Nathan Teixeira v Battery World Australia Pty Ltd - [2024] ATMO 214

TRADE MARKS ACT 1995

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

Re:Opposition by Nathan Teixeira to registration of trade mark application number 2040779 (classes 9 & 37) - Lighting in a Circle Device - in the name of Battery World Australia Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Gestalt Law Pty Ltd

Applicant: Griffith Hack

Decision:

2024 ATMO 214

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b) and 59 pursued – no grounds established – trade mark to proceed to registration

Background

On 30 September 2019, Battery World Australia Pty Ltd (‘Applicant’) filed an application for the following trade mark:

Number: 2040779 (‘Application’)

Trade Mark: (‘Trade Mark’)

Priority Date: 11 March 2019

Specification: Class 9: Electric storage cells and batteries including accumulators, lead-acid batteries, chlorine batteries and alkaline batteries and electric storage cells, accumulators and battery chargers; portable power apparatus in this class; solar collectors, cells and panels for electricity generation; solar power regulators; solar energy operating apparatus; parts, fittings and accessories in this class for electric storage cells, batteries, accumulators, chargers, portable power apparatus and solar energy apparatus including battery adaptors, cables, charge indicators, holders, housing covers, leads, starters, testing apparatus and connectors; downloadable electronic publications; software; downloadable software applications (apps)
Class 37: Construction, repair, maintenance and installation services in this class, including such services in the field of batteries and electrical or solar equipment and apparatus; replacing batteries; battery repacking; recharging batteries; providing information, consultancy and advice in relation to all of the foregoing

Following the advertisement of acceptance of the Trade Mark for possible registration, Nathan Teixeira (‘Opponent’) opposed registration of the Trade Mark pursuant to
s 52 of the Trade Marks Act 1995 (Cth).[1] The Opponent filed a Notice of Intention to Oppose on 13 December 2022 and the following day filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend on 6 February 2023.
[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The parties then proceeded to file their evidence in accordance with the Regulations. The Opponent’s evidence in support of the opposition was filed on 28 March 2023.
On 26 June 2023, the Applicant requested amendment of the class 37 specification of the Application as shown below (‘Amendment Request’):
Construction, repair, maintenance and installation services ~~in this class, including such services~~ in the field of batteries and electrical or solar equipment and apparatus; replacing batteries; battery repacking; recharging batteries; providing information, consultancy and advice in relation to all of the foregoing
The class 9 goods of the Application and class 37 services as amended above are hereinafter referred to as the ‘Applicant’s Goods and Services’.
The Applicant filed its evidence in answer to the opposition on 30 June 2023 and the Opponent filed evidence in reply on 28 August 2023.
Once the evidence stage had ended, the parties were given the opportunity to request a hearing. Both parties requested a hearing by written submissions and the Opponent’s attorneys, Gestalt Law Pty Ltd (‘Gestalt’), filed written submissions on 22 May 2024. The Applicant’s written submissions were prepared by Kellie Stonier of Griffith Hack (‘GH’) and filed on 4 June 2024. As discussed below at [21], the Opponent filed supplementary submissions on 14 October 2024. This matter has been delegated to me to determine which I do based on the aforementioned materials.

Grounds, onus and relevant date

In its SGP, the Opponent nominated grounds of opposition under ss 42(b) and 59.
The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]
[2] Food Channel Network Pty Ltd v Television Food Network GP ‘Food Channel Network’) [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
The date at which the rights of the parties are to be determined for s 42(b) is 11 March 2019 being the priority date of the Application[4] and for s 59 is 30 September 2019, the filing date of the Application.[5] Any reference to the ‘Relevant Date’ is a reference to the applicable date based on the ground of opposition under discussion.
[4] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J)
[5] Food Channel Network (n2), [74].

Evidence and preliminary mater

The following evidence was filed during the proceedings:

12. Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Nathan Teixeira, Opponent (‘Teixeira’) Patrick Martin, paralegal at Gestalt Law Pty Ltd, attorneys for the Opponent (‘Martin’)	28 March 2023 17 March 2023	NT-1 to NT-9 PM-1 to PM-9
Evidence in answer (‘EIA’)
Courtney Hoogkamer, Corporate Governance & Risk Manager of Century Yuasa Batteries Pty Ltd, parent company of the Applicant (‘Hoogkamer’)	30 June 2023	CH-1 to CH-3
Evidence in Reply (‘EIR’)
Nathan Teixeira (‘Teixeira 2’)	28 August 2023	NT-10 to NT-11

On 30 June 2023, in addition to Hoogkamer, the Applicant filed a declaration of Martin McEnery, Marketing Manager of the Applicant, with Annexures MM-1 to MM-7 (‘McEnery Declaration’). This document purported to be a Statutory Declaration but the date and place of execution were blank and the witness did not specify their capacity to witness a statutory declaration.
On 6 July 2023, this office wrote to both parties confirming receipt of the McEnery Declaration but advising that the declaration would only be accepted as properly filed if the Applicant lodged a supplementary declaration advising the date of execution of the McEnery Declaration within 14 days (‘6 July Letter’). The Applicant did not respond to the 6 July Letter and on 24 July 2023, an official notice issued confirming that all EIA, which consisted of Hoogkamer, had been filed.
The Opponent then filed its EIR. Teixeira 2 stated that the Opponent had ‘read and reviewed’ the EIA comprising Hoogkamer and made no mention of the McEnery Declaration.
The Opponent requested a hearing by written submissions on 29 September 2023 and on 16 April 2024, an official notice issued advising that the hearing date was scheduled for 5 June 2024 and setting a timetable for the filing of the written submissions.
On 10 May 2024, the Applicant requested an extension of time pursuant to Regulation 9.18(2) to respond to the 6 July Letter (‘EOT Request’) and filed a Declaration of Kellie Stonier of GH, made on 10 May 2024, in support of the extension request (‘Extension Declaration’) and a Supplementary Declaration of Kellie Stonier, also made on 10 May 2024 stating that the McEnery Declaration was declared by Mr McEnery on 30 June 2023 (‘Execution Declaration’). No extension fees were paid with the EOT Request. The Extension Declaration claimed that Ms Stonier had only just become aware of the 6 July Letter and as a result, it had only just come to her attention that the McEnery Declaration was excluded from the EIA. Ms Stonier attests that the 6 July Letter was not received by GH because of changes that had been made to its computer network infrastructure after a cyber security incident at GH’s parent company.
On 20 May 2024, this office informed the parties that as no extension fees had been paid with the EOT Request and the evidence stage had ended, the Execution Declaration, McEnery Declaration and Extension Declaration were filed out of time and the parties should include arguments in their hearing submissions on the potential inclusion of this information as further evidence.
On 27 May 2024, Ms Stonier filed a request to have the McEnery Declaration and Execution Declaration considered as further evidence under Reg. 21.15(4). This request was accompanied by a further declaration made by Ms Stonier on 27 May 2024 which essentially outlined the same reasons for the request as those made in the Extension Declaration.

Regulation 21.15(4) permits me to have regard to any matter before me which I reasonably believe is appropriate. Having reviewed the aforementioned materials I concluded that it was appropriate to consider the McEnery Declaration in forming my decision on the substantive matter. The information in the McEnery Declaration is highly probative and it would be inappropriate not to have regard to the declaration simply due to the Applicant’s failure to date the declaration which was obviously signed on or before the deadline for filing the EIA, and because the information had been available to the Opponent before the EIA deadline. Moreover, it is in the public interest and interests of the parties that I have all relevant information available in deciding the opposition on its merits and to avoid any unnecessary appeal.
I advised the parties of my intention to have regard to the McEnery Declaration by letter of 14 August 2024 but in the interests of procedural fairness, I allowed the Opponent two months to 14 October 2024 to file evidence in response to the McEnery Declaration and supplementary submissions relating to that evidence. The Opponent chose not to file any further evidence but filed supplementary written submissions on 14 October 2024. The Applicant’s submissions filed on 4 June 2024 already covered the McEnery Declaration and hence the Applicant was not given the opportunity to file additional submissions.

Opponent’s evidence

Teixeira attests that he is a licensed electrician and managing director of an electrical services business trading as Dr Sparks Electrical (‘Opponent’s Business’) since 2018. The Opponent’s Business provides electrical services by qualified electricians 24 hours a day, seven days a week including servicing and maintaining electrical installations in residential, strata and commercial spaces.
On 26 May 2020, the Opponent filed applications to register its trade mark Dr Sparks (number 2091219), and the mark detailed below:

Number	Trade Mark	Services
2091220	(‘Opponent’s Mark’)	Class 37: Electrical wiring services; residential, commercial and industrial installation and repair of electrical and computer wiring and cabling; installation, maintenance and repair of data and communications network; electrical apparatus installation; electrical apparatus repair; electrical installation services; installation of audio electrical apparatus; interference suppression in electrical apparatus; maintenance and repair of electrical apparatus; maintenance, installation and repair of electrical items and equipment; on-site building project management; project preparation relating to building renovation relating to electrical design; supervision of construction projects; electrical contracting; installation of lighting systems; installing of telecommunications networks; maintenance and repair of telecommunications apparatus; residential, commercial and industrial installation and repair of electrical switch boards; electrical installation, repair and maintenance services in this class; installation, repair and maintenance of alarms; installation, repair and maintenance of heating; installation, repair and maintenance of cooling; installation, maintenance and repair of air conditioning apparatus; installation, repair and maintenance of solar energy systems; installation, repair and maintenance of renewable energy systems; installation, maintenance and repair of air conditioning apparatus handyman repair, maintenance and installation services; home maintenance services; home repair services; renovation of buildings; repair information services; painting services; house painting; painting of building interiors and exteriors; interior decorating services; cleaning services; domestic cleaning services; property maintenance; cleaning of building sites; waste removal (cleaning); building services; building construction services; building demolition services; caretaking services; deodorising services; disinfection services; plumbing; plumbing services, including clearing of tree roots from pipes and drains, plumbing installations, maintenance, servicing and repairs, gas fitting, maintenance and repairs, emergency plumbing services; renovation of plumbing; disconnecting unused service lines (eg gas, mains water, electricity); maintenance and repair of gas installations and equipment; repair of gas supply systems

Teixeira attests that he has opposed registration of the Trade Mark because the Applicant has objected to his use of the Opponent’s Mark in various correspondence (‘Objection Correspondence’). The Opponent relies heavily on the Objection Correspondence in support of this opposition and hence I have summarised the correspondence below:

21 August 2020- telephone call from GH to Applicant indicating their awareness of his application 2091220 and would be sending a cease and desist letter;
Cease and desist letter from GH to the Applicant dated 5 November 2021 (‘5 November Letter’) claiming that use of the Opponent’s Mark infringes the Applicant’s ‘pending applications and registrations’ below:

(‘Applicant’s Registered Marks’)

Email from Gestalt of 3 February 2022 to GH querying whether the Applicant was asserting trade mark infringement based on the pending Applications and GH’s reply that the reference to pending applications was an error;
Letter from GH to Crazy Domains dated 17 May 2022 requesting that they suspend or terminate the Opponent’s website at on the basis that use of the Opponent’s Mark infringes the Applicant’s Registered Marks and claiming that the Applicant has a reputation in those registered marks for ‘batteries, solar and electrical goods and operating systems’ and ‘various construction, repair, maintenance, testing, analysis and installation services including in relation to batteries, solar and electrical equipment and apparatus and recycling services’ and that use of the Opponent’s Mark also contravenes the Australian Consumer Law (‘ACL’). Schedule 2 of the Competition and Consumer Act 2010 (Cth);
Email dated 21 May 2020 to the Opponent from Instagram advising that the Applicant had complained that use of the Opponent’s Mark ‘goes against their trade mark rights’ which resulted in a number of the Opponent’s Instagram posts being removed; and
Letter from Opponent’s attorney to GH dated 14 July 2022 denying the Applicant’s allegation of infringement, noting that the Opponent’s Mark is not deceptively similar to any of the Applicant’s Registered Marks, notifying the Applicant that its demands constitute unjustified threats within the meaning of s 129, noting that no details are provided about the Applicant’s business to support the claim that use of the Applicant’s Mark contravenes the ACL and that there is no misrepresentation as the Applicant’s Registered Marks are always used with the mark Battery World whereas the Opponent’s Mark is always used with Dr Sparks.
Letter from GH to the Opponent’s attorneys of 2 September 2022 disagreeing with the Opponent’s position and reiterating that the Applicant requires the Opponent to provide the undertakings sought in the 5 November Letter.

Teixeira declares that he has conducted enquiries into the Applicant’s business activities and has been unable to locate any information indicating that the Applicant ‘has ever or is about to be engaged in the business of providing services such as “Construction, repair, maintenance and installation services” except, insofar as they relate to batteries for motor vehicles, camping, caravans, and boats’. These services of the Applicant do not require a licensed electrician. The Opponent details the licensing regime for the electrical industry in NSW and attests that the requirements are similar in Queensland, Victoria and the Australian Capital Territory.
Based on his enquiries, Teixeira attests that he is of the opinion that the Applicant did not have an intention to use the Trade Mark on the broad claim for ‘construction, repair, maintenance and installation services’ in class 37.
Martin attests to visiting the Applicant’s website at (‘Applicant’s Website’) to send an enquiry to become a Battery World franchisee. Martin annexes the various documents received in response to his enquiry and screenshots of the Applicant’s Website.
Teixeira 2 comments further on the regulatory requirements for certain electrical work and notes that only the holder of a building or electrical contractors’ licence can install solar panels on a residential property or other premises in NSW.

Applicant’s evidence

Hoogkamer declares that in 1990, the Applicant established Battery World, an Australian retail franchise business which includes the sale of battery and electrical goods and the provision of related services. At the time of Hoogkamer, the Applicant had 109 retail stores across Australia. The Applicant assists its franchisees with the day to day operation of these stores and provides various business services such as marketing, book keeping, human resources, customer services and information technology.
According to Hoogkamer, the Applicant has used purple and yellow for its corporate colours and a circular lightning bolt device since 1998. In March 2017, the Applicant adopted a new logo. A comparison of the new branding adopted in 2017 compared to the previous branding was posted on the Applicant’s Battery World Facebook page and is reproduced below:

Hoogkamer declares that at the time of filing the Application, the Applicant was using the Trade Mark in relation to various goods and services. Hoogkamer attests that the goods and services provided by each franchisee depending on the location of the franchisee and their skills or licences held by the franchisee, their employees or contractors. Particularly in regional areas, a franchisee may engage a third party provider to provide services to Battery World customers under the ‘Battery World brand’ including the Trade Mark. Hoogkamer states that the Application was filed for those goods and services for which the Trade Mark was being used as well as goods and services for which the Applicant intended to use the mark. According to Hoogkamer, the class 9 goods were claimed as the sale of those goods is ‘a core part of its business’ and the class 37 specification covers services the Applicant’s franchisees provide and services it anticipates its franchisees will provide in future.
According to Hoogkamer, the Applicant’s Franchise Agreement authorises franchisees to use the Trade Mark in relation to a broad range of activities. If a franchisee intends to offer goods or services outside the ‘standard offerings’, the franchisee must obtain the Applicant’s authorisation. Hoogkamer states that individual franchisees and their employees must be certified to provide all the services they offer.
On 26 June 2023, after reviewing and considering the scope of activities for which the Applicant and its franchisees was using and intending to use the Trade Mark, Hoogkamer filed the Amendment Request.
McEnery confirms that the Trade Mark has been used since March 2017 and that the goods and services offered depend on the franchisee’s location and expertise. McEnery attests that its franchisees provide the following the goods and services by reference to the Trade Mark:

in rural areas (such as Toowoomba) they provide installation, repair, replacement and maintenance services relating to batteries in farm equipment and maintenance services relating to solar installations;
installation and maintenance services to government entities regarding solar panels, such as those used for the operation of wildlife monitoring devices;
installation, repair and maintenance services to mining the mining and rail industries for auxiliary power systems;
installation and maintenance services in relation to battery fitment and solar points in vehicles such as campervans, caravans, trucks and marine vehicles for operating goods such as solar fridges, lights and other off grid systems. The Applicant’s franchisees also provide construction services for compartments and housing for these devices;
custom or specialised builds and designs in relation to batteries and devices including the layout of batteries, inverters and switches, safety plugs and backing boards; and
installation of battery boxes and other battery powered auxiliary power devices, particularly lithium deep cycle batteries, which can be used to power various electrical goods such as toaster ovens, table saws, and hairdryers, and even residential properties if necessary, such as following an extreme weather event.

McEnery attests that franchisees may also have wholesale or trade customers, including electricians, to whom it sells batteries and electrical goods such as cables for the customer to use in providing its services, including electrical services.
Part of the approval process of a franchisee seeking to provide services outside of the Applicant’s standard services, according to McEnery, is ensuring that the franchisee is licensed to provide the services. Alternatively, franchisees will recruit employees with the necessary licence. If a franchisee receives a request from a customer for work that it is not qualified or licensed to provide, McEnery states that the franchisee will often engage an appropriately qualified or licensed third party to provide the services under the Applicant’s branding including the Trade Mark.
McEnery declares that the Applicant continually monitors and investigates technological developments in its field so as to expand its product and service offerings in line with these developments. By way of example, McEnery notes that the Applicant is investigating and planning to offer services relating to solar panels for powering residential homes.
Annexed to McEnery are screen captures of the Applicant’s Website from 2017 to 2022 of the Applicant’s Website using the Wayback Machine and from 15 June 2023, copies of Facebook posts from 2017 to 2023, copies of educational materials distributed by the Applicant, photographs of the Trade Mark on batteries and packaging, photos of the Applicant’s retail franchise stores and vehicles, and marketing materials and merchandise.

Discussion

Section 59

Section 59 provides:
Applicant not intending to use trade mark

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

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

It is well established that applying for registration of a trade mark carries a presumption that an applicant intends to use the mark.[6] The onus is on an opponent to displace this presumption by making out a prima facie case that the applicant lacked the requisite intention at the filing date.[7] If an opponent makes out a prima facie case, the evidentiary onus shifts to the applicant to show its intention to use the trade mark at the filing date.[8]
[6] Suyen Corp v Americana International Ltd [2010] FCA 638, [197] (Dodds-Streeton J).
[7] Aston v Harlee Manufacturing Co [1960] HCA 47 (Fullagar J).
[8] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [72] (Keane CH, Stone and Jagot JJ).
In its SGP, the Opponent particularized this ground as set out below:
1. The Opponent’s enquiries and / or the breadth of the services specification indicate that the Applicant did not, at the time of filing 2040779 have an intention to use the Applicant’s trade mark in connection with the broad claim of services in Class 37. Enquiries include, but are not limited to the following:
a. the Applicant does not have the capacity or means to produce or supply some or all of the Class 37 services claimed under the Applicant’s trade mark;
b. the Applicant does not have the regulatory approval to produce or supply some or all of the Class 37 services claimed under the Applicant’s trade mark;
c. the Applicant is not actively engaged in a business relevant to some or all of the Class 37 services claimed under the Applicant’s trade mark;
d. the Applicant is unable to produce documentation or other evidence to support an intention to use the Applicant’s trade in relation to some or all of the Class 37 services; and / or
e. the Applicant has expressed the services in broad terms for the purpose of obtaining broader coverage.
2. In the alternative, the Opponent’s enquiries and / or the breadth of the services specification indicate that at the time of filing 2040779 any intention on the part of the Applicant to use the applied-for mark in connection with the Class 37 services was insufficiently definite or immediate and / or that the application was filed for merely defensive or speculative purposes in connection with the Class 37 services claimed by application 2040779:
a. the Applicant does not have the capacity or means to produce or supply some or all of the Class 37 services claimed under the Applicant’s trade mark;
b. the Applicant does not have the regulatory approval to produce or supply some or all of the Class 37 services claimed under the Applicant’s trade mark;
c. the Applicant is not actively engaged in a business relevant to some or all of the Class 37 services claimed under the Applicant’s trade mark;
d. the Applicant is unable to produce documentation or other evidence to support an intention to use the Applicant’s trade in relation to some or all of the Class 37 services; and / or e. the Applicant has expressed the services in broad terms for the purpose of obtaining broader coverage.
3. The Applicant does not intend to assign the Applicant’s trade mark to a body corporate for use by the body corporate in Australia in relation to some or all of the services in Class 37.
The Opponent accepts that the filing of the Application is prima facie evidence of the Applicant’s intention to use the Trade Mark. However, the Opponent argues that the onus has shifted to the Applicant because the following evidence establishes a prima facie case that the Applicant lacked the necessary intention:

the Objection Correspondence which the Opponent submits demonstrates that the Applicant overstated its rights in filing the Application and in its objection to use of the Opponent’s Mark for ‘the purpose of defensive protection and obtaining/asserting broad rights beyond its use or intended use’;
the scope of the Applicant’s use of the Trade Mark, resultant rights and intention are challenged in the Objection Correspondence and SGP; and
the Opponent’s evidence about the Applicant’s activities under the Trade Mark and the licensing requirements indicate the Applicant had no intention to use the Trade Mark for the broad ‘construction, repair, maintenance and installation services’ in class 37.

The Opponent claims that the Applicant has failed to rebut the above evidence as the Applicant filed no evidence substantiating its trade mark rights claimed in the Objection Correspondence, the Amendment Request demonstrates the Applicant’s lack of intention at the Relevant Date and does not resolve the Applicant’s lack of intention for the amended services, the Applicant has not produced any documents establishing its intention despite being challenged by the Opponent to do so in the particulars of the SGP and the EIA does not answer the Opponent’s allegation that the Applicant does not have the regulatory approval to supply some or all of the class 37 services.
The Applicant disputes that asserting a lack of intention in the SGP or other document such as the Objection Correspondence is sufficient to establish a prima facie case of lack of intention. Moreover, the Applicant argues that it is entitled to assert its rights in the Applicant’s Registered Marks and under the ACL as it did in the 5 November Letter and such correspondence provides no indication of the Applicant’s intention over 18 months before the 5 November Letter.
In my opinion, the Opponent’s evidence has not established a prima facie case that the Applicant lacked the requisite intention. The onus does not shift to an applicant simply because an opponent claims a lack of intention. In terms of the Opponent’s evidence which it alleges supports the lack of intention, I do not find that evidence persuasive.
I agree with the Applicant that the Objection Correspondence and in particular, the 5 November Letter provide no indication of the Applicant’s intention at the time of filing the Application. Firstly, the Relevant Date of the Application is about 17 months before the Applicant first contacted the Opponent. Further, although the 5 November 2021 Letter erroneously mentioned ‘pending applications’, it did not list the Application or claim infringement of the Application. Whilst events which take place after a priority date may provide an understanding of an applicant’s intentions at the time of filing,[9] I do not consider that the Objection Correspondence sheds any light on this issue given it is well after the Relevant Date and concerns claims unrelated to registration of the Trade Mark. Although the 5 November Letter arguably in part relies on use of the Trade Mark by making reference to the Applicant’s use of the mark for some services covered by the Application in support of the allegation that use of the Opponent’s Mark contravenes the ACL, I am still not satisfied that this claim in any way is a reflection on the Applicant’s intention at the time of filing the Application. In my view, whether the Applicant has overstated its rights or engaged in unjustified threats is not relevant to the question of the Applicant’s intention at the time of filing the Application. It is not uncommon for a trade mark owner to claim contravention of the ACL when making an infringement claim or to more favourably portray their rights than might be the reality. The veracity of any such claims is a matter to be established by evidence in different proceedings to the present. The fact that the Applicant has not sought to substantiate its claims in the 5 November Letter in these proceedings is simply because it is not relevant to the grounds of opposition in the current proceeding.
[9] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
Moreover, with regard to the breadth of the class 37 specification at the Relevant Date, it is common practice for applicants to claim a broad range of goods and services when filing an application to cover present offerings and likely future offerings and to adopt broad terms to describe the provision of a subset of goods and/or services. I do not regard the Applicant’s decision to refine the class 37 specification after receiving the EIS to indicate that the Applicant lacked the requisite intention to use the Trade Mark for at least the amended services. Even if the Applicant lacked the requisite intention to use the Trade Mark for all of the services claimed at the time of filing the Application, this is not fatal to the Application as amended. A s 59 ground of opposition may succeed in part where an applicant only has an intention to use a trade mark for some of the goods/services claimed but it is not fatal to the application as a whole that an applicant lacked the requisite intention in respect of all of the claimed goods/services.[10]
[10] Bauer Consumer Media Ltd v Evergreen Television Pty Ltd 367 ALR 393 (Greenwood, Rangiah and Burley JJ).
The Opponent contends that the Applicant has not provided any documentation to support its claim that it had an intention to use the Trade Mark at the Relevant Date for any services beyond batteries despite the Opponent’s challenge at paragraph 1(d) of the SGP. However, McEnery illustrates use of the Trade Mark for:
i.Annexure MM-1: battery testing, installation and fitment services; ‘build[ing] a power solution to suit your needs from supplying chargers to inverters, fridge, dual batteries, lighting, solar and more’; a wide range of batteries for vehicles, remote controls, phones, baby monitors, respirators, defibrillators, laptops, golf buggies, ride-on mowers, mobility scooters, marine vessels, cameras, farm equipment and cables, jumper leads, chargers, fuses, battery boxes, distilled water and other accessories; and specialized battery build services;
ii.Annexure MM-3: generators and portable power stations, lanterns, torches, battery recycling services, batteries for cordless tools, ‘solar solutions’ for camping including solar panels[11];
iii.Annexure MM-4: Brochures and flyers about solar power and solar panels.
[11] McEnery, p156.
The Applicant’s evidence indicates that it offers a very broad range of batteries and power supply products and some associated services. In my opinion, these documents support the Applicant’s assertions in its evidence that it had used the Trade Mark at the Relevant Date for some goods and services and intended to use the mark for others claimed in the Application. For example, although the brochures in Annexure MM-4 are undated and the post about solar panels in Annexure MM-3 is after the Relevant Date, these documents support the Applicant’s assertions in McEnery at [34].
The fact that the provision of some of the Applicant’s Services require a licence is also not sufficient to alter the existence of the Applicant’s intent. In Community First Credit Union Ltd v Bendigo and Adelaide Bank Ltd,[12]the Federal Court found that the regulatory restrictions regarding use of the term ‘community bank’ for banking services did not constitute evidence of a lack of intention to use the trade mark. Similarly, the fact that individual franchisees or their employees or contractors may need to be licensed to provide certain of the Applicant’s Services is not evidence of a lack of subjective intention by the Applicant to use the Trade Mark. The fact that the Applicant has not supplied evidence that any franchisees are in fact licensed to provide such services does not indicate a lack of intention. In my view, it is not necessary for an applicant to produce such documentation unless an opponent establishes in its evidence (as opposed to mere allegations) that an applicant does or intends to operate its business without properly qualified persons. There is no such evidence here.
[12] [2019] FCA 1553, [370] (Markovic J).
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd,[13] the Full Court commented:
We consider that in a cross‑claim for cancellation of a registered trade mark, the cross‑claimant bears the onus of proof; the dispositive standard of proof is on the balance of probabilities; no evidential burden shifts to the registered proprietor; and, if the necessary factual integers are proved up on the body of evidence put before the Court by the cross‑claimant, and the registered proprietor chooses to stay silent and not join the evidential controversy, the Court might well find the onus of the cross‑claimant discharged to the required standard. Plainly enough, there is no question of the registered proprietor standing silent in this case.
[13] [2017] FCAFC 56, [156] (Greenwood, Besanko and Katzmann JJ)
Similarly, in this case, the Applicant has not stayed silent and in my opinion, the Applicant has adequately addressed any contention by the Opponent that it lacked the necessary intention to use the Trade Mark for the Applicant’s Goods and Services at the Relevant Date. The Applicant’s evidence demonstrates that the Applicant had in fact used the Trade Mark for most of the goods claimed in class 9 and some of the class 37 services. For those goods or services for which use of the Trade Mark is not in evidence, I am of the opinion that these goods and services are a natural extension of the Applicant’s existing business.
I am satisfied that the Applicant had an intention to use the Trade Mark at the Relevant Date for the Applicant’s Goods and Services and the s 59 ground of opposition is unsuccessful.

Section 42(b)

Section 42(b) provides that a trade mark may be opposed on the basis that use of the mark would be contrary to law.
The Opponent particularises this ground of opposition as follows:
1. The Applicant, the Applicant’s staff and franchisees do not have the professional qualifications or regulatory approval to produce or supply some or all of the Class 37 services claimed under the Applicant’s trade mark;
2. Use of the Applicant’s trade mark by the Applicant in connection with some or all of the Class 37 services claimed by application no. 2040779 would contravene the regulatory requirements for providing those services and would be contrary to law
The Opponent claims that despite its evidence that electrical services must be provided by a licensed electrician, the Applicant has not provided any documentary evidence that any franchisee or employee is certified or licensed to provide the Applicant’s Services. By the same token, the Opponent, who bears the onus, has not provided any evidence that the Applicant has any intention to offer services through its franchisees by unlicensed or unqualified tradespeople. It is not a basis for opposition that use of the Trade Mark could, rather than would, be contrary to law.[14]
[14] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24; [2001] FCA 683, [28] (Madgwick J).
There is nothing unlawful in the use of the Trade Mark for the Applicant’s Services although an individual franchisee, employee or contractor may be acting illegally if they provide services for which they are not suitably qualified or licensed. This is a matter relating to the manner in which the Applicant’s (or franchisee’s) business is arranged rather than an illegality arising from the Trade Mark itself.[15] In any event, the Applicant has provided sworn evidence that it is aware of the regulatory requirements and has a process in place for requiring franchisees to use suitably qualified persons either as an employee or contractor when necessary.
[15] Mini Menus (Aust) Pty Ltd v Mini Menus Pty Ltd (2006) 69 IPR 302 (Hearing Officer D. Nancarrow).
I am not satisfied that use of the Trade Mark for the Applicant’s Services would be contrary to law and find the s 42(b) ground of opposition has not been established.

Decision

Section 55 provides:

55 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 Goods 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.

I have found that the Opponent has not succeeded on any of the nominated grounds of opposition and the Trade Mark may proceed to registration under application 2040779 within one month of this decision.
If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the court’s order or direction.
Both parties requested an award of costs. As costs generally follow the event, I award costs against the Opponent under s 221 in accordance with the applicable amounts in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

1 November 2024