Nguyen Trong Thin v Posh Lifestyle Pte Pty Ltd

[2023] ATMO 54

TRADE MARKS ACT 1995

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

Re:Opposition by Nguyen Trong Thin to registration of trade mark applications 2067486 (35, 43) – PHO THIN, 2067487 (35, 43) – PHO THIN 13 LO DUC, 2067488 (35, 43) – PHO THIN 13 LO DUC SINCE 1979 (Figurative) – in the name of POSH LIFESTYLE PTE PTY LTD

Delegate:

Nicholas Smith

Representation:

Opponent: Melissa McGrath of Counsel instructed by Simone Tierney of Lodestar Legal Pty Ltd

Applicant: Andrew Sykes of Counsel instructed by Chong Quaik and Sam Merrylees of Aitken Partners

Decision:

2023 ATMO 54

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 58 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Nguyen Trong Thin (‘Opponent’) to the registration of the trade marks (‘Trade Marks’) which are the subject of the applications detailed below in the name of POSH LIFESTYLE PTE PTY LTD (‘Applicant’).  The second and third trade marks have the same filing date as the first trade mark listed and are sought to be registered for the same services so it is not necessary to repeat that information in the details below.   

Application Number:	2067486
Filing Date:	7 February 2020
Services:	Class 35: Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business franchising consultancy and business support services; Business franchising services (group purchasing, group advertising); Business management services relating to franchising; Retailing of goods (by any means) Class 43: Restaurant services; Restaurant services for the provision of fast food; Restaurants; Food and drink catering; Food cooking services; Hospitality services (food and drink); Preparation of food and drink; Preparation of take-away and fast food; Providing food and drink; Take away food services; Cafes; Catering services; Bar services; Consultancy, advisory and information services in relation to the provision of food and drink; Providing information, including online, about services for providing food and drink, and temporary accommodation; Provision of information relating to the preparation of food and drink (‘Applicant’s Services’)
Trade Mark:	PHO THIN	(‘First Word Mark’)
Application Number:	2067487
Trade Mark:	PHO THIN 13 LO DUC	(‘Second Word Mark’)
Application Number:	2067488
Trade Mark:	(‘Device 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.

3.  Following the advertisement of the applications’ acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registrations followed by a Statement of Grounds and Particulars (later amended) on 2 February 2021 (‘SGP’).  The SGP as amended raised grounds of opposition under ss 58 and 62A.  The Applicant filed a Notice of Intention to Defend on 27 April 2021. 

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 4 August 2021 by Simone Tierney, Principal of Lodestar Legal Pty Ltd, the legal representative of the Opponent, with Annexures ST-1 to ST-12 (‘Tierney Declaration’).

2. The Applicant filed the following evidence in answer:

   ·Declaration made on 3 November 2021 by Hoang Lam Nguyen, founding director of the Applicant, with Annexures A to O (‘Nguyen Declaration’).

3. The Opponent filed the following evidence in reply:

   ·Declaration made on 10 January 2022 by Nguyen Trong Thin, the Opponent, with Exhibit NTT-1 (‘Thin declaration’).

4. In its submissions, the Applicant submits that I should disallow the Thin declaration on the basis that it is not evidence in reply, rather evidence in support.  While I am sympathetic to this submission, noting in addition that the material in the Thin declaration supports grounds that are not properly particularised, given my finding that the Opponent has not established its grounds of opposition even if I were to have regard to the Thin declaration, it is not necessary to disallow the declaration or provide the Applicant with a further opportunity to file additional evidence and submissions; such a claim is moot.  I do address certain allegations made in the Thin declaration relating to bad faith later in the decision.

5. 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.  On 30 November 2022 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 7 March 2023 and the matter was allocated to me.  In line with usual practice, emails were sent to the parties on 3 and 4 January 2023 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 21 February 2023 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 28 February 2023 (‘Applicant’s Submissions’).   At the hearing Andrew Sykes of Counsel instructed by Chong Quaik and Sam Merrylees of Aitken Partners represented the Applicant and Melissa McGrath of Counsel instructed by Simone Tierney of Lodestar Legal Pty Ltd represented the Opponent, each appearing by video-conference.

6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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 services 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

7. The Opponent is a Vietnamese chef that operates a restaurant known as Pho Thin 13 Lo Duc (‘Opponent’s Restaurant’).  It is located at 13 Lo Duc Street, Hai Ba Trung district, Hanoi, Vietnam and was founded in 1979.  He does not own any registered trade marks in Australia but has applied to register trade marks featuring the words of the Second Word Mark and the image contained in the Device Mark in Australia.    

8. The relevant claims/statements in the Tierney Declaration can be summarised as follows:

   ·     The Opponent has used the Trade Marks in connection with the provision of food and beverages in Vietnam.  The image in the Device Mark is an image of the Opponent.

   ·     The Opponent’s Restaurant has been ranked as the best pho restaurant in Vietnam by numerous international media, food and travel companies.  It is featured in many travel guides and promoted by numerous tour companies.  It undoubtedly would have been visited by many of the numerous Australians who have travelled to Vietnam.

   ·     The Opponent has entered into franchise and collaboration agreements with third parties in countries outside Vietnam, including opening a Pho Thin 13 Lo Duc restaurant in Japan in 2019.

   ·     In late 2018/2019 the Opponent entered into discussions with Hoang Lam Nguyen, the Applicant’s director, about opening an Australian restaurant in Melbourne (‘Applicant’s Restaurant’) under and by reference to the Opponent and the marks it now seeks to register in Australia (i.e. Pho Thin).  The Applicant’s restaurant opened in 2019 and the Opponent participated in the opening of the restaurant and taught the Applicant’s director his recipe for pho.

   ·     The Opponent and the Applicant’s director entered into a written agreement in relation to the use of the Opponent’s name and related marks but is unable to find the agreement.  It is the Opponent’s recollection that the parties agreed that the Opponent would be the owner of the Trade Marks and the Applicant’s director the licensee on specific conditions including no change and amendment to the Trade Marks.

   ·     At the date on which the Applicant applied to register the Trade Marks it was not the owner of the Trade Marks and in breach of the agreement between the Applicant’s director and the Opponent.

   12.     The annexures to the Tierney Declaration contain material in support of the statements above, including articles about the Opponent’s Restaurant and the Applicant’s Restaurant, including promotional material used by the Applicant depicting the Opponent, both photographs and in stylised form.  Annexure ST-11 also contains a translated recording of a conversation between the Opponent and Mr Nguyen in which Mr Nguyen is encouraged to obtain what I characterise as some form of protection (the nature of the protection, be it a business name registration or a trade mark registration, is the subject of a dispute between the parties).

   13.     The relevant claims/statements in the Thin Declaration can be summarised below:

   ·     The Opponent is the owner of the Thin Noodle 13 Lo Duc Joint Stock Company, being the Opponent’s company that entered into had a written agreement (the ‘Agreement’) with the Applicant’s director.  

   ·     The Opponent travelled to Australia in April 2019 to assist the Applicant’s director by providing the recipe for pho and general advice and assistance in developing the Applicant’s Restaurant.  He communicated to the Applicant’s director that he or his company was providing an exclusive licence to use the Trade Marks in Australia to extend his brand. 

   ·     The licence to use the Trade Marks in Australia was to the Applicant’s director and not transferable and the licence was limited to use for the Applicant’s restaurants and not for any of the other services for which the Trade Mark is sought to be registered.

   ·     The Opponent at no point agreed to assign or agree to transfer any rights or title in the Trade Marks to the Applicant’s director, nor did the Opponent agree to allow the Applicant to file an application to register the Trade Marks in Australia.

   ·     The Opponent is aware that the Applicant has a history of applying to register trade marks in Australia that are associated with well-known and unrelated Vietnamese food and beverage companies

   14.     The annexures to the Thin declaration contain further evidence of the reputation of the Opponent.

   The Applicant

   15.     The Applicant is an Australian company that operates the Applicant’s Restaurant.

   16.     The relevant claims/statements in the Nguyen Declaration can be summarised as follows:

   ·     The declarant was born in Vietnam and moved to Australia in March 2019.  He was aware of the Opponent and his restaurant and also that he had expanded into Japan.

   ·     In March 2019 he spoke to the Opponent and eventually the parties agreed that the declarant would pay the Opponent the sum of 400 million Vietnamese Dong (AUD 26,100) to sell the declarant his pho recipe and allow the establishment of a Pho Thin business in Australia and New Zealand.  By May 2019 the declarant paid the Opponent the full sum and had the Agreement).

   ·     The declarant started promoting the Applicant’s Restaurant in July 2019 in preparation for the opening on 6 September 2019.  The Opponent arrived in Australia and participated in the opening.  He was aware of the Applicant’s use of the Trade Marks and made no objection to the manner of their use.

   ·     The declarant does not consider that the Agreement provided any restrictions on the use of the Pho Thin brand other than the use of his image, which is accurately replicated in the Device Mark.

   ·     The Opponent does not own any of the Trade Marks in Vietnam and thus is unable to control the use of the Trade Marks either in Vietnam or Australia.

   ·     At the date the Applicant applied to register the Trade Marks it had used the Trade Marks in good faith in Australia for its restaurant and has the intention of using the Trade Marks for the remaining Applicant’s Services in the future.  The Applicant has opened a second restaurant in Springvale, Victoria and continues to extensively use the Trade Marks to promote its restaurant services.

   ·     The declarant disagrees with many aspects of the Tierney Declaration, including the understanding of the agreement between the parties and the fact that the Opponent does not own the Trade Marks, either in Australia or Vietnam.

   17.     The annexures to the Nguyen Declaration contain the Agreement.  The Agreement is in Vietnamese but the Nguyen Declaration provides a certified translation.  The Agreement is expressed to be governed by Vietnamese law and provides that all legal disputes will be solved by Vietnamese Law in Vietnam.  Due to the nature of translation and (undoubtedly) the different legal terminology used under Vietnamese law, the provisions of the Agreement are difficult to understand and it is ambiguous as to the ownership of the Trade Marks and the intention of the parties.  The Agreement is between the Opponent’s company and the declarant and provides that in exchange for a fee of 400 million Vietnamese Dong the Opponent’s company agrees that the declarant can use the brand name PHO THIN 13 LO DUC to develop a distribution channel of Pho Thin 13 Lo Duc in Australia and New Zealand.  The Opponent’s company also agrees that it will support the declarant and provide the recipe and promote the images to support the brand name Pho Thin 13 Lo Duc.  The Agreement also states ‘Party B [the declarant] cannot transfer for any partner at any country’.

   Grounds of Opposition, Onus and Standard of Proof

9. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 58 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

   19.     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 relevant date.[3]

   [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).

   Discussion

   20.     The present proceeding is an unusual proceeding since ultimately, it requires this office to construe the nature of an agreement that is written in Vietnamese (the translation, while authorised and undoubtedly technically accurate, creates significant ambiguity as to the meaning of the Agreement) and is expressly governed by Vietnamese law and requires all disputes to be solved in Vietnam.  For example, the Agreement both states that the time of cooperation is indefinite and the co-operation time is 5 years and can be renewed.  Nor does the agreement refer to the First Word Mark or the Device Mark.  Furthermore, each party has given evidence of their intention and understanding of the Agreement as well as their interactions with each other (including the nature of the instructions given by the Opponent recorded in Annexure ST-11) but again, this forum has no ability to engage in cross-examination, nor make particular findings on credit. 

   21.     Essentially, each party asks me to interpret an ambiguous written document and a series of interactions between the Opponent and the Applicant’s director in a manner most favourable to them; the Opponent asking me to find that the Agreement amounted to a licence under specific conditions and hence all use of the Trade Marks by the Applicant was authorised by the Opponent, and the Applicant asking me construe the Agreement as essentially an endorsement agreement, seeking that I find that by reason of the payment made by the Applicant’s director of 400,000 Vietnamese Dong, the Applicant (who is not a party to the Agreement) received the benefit of the use of the Opponent’s image and recipe and, aside from one restriction on the display of the Opponent’s image (not relevant to the grounds of opposition), contained no restrictions on the Opponent’s right to use or register any of the Trade Marks.

   22.     Ultimately, I make no such finding and instead find that, by reason of the inherent ambiguity of the evidence before me, the Opponent has not satisfied its onus on any of the grounds on which the opposition is pressed.  I note that the Agreement itself is expressed to be governed by Vietnamese Law and the forum for resolution of disputes is in Vietnam.  The courts of Vietnam are the appropriate forum to resolve this commercial dispute and, if a dispute were filed there and the Opponent was successful, would have the power to order the Applicant and its director to transfer any rights to the Trade Marks to the Opponent.  I address the individual grounds of opposition below.

   Section 58 – Applicant not owner of trade mark

   23.     Section 58 is reproduced below:

   Section 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.

   Note:For applicant see section 6.

   24.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  I note that the Opponent’s Submissions at paragraph 15 appear to seek to reverse this onus and this is incorrect; it is not required that the Applicant demonstrate its eligibility as the owner of the Trade Marks.  The factors to be established by the Opponent are:

   · that the Trade Marks are identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[4]

   [4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[5] and

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Marks based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Marks by the Applicant (‘the third factor’).[6]

   25.     The ground based on s 58 was particularised in the SGP as follows:

   a) The brand “PHO THIN 13 LO DUC” was founded and owned by Mr. Nguyen Trong Thin in 1978.  It is taken from: the name of the founder is THIN and the address of the first restaurant is No. 13, Lo Duc Street, Hanoi, Viet Nam.  Mr Nguyen Trong Thin has opened branches in Vietnam, Japan, Indonesia and Melbourne – Australia to providing a restaurant service selling traditional Vietnamese dishes under the brand name of which he is the owner.  He carried out quality control of goods and services. b) In Australia, the date of first use of the Opponent is 6 September 2019.

   26.     There is no evidence before me that the Opponent, or any other entity, has used the Trade Marks in Australia, other than in the context of the relationship between the Opponent and the Applicant’s director.  

   27.     The Opponent, in its oral submissions, appears to make the unparticularised submission that the Opponent had prior use in Australia based on its use of the Trade Marks in Vietnam and articles written about the Opponent’s Restaurant accessible in Australia.  This submission is not accepted.  Not only is this submission not particularised but it is quite extraordinary to submit that the operation of a restaurant in another jurisdiction that is the subject of third party articles amounts to use of a trade mark in Australia for services.  Indeed, were I to accept this construction it would be possible for the Applicant to commence proceedings against the Opponent based on infringement of the (Australian) Trade Marks by way of the operation of the Opponent’s Restaurant.

   28.     In addition, both in the oral submissions and at paragraph 16 of the Opponent’s Submissions, the Opponent submits that the Opponent used the Trade Marks in Australia in March/April 2019, presumably when it came to Australia to assist the Applicant’s director by advising him about the pho to be served at the Applicant’s Restaurant when it opened.  I note that this submission was not properly particularised (and the Opponent was provided with the opportunity to amend its particulars to the s 58 ground in 2022) and, in any event, any services provided by the Opponent in March/April 2019 were of a personal nature, did not result in the use of the Trade Marks and were not in respect of the Applicant’s Services in classes 35 and 43.

   29.     The only particularised ground of opposition under s 58 is that the Opponent is the owner of the Trade Marks because any use of the Trade Marks by the Applicant was authorised use under the control of the Opponent.  For the Opponent’s claim to be the owner of the Trade Marks to succeed, I must construe the Agreement between the parties to be a licence agreement, such that all use of the Trade Marks by the Applicant/its director is use by the Opponent and thus Opponent is the true owner of the Trade Marks.  The Opponent bears this burden and, due to the inherent ambiguities in the material presented before me, has not satisfied this burden.  Furthermore, for the use of the Trade Marks by the Applicant to be authorised use by the Opponent, the Opponent would have to exercise some ongoing control over the use.  The Agreement does not provide for this nor is there evidence of ongoing control after the opening of the initial restaurant.  For the reasons set out in paragraphs 20 to 22 above I cannot reach a conclusion as to the exact nature of the agreement between the parties and as such the Opponent has failed to establish the ground of opposition pursuant to s 58.

   Section 62A

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

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

1. 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.

2. 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.

3. 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:[7]

   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.[8]

   [7] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

   [8] [2012] FCA 81, [147].

4. 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.[9]

   [9] Ibid [165]-[166].

5. 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.[10]

   …

   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.[11]

   …

   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]).[12]

   [10] Ibid [151].

   [11] Ibid [153].

   [12] Ibid [156].

6. The Opponent has particularised this ground of opposition in the SGP as follows:

   The Opponent and the Directors of the Applicant had a commercial relationship, and were business associates. The Opponent has a number of restaurants around the world and is a well known chef, having opened his first eatery in Hanoi in 1979. The Opponent came to Melbourne, Australia in February/March 2020 to work with the directors of the Applicant. There was publicity around this visit and around that time the Applicant filed a number of trade marks for or incorporating elements of the Opponent's trade marks , characteristics, get up and IP, including an image of the Opponent. It was never the intention of the parties, either at the priority date or otherwise that the Applicant would file, and own, the trade marks, which are the subject of this opposition. The use of the Opponent's name, address and image constitutes conduct that is unconscientious in character. As such, the applicant filed the applications when a reasonable person standing in their place adopting standards of acceptable commercial behaviour would not have done so.

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.[13] I note that paragraph 45 of the Opponent’s Submissions, like paragraph 15 appears to seek to reverse the burden and require the Applicant to provide evidence that the filing of the Trade Marks was done with legitimate purpose and good faith and not done maliciously. No such requirement exists under the Act with the onus of proof resting on the Opponent.

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

8. Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Marks was a decision made in bad faith.  In order to reach the conclusion sought by the Opponent under this ground of opposition, I must reach a conclusion that it was the intention of the parties to the Agreement that the Opponent would remain the owner of the Trade Marks in Australia, with the Applicant’s director as the licensee, and, following on from that conclusion, that the Applicant would not be permitted to apply to register the Trade Marks.  Given the inherent ambiguities in the evidence before me, including the different understandings of the relationships between the parties and the impossibility of properly construing an agreement expressed in the Vietnamese language, governed by Vietnamese law and providing that all disputes would be resolved in Vietnam, I am not satisfied that the Opponent has satisfied the onus and that the Applicant’s conduct in applying to register the Trade Marks was unscrupulous, underhanded or unconscientious in character, as opposed to the Applicant seeking to register the Trade Marks that it was using for the operation of the Applicant’s Restaurant (and that the Agreement amounted to an agreement for certain services and general endorsement, not a trade mark licence agreement).  Furthermore, I note the conversation between the parties in Annexure ST-11 in which the Opponent encourages the Applicant’s director to obtain some form of protection; this conversation is inherently ambiguous and could easily be interpreted by the Applicant’s director as an encouragement for it to register the Trade Marks to prevent a third party from launching a similar brand in Australia.    

9. The Opponent attempts to characterise the conduct of the Applicant as similar to the Hard Coffee case, referred to above, and other similar cases where an applicant seeks to register as a trade mark a mark that they had previously acknowledged as that of another.  The present case does not fit within those categories.  The Agreement is ambiguous and does not obviously read or operate as a licence agreement, nor does the conduct of the parties suggest that the Applicant and its director acknowledged that the Opponent had any particular rights to the Trade Marks in Australia (as opposed to the considerable reputation the Opponent had in Vietnam).

10. For completeness I note that the Opponent, in its submissions and paragraphs 32 and 33 of the Thin declaration, alleges that the Applicant has a history of applying for trade marks connected to well-known businesses in Vietnam and for that reason I should find that the Trade Marks were applied for in bad faith. I note that this submission was not properly particularised (and the Opponent was provided with the opportunity to amend its particulars to the s 62A ground in 2022), the allegation is made in evidence in reply, denying the Applicant the ability to file any evidence in response to this allegation, and in any event is completely speculative.

11. Based on the evidence before me I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision and Costs

12. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application numbers 2067486, 2067487 and 2067488 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the applications should be in accordance with the Court’s order or direction.

13. The Applicant has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event. 

14. The Applicant has submitted that in awarding costs I should depart from the usual approach to apply discounts for the opposition to the second and third trade marks on the basis of particular conduct by the Opponent, including attempts to file late evidence in support and making submissions not properly particularised in the SGP (which the Opponent has been provided with the opportunity to amend).  While sympathetic to the Applicant’s submissions I do not consider that the Opponent’s conduct has increased the Applicant’s costs in respect of the Second Word Mark and the Device Mark – such costs would have been incurred even if the opposition was solely in respect of the First Word Mark.

15. I accordingly award costs respect of trade mark number 2067486 against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 2067487 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[14]   In respect of trade mark number 2067488 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[15] 

    [14] [2001] ATMO 78 (Hearing Officer Williams).

    [15] Ibid.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    26 April 2023