MIS Implants Technologies Ltd v More Group Pty Ltd
[2023] ATMO 118
•16 August 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by MIS Implants Technologies Ltd to registration of trade mark application number 2150689 (classes 5, 10, 37, 41, 42, 44) – MCENTRE – in the name of More Group Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Cornwalls Applicant: Marcus Fleming of counsel instructed by King & Wood Mallesons |
| Decision: | 2023 ATMO 118 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60 and 62A pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by MIS Implants Technologies Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade mark: MCENTRE (‘Trade Mark’)
Application number: 2150689
Owner: More Group Pty Ltd (‘Applicant’)
Filing date: 21 January 2021
Specification:[1] Class 5: (including) pharmaceuticals, medical preparations; dental preparations
Class 10: (including) surgical, medical and dental apparatus and instruments; artificial limbs, eyes and teeth; dental tools
Class 37: (including) construction services; installation and repair services; fitting services
Class 41: (including) education; providing of training
Class 42: (including) scientific and technological services and research and design relating thereto; dental research; design and development of computer hardware and software; platform as a service
Class 44: medical services; healthcare; dental services; x-ray services; orthodontic services
(‘Claimed GS’)
[1] The full specification is reproduced in Annexure A to this decision.
The acceptance of the Trade Mark for possible registration was advertised on 22 June 2021. The Opponent filed a notice of intention to oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 2 August 2021. The Applicant filed a notice of intention to defend on 29 October 2021.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was requested. Submissions were filed by the Opponent on 4 May 2023 (‘Opponent’s Submissions’) and by the Applicant on 11 May 2023 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks (‘Registrar’), I heard this matter by video conference on 18 May 2023. Len Hickey of Cornwalls presented submissions on behalf of the Opponent and Marcus Fleming of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To be successful, the Opponent bears the onus of establishing at least one of these grounds.[2]
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 21 January 2021 (‘Relevant Date’), being both the filing and priority date of the Trade Mark.
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed:
| EIS |
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| EIA |
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| EIR |
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EIS
According to Magal 1, the Opponent is an Israeli company that researches, manufactures and provides goods and services in the field of implant dentistry. The Opponent’s global headquarters and manufacturing operations are in Israel and its ‘ultimate customers’ are identified as being dentists who perform implant dentistry.
The term ‘MIS’ has been the Opponent’s primary brand used for all its dental goods and services since 1995 and the tagline ‘MAKE IT SIMPLE’ has been used since at least 2006. The Opponent’s goods are sold in various markets including the United States of America, Europe, Latin America and Australasia. Mr Magal declares that the Opponent’s goods ‘are always marketed as being goods made by and associated with the Opponent’ and are supplied to authorised distributors around the world.[4] These distributors ‘may also be authorised to supply services developed by the Opponent in relation to the Opponent’s goods’.[5] It is declared that the ‘Applicant has been an authorised distributor of the Opponent since 2003 in the nominated markets of Australia and New Zealand’.[6]
[4] Magal 1, [21].
[5] Ibid [23].
[6] Ibid [59].
10. Magal 1 discusses the ‘MGUIDE System’ which the Opponent developed and launched to market in around 2013. The ‘MGUIDE System’ is ‘a system for guided dental implant surgery that enables safer and more accurate surgical implant procedures’.[7] It achieves this by utilising specially designed tools, software and instructional materials. The ‘MGUIDE System’ also allows dentists to order customised surgical templates from the Opponent’s manufacturing facilities. A surgical template is essentially a guide which resembles a mouthguard that is used to assist in the proper surgical placement of dental implants. Specific brands have been created for aspects of the ‘MGUIDE System’ and this includes ‘MCENTER’ which is used in connection with services that produce ‘the custom-made surgical templates for the MGUIDE System’.[8]
[7] Ibid [39].
[8] Ibid [54].
11. Mr Magal states that plain font and stylised versions of ‘MIS’, ‘MAKE IT SIMPLE’, ‘MGUIDE’, ‘MCENTER’ and ‘MSOFT’ (collectively, ‘Disputed Marks’) have ‘been applied on and in relation to goods manufactured by the Opponent for use in the MGUIDE System’.[9] Relevantly, it is declared that the Disputed Marks have been used on or in relation to dental goods, packaging and materials supplied by the Opponent to the Applicant between 2013 and 2021. The Disputed Marks have also featured on the Opponent’s website and are used in ‘various marketing materials that the Opponent has created, published and distributed to promote the MGUIDE System’.[10]
[9] Ibid [61].
[10] Ibid [69].
12. According to Magal 1, the Opponent has never ‘agreed to give the Applicant any ownership stake whatsoever in the [Disputed Marks]’ and it is claimed that the present application has been filed without the Opponent’s consent.[11] Mr Magal explains that the parties are engaged in various trade mark disputes in Australia and New Zealand concerning applications which incorporate some of the Disputed Marks. This includes an Australian application filed by the Applicant for ‘MGUIDE’ that was opposed by the Opponent in 2020. This opposition was the subject of MIS Implants Technologies Ltd v More Group Pty Ltd (‘Earlier Decision’).[12] In the Earlier Decision, the delegate was satisfied that the Opponent was the owner in Australia of the ‘MGUIDE’ trade mark in respect of various dental goods in class 10. As such, the delegate found that the s 58 ground of opposition was established and the registration of ‘MGUIDE’ was refused.
EIA
[11] Ibid [88]–[90].
[12] [2022] ATMO 215 (‘Earlier Decision’).
13. Gilmore 1 states that the Applicant is a Victorian company that is ‘one of the leading dental companies globally and [it] has grown to become the largest company in the implantology field and the leading supplier of dental implants in Australia’.[13] The Applicant operates in Australia and New Zealand and sells dental goods such as dental implants, bone regenerative solutions and other dental equipment. It also provides an ‘MCENTRE Lab’ which ‘is dedicated to providing digital treatment options, including in relation to digital treatment planning and restoration, as well as guided surgery’.[14]
[13] Gilmore 1, [14].
[14] Ibid [53].
14. According to Gilmore 1, the Applicant was appointed the exclusive distributor of the Opponent’s dental goods and services in Australia and New Zealand pursuant to an oral agreement made between Mr Gilmore and Doron Peretz, a co-founder of the Opponent, in November 2003 (‘Agreement’). The Agreement is said to have been made when Mr Gilmore met Mr Peretz in Israel in November 2003. At that time, Mr Gilmore contends that the Opponent was a ‘small start-up company’ which did not have an established distributor network. In particular, he opines that the ‘Australian and New Zealand markets were some of the most conservative markets in terms of dental implants’ and thus ‘the Applicant took on significant commercial risk and financial risk’ in agreeing to establish a local market.[15]
[15] Ibid [30].
15. Mr Gilmore’s recollection of the Agreement was: i) the Applicant was to establish a local market in Australia and New Zealand for the Opponent’s dental products and services, ii) the Applicant would be appointed exclusive distributor and establish ownership of the ‘MIS brands’ in these territories and iii) the pricing and payment terms were agreed upon.[16] Mr Gilmore’s declares that the intention of the Agreement was for the Applicant to ‘receive all of the benefits and responsibilities associated with ownership and exclusive distributorship of [the Opponent’s] products, services and brands in Australia and New Zealand’ in return for establishing and developing same in these territories.[17]
[16] Ibid [28].
[17] Ibid [29].
16. Pursuant to the Agreement, ‘the Applicant has distributed in Australia and New Zealand since at least as early as 2004 and 2005, respectively, dental implants and related goods and services’ under or by reference to one or more of the Disputed Marks.[18] Over the years, additional marks such as the Trade Mark, ‘MLAB’, ‘MIS IMPLANTS’ and ‘MIS AUSTRALIA’ have also been used. For convenience, the Disputed Marks together with these additional marks will be collectively referred to as the ‘MIS Marks’.
[18] Ibid [18].
17. Mr Gilmore declares that ‘[a]t all times in the Australian and New Zealand markets ownership of, and reputation and goodwill in, the [MIS Marks] has vested in or accrued to the Applicant, and that has continued up to and beyond the [Relevant] Date’.[19] The Applicant has used the MIS Marks ‘in conjunction with, or otherwise in close proximity to’ the following marks:
[19] Ibid [13].
| Moredent Marks | |||
| MOREDENT | |||
18. In Mr Gilmore’s view, ‘the Applicant has established an enormously successful market for the [Opponent’s] products and services in Australia and New Zealand’ and the Trade Mark is ‘synonymous with and exclusively associated with the Applicant in Australia’.[20] This is allegedly reinforced by the fact that the Opponent has not used the Trade Mark in Australia or New Zealand. It is declared that ‘the Applicant has invested significantly in the development of its MCENTRE Lab’ and this has ‘contributed significantly to the success of the [Opponent’s] products and services in Australia and New Zealand’.[21]
[20] Ibid [20], [31].
[21] Ibid [21], [37].
19. Gilmore 1 states that the Applicant has taken significant steps in reliance on the Agreement including filing trade mark applications, purchasing domain names and registering Australian business names. The Applicant has also invested in the marketing of the MIS Marks and developed new brands and services. Mr Gilmore contends that ‘the Applicant differs from a mere authorised distributor in that it has developed the [Trade Mark] and associated marketing collateral’ as well as expanding the service offering provided at its ‘MCENTRE Lab’.[22]
[22] Ibid [38].
20. The Applicant has operated its ‘MCENTRE Lab’ since 2016 from a location in Melbourne, Victoria. The ‘MCENTRE Lab’ is ‘dedicated to the development, manufacture, promotion and sale of the MGUIDE Solution’.[23] The Applicant’s ‘MGUIDE Solution’ is ‘a comprehensive, end-to-end technology and treatment solution in relation to dental implants incorporating a number of elements’ including guided surgery drilling templates and specialised software.[24]
[23] Ibid [54].
[24] Ibid.
The remainder of Gilmore 1 outlines how the Trade Mark has been used in Australia and New Zealand and responds to Magal 1. Relevantly, the Trade Mark has been promoted on the Applicant’s social media accounts and its website. The Applicant has also used the Trade Mark in the sponsorship of dental events as well as on brochures, webinars and work order documents. Mr Gilmore contends that many of the activities discussed in Magal 1 and the documents annexed thereto do not pertain to the Australian market. He further highlights that Magal 1 does not substantively address the Agreement and remarks that Mr Magal ‘did not have any direct personal involvement in the negotiations’ that led to the Agreement’.[25]
[25] Ibid [86].
22. Gilmore 2 was originally filed as evidence in the Earlier Decision. Broadly speaking, it repeats the same background information regarding the Applicant, the Agreement and the use of the MIS Marks in Australia and New Zealand. It also details an arrangement between the Opponent and its Mexican distributor which ostensibly shares similarities to the Agreement insofar as, based on Mr Gilmore’s understanding, the Mexican distributor acquired ownership of the Disputed Marks in Mexico by successfully establishing a local market.
The Stup Declaration confirms that a meeting took place between Mr Gilmore and Mr Peretz in November 2003. Ms Stup also attended the meeting and her recollection of the Agreement made between the parties mirrors the version advanced by Mr Gilmore. In Ms Stup’s opinion, the Applicant is the owner of the Trade Mark in Australia and New Zealand because it has ‘met and continues to meet unequivocally the conditions of the [A]greement’.[26]
EIR
[26] Stup Declaration, [8].
24. The Hickey Declaration introduces Magal 2 and Magal 3 which were filed as evidence in trade mark opposition proceedings before the Intellectual Property Office of New Zealand. Magal 2 was filed in respect of the Applicant’s opposition to the Opponent’s trade mark applications for various trade marks incorporating the Disputed Marks.[27] The information contained in Magal 2 covers the topics detailed in Magal 1 and reiterates that the Opponent never agreed to give the Applicant ‘any ownership stake whatsoever’ in the Disputed Marks. Magal 2 also rejects any ownership claim made by the Mexican distributor to the Disputed Marks and highlights that the written distribution agreement ‘makes no provision for the Mexican Distributor to own any of the [Opponent’s] brands’.[28] Magal 3 was filed in respect of the Opponent’s opposition to the Applicant’s trade mark application for ‘MCENTRE’[29] and it essentially repeats the statements made in Magal 2.
[27] See New Zealand trade mark application numbers 1165966, 1165967, 1165968, 1165969, 1165970.
[28] Magal 2, [112].
[29] See New Zealand trade mark application number 1169264.
25. The Peretz Declaration addresses the meeting between Mr Gilmore, Ms Stup and Mr Peretz in November 2003. Relevantly, the Applicant’s appointment as the exclusive distributor of the Opponent’s goods in Australia and New Zealand was conditional on it successfully establishing a local market for the Opponent’s goods. Mr Peretz does not recall trade mark ownership being discussed at the meeting and states that he would have refused to agree to any arrangement which involved the Applicant becoming an owner of the Opponent’s brands. To this end, Mr Peretz declares that ‘[a]t no stage during the meeting did I tell Mr Gilmore or Ms Stup that [the Opponent] would agree to [the Applicant] (or anyone else) becoming the owner of [the Opponent’s] brands in Australia or New Zealand’.[30]
Discussion
[30] Peretz Declaration, [11].
Earlier Decision
26. The Opponent asserted that ‘various issue estoppels’ arise because the ‘opposition grounds and evidence in the [Earlier] Decision are not materially different to the present proceeding’.[31] Attention was drawn to findings made in the Earlier Decision which, in the Opponent’s view, should apply to the present proceeding.[32] This includes findings that ‘the Applicant’s actions of creating and investing in independent marketing material, providing training and more do not go so far above those of an exclusive distributor of a specialist product’ and that the November 2003 meeting ‘did not give rise [to] an agreement containing terms relating specifically to the ownership of the “MGUIDE” mark’.[33]
[31] Opponent’s Submissions, [11]–[13].
[32] Earlier Decision, [41]–[45].
[33] Opponent’s Submissions, [12].
27. The Applicant submitted that ‘[i]t is doubtful that the doctrine of issue estoppel is applicable’ because opposition proceedings are administrative in nature.[34] It emphasised that any findings made in the Earlier Decision were in connection with ‘MGUIDE’ and stressed that ‘[o]ne important difference in the present case is the absence of evidence of use of the [Trade] Mark by the Opponent in Australia’.[35] The Applicant asserted that the outcome of the Earlier Decision cannot dictate the present proceeding especially given the Earlier Decision dealt with a different trade mark and has been appealed.[36]
[34] Applicant’s Submissions, [10(a)].
[35] Ibid [10(b)] n 2 which cited the following: No Name Restaurant (Cesare) Pty Ltd v No Name Restaurants Pty Limited [1996] ATMO 63 (16 December 1996); Kraft General Foods, Inc v Gaines Pet Foods Corporation [1993] ATMO 83 (2 September 1993).
[36] See Federal Court of Australia proceeding number VID29/2023.
28. In my view, the Applicant’s position is preferable. It is true that whether issue estoppel applies to tribunal decisions is not conclusively settled.[37] Nonetheless, it has been observed that:
[T]he Registrar is not bound by the rules of evidence and retains a broad power to control her proceedings. Upon request, the Registrar is obligated to decide the extent (if any) to which any ground on which the application was opposed has been established. In this context, the Registrar’s remit conceivably includes considering whether a previously decided issue should be revisited. It would, of course, be unusual for the Registrar to depart from her earlier findings. Nevertheless, it remains within the Registrar’s purview provided there is good reason to do so. This much is obvious given the Registrar’s role is to answer the question under s 55 of the Act.[38]
[37] See generally Bogaards v McMahon [1988] [1988] FCA 161, [45] (Pincus J); Administration of the Territory of Papua and New Guinea v Guba [1973] HCA 59, [73] (Gibbs J); Commonwealth of Australia v Snell [2019] FCAFC 57, [51] (Allsop CJ, Reeves and Derrington JJ). The position of the Australian Patents Office is that issue estoppel does not apply to matters before Commissioner of Patents: see SNF (Australia) Pty Ltd v Ciba Specialty Chemicals Water Treatments Limited [2016] APO 8, [33]–[40].
[38] Sky Optical LLC v Golden Cala Trading Est [2023] ATMO 59, [23] (citations omitted).
29. Here, the present proceeding involves a different trade mark, a later priority date and a significantly broader range of goods and services. The issues under consideration differ notwithstanding the existence of any factual overlaps. In this context, the findings made in the Earlier Decision may be of assistance but plainly they are not dispositive of any issue raised in the present proceeding.
Section 58
30. Section 58 of the Act relevantly provides:
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.
31. The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Federal Court said:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[39]
[39] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
32. To succeed under this ground, the Opponent must establish:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark;[40]
the Claimed GS are the ‘same kind of thing’ as the goods and/or services for which the trade mark relied upon by the Opponent has been used;[41] and
a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant.[42]
[40] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[41] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[42] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
33. This ground was relevantly particularised in the SGP as follows:
Since at least 2013, the Opponent has used the trade mark MCENTER (including the variant spelling MCENTRE) (MCENTER Mark) in various countries around the world, including Australia and New Zealand, in relation to the Opponent’s goods and services in the field of implant dentistry, including dental implants and digital dental implant surgery services (Opponent’s Goods and Services).
The Opponent created and authored the MCENTER Mark to use in relation to the Opponent’s Goods and Services.
The Applicant has been at all relevant times a distributor of the Opponent in Australia and New Zealand and has supplied the Opponent’s Goods and Services in Australia and New Zealand under the authorisation of the Opponent since before the filing date of the Application.
The MCENTER Mark has been used by the Opponent and through the Applicant as its distributor in relation to the Opponent’s Goods and Services in order to indicate that the Opponent is their trade source.
The Opponent is and has been at all relevant times (including at the filing date of the Application) the owner at common law of the MCENTER Mark.
34. There are two strands to the Opponent’s ownership claim. The Opponent asserts that it has used ‘MCENTER/MCENTRE’ in Australia since 2013 in relation to goods and services ‘that form part of, are encompassed by and/or are similar to the [Claimed GS]’.[43] Alternatively, the Opponent submits that the Applicant’s use of the Trade Mark should inure to it given ‘none of the use claimed by the Applicant rises higher than use in connection with the Opponent’s goods and services’.[44] In the Opponent’s view, either strand is sufficient to displace the prima facie position that the Applicant is the owner of the Trade Mark.
[43] Opponent’s Submissions, [19].
[44] Ibid [30].
35. The Applicant maintained that the evidence fails to establish that the Opponent used ‘MCENTER’ or ‘MCENTRE’ in Australia before the Relevant Date. Several deficiencies in the Opponent’s evidence were identified by the Applicant which it believed were fatal to establishing this ground. The Applicant asserted that the Earlier Decision is distinguishable from the present proceeding given there is no evidence of any goods manufactured by the Opponent which have been sold to the Applicant bearing the Trade Mark.[45] Likewise, the Applicant claimed that the Opponent should not be able to rely on its use of the Trade Mark given the Applicant was solely responsible for the development of the Trade Mark in Australia. Further, it was submitted that there ‘is no evidence that the Opponent has any oversight or control over the Applicant’s use of the [Trade] Mark in Australia’.[46]
[45] Applicant’s Submissions, [35].
[46] Ibid [36] (emphasis in original).
36. At the outset, it is convenient to make the following observations. A large volume of material has been filed by the parties which is not tailored to use of the Trade Mark but instead concerns the other MIS Marks. This is an inevitable byproduct of filing material that was used as evidence in different opposition proceedings. This extraneous material is irrelevant for the purposes of determining ownership of the Trade Mark. For example, use of ‘MGUIDE’ clearly does not assist in establishing first use of the Trade Mark. Meanwhile, the Opponent has also not delineated the goods and services that the ‘MCENTER’ mark has been used in relation to before the Relevant Date in Australia. As such, there is merit in the criticism that the Opponent’s alleged use is ‘cast at a level of generality’ which makes it difficult to determine if any use has occurred in relation to goods and services that are the ‘same kind of thing’ as the Claimed GS.
37. With respect to the first strand of the Opponent’s ownership claim, the Opponent highlighted three examples of its use of ‘MCENTER’ in Australia.[47] Reliance was placed on a ‘MIS MGUIDE’ document that is said to have been packaged with the surgical kits supplied by the Opponent to the Applicant. An initial difficulty raised by this document is the absence of contemporaneous evidence to establish that the ‘MIS MGUIDE’ was in fact supplied by the Opponent to the Applicant. This is particularly relevant given Mr Magal declares that the ‘MIS MGUIDE’ is ‘from July 2018’,[48] yet the document exhibited is marked ‘MP-MG003 Rev.5 August 2018’. Naturally, this casts doubt on the document to which Mr Magal is referring. Moreover, the ‘MIS MGUIDE’ only contains a solitary reference to ‘MCENTER’ which appears in the following context: ‘MGUIDE Template should be used within 3 months from CBCT scan date. No changes shall be made to the oral cavity unless discussed with the MCENTER’.[49] On its face, it is not apparent what specific goods and/or services this demonstrates use in relation to and further particulars have not been provided. For these reasons, the ‘MIS MGUIDE’ does not provide a sufficient basis to find that the Opponent used ‘MCENTER’ in Australia before the Relevant Date.
[47] Opponent’s Submissions, [17].
[48] Magal 1, [66].
[49] Ibid Exhibit 24.
38. The Opponent relied on two blank work order documents displaying ‘MCENTER’ that were allegedly provided to the Applicant in 2015 and 2018. However, neither document is dated and there is no supporting evidence to establish that either was provided to the Applicant prior to the Relevant Date. Indeed, despite Mr Magal declaring that the Applicant has used these documents to place orders with the Opponent since 2013,[50] it is notable that the evidence filed is devoid of any completed work order documents. As such, this evidence does not assist the Opponent’s case.
[50] Ibid [68].
39. The Opponent also claims that ‘it produced custom surgical templates at its MCENTER facility for the Applicant’ in 2014 and 2015.[51] This claim is based on a statement made in Magal 1.[52] As the Applicant pointed out, this ‘rises no higher than bare assertion’ because there is no documentary evidence of the Opponent having supplied any surgical templates or associated material to the Applicant which bore ‘MCENTER’.[53] For completeness, I acknowledge that the Opponent’s evidence also contains various promotional documents, website screenshots and social media posts which display ‘MCENTER’. However, this material does not improve the Opponent’s position given it is undated, insufficiently contextualised, relates to overseas use and/or reveals use of different trade marks.[54] Consequently, the evidence does not establish that the Opponent used ‘MCENTER’ or ‘MCENTRE’ in Australia before the Relevant Date.
[51] Opponent’s Submissions, [17(c)].
[52] Magal 1, [67].
[53] Applicant’s Submissions, [23(iii)].
[54] See, eg, Magal 1, Exhibits 7–13, Confidential Exhibits 14–23, Exhibits 29–33.
40. Turning to the second strand of the Opponent’s ownership claim, attention was drawn to Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd wherein Windeyer J said:
The manufacturer who sells goods, marked with his mark, to a warehouseman, wholesaler or retailer does not, in my view, thereupon cease to use the mark in respect of those goods. The mark is his property although the goods are not; and the mark is being used by him so long as the goods are in the course of trade and it is indicative of their origin, that is as his products. Goods remain in the course of trade so long as they are upon a market for sale. Only when they are bought for consumption do they cease to be in the course of trade.[55]
[55] [1967] HCA 51, [36].
41. On this basis, the Opponent asserts that the Applicant’s use of the Trade Mark in relation to goods manufactured by the Opponent should inure to its benefit. The consequence being that any use of the Trade Mark by the Applicant before the Relevant Date in Australia would in effect establish the ground of opposition. I do not accept this proposition insofar as it presupposes that any goods or materials distributed by the Applicant were supplied to it by the Opponent. I accept that there are examples of the Opponent’s goods being sold by the Applicant in Australia under, for example, the ‘MGUIDE’ mark before the Relevant Date. However, there are no similar examples in the evidence filed of goods or materials bearing the Trade Mark.
42. Generally, the EIA contains the same deficiencies to those present in the Opponent’s evidence. That is, a large proportion of the examples disclosed are undated, insufficiently contextualised and/or relates to use of different trade marks. Nevertheless, there are some examples of the Trade Mark being used in Australia within the Applicant’s promotional materials before the Relevant Date.[56] The Applicant contends that it independently created these documents and thus the Opponent had no involvement with respect to how the Trade Mark was used. On the balance of probabilities, I accept this contention given the Trade Mark invariably appears in close proximity to one or more of the Moredent Marks within the examples. Tellingly, there is no reference to the Opponent in these examples despite Mr Magal declaring that the Opponent’s goods are ‘always marketed as being goods made by and associated with the Opponent’.[57] Accordingly, the Opponent is unable to rely on the benefit of these examples to establish that it first used the Trade Mark in Australia before the Relevant Date.
[56] See, eg, Gilmore 2, Exhibits JG-10, JG-14.
[57] Magal 1, [21] (emphasis).
Lastly, the Opponent and the Applicant advanced competing versions of what transpired between the parties at the meeting in November 2003. Suffice it to say, there is considerable dispute as to the terms of the oral agreement. Be that as it may, the mere existence of the Agreement does not substantively assist either party for present purposes. This is because the version of events advanced by each party is at least plausible given the ambiguity of the evidence filed. This is particularly so because the Agreement arises from a meeting in 2003 when neither ‘MCENTER’ or the Trade Mark had even been coined. Given what was agreed to at the 2003 meeting is contested, the ownership of the trade marks that subsequently came into existence are equally in doubt. Whilst it appears to be common ground that the Opponent has used ‘MCENTER’ overseas before the Relevant Date, this alone is not determinative of the current s 58 ground of opposition. This ground of opposition is concerned with local authorship and not authorship at large. In these circumstances, the onus remains with the Opponent because a shifting onus of proof does not apply to s 58 of the Act.[58] In this regard, the comments of the Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP are apposite:
[A] finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the Opponent] to establish any ground of opposition.[59]
[58] Food Channel (n 2) [37]–[39].
[59] Ibid [66].
44. Based on the evidence before me, I am not satisfied on the balance of probabilities that the Applicant is not the owner of the Trade Mark. It follows that the s 58 ground of opposition has not been established.
Section 60
45. Section 60 of the Act relevantly provides:
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.
46. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP identified the ‘MCENTER’ mark as supporting this ground and relevantly stated:
The reputation in the Opponent’s MCENTER Mark has arisen as a result of:
(a) substantial quantities of the Opponent’s Goods and Services having been sold and supplied to persons in Australia over many years;
(b) the provision by the Opponent and its authorised distributors of substantial quantities of the Opponent’s Goods and Services to persons in Australian using the MCENTER Mark;
(c) extensive marketing activities having been directed towards persons in Australia to promote the Opponent’s Goods and Services using the MCENTER Mark; and
(d) the supply and marketing of the Opponent’s Goods and Services outside Australia to persons travelling to and from Australia, such as at international conferences and trade shows held outside Australia.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[60] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[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 ...[61]
[60] [2000] FCA 1335, [81] (‘McCormick’).
[61] [1992] FCA 159, [118] (‘ConAgra’).
49. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product … public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[62]
[62] McCormick (n 60) [86].
50. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[63] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[64]
[63] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[64] ConAgra (n 61) [77].
51. In my assessment, the Opponent’s evidence does not establish as a matter of fact that its ‘MCENTER’ mark had acquired a reputation in Australia as at the Relevant Date. For the reasons detailed in the discussion of the s 58 ground of opposition, the evidence fails to establish that the Opponent has used ‘MCENTER’ or ‘MCENTRE’ in Australia prior to the Relevant Date.
52. The Opponent also seeks to rely on spillover reputation insofar as reliance is placed on its use of ‘MCENTER’ in overseas markets and at international conferences. However, the evidence filed reveals that its overseas use of ‘MCENTER’ before the Relevant Date was sporadic at best. As discussed earlier in this decision, a large proportion of the Opponent’s evidence is undated, after the Relevant Date or focuses on use of the Disputed Marks with a particular emphasis on the ‘MGUIDE’ mark. Evidently, use of ‘MGUIDE’ does not constitute use of ‘MCENTER’. It follows that evidence of the former does not assist in establishing the s 60 ground of opposition.
53. With respect to the use of ‘MCENTER’ that appears in the evidence, these examples are predominantly found in magazines and catalogues published by the Opponent as well as in the screenshots of the Opponent’s website and social media posts. But the probative value of this evidence is limited by the fact that it is largely unexplained how Australian consumers were exposed to same. In this regard, I note that the figures disclosed regarding the number of Australian visitors to the Opponent’s website are modest and includes visitors after the Relevant Date.[65] The same is true of the number of Australian attendees that are said to have attended the Opponent’s global conferences.[66] As such, it is not apparent how the alleged reputation arising from the overseas use of ‘MCENTER’ has spilled over into the Australian market. This remains the case notwithstanding the fact the relevant market is specialised and would likely be a confined subset of the Australian population.
[65] Magal 1, Confidential Exhibit 42 which provides website visitor data for the period 1 January 2019 to 30 April 2021.
[66] Ibid [78].
54. Furthermore, the Opponent’s evidence does not disclose any figures pertaining to the revenue derived from the alleged provision of goods and services under the ‘MCENTER’ mark in Australia. Similarly, it is not clear to what extent, if any, the marketing plans provided relate to use of the ‘MCENTER’ mark as opposed to the Disputed Marks.[67]
[67] Ibid Confidential Exhibits 63-65.
55. Finally, the Opponent submitted that the Applicant’s use of the Trade Mark demonstrated in the EIA should inure to its benefit and assists in establishing the reputation acquired by ‘MCENTER’ in Australia.[68] The Applicant rejected this argument.[69] In my view, it is unnecessary to determine this specific issue. Even if I were to accept the Opponent’s position, the use of the Trade Mark demonstrated in the EIA does not adequately supplement the significant limitations of the Opponent’s evidence. As noted earlier, the EIA contains many examples of use which are undated, after the Relevant Date or are use of the MIS Marks and not the Trade Mark. By itself, this is not surprising given the EIA was directed towards answering the EIS and it was not drafted with the intention of establishing any ground of opposition per se.
[68] Opponent’s Submissions, [43(b)].
[69] Applicant’s Submissions, [50(b)].
56. Accordingly, I am not satisfied that the ‘MCENTER’ mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Given s 60(a) of the Act has not been satisfied, consideration of s 60(b) is not required.
57. The s 60 ground of opposition has not been established.
Section 42
58. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:…
(b) its use would be contrary to law.
59. To succeed under this ground, the Opponent must establish that use of the Trade Mark would be, rather than might be, contrary to law.[70] The SGP specifies contraventions of ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 of the Competition and Consumer Act 2010 (Cth). Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
[70] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
The test for ‘misleading or deceptive conduct’ under s 18 of the ACL imposes a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[71] Since the Opponent has failed to establish the s 60 ground of opposition, it follows that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding regarding the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[72]
[71] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
[72] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
61. The s 42(b) ground of opposition has not been established.
Section 62A
62. Section 62A of the Act provides:
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.
63. A finding of bad faith will not be established easily given the ‘very serious’ nature of the allegation.[73] The notion of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2), who observed:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
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.[74]
[73] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[74] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (emphasis added).
64. This ground was relevantly particularised in the SGP as follows:
Having regard to the circumstances of the Applicant’s position as a longstanding distributor of the Opponent’s Goods and Services, the Applicant was or should have been aware at the time of filing the Application that:
(a) the Opponent was the owner at common law of the MCENTER Mark;
(b) the Opponent had a legitimate commercial interest in maintaining an exclusive ownership interest in the MCENTER Mark, including with respect to any new registrations of the MCENTER Mark; and
(c) the Applicant did not have the actual or implied authority or consent of the Opponent to file the Application.
The Applicant’s conduct of filing the Application in such circumstances was conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced traders in Australia.
65. The prospects of establishing this ground of opposition largely hinge on the terms of the Agreement given the parties were obviously known to one another. For its part, the Opponent relies on the distribution relationship of the parties and contends that the Applicant’s filing of the application without the Opponent’s consent is an attempt to appropriate the Trade Mark. Conversely, the Applicant asserts that its conduct of filing the application is consistent with acceptable commercial behaviour given its understanding of the terms of the Agreement.
66. The terms of the Agreement are clearly in dispute and the evidence filed reveals that each party believes that it is entitled to use the Trade Mark. This much is evident from the ongoing trade mark disputes between the parties in Australia and New Zealand. This is not a situation where the Applicant’s conduct could be reasonably construed as attempting to acquire a springboard or an advantage for itself. The Applicant had been using the Trade Mark in Australia for a sustained period of time prior to filing the application. I accept that the distribution relationship between the parties would ordinarily weigh in favour of the ground being established. However, the present circumstances can be distinguished insofar as the evidence shows that the Applicant has never understood or recognised the Trade Mark as being the Opponent’s property despite the lengthy relationship between the parties. The Stup Declaration supports this notion and the Opponent has not led any cogent evidence which establishes otherwise. In my assessment, the Opponent has failed to establish on the balance of probabilities that the application was made in bad faith.
67. The s 62A ground of opposition has not been established.
Decision
68. Section 55 of the Act relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
69. The Opponent has not established a ground of opposition. Trade mark application 2150689 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
70. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
16 August 2023
Annexure A
Application no.: 2150689
Trade Mark: MCENTRE
Owner: More Group Pty Ltd
Specification: Class 5: pharmaceuticals, medical preparations; dental preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth; dental fillings; dental wax; biological bone implant material; bone cement for surgical and orthopaedic purposes; bone void fillers; bone void fillers comprised of living tissues; synthetic material for use in setting bones; synthetic material for use in the embedment of bone; amalgam for dental purposes; dental sealants; dental compounds; dental adhesives; dental amalgams; dental restorative materials; parts, fittings and accessories for the aforesaid goods in this class
Class 10: surgical, medical and dental apparatus and instruments; dental moulding devices; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; Orthodontic appliances; dental apparatus and instruments; dentures; denture parts; artificial teeth; orthodontic elastic bands; teeth protectors for dental use; biodegradable implants for bone fixation; surgical implants comprised of artificial materials; dental milling machines; dental drills; dental bridges; Dental crowns; Dental implant apparatus; Dental implants; Dental prostheses; dental prostheses; Dental tools; Implants (prosthesis) for dental surgery; Interdental stimulators for use in dental treatment; Medical devices for dental surgery; Artificial bone materials of ceramics; Artificial bones; Bone graft substitutes (artificial); Bone prostheses; Bone replacements; Devices for the fixation of bone fractures; Implants (prosthesis) for bone surgery; Implants (prosthesis) for use in bone grafting; Prostheses for implantation into the jaw bone; dental chairs; dental mirrors; parts, fittings and accessories for the aforementioned goods in this class
Class 37: construction services; installation and repair services; fitting services; provision of information, advisory and consultancy services in relation to the aforementioned services
Class 41: education; providing of training; provision of information, advisory and consultancy services in relation to the aforementioned services
Class 42: scientific and technological services and research and design relating thereto; dental research; industrial analysis, industrial research and industrial design services; quality control and authentication services; design and development of computer hardware and software; software as a service (SaaS); platform as a service; technical inspection services; provision of information, advisory and consultancy services in relation to the aforementioned services
Class 44: medical services; healthcare; dentistry; dental services; dental surgery; dental hygiene services; endodontic services; hygienic and beauty care for human beings; providing information in the field of dental health via a website; dental imaging services; rental of dental apparatus and instruments; x-ray services; orthodontic services; provision of information, advisory and consultancy services in relation to the aforementioned services
and Edelman JJ).
Key Legal Topics
Areas of Law
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Civil Procedure
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Commercial Law
Legal Concepts
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Abuse of Process
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Res Judicata
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Stay of Proceedings
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Jurisdiction
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