreement with the Opponent was afoot) and the subsequent inclusion of the very same training services in their application (once that prospect extinguished and the Opponent indicated it intended to proceed into the Australian market place anyway). The Applicants are best placed to answer this question and they have not done so, relying rather on an unsupported statement that makes no reference to the intention as at the time the applications were filed in 2009.
Given these factors the inference I draw is that although the possibility of providing training under the trade mark was considered in the period 2004 to 2008 the Applicants did not proceed with it, choosing instead to provide such services under the name Mindlab. I consider the likely scenario to be that the Applicants intended their training services to be provided under the name Mindlab (which would be more fitting with their declared desire to reach a coexistence arrangement with the Opponent) but once their use of the Mindstore trade mark was threatened they wished to protect themselves for all of the services they provided whether under that trade mark or not.
I therefore consider it not unreasonable to infer that the nomination of class 41 in the applications was a tactical or defensive act, rather than a reflection of any “real and definite intention” or “resolved and settled purpose” to use the trade mark in respect of those services. I am satisfied that the circumstances are sufficient to shift the onus to the Applicant, and the Applicant has not satisfactorily explained its intentions as at the filing date of the applications. The Opponent therefore succeeds in its ground of opposition under section 59, but only insofar as it relates to class 41 of application no. 1330326.
Given that a ground of opposition has been made out in respect of the class 41 services, there is no need to discuss those services in relation to the remaining grounds of opposition. I will therefore discuss the other grounds in respect of the goods in class 10 and services in class 35 only.

Section 60

Section 60 provides:
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.
In McCormick & Co Inc v McCormick[20] Kenny J discussed the meaning of “reputation” in section 60 in the following way:
What is intended by the word “reputation” in section 60? The word is defined in The Macquarie Dictionary as follows:
reputation…1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute…2. favourable repute; good name…3. A favourable and publicly recognised name or standing for merit, achievement, etc…4. The estimation or name of being, having done, etc, something specified.
Compare The Oxford English Dictionary. In s60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

It is the above question which is to be adapted to the circumstances at hand, the relevant date being 12 November 2009.

[20] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].

Further, in Renaud Cointreau v Cordon Bleu International Ltee[21] the Full Court affirmed the findings of the judge at first instance who stated that the reputation required to be demonstrated was:
[O]ne of which a significant number of persons were aware: Conagra at 346. 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.
[21] Renaud Cointreau v Cordon Bleu International Ltee (2001) ALR 657 at [74].
I do not consider the products of the Opponent to be highly specialised – in that their training courses and books are available to anyone– however the market for such self development material is somewhat smaller than that for, say, banking services or supermarket goods which nearly every Australian uses. Accordingly, the reputation required to be shown would need to be commensurate with the size of the relevant market: one which is somewhat narrower than that for everyday consumer goods or services.
The Opponent’s submissions drew my attention to the following information as support for the Opponent’s trade marks having established a reputation in Australia before the priority date:

the Opponent’s trade marks are distinctive and unique (I have assumed the Opponent’s trade marks are the word MINDSTORE and the web address Opponent commenced use of the mark in 1989 and subsequently used it “on a large international scale” including Australia, particularly in connection with its training and personal development services
the Opponent submits that the marks are substantially identical and “complete symmetry” exists between the mark, leading to a greater likelihood of deception or confusion
the goods and services of the Opponent are identical or closely related to those of the Applicants, and this “complete symmetry” likewise increases the likelihood of deception or confusion

There are no sales figures or promotional expenditures from which trade mark reputation – at least that which may exist in the UK - may be inferred. In ConAgra Inc v McCain Foods (Aust) Pty Ltd[22] Lockhart J commented that
reputation 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…”

The tables detailing Australian customers represent very low volume trade, and there does not appear to have been, prior to licensee Mr. McConnell launching his website, any promotion of Opponent’s trade marks in Australia or directed at Australians. Accordingly there is little before me to suggest that the Opponent’s reputation, to whatever extent that may be in the UK, has transferred into the Australian consciousness.

[22] [1992] FCA 159; (1992) 23 IPR 193 at 234.

Reputation in Australia must be established as a question of fact.[23] Even conceding a smaller relevant market, I find I am not satisfied that within it the trade marks relied upon by the Opponent in fact enjoyed the kind of reputation contemplated by section 60 as at the priority date of the opposed applications. I thus find that the Opponent has not established its section 60 ground.
[23] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.

Section 62A

Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In determining that which amounts to bad faith under the Act Dodds-Streeton J, in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[24], commented:
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…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
[24] [2012] FCA 81; (2012) 94 IPR 551, at [165].
Adapting those words the question before me is whether, in all the particular circumstances, the Applicants’ knowledge was such that their decision to apply for the registrations on 12 November 2009 would be regarded as in bad faith by persons adopting proper standards.
Mr. Fitzpatrick began to develop the applied for trade mark in 2004 and first made public use of it upon his website in 2008, well prior to any dealings between the parties. Upon discovering the Opponent’s business in July 2009 he was unconcerned because he did not believe they had any presence in Australia, and because that presence which they had in the UK was “only in relation to training”. Upon being contacted by the Opponent, Mr. Fitzpatrick was amenable to exploring a coexistence agreement with it. There is no evidence before me of Mr. Fitzpatrick acknowledging the trade marks as the property of the Opponent[25], rather it appears that he wished to ensure they were differentiated should a coexistence agreement be reached. It was once discussions were no longer cordial and it appeared to Mr. Fitzpatrick that the Opponent intended to proceed into the Australian marketplace that he filed the applications.
[25] Which was a determinative factor in finding bad faith in William Leith New Century Marquees (SRISO/018/00, UK Registry) p.9.
In respect of the applied-for goods in class 10 and services in class 35, I am satisfied that the applications were made in good faith. The Applicants’ had been using their trade mark for those goods and services prior to their awareness of the Opponent, and there is nothing to suggest that they had the Opponent’s business or trade marks in mind when they adopted their own marks. Whether or not the motivation to apply for registration on 12 November 2009 was prompted by the Opponent’s indication it intended to enter the Australian market, I consider the applications reflect the Applicants’ common law rights in the trade mark and a desire to protect those rights.
I acknowledge that much of the Opponent’s submissions are in relation to the class 41 services, however as previously mentioned they have already been dealt with under section 59 and my consideration under this ground is confined to classes 10 and 35. The Opponent has not established its case in respect of these remaining goods and services, and the ground under section 62A fails.

Decision

Section 55 of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, 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.
I find that the Opponent is partially successful in that the ground of opposition under section 59 is established in respect of the services nominated in class 41. That being the case, I will allow the Applicants one month from the date of this decision to amend application 1330326 by deleting the services in class 41. The application may then proceed to registration. In the event that the Applicant does not amend its goods within the time specified, I refuse the application in its entirety.
Application 1330308, which nominates only class 35, may proceed to registration one month from the date of this decision.
If the Registrar has been served with a notice of appeal before that time the registrations shall not occur until the appeal has been discontinued. Otherwise, the disposition of the applications should be in accordance with the Court’s order or direction.

Costs

Each of the parties has requested costs. As neither party has been entirely successful I decline to make an order of costs in favour of any party. I consider that the appropriate course on this occasion is that each party should be responsible for meeting its own costs.

Nicole Worth
Hearing Officer
Trade Marks Hearings
6 June 2013

TRADE MARK	SUBSTANTIALLY IDENTICAL MARK
SOY-LIN	Note that ‘Soy-Lin’ in the second device mark was considered to retain its own distinctive identity within the rest of the label, and it was that which was compared to SOY-LIN simpliciter.
ABB
VISION ALERT
DOTEASY	Note that this trade mark is not limited to colour.

[2013] ATMO 45

12 June 2013