Mytek Europe Sp. Z O.o. v HEM Sp. Z O.o
[2023] ATMO 45
•4 April 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Mytek Europe Sp. z o.o. to extension of protection to Australia of International Registration 1510100 (9) – M MYTEK (Figurative) (Australian Trade Mark Application No. 2064363) – in the name of HEM Sp. z o.o.
Delegate:
Nicholas Smith
Representation:
Opponent: Philips Ormonde Fitzpatrick
Holder: Mark My Words Trademark Services Pty Ltd
Decision:
2023 ATMO 45
Trade Marks Act 1995 (Cth) - Reg 17A.33 opposition - s 62A considered and established - protection of the IR not to be extended to Australia
Background
1. Trade mark number 2064363 is the Australian designation of a request made under the Madrid Protocol by HEM Sp. z o.o. (‘Holder’) to extend protection of the trade mark subject of International Registration 1510100 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Mytek Europe Sp. z o.o. (‘Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:
Application Number:
2064363
IR Number:
1510100
Priority Date (Convention) and Filing Date
6 August 2019
Goods:
Class 9: communication software; telecommunications software; audio converters; analogue to digital converters; signal convertors; electroacoustic transducers; converters, electric; frequency transformers; metric converters; low noise converters; level converters; aerial converters; current convertors; high frequency convertors; television standards converters; ultrahigh frequency translator apparatus; ultrahigh frequency translator apparatus; converters, electric; direct current converters; cable television converters; printer converters; voltage-to-current converters; dc/ac converters; electronic frequency converters for high velocity electro motors; transducers; analog digital converter; digital analog converter; voltage converters, piezoelectric converters, electro-optical converters; linear transducers; electroacoustic transducers; converters, electric; frequency transformers; force transducers; measuring transducers; measuring transducers; ultrasonic transducers; analogue convertors; current convertors; pressure transducers; torque transducers; picks-ups for guitars; converters, electric; high frequency transducers; static power convertors; voltage-to-current converters; pressure-to-current converters; signal processors for audio speakers; pick-ups for electrical musical instruments; ac/dc converters; score recorders [electronic]; chart recorders; graphic recorders; electrical recorders; data loggers; event recorders; pressure recorders; telephone recorders; score recorders [electric]; pressure indicators; black boxes [data recorders]; milage recorders for vehicles; electronic temperature recorders, other than for medical use.
(‘Holder’s Goods’)
Trade Mark:
(‘Trade Mark’)
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.
Following the advertisement of IP Australia’s intention to extend protection to Australia for the International Registration, the Opponent filed a Notice of Intention to Oppose extension of protection followed by a Statement of Grounds and Particulars on 12 January 2022 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Holder filed a Notice of Intention to Defend on 24 March 2022.
Evidence
The Opponent filed the following evidence in support of its opposition:
·Declaration made on 21 June 2022 by Michal Jurewicz, the President of My Tek Inc., apparently a related entity to the Opponent, with Exhibits 1-9 (‘Jurewicz Declaration’).
The Holder did not file evidence in answer.
6. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Opponent requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result the matter has been allocated to me, a delegate of the Registrar of Trade Marks, for a decision based on the written record.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the 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 any ground on which the the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.
The Opponent
The relevant claims/statements in the Jurewicz Declaration can be summarised as follows:
· The Opponent is one of a number of companies set up by the declarant under the MYTEK name (described collectively in this decision as the ‘Mytek Group’) that sell audio equipment and accessories. The Mytek Group has used the MYTEK word mark since 1992.
· In 1998 the Mytek Group hired Marcin Hamerla, initially as an electronic engineering contactor. Mr Hamerla is the CEO of the Holder. Mr Hamerla has in various e-mails acknowledged that he was responsible for the European market for MYTEK products.
· The Mytek Group engaged a graphic designer in 2014 to create a new logo, which became the Trade Mark. The declarant sent Mr Hamerla a copy of the Trade Mark as an attachment to an e-mail on 20 May 2014.
· The Mytek Group has continuously used the Trade Mark on its products since 2014 and Mr Hamerla had arranged for the Trade Mark to be displayed on the Opponent’s products produced in Europe.
· The Holder was a contract manufacturer of products designed by the Opponent and, at all times, the MYTEK brand and all IP was owned by the Opponent or its related entities in the Mytek Group. This relationship has been acknowledged by the Holder in correspondence.
· On 1 November 2020 the Mytek Group ceased doing business with the Holder and established the Opponent to replace the Holder as a distributor of its products in Europe.
· The Mytek Group has used the MYTEK name as a trade mark in Australia since 2009 and the Trade Mark since 2014 on a variety of audio equipment. The Opponent’s products are available on a number of websites, both maintained by the Opponent ( or through the Opponent’s Australian distributors ( and Opponent has instituted proceedings against the Holder in Europe through OHIM and has received a decision in its favour ordering transfer of the European Union registration of the Trade Mark.
The exhibits to the Jurewicz Declaration display material that supports the statements above including evidence of the use of the Trade Mark in Australia (such as invoices to the Australian distributors bearing the Trade Mark showing the sale of audio equipment) and e-mails between the declarant/Mytek Group and the Opponent and its CEO.
The Holder
10. The Holder has not filed any evidence and as such I have no information about it other than what is set out on the Register and in the Opponent’s evidence as outlined above.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A. To successfully oppose the IRDA the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established a ground of opposition pursuant to s 62A. Consequently, it is unnecessary that I consider the remaining grounds. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
12. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the priority date and filing date of 6 August 2019 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[3]
Discussion
Section 62A
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[4]
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.[5]
[4] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).
[5] [2012] FCA 81, [147].
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.[6]
[6] Ibid [165]-[166].
Her Honour also noted with approval a number of cases in which bad faith were found in specific circumstances as set out below:
In William Leith New Century Marquees (SRISO/018/00, UK Registry), the applicant applied to register a trade mark in respect of marquees, tents and related goods, although aware that NEW CENTURY was the opponent’s trade mark in the United States of America and that the opponent had started to trade in the United Kingdom under the trade mark. He was himself a customer and the delegate found that he should have been aware that the opponent could be expected to expand that trade, if it had not already done so. He had previously proposed a licence arrangement with the opponent although its terms were not clear. The delegate of the Registrar concluded:
Mr Leith subsequently adopted the sign NEW CENTURY MARQUEES as his own trade mark, and he used it in the UK. When he was challenged about this he sought to register the mark in combination with his own name. In my view, the mark he has applied to register is confusingly similar with the mark NEW CENTURY.
...
It is difficult to see how a person who applies to register a mark in his own name which he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. I do not believe that combining the mark with the applicant’s own name is any answer to that criticism.[7]…
In Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, Hearing Officer Nancarrow held that applications to register the trade marks HARD COFFEE MAIN BEACH and HARD COFFEE were made in bad faith within the meaning of s 62A, where a company controlled by the applicant’s controller had previously obtained a licence from the opponent’s predecessor in title to use the HARD COFFEE MAIN BEACH trade mark, acknowledging in that context that it had not purchased any right, title or interest in the names and that the vendor retained title to all related intellectual property rights. The Hearing Officer considered that in the circumstances, the director clearly understood that the trade mark in question remained the property of the opponent in respect of coffee shops.[8]
…
In Pritchard Pacific Pty Ltd Baltimore Aircoil (Australia) Pty Ltd v Brendan McCarrison and Breezewater Pty Ltd [2011] ATMO 46, the delegate upheld opposition to the registration of a trade mark for, inter alia, cooling towers and like apparatus and related services, on grounds including bad faith under s 62A of the Act. The delegate found that the applicant’s controller had a prior business connection with and knowledge of the opponent, such that a person standing in his shoes should have known that he should not apply for the registration of a trade mark deceptively similar to that used by his former business partner (at [42]).[9]
[7] Ibid [151].
[8] Ibid [153].
[9] Ibid [156].
The Opponent has particularised this ground of opposition in the SGP as follows:
HEM Sp. z o.o. (HEM) was the contract manufacturer and distributor of Mytek products in the European Union. The Opponent stopped doing any business with HEM and discontinued all Mytek products that have been made by HEM.
The leading reason were the dubious business practices of Mr. Marcin Hamerla, owner of HEM, spanning the last 3 years, which resulted in complete loss of confidence and made any future collaboration impossible.
They include breach of contract, theft and illegal appropriation of the Opponent’s intellectual property, illegal registration of the Opponent’s trademark, without the Opponent’s permission, and concealment of financial transactions and business communications.
The current application was filed in bad faith by HEM, who were aware the Opponent was the rightful owner of the mark and did not inform the Opponent of their actions.
19. Based on the uncontradicted evidence of the Opponent, I find that the Opponent and the Holder knew each other (the Holder being a former distributor of the Opponent’s products in Europe) and that at all times was aware that the Opponent had created and used the Trade Mark that the Holder now seeks this office to extend protection to. While the fact that the Holder was aware of the Opponent’s business and its trade mark is not of itself fatal,[10] the act of applying to register a trade mark that an applicant has previously recognised as the property of another has previously been held to support a finding that s 62A has been established.[11]
[10] Next Group Plc v Nexcorp Australia Pty Ltd [2016] ATMO 34, [77] (Hearing Officer Lyons).
[11] Bombala Council v Peter Wilkshire [2009] ATMO 33, [35] (Hearing Officer McDonagh).
20. In the present case the Holder was distributing the Opponent’s products and sought this office to extend protection to an identical trade mark to the trade mark used by the Opponent for those products. I have been provided with no plausible explanation of the Holder’s actions, nor is there an obvious reason for the Holder to seek to register the Trade Mark (as opposed to, for example, a trade mark that reflects the Holder’s own name). This matter has obvious parallels with the cases set out in paragraph 17 above in which bad faith was found when a former distributor seeks to register a trade mark used by its former principal. I am satisfied that the Holder’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[12] I find that the Opponent has established the ground of opposition under s 62A.
[12] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77] (Bennett J).
Decision
21. 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.
22. The Opponent has established a ground of opposition under s 62A. I refuse to extend protection of the IR for the Holder’s Goods. Otherwise, I direct that the protection of the IRDA be subject to any orders of the Court.
23. The International Bureau will be notified of the Registrar’s decision.
Costs
24. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Holder under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
4 April 2023
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