Natures Farmacy Pty Ltd v Greenteam Holdings Ltd

Natures Farmacy Pty Ltd (the Opponent) opposed the registration of a trade mark by Greenteam Holdings Ltd (the Applicant). The dispute concerned the Applicant's trade mark application, which the Opponent argued should not be registered on several grounds, including likelihood of confusion, proof of first use, and the Applicant's state of mind when filing the application. The Opponent, a competitor in the market for calming products for horses, relied on its earlier registration for the mark COOL CALM AND COLLECTED. The matter was decided by Debrett Lyons, a delegate of the Registrar of Trade Marks, based on written submissions and evidence.

The legal issues before the delegate were whether the Opponent had established any of the grounds of opposition pleaded, specifically under sections 42(b), 43, 44, 58A, 60, and 62A of the relevant legislation. The onus was on the Opponent to prove these grounds on the balance of probabilities. A key issue was determining the date of first use of the Applicant's trade mark in Australia, as the Applicant claimed use from 2006 via a website, while the Opponent's priority date was 11 November 2015.

The delegate found that while the Applicant's website may have been accessible in Australia from 2006, this alone did not constitute use of the trade mark in Australia. Applying the principle from *Ward Group Pty Ltd v Brodie & Stone Plc*, the delegate held that internet use without more is not sufficient to establish use in a jurisdiction, unless the use is directed to or targets that jurisdiction. The delegate noted that specific provision for Australian sales was not made on the website until 2017, after the Opponent's priority date. Actual sales in Australia did not commence until 2012, through authorised re-sellers, not directly via the website. The delegate also found that the ground of opposition under s 62A (bad faith) had been established.

Consequently, the delegate refused to register the Applicant's trade mark. The Opponent was awarded costs against the Applicant. The delegate directed that registration should not occur pending any appeal.