Next Group Plc v Nexcorp Australia Pty Ltd

This decision concerns an opposition by Next Group Plc (the Opponent) to three trade mark applications filed by Nexcorp Australia Pty Ltd (the Applicant). The Opponent alleged that the Applicant's trade mark applications were made in bad faith, contrary to section 60A of the *Trade Marks Act 1995* (Cth). The Opponent contended that the Applicant had actual or constructive knowledge of its trade mark, that this knowledge could be inferred from the Applicant's choice of trade marks, and that the styling of the Applicant's trade marks emulated the Opponent's trade mark.

The primary legal issue before the Hearing Officer was whether the Opponent had discharged its onus of proving that the Applicant's trade mark applications were filed in bad faith. The Opponent argued that the Applicant's adoption of the trade marks, despite the availability of other options and the similarity in font and styling to the Opponent's mark, demonstrated an intention to benefit from the Opponent's reputation.

The Hearing Officer found that the Opponent's submissions, even if proven, were not compelling evidence of bad faith. The mere awareness of the Opponent's business or trade mark was not, in itself, sufficient to establish bad faith. The Hearing Officer noted that the Applicant's business was established long before the Opponent entered the Australian market and that the genesis of the trade marks could be credibly explained by the Applicant's name and a common newsagency cry. The Hearing Officer concluded that to find bad faith would require accepting on the balance of probabilities that the Applicant intended to benefit from the Opponent's reputation, which was not supported by the evidence.

Consequently, the Hearing Officer determined that the ground of opposition under section 60A had not been established. The three trade mark applications were permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The Applicant was awarded costs against the Opponent.