Moving Life Pty Ltd v BYD Company Limited

[2024] ATMO 148

TRADE MARKS ACT 1995

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

Re:Opposition by Moving Life Pty Ltd to extension of protection to Australia under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark application number 2277013 (International Registration number 1665812) (12) - Atto - in the name of BYD COMPANY LIMITED

Delegate:

Louise Tuohy

Representation:

Opponent: Melissa McGrath of Counsel instructed by By George Legal

Holder: Clayton Utz

Decision:

2024 ATMO 148

Trade Marks Regulations 1996 (Cth) – regulation 17A.33 oppositions – grounds of opposition pursued under sections 58, 60, 42(b) and 62A – no grounds established – protection to be extended to Australia

Background

1. This decision concerns an opposition brought by Moving Life Pty Ltd (‘Opponent’) to the extension of protection to the following International Registration Designating Australia (‘IRDA’) in the name of BYD COMPANY LIMITED (‘Holder’):

   Trade mark:  Atto     (‘Trade Mark’)

   Australian trade mark number:         2277013

   International registration number:     1665812

   Filing date:  7 April 2022[1]

   Specification:  Class 12: Cars, including battery powered electric cars; none of the foregoing being mobility scooters or parts and accessories for mobility scooters (‘Holder’s Goods’)

   [1] Convention priority claimed: 9 December 2021, China, Number: 61261892.

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

3. The Trade Mark was examined and advertised as accepted for possible protection on 21 June 2022. 

4. On 17 October 2022 the Opponent filed a Notice of Intention to oppose extension of protection followed by its Statement of Grounds and Particulars (‘SGP’) on 19 September 2022. The Holder filed a Notice of Intention to Defend on 25 October 2022.

5. Thereafter the Opponent filed the following evidence in support:

• Declaration of Rafy David, Chief Executive Officer of the Opponent, made on 31 January 2023 with Exhibits RD-1 to RD-29 (‘David 1’).

1. The Holder filed the following evidence in answer:

• Declaration of Xu Yunfeng, Intellectual Property Manager of the Holder, made on 25 March 2024 (‘Xu’).

1. The Opponent filed the following evidence in reply:

• Declaration of Rafy David, made on 28 June 2024, with Exhibits RD-30 to RD-41 (‘David 2’).

1. The Opponent requested an oral hearing via videoconference and the Holder requested a hearing by way of written submissions. As a delegate for the Registrar of Trade Marks I heard the matter by videoconference on 26 July 2024. Melissa McGrath of Counsel instructed by Natalia Blecher of By George Legal appeared on behalf of the Opponent, along with Jeremy Chiu and Helen Tang of East IP and Rafy David of the Opponent. The Opponent’s oral submissions were supported by its written submissions filed prior to the hearing. The Holder’s written submissions were filed on 19 July 2024.

Grounds of Opposition, Date and Onus

1. Regulation 17A.34 of the Regulations provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A.

2. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A.

3. The date at which the rights of the parties are to be determined is the filing date of the application, being 7 April 2022. The Holder also claims a convention priority date pursuant to the Madrid Protocol being 9 December 2021 this is the priority date for the ground of opposition pursuant to s 60.

4. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

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

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Discussion

The Opponent

1. The Opponent was founded in 2011 and incorporated in Israel in 2012. Since 2011 the Opponent has developed, manufactured and marketed a range of electric vehicles (‘EV’) and accessories primarily designed to transport people of all ages that contend with mobility challenges. The Opponent’s goods are sold in 63 countries worldwide including Australia.

The Holder

1. The Holder was founded in 1995 and is a Fortune 500 company, listed in both Hong Kong and Shenzhen Stock Exchanges. The Holder’s business spans four major industries: automobiles, rail transit, renewable energy and electronics. The Holder is one of the largest EV manufacturers in the world, with a presence in over 400 cities across 70 countries and regions.

Section 58

1. Section 58 provides:

   58  Applicant not owner of trade mark

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

1. In summary the SGP provides that on the filing date the Holder was not the owner of the Trade Mark because the Opponent has been using the ATTO trade mark extensively in Australia in relation to the sale and promotion of a range of EV and related parts and accessories, which are the ‘same kind of thing’ as the Holder’s Goods.

2. To establish this ground, the Opponent must show use in Australia, by some person other than the Holder, of a trade mark that is identical or substantially identical to the Trade Mark, ^[4] in relation to goods that are the ‘same kind of thing’ as the Holder’s Goods.[5]  The trade mark relied on by the Opponent must have been used in the course of trade prior to the filing date, or prior to the date of first use of the Trade Mark, whichever is earlier.[6] 

   [4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).

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

3. The test for whether two trade marks are substantially identical requires that the trade marks are considered side-by-side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical. On a side-by-side comparison given the Opponent’s ATTO trade mark and the Trade Mark are identical, they are clearly substantially identical.

   [7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

4. As I have determined that the Trade Mark is substantially identical to the Opponent’s ATTO trade mark, it is necessary to decide from what date or dates the Opponent’s claim to proprietorship of its ATTO trade mark commences in respect of goods. As the Opponent does not have an earlier registration for its ATTO trade mark, it is necessary to consider the Opponent’s claim to proprietorship based on use of its ATTO trade mark for goods.

5. In David 1, Mr David states that in 2016 the Opponent commenced selling its EV (specifically, foldable mobility scooters) and related accessories in Australia through a distributor named Drive and Carry Pty Ltd (‘DC’). DC operated as the Opponent’s Australian distributor until 2021 when 5 Star Mobility Pty Ltd (‘5 Star’) was appointed.

6. Confidential Exhibit RD-7 to David comprises invoices issued by the Opponent to DC dated between May 2016 to December 2020 for ATTO foldable mobility scooters. Confidential Exhibit RD-7 to David also comprises tax invoices from DC to various customers dated between March 2016 to May 2017 for ATTO foldable mobility scooters and accessories.   

7. Annexure RD-15 to David comprises screenshots from the Internet Archiving Service Wayback Machine for the website dated from February 2017 to March 2022. The screenshots display images of the Opponent’s ATTO foldable mobility scooters offered for sale.

8. Having considered the Opponent’s evidence of use, I must now consider the Holder’s use of the Trade Mark in Australia. In Xu, Mr Xu states that by February 2022 the Holder had launched its ATTO 3 EV SUV in Australia. Exhibit 6 to Xu comprises screenshots from the Wayback Machine of the Holder’s Australian distributor EVDirect’s website evdirect.com.au dated between 19 February 2022 to 12 May 2022. The screenshots promote the Holder’s ATTO 3 EV SUV.  

9. I am satisfied based on the respective chronologies set out in the evidence of the parties that the first use of the Opponent’s ATTO trade mark for foldable mobility scooters, predates the first use in the course of trade of the Trade Mark for EV SUV. 

10. I now turn to consider whether the Holder’s Goods are the same or the ‘same kind of thing’ as the goods for which the Opponent has established use prior to the filing date. The test for whether goods are ‘the same kind of thing’ is a narrower assessment than whether goods or services are ‘of the same description’ or are ‘closely related’.[8] In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:

    The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods “though not identical… yet substantially the same” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206).  This approach is conformable with the terms of the 1995 Act.[9]

    [8] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12] – [13] (Kenny J) (‘Colorado’).

    [9] [2007] FCAFC 184, [89].

11. The completing claims for proprietorship rest to large extent on defining the Opponent’s goods. The Opponent submits the Holder’s claim for cars is so broad that it includes mobility vehicles (which it characterises as microcars) regardless of whether a carve out for mobility scooters is made.

12. The Opponent submits that the definition of car encompasses microcars and that microcars are technically quadricycles which differ from cars only in matters of regulatory control such as power, weight and top speed. The Opponent submits that the function, features, servicing and maintenance, market, trade channels, audience, methods of promotion and financing of microcars overlap almost entirely with mobility vehicles.

13. In this matter, the evidence shows that the product sold by the Opponent can be characterised as a foldable mobility scooter. As such, the question is whether a foldable mobility scooter can be realistically described as a car. To put it another way and referring to the example cited in Colorado, is a foldable mobility scooter a ‘hatchet’ and a car an ‘axe’ (ie. a larger version of essentially the same thing) or are there sufficient essential differences between the two so that they cannot realistically be considered the ‘same kind of thing’.

14. I consider the nature of a foldable mobility scooter is different to a car. In particular a foldable mobility scooter is a lightweight disability vehicle that is mainly used off road by a single person, is electrically powered and can fold up into a product that can be pulled by a person of normal strength. In comparison, even the smallest type of car that falls within the specification, being a microcar, is a vehicle used on a road network, has an enclosed body, can hold multiple people and is generally wider than a mobility scooter, which makes it resemble a normal car.

15. I note the Opponent’s submission that mobility scooters and microcars are part of the same consumer’s lifecycle and that some manufacturers produce both mobility scooters and microcars. However, the mere fact that the same business may provide both products, is not necessarily sufficient to render these goods the ‘same kind of thing’. In Australia an individual in a mobility scooter is considered to be a pedestrian and such a product is typically purchased from a mobility specialist retailer. In comparison, microcars are sold through car retailers and consumers require a licence to drive them. They are tangible utilitarian goods that do not provide the same mobility options, one is not a substitute for the other.

16. I am not satisfied that the Opponent’s foldable mobility scooters and cars are true equivalents, as such I do not find that foldable mobility scooters are the ‘same kind of thing’ as the Holder’s Goods.

17. The Opponent has not established the ground of opposition under s 58.

Section 60

1. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. In the SGP the Opponent has particularised the s 60 ground of opposition as follows:

   Continuously since at least 2016, the Opponent has been using the ATTO trade mark extensively in Australia in relation to the sale and promotion of a range of electric vehicles and related parts and accessories (Moving Life Goods).

   … the Opponent’s ATTO trade mark had, before the Priority Date, acquired a reputation amongst consumers in Australia in relation to the Moving Life Goods and consumers had come to associate the ATTO trade mark with the Moving Life Goods and/or the Opponent.  Because of the reputation referred to in paragraph 7, the use of the Opposed Trade Mark by the Holder in relation to any of the Claimed Goods would be likely to deceive or cause confusion

   By reason of the matters referred to […] above, the Opponent was the first user of the ATTO trade mark in Australia in respect of the Moving Life Goods, which are the “same kind of thing” as the Claimed Goods. Accordingly, the Holder is not the owner of the “Atto” trade mark.

3. To satisfy s 60 the Opponent must establish that the trade mark upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[10] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[11]

   [10] [2000] FCA 1335, [81].

   [11] [1992] FCA 159, [118].

5. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

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

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

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[12]

   [12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

6. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[13]

   [13] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

7. The trade mark the Opponent relies upon is it’s ATTO trade mark. The Opponent commenced selling its ATTO foldable mobility scooters in Australia in 2016.

8. Confidential Exhibit RD-11 to David 1 comprises details of sales volumes for the Opponent’s scooters in Australia for the years 2016 to 2022. Confidential Exhibit RD-13 to David 1 comprises details of the marketing expenditure by DC for the years 2017 to 2021. Confidential Exhibit RD-12 to David 1 comprises details of the marketing expenditure by 5 Star for a twelve-month period.

9. Confidential Exhibit RD-7 to David 1 comprises invoices issued by the Opponent to DC dated between May 2016 to December 2020. Confidential Exhibit RD-7 to David 1 also comprises tax invoices issued by DC to various customers dated between March 2016 to May 2017.

10. The Opponent’s ATTO foldable mobility scooters are promoted by Australian retailers located in all states and territories. Annexure RD-15 to David 1 comprises screenshots of webpages from the Wayback Machine of Australian retailers including 5 Star, Lifestyle Mobility Scooters, Peninsular Home Health Care, The Care Kiosk, Statewide Home Health Care, Active Scooters, Choice Living Solutions and Portable Mobility, dated between February 2017 to March 2022. The screenshots display the Opponent’s ATTO foldable mobility scooters for sale.

11. The Opponent’s ATTO foldable mobility scooters have also been promoted at trade shows, expos and online by its Australian distributor DC.[14]

    [14] David 1 (17), Confidential Exhibit RD-8, Exhibit RD-10.

12. On my assessment of the Opponent’s evidence, I cannot be satisfied that the Opponent had a reputation in its ATTO trade mark at the priority date. The Opponent’s ATTO trade mark has been used in Australia for around 6 years before the priority date in relation to foldable mobility scooters. However the Opponent’s sale volumes are low, and its market share has not been disclosed. Whilst the Opponent’s ATTO trade mark may have been exposed to consumers via its Australian distributors and retailers at trade shows, expos and online, no figures are provided about approximate spectators at these events and available online metrics show minimal interaction. Moreover, no examples of consumer perceptions have been provided.  

1. Overall, I am not satisfied that the Opponent’s claim to reputation in Australian in its ATTO trade mark for mobility scooters is supported by the evidence. The Opponent has not established as a matter of fact, that its foldable mobility scooter sold under its ATTO trade mark was recognised in Australia at the priority date by a significant or substantial number of potential consumers.

2. As s 60(a) has not been established, it is not necessary for me to consider s 60(b).

Section 42(b)

1. Section 42(b) provides:

   42 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.

1. In the SGP the Opponent has particularised the s 42(b) ground of opposition as follows:

   The Opponent […] alleges that the use of the Opposed Trade Mark by the Holder would be contrary to law. In particular, that use would be contrary to ss 18 and 29 of the Australian Consumer Law and it would also constitute the commission of passing off.

   In this regard, the Opponent refers to and repeats the particulars set out [in paragraph above].  

   In relation to passing off, the Opponent adds that the use of the Opposed Trade Mark by the Holder in relation to electric vehicles has caused it damage and will continue to cause it damage.

2. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[15]

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

3. Section 18 of the Australian Consumer Law[16] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[17] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

   [16] Competition and Consumer Act 2010 (Cth), sch 2.

   [17] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

4. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[18] and nor will it constitutepassing off.[19]

   [18] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

   [19] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

5. The Opponent has not established the ground of opposition under s 42(b).

Section 62A

1. Section 62A provides:

   62A  Application made in bad faith

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

2. In the SGP the Opponent particularises the s 62A ground of opposition as follows:

   … the Opponent sets out two concurrent bases for establishing that the Holder was on notice as at the Filing Date (defined below) that:

   (a) the Opponent had a global reputation (including in Australia) in relation to the Moving Life Goods and/or the ATTO trade mark in Australia; and
   (b) this reputation was formed before the Priority Date.

   Chinese trade marks

   The Opposed Application is an IRDA that is based on Chinese trade mark application no. 61261892 (Holder’s Chinese Application).

   The Holder’s Chinese Application was filed on the Priority Date.

   The Opposed Application was filed on 7 April 2022 (Filing Date). The Priority Date is based on a convention priority claim, which is itself based on the Holder’s Chinese Application.

   The Opponent is the owner Chinese trade mark registration no. 22163830 for the following composite device trade mark  (Opponent’s Chinese Registration).

   The Opponent’s Chinese Registration is registered in respect of the following goods in class 12:

   vehicles for locomotion by land, air, water or rail; electric vehicles; push scooters [vehicles]; mobility scooters; pumps for bicycle tyres; wheelchairs; motor scooters; motors, electric, for land vehicles; motorcycles; tyres for vehicle wheels; repair outfits for inner tubes; horse-drawn carriages.

   The Opponent’s Chinese Registration was filed in China on 7 December 2016 and it matured to registration on 21 January 2018.

   In about March 2022, a Notice of Refusal (Notice of Refusal) was issued against the Holder’s Chinese Application by the Chinese Trademark Office (PRCTMO). In this Notice of Refusal, the Opponent’s Chinese Registration was cited against the Holder’s Chinese Application as the basis for a relative grounds objection to registration.

   On about 30 March 2022, the Holder filed an appeal with the Trademark Review and Adjudication Department (TRAD) against the Notice of Refusal.

   In about June 2022, the Opponent received a notification from the PRCTMO that a third party Chinese entity filed non-use cancellation action against the Opponent’s Chinese Registration on 7 March 2022 (Non-Use Cancellation Action).

   The Holder caused the Non-Use Cancellation Action to be filed.

   Opponent’s global reputation and online activities

   The Opponent’s website, located a <movinglife.com>, states that the Moving Life Goods are distributed and sold worldwide. This website was in operation on and before the Priority Date and has been at all times since that date.

   Continuously since at least 2016, the Opponent has been using the ATTO trade mark extensively in Australia in relation to the sale and promotion of a range of electric vehicles and related parts and accessories (Moving Life Goods).

   In addition, the Opponent’s Australian distributor’s website, located at <attoaustralia.com.au>, states that the Moving Life Goods are distributed and sold in Australia. This website was in operation on and before the Priority Date and has been at all times since that date.

   By reason of the matters referred to above, the Registrar should infer that a simple online search by the Holder, after receiving the Notice of Refusal and before the Filing Date, for the Opponent and/or the ATTO trade mark would have revealed to it that the Opponent had been using the ATTO mark globally, including Australia, for many years.

   By reason of the matters referred to above, the Registrar should infer that the Holder was on notice on the Filing Date that:

   (a) the Opponent had a reputation in relation to the Moving Life Goods and/or the ATTO trade mark in Australia; and
   (b) this reputation was formed before the Priority Date.

   The Holder’s conduct in filing the Opposed Application on the Filing Date:

   (a) fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons; and/or
   (b) was in bad faith.

3. The Act provides no guidance as the meaning of the term ‘bad faith’. The Explanatory Memorandum to the Trade Marks Bill 2006 (Cth) provided that the new ground has been introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith’.

4. In DC Comics v Cheqout Pty Ltd, Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[20] Moreover, conduct after the filing of an application can be used to shed light on the Holder’s subjective intent at the time of filing.[21]

   [20] [2013] FCA 478, [62].

   [21] Ibid, [71].

5. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Holder actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:

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

   … The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]

   […]

   [22] [2012] FCA 81; Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

6. Her Honour continued later in the same decision:

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

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[23]

   [23] Fry (n 7) [2012] FCA 81, [147], [165]-[166].

7. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[24]

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

8. The Opponent submits that at the time of filing the request to extend protection of the International Registration to Australia, it had a reputation throughout Australia and globally in its ATTO trade marks in relation to its goods. The Opponent submits that the Holder was aware or ought to have been aware of the use of the ATTO trade marks by the Opponent and the reputation it had built in the ATTO trade marks, yet proceeded with the application to extend protection of the Trade Mark anyway.

9. In response the Holder states that the Opponent did not own any trade mark applications or registrations in Australia, and that the Holder was launching an international EV brand in several countries. Moreover, the fact that the Holder and the Opponent have a history of dealings involving entirely unconnected matters (trade mark oppositions in other countries) does not provide any support for the suggestion that the Holder only sought to apply to extend protection of its International Registration in Australia to benefit from any goodwill in the Opponent’s unregistered ATTO trade mark. 

10. The Opponent’s position is based on the reputation of its ATTO trade marks. However, I have already found that the Opponent has not established that its ATTO trade mark had acquired a reputation in Australia at the priority date. Furthermore, while it is evident from the Opponent’s evidence that the Holder was aware of the Opponent’s stylised ATTO trade mark having had it’s principle trade mark application in China refused due to the citation of the Opponent’s prior registration, ‘mere knowledge before the filing date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’.[25]

    [25] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).

11. As there are no other aspects of the Opponent’s evidence that point to any activity or action taken by the Holder that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied on the balance of probabilities that the filing of the request to extend protection of the International Registration to Australia in the circumstances existing at the filing date was conduct that constitutes bad faith.

12. The Opponent has not established the ground under s 62A.

Decision

1. Regulation 17A.34N provides:

   17A.34N  Decision on opposition

   (1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA;

   or

   (b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations); having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2) The Registrar must notify the International Bureau of the Registrar’s decision.

2. The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar extends protection to the IRDA.

3. The IRDA may proceed to protection one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and the protection of the IRDA be subject to any orders of the Court.

4. The International Bureau will be notified of the Registrar’s decision.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

23 August 2024

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