Opposition by Airtasker Pty Ltd to registration of trade mark application 1797549 (9, 35, 41) - LIKE A BOSS - filed in the name of Freelancer Technology Pty Limited.

[2019] ATMO 77

TRADE MARKS ACT 1995

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

Re:Opposition by Airtasker Pty Ltd to registration of trade mark application 1797549 (9, 35, 41) - LIKE A BOSS - filed in the name of Freelancer Technology Pty Limited.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: Bird & Bird Applicant: Piper Alderman
Decision:	2019 ATMO 77 Trade Marks Act 1995 Section 52 opposition to registration; grounds under section 58, 62A, and 42. Section 62A established. Registration refused

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Freelancer Technology Pty Limited (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1797549

Priority Date:             19 September 2016

Goods/Services:         Class 9: Mobile app for freelance jobs; mobile app for hiring online; mobile app for local jobs; mobile app for crowdsourcing; mobile app for online job seeking

Class 35: Provision of information about freelance jobs via a website; provision of an online marketplace in respect of freelance jobs, namely provision of an online marketplace facilitating the purchase and supply of freelance services; provision of information relating to online and local job postings through searchable database on an online and local jobs website; facilitating the purchase and supply of goods and services via a crowdsourcing website
Class 41: Online videos related to educational content and tips for small businesses including but not limited to hiring online, building a business online, crowdsourcing online and hiring and managing freelancers for both online and local jobs
(‘the Goods and Services’)

Trade Mark:               LIKE A BOSS

(‘the Trade Mark’)

1. The Trade Mark was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 25 May 2017.

2. On 21 July 2017, Airtasker Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark followed, on 21 August 2017, by a Statement of Grounds and Particulars detailing grounds under sections 58, 62A, and 42 of the Act.

3. On 28 September 2017, the Applicant filed a Notice of Intention to Defend.

4. Subsequently, the Opponent filed its Evidence in Support being a declaration by Simon Nash Reynolds, Vice President of Marketing of the Opponent, made on 9 January 2018, with Exhibits SNR-1 to SNR-13.

5. The Applicant has not filed Evidence in Answer.

6. Both parties have been informed of their right to request a hearing or to make written submissions.  Neither party has availed themselves of these opportunities.

7. Now, in order that the Registrar may discharge her obligation under section 55 of the Act to decide the matter, it has been passed to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus and Relevant Date

1. The Opponent bears the onus of establishing a ground of opposition which is detailed in the Statement of Grounds and Particulars on the balance of probabilities.[1]

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132] to [133].

2. The relevant date (‘the Relevant Date’) at which the grounds must be considered is the filing date[2] of the opposed application.

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Evidence

1. Mr Reynolds’s declaration establishes to my satisfaction that since 2012 the Opponent has operated a data-base under the trade mark AIRTASKER which connects people who are outsourcing tasks with those who may seek remuneration to complete those tasks.

2. In July 2016, the Opponent decided to run an advertising campaign for its services under the trade mark “Like a Boss”.  This advertising campaign has run since 14 September 2016 until at least the time that Mr Reynolds made his declaration.  A copy of a part of the press release on 15 September 2016, appears below:

3. There was a series of two videos released on the previous day on TVC and/or YouTube which prominently featured the trade mark “Like a Boss”.

4. First use of the trade mark “Like a Boss” (‘the Opponent’s Trade Mark’) by the Opponent was therefore on 14 September 2016.

5. The balance of Mr Reynolds’s declaration goes, in the main, to the very extensive advertising carried out by the Opponent under Opponent’s Trade Mark but I will mention that Mr Reynolds asserts that the parties are competitors and operate in very much the same marketplace offering very similar services.

6. The Applicant does not dispute Mr Reynolds’s assertions and I note here that the Relevant Date, 19 September 2016, falls just four days after the first use of Opponent’s Trade Mark by one of the Applicant’s main business competitors, being the Opponent.

Section 62A

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

   The Opponent and the Applicant are competitors and offer similar goods and services through their respective application software and websites.

   The Opponent first commenced use of the Opponent's Trade Mark on 15 September 2016.

   On 19 September 2016, the Opponent commenced a comprehensive national media advertising campaign promoting the goods and services it provides under the Opponent's Trade Mark. As at August 2017, this media campaign is still running.

   The Application is for the Opponent's Trade Mark.

   The Applicant has not used the trade mark applied for in the course of trade.

   The Priority Date of the Application is 3 business days after the Opponent commenced use of the Trade Mark and the same day the Opponent launched its media campaign referred to in paragraph 13 above.

   The timing of the Priority Date and the lack of use of the Trade Mark by the Applicant in the course of trade, indicate that there is no genuine commercial reason for the Applicant to have filed the Application.

   Accordingly, the Opponent opposes the registration of the Trade Mark in classes 9, 35 and 41 under section 62A on the ground that the Application was filed in bad faith.

Section 62A - Principles

1. Section 62A of the Act provides:

   62AApplication 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. In DC Comics v Cheqout Pty Ltd[3] Bennett J discussed the decision of Kenny J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 1) (‘Fry’):[4]

   [3] [2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334 at [60].

   [4] [2011] FCA 1417.

   Her Honour considered (at [144]) the Explanatory Memorandum relating to s 62A, which stated:

   1.        The Act allows removal of a trade mark on the basis that there was no intention in good faith to use, authorise use of, or assign the trade mark. However, current opposition grounds do not cover instances in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith. There have been several instances in which trade mark applicants have deliberately set out to gain registration of their trade marks, or have adopted trade marks, in bad faith. Some examples of these include:

   a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;

   a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and

   business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

   When such situations occur, there is very little third parties can do to prevent registration of this type of trade mark, because existing grounds for rejection and opposition do not allow the Registrar to take these facts into account.

   Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.

   Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:

   ·Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

   ·Bad faith does not require dishonesty.

   ·Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   ·The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

   ·It is difficult to see how a person who applies to register, in his own name, a mark 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. Combining the mark with the applicant’s own name is no answer to that criticism.

   ·The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.

   ·All the circumstances surrounding the application to register the mark are relevant.

   ·An act of bad faith cannot be cured by an action after the date of application.

   Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:

   ... 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.

3. I also note that in Fry at [149] Kenny J endorsed the UK Hearing Officer’s formulation quoted by Arnold J in Maslyukov v Diageo Distilling Ltd:[5]

   Bad faith includes dishonesty and ‘some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular field being examined’.  Certain behaviour might have become prevalent but this does not mean that it can be deemed to be acceptable.  It is necessary to apply what is referred to as the ‘combined test’. This requires me to decide what Mr Maslyukov knew at the time of making the application and then, in the light of that knowledge, whether his behaviour fell short of acceptable commercial behaviour.  Bad faith impugns the character of an individual or collective character of a business, as such it is a serious allegation.  The more serious the allegation the more cogent must be the evidence to support it.  However, the matter still has to be decided upon the balance of probabilities.  The issue has to be considered as at the date of application for registration.  An act of bad faith cannot be cured by an action after the date of application.

   [5] [2010] EWHC 443.

4. In view of the way in which the Statement of Grounds and Particulars is framed, I stress here that I consider that a lack of intention in good faith to use a trade mark does not, per se, indicate that an application was made in bad faith.  However, an apparent lack of intention in good faith to use a trade mark (as is present here) might be a contributing factor to a finding that an application was made in bad faith.

5. In reaching my decision I also note the following:

   The parties are business competitors;

   The trade marks under consideration are identical;

   The timing of the filing of the application by the Applicant was just four days after the Opponent first used its trade mark;

   The Goods and Services are a match with those in relation to which the Opponent might have been anticipated to use its trade mark;

   The Applicant has had an opportunity to refute the Opponent’s assertions but has not elected to do so.

6. I do not consider that it is necessary to ascribe a fixed motive for the Applicant’s behaviour in filing this application: it may possibly have been an attempt to embarrass the Opponent, or to attempt to preclude use of a trade mark owned by the Opponent, or to hold the trade mark to ransom.

7. However that might be, and on the balance of probabilities, I consider that the filing of the Trade Mark by the Opponent was conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

8. The Opponent has, accordingly, established its opposition to registration under section 62A of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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 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.

   Note:For limitations see section 6.

2. The Opponent has established a ground of opposition and I refuse to register the Trade Mark.

Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
16 May 2019