Opposition by David Edwards to registration of trade mark application number 2066574 (classes 9, 16, 25, 41) – THE GRADE CRICKETER – in the name of Samuel James John Perry
[2021] ATMO 124
•20 October 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by David Edwards to registration of trade mark application number 2066574 (classes 9, 16, 25, 41) – THE GRADE CRICKETER – in the name of Samuel James John Perry
Delegate: Nicholas Barbey Representation: Opponent: Pigott Stinson
Applicant: Andrew Sykes of counsel instructed by Rennick BriggsDecision: 2021 ATMO 124
Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 43, 58 and 62A pursued – none established – trade mark may proceed to registrationBackground
This decision concerns an opposition brought by David Edwards (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: THE GRADE CRICKETER (‘Trade Mark’)
Application Number: 2066574
Applicant: Samuel James John Perry (‘Applicant’)
Filing Date: 4 February 2020
Specification: Class 9: audio recordings; databases (electronic publications); electronic publications (downloadable); electronic publications including those sold and distributed online; records (sound recordings); records bearing sound recordings; sound recordings; technical literature in the form of sound recordings; training guides in electronic format; downloadable podcasts
Class 16: printed matter, printed publications and books
Class 25: clothing, footwear, headgear
Class 41: production, presentation and distribution of comedy and related entertainment through live performances, stage events, television, radio, electronic distribution and any other media, production of films and television programmes, production of video and audio tapes, compact discs, and other audio and audiovisual devices, electronic publication services including publication of information, images and music by telecommunications systems, computers and the Internet, event management services (organisation of educational, entertainment, sporting or cultural events); management of cultural events; management of educational events; management of entertainment events; organisation of entertainment events; organisation of promotions (entertainment events); organising charitable fundraising events being the provision of entertainment, sporting and cultural services; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment and social events; arranging and conducting of conferences
(‘Claimed GS’)
Acceptance of the trade mark application was advertised in the Australian Official Journal of Trade Marks on 5 July 2020. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 6 July 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 July 2020. A notice of intention to defend was filed by the Applicant on 17 August 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’). The parties requested an oral hearing. Submissions were filed by the Opponent on 7 July 2021 (‘Opponent’s Submissions’) and by the Applicant on 14 July 2021 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 21 July 2021. Daniel Fleming of Pigott Stinson presented submissions on behalf of the Opponent and Andrew Sykes of counsel presented submissions on behalf of the Applicant.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 43, 58 and 62A of the Act. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ) (‘Food Channel’).
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 4 February 2020, being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, JagotEvidence
The following declarations were filed as evidence:
EIS
- Declaration made on 28 September 2020 by David Edwards with Attachments DE-0 to DE-28 (‘Edwards 1’).
- Declaration made on 24 September 2020 by Julia Edwards (‘JE Declaration’).
- Declaration made on 25 September 2020 by Mikhail Ushakoff (‘Ushakoff Declaration’).
- Declaration made on 25 September 2020 by Tom Downey (‘Downey Declaration’).
EIA
- Declaration made on 21 December 2020 by Sam Perry with items 1.01 to 1.19 (‘Perry Declaration’).
- Declaration made on 2 December 2020 by Ian Higgins (‘Higgins Declaration’).
- Declaration made on 1 December 2020 by Michael James Perry (‘MP Declaration’).
- Declaration made on 20 December 2020 by Tim Sparks with Annexure A (‘Sparks Declaration’).
EIR
- Declaration made on 18 January 2021 by David Edwards with Attachments DE-Podcast and DE-Email (‘Edwards 2’).
EIS
Edwards 1 explains that the Opponent and the Applicant have previously ‘collaborated on a range of creative projects’.[3] The Opponent acknowledges that the Applicant independently created a Twitter account with the handle ‘@gradecricketer’ (‘TGC Account’) in 2012. However, it is claimed that a third person, Ian Higgins, together with the Applicant and the Opponent (collectively ‘Trio’) jointly controlled the TGC Account from September 2013 onwards. The Opponent contends that Ian Higgins and himself ‘assumed a dominant role in creating content published from the [TGC Account]’ in the subsequent 12 months.[4] The Opponent believes that his content creation for the TGC Account resulted in ‘substantial audience growth’.[5] Edwards 1 asserts that prior to the involvement of himself and Ian Higgins with the TGC Account, the Applicant had never marketed any goods or services under the Trade Mark.
[3] Edwards 1, [5].
[4] Ibid [8].
[5] Ibid [9].
According to Edwards 1, the Trio agreed to co-author a book in 2014 and this was the first time that the Trade Mark was used in the course of trade.[6] In March 2015, the Trio entered into a publishing agreement with Melbourne Books to write a book titled ‘The Grade Cricketer’ (‘First Book’). The First Book was subsequently published in November 2015. Pursuant to the publishing agreement, the Trio were recognised as joint authors of the First Book and all profits and royalties were split equally. The Trio wrote a second book, titled ‘The Grade Cricketer: Tea and No Sympathy’ (‘Second Book’). This book was published in November 2017 by Allen & Unwin. Similar to the First Book, the publishing agreement with Allen & Unwin recognised the Trio as joint authors and all profits and royalties were divided equally.
[6] Ibid [10].
In addition to the First and Second Books, Edwards 1 submits that the Trio used the Trade Mark in respect of the following goods and services prior to 4 February 2020:
i.From 2016, they produced, presented and published a podcast;
ii.From 2017, they presented live shows including a tour in the United Kingdom as well as hosting various events;
iii.In 2018, they performed a pilot with Fox Sports Australia for a proposed television series. Also, they had written and performed short comedic videos in partnership with Cricket Australia and a weekly cricket show broadcast on Channel Seven; and
iv.In 2019, they launched merchandise in the nature of stubby holders and swimwear products.
Edwards 1 attaches a proposal that Ian Higgins and the Applicant sent to the Opponent on 4 February 2020. The proposal refers to prior discussions between the Trio about incorporating a company and suggests, amongst other things, a potential ‘45-45-10 shareholding (Ian 45, Sam 45, Dave 10)’[7] structure with the Applicant and Ian Higgins to be the company’s directors. The Opponent did not accept the proposal and submitted a counter proposal which he believed more accurately reflected his past contributions. The Applicant and Ian Higgins rejected this counter proposal and re-submitted the original proposal. In doing so, the Applicant informed the Opponent that he had filed an application for the Trade Mark.
[7] See Attachment DE-26 to Edwards 1.
The JE Declaration is declared by Mrs Edwards, the Opponent’s wife. Mrs Edwards explains that the Opponent and herself designed the artistic works for the First Book, the ‘initial Podcast Artwork’, the television ‘Pitch Deck’ and the merchandise currently sold under the Trade Mark. Mrs Edwards declares that the design services were provided free of charge.
The Ushakoff Declaration recounts two interactions experienced by Mr Ushakoff, a personal friend of the Opponent. The first was a conversation Mr Ushakoff had with a professional colleague in July 2019. Mr Ushakoff’s colleague mentioned that he was ‘a huge grade cricketer fan’ and identified the Opponent as being his favourite. The second concerned an exchange Mr Ushakoff witnessed between a bartender and the Opponent in February 2020, in which the bartender recognised the Opponent as being from ‘the Grade Cricketer’ based on his voice.
The Downey Declaration is declared by Tom Downey who is the head of Century Entertainment Australia Pty Ltd (‘CEA’). CEA worked ‘with Dave Edwards, Sam Perry and Ian Higgins to develop and produce a live tour version of “The Grade Cricketer Podcast”’.[8] Mr Downey states that the Trio had written and presented ‘The Grade Cricketer Live’ show. Meanwhile, CEA managed the logistics, ticketing and marketing aspects of the tour. In this regard, CEA would provide the Trio with an estimated tour budget that required their approval. After the completion of each tour, the Trio would separately invoice CEA for remuneration based on their participation at each show.
EIA
[8] Downey Declaration, [8].
According to the Perry Declaration, the Applicant created the TGC Account on 11 October 2012. The content for the TGC Account was inspired by the Applicant’s experience playing grade cricket in Sydney and Melbourne. In the Applicant’s view, the Trade Mark was first used in relation to 224 tweets published on the TGC Account between October 2012 to September 2013. These tweets subsequently formed the foundation of ‘The Grade Cricketer’ concept and the First Book.
The Perry Declaration explains that the Opponent and Ian Higgins commenced shared use of the TGC Account after the Applicant extended them an invitation to do so. The Applicant declares that it ‘was understood that invitees could use it with licence from me if they were to make contributions’.[9] The Applicant submits that discussion about ownership of the Trade Mark was not necessary given there was never an intention to assign the Trade Mark. To this end, the Perry Declaration highlights that the Applicant was a guest on the ‘Two Guys’ podcast run by the Opponent and Ian Higgins in July 2013 and appeared as ‘The Grade Cricketer’.
[9] Perry Declaration, [25].
The Perry Declaration responds to the EIS. Relevantly, the Applicant disputes that the Trio were in a business partnership with CEA given no formal agreement was entered into and no documents were signed. The Applicant points out that each individual was a sole trader and separately invoiced CEA with their own Australian business number. The Applicant also disputes the content of the JE Declaration noting that Melbourne Books offered to pay Mrs Edwards a ‘modest fee’ for services rendered.[10]
[10] Ibid [47]–[48]. The Applicant states that he does not know whether Mrs Edwards accepted the offer by Melbourne Books. Edwards 2 confirms that Mrs Edwards did not accept Melbourne Books’ offer.
The Higgins Declaration confirms that the Opponent and Ian Higgins began contributing to the TGC Account in September 2013. At this point, Mr Higgins states that the TGC Account ‘already had a cult following and was well regarded’.[11] As a contributor to the TGC Account, Mr Higgins confirms that discussion regarding ownership of the Trade Mark did not occur because ‘it was clear and incontestable that [the Applicant] was the founder of The Grade Cricketer’.[12] To this end, Mr Higgins declares that he never considered himself to be an owner of the Trade Mark because it was evident that the Applicant was. The Higgins Declaration observes that the Applicant always had ‘final say over which projects we have or haven’t pursued’ given his status as the founder and owner of the ‘The Grade Cricketer’.[13]
[11] Higgins Declaration, [3].
[12] Ibid [5].
[13] Ibid [9].
The Sparks Declaration is declared by a personal friend of the Applicant. Mr Sparks states that in January 2013 he discussed the TGC Account with the Applicant who he understood to be its creator. Meanwhile, the MP Declaration is declared by the Applicant’s father, Michael James Perry (‘Mr Perry’). It outlines discussions that took place between the Applicant and Mr Perry regarding ‘The Grade Cricketer’ blog.[14] Mr Perry claims that he advised the Applicant to commercialise the blog in or around 2012 to 2013.
EIR
[14] The reference to the blog appears to be a reference to the TGC Account. However, this is not expressly confirmed in the MP Declaration.
Edwards 2 contests several claims made in the Perry Declaration. The Opponent asserts that the Trade Mark was not used in the course of trade prior to September 2013 and reiterates that its first use was by the Trio in relation to the First Book. In the Opponent’s view, the Applicant has produced no evidence to controvert this.
Edwards 2 also denies Mr Higgins’ claim that the Applicant had creative control over which projects were pursued.[15] The Opponent highlights that there is no evidence to support this claim. Likewise, the Opponent submits that the relevance of the MP Declaration rises no higher than demonstrating that Mr Perry was aware that ‘The Grade Cricketer’ concept could be commercialised. Edwards 2 also mentions that the Opponent has not received any royalties from ‘The Grade Cricketer’ podcast or from the related merchandise sold.
Discussion
[15] Edwards 2, [11].
Section 58
Section 58 of the Act relevantly provides:
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.
The Act provides for registration of ownership and not ownership by registration.[16] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[17] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[18] The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[19] which in this case is 4 February 2020.
[16] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[17] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham’).
[18] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
[19] Pham (n 17) [14].
The ground of opposition was particularised in the SGP as follows:
1. The Application was filed on 4 February 2020.
2. The Opponent, David Edwards, collectively with the Applicant and Mr Ian Higgins, first used the trade mark “THE GRADE CRICKETER”:
a. in relation to printed matter, printed publications and books in Australia in November 2015;
b. in relation to clothing, headgear, and other merchandise in Australia in 2019;
c. in relation to sound recordings and downloadable podcasts in Australia in October 2016; and
d. in relation to production, presentation and distribution of comedy and related entertainment through live performances, television and other mediums in Australia in 2018.
3. The Opponent, together with the Applicant and Mr Ian Higgins, jointly owns the rights in the trade mark “THE GRADE CRICKETER”.
4. The trade mark the Applicant is seeking to register is substantially identical to the trade mark “THE GRADE CRICKETER”.
5. Accordingly, the Opponent opposes the registration of the trade mark under section 58 on the ground that the Applicant is not the owner of the trade mark.
The default position is that the Applicant is prima facie considered to be the owner of the Trade Mark. This arises by virtue of the Applicant’s filing of the application for the Trade Mark.[20] Consequently, it is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Trade Mark as at 4 February 2020. To achieve this, the following requirements must be satisfied:
(i)the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[21] (‘First Requirement’);
(ii)the Claimed GS are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent has been used[22] (‘Second Requirement’); and
(iii)a person other than the Applicant has the earlier claim to ownership based on use of the trade mark 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 Mark by the Applicant[23] (‘Third Requirement’).
[20] See, eg, Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J). The act of filing an application gives rise to a presumption that the applicant intends to use the trade mark in respect of all goods and/or services claimed.
[21] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[22] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[23] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
Broadly speaking, the key point of divergence between the parties is that the Opponent contends that the Trio are joint owners of the Trade Mark whereas the Applicant contends that he is the sole owner and the Opponent was simply a licensee or authorised user of the Trade Mark. In these circumstances, the central question to be determined is whether the evidence demonstrates that the prior use of the Trade Mark can be attributed to the Trio jointly or to the Applicant alone. Based on the evidence before me, I am not satisfied that the first user of the Trade Mark, before the application to register same, was the Trio jointly rather than the Applicant. I have reached this conclusion having specific regard to the examples of joint prior use relied on by the Opponent.[24] My reasons are outlined below.
[24] See [10] of this decision.
With respect to the First and Second Books, I acknowledge debate exists as to whether use of the Trade Mark as the title of these books functions as a badge of origin.[25] In the present matter, this issue is immaterial given the Opponent faces a more significant problem insofar as the evidence underpinning the prior use is silent with respect to the Trade Mark. In relation to the First Book, evidence in the nature of written correspondence between the Trio[26] and a publishing agreement with Melbourne Books[27] were relied on to demonstrate the Trio’s joint prior use of the Trade Mark. I do not agree that the evidence filed demonstrates such use. The correspondence between the Trio discusses potential content for the First Book and tellingly the Applicant flags that discussion regarding ‘major decisions’ needs to take place before ‘we commit too heavily to creative decisions’.[28]
[25] See, eg, Nutrition for Life International, LLC v Merck & Co Inc [2003] ATMO 55. See also Christodoulou v Disney Enterprises Inc [2005] FCA 1401 (Crennan J); Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd [2020] ATMO 109; Fortuity Pty Limited v Ereneos (Renos) Savvides [2000] ATMO 89. But see Twentieth Century Fox Film Corporation v Die Hard [2001] ATMO 43 wherein it was determined that the title ‘Die Hard’ was being used as trade mark because the evidence demonstrated that it was being used to identify a ‘Die Hard’ series of films.
[26] See Attachments DE-0 and DE-1 to Edwards 1.
[27] See Attachment DE-2 to Edwards 1.
[28] It is unknown from the email correspondence produced what discussions subsequently took place and any outcomes arrived at regarding the ‘major decisions’ raised by the Applicant.
Meanwhile, the publishing agreement between the Trio and Melbourne Books deals with copyright. The Opponent emphasises that pursuant to clause 2.1(b), the Trio warranted that they were ‘the sole owner of all rights granted to the Publisher in this Agreement’. In its view, this ‘firmly militates against any finding that [the Applicant] had exclusive proprietary rights over the Mark’.[29] In my opinion, this deduction does not follow from clause 1 of the publishing agreement which defines the ‘Rights granted’ to the publisher as follows:[30]
In consideration of the payments hereinafter mentioned, the [Trio] grants to the Publisher, for the legal term of the copyright of the Work, the sole and exclusive right and licence throughout the World (the Territory’) to print, publish and sell the Work in print and electronic form and to license others to do so.
[29] Opponent’s Submissions, [37].
[30] I note clause 14 of the publishing agreement between the Trio and Melbourne Books particularises additional reproduction, digest, single issue, strip cartoon and serial rights in the Work granted by the Trio to the Publisher.
Copyright and trade marks are different forms of intellectual property. The fact that the publishing agreement grants certain copyright rights and recognises the Trio’s co-authorship of the First Book does not materially affect the present ownership dispute regarding the Trade Mark. Similarly, the evidence concerning the Second Book in the form a publishing agreement between the Trio and Allen & Unwin[31] suffers the same deficiencies. Importantly, it is the publishing agreements which sets out the ownership of the copyright rights contained therein, rather than establishing any legal or contractual relationship between the parties in relation to the Trade Mark. As such, evidence of this nature does not assist the Opponent in establishing joint prior use of the Trade Mark.
[31] See Attachment DE-7 to Edwards 1.
On the joint prior use of the Trade Mark for a podcast series, the Opponent points to a talent agreement between the Trio and Diamantina Podcast Network Pty Ltd (‘DPN’).[32] This evidence is problematic because the talent agreement disclosed reveals that only the Applicant and Ian Higgins executed the talent agreement with DPN. The Opponent has not executed the agreement nor does his name appear on the execution page. Leaving this deficiency aside, at its highest the talent agreement establishes that the Trio granted DPN a ‘world-wide licence’ to use the podcast recordings and DPN did not acquire ownership of any intellectual property rights in the podcast series. Put another way, the talent agreement does not illuminate what, if any, ownership agreement or common understanding existed between the Trio with respect to the Trade Mark at the filing date of the application.
[32] See Attachment DE-12 to Edwards 1.
In relation to the live shows performed under the Trade Mark, the Opponent’s evidence consists of screenshots from CEA’s website promoting the shows, financial settlements for shows performed and images from various speaking engagements. This evidence confirms that the Trio prepared and hosted shows under the Trade Mark prior to 4 February 2020, which is not disputed by either party. However, similar to the talent agreement with DPN, this evidence does not shed any probative insight regarding the question of the ownership of the Trade Mark. As Mr Sykes opined at the hearing, performers and artists are not necessarily trade mark owners.
In respect of the video sketches and television shows performed under the Trade Mark, the Opponent refers to a talent agreement he executed with Channel Seven in 2018 noting the Applicant and Ian Higgins ‘signed identical talent agreements’.[33] Emphasis is placed on clause 9 of the agreement which defines the Opponent’s existing intellectual property assets as being the First and Second Books together with the podcast series and social media channels marketed under the name ‘The Grade Cricketer’. On this basis, the Opponent asserts that this is ‘further evidence of my joint ownership of the trade mark’.[34] In my view, this evidence does not provide sufficient support of this assertion given it blanketly refers to certain assets without fully particularising the nature of same including what proprietary interests the Opponent retained in each asset.
[33] Edwards 1, [43].
[34] Ibid [46].
On the alleged joint prior use of the Trade Mark on stubby holders and swimwear products, the Opponent relies on artwork concepts, correspondence with a swimwear company and screenshots from online retailers. I note stubby holders are not goods of the same description as any of the Claimed GS and thus do not warrant further consideration. Meanwhile, the evidence supporting joint prior use in relation to swimwear comprises three emails between the Trio and a swimwear company as well as a screenshot of the finished product from the swimwear company’s website.[35] The content of the emails consists of the Opponent submitting images for the swimwear design and two responses confirming receipt and seeking input on a mock up. Due to the brief nature of the emails, at best this evidence provides a basis to infer joint prior use of the Trade Mark by the Trio but it is not conclusive of ownership in itself.
[35] See Attachment DE-22 to Edwards 1. The screenshot of website is described as being ‘September 2020’ which is after the filing date of the application.
Bearing the above in mind, the Third Requirement detailed at [25] of this decision has not been established. I am not satisfied that the evidence before me establishes that the Trio, as opposed to the Applicant, first used the Trade Mark prior to 4 February 2020. The evidence is inconclusive in this regard. The Trio never formalised their working relationship and by the time the application for the Trade Mark was filed the relationship had clearly deteriorated. Given the undocumented nature of the Trio’s relationship, it is apparent that the evidence filed by both parties does not necessarily capture all the events and discussions which may have taken place. Indeed, several of the documented exchanges between the Trio allude to discussions not in evidence and which have not been clarified in any of the declarations filed.
The Applicant and the Opponent have each provided their version of events which, unsurprisingly, differ with respect to who was using the Trade Mark prior to 4 February 2020. There is also an underlying disagreement between the parties regarding payment of copyright royalties and this has conflated the evidence filed. Be that as it may, the respective narratives advanced by the parties each have their merits and shortcomings. In view of the evidence filed, neither of the narratives are wholly implausible. Notably, the Higgins Declaration supports the position advanced by the Applicant. Given Mr Higgins collaborated with both the Applicant and the Opponent during the alleged joint prior uses, I find his perspective revealing. Whilst I am mindful that Mr Higgins is not a disinterested party, there has been no reason advanced as to why he would act adversely to his potential ownership interests if the Opponent’s version of events were to be accepted. As such, I have no reason to question the veracity of the Higgins Declaration.
At its highest, the evidence gives rise to the possibility that the Applicant is not the owner of the Trade Mark. However, this is not sufficient to establish the ground of opposition given a shifting onus does not apply to s 58 of the Act.[36] Instead, the onus of proof falls squarely on the Opponent – it ‘either has a case or it does not’.[37] Having regard to the entirety of the evidence filed, I am not satisfied on the balance of probabilities that the Applicant is not the owner of the Trade Mark given the inconclusive nature of the examples of joint prior use. As such, the default position of the Applicant being the owner of the Trade Mark has not been displaced. To this end, the Full Court of the Federal Court observed in Food Channel Network Pty Ltd v Television Food Network GP that:
a finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the Opponent] to establish any ground of opposition.[38]
[36] Food Channel (n 1) [37]–[39].
[37] Ibid [39].
[38] Ibid [66].
Accordingly, the s 58 ground of opposition has not been established.
Section 43
Section 43 of the Act provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Section 43 of the Act is concerned with a connotation arising from the Trade Mark itself, not from a likelihood of deception or confusion arising as a result of similarities between the Trade Mark and another trade mark.[39] To establish this ground of opposition, the Opponent must show that there is a connotation within the Trade Mark itself and, because of this connotation, the use of the Trade Mark would be likely to deceive or cause confusion.
[39] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J); Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J); T.G.I. Friday's Australia Pty Ltd v TGI Friday's Inc [2000] FCA 720, [43] (Wilcox, Kiefel & Emmett JJ).
The ground of opposition was particularised in the SGP as follows:
1. The trade mark “THE GRADE CRICKETER” acquired a substantial reputation in Australia before the Priority Date, 4 February 2020.
2. The substantial nature of the trade mark’s reputation in Australia is evident in, inter alia, the quantity of books sold, attendees at live performances, podcast downloads, merchandise sales, and media appearances between 2015 and 2020.
3. As a joint owner of the trade mark “THE GRADE CRICKETER” the Opponent has played a pivotal role in developing the trade mark's reputation in Australia across the four classes of goods and services for which registration is sought.
4. As of 4 February 2020, and for several years before, the Opponent was demonstrably and publicly associated with the trade mark “THE GRADE CRICKETER” in relation to the sale of goods and services in Australia.
5. If the Applicant exploits the trade mark “THE GRADE CRICKETER” without the involvement of the Opponent it is likely that this will cause confusion among significant number of Australian consumers.
The SGP essentially asserts that the Trade Mark is so well known that use of same in respect of the Claimed GS would connote a connection with the Opponent. The corollary being that use of the Trade Mark without the Opponent’s approval or endorsement would be likely to deceive or cause confusion. At the hearing, Mr Fleming relied on Amalgamated Television Services Pty Ltd v Linda Cameron Pickard, Alexandra Cameron Pickard and Linda Louise Pickard[40] (‘Amalgamated’) to support the Opponent’s position.
[40] [1999] ATMO 103 (‘Amalgamated’).
It is true that s 43 of the Act may be triggered if a name with some notoriety is contained within a trade mark in a way that connotes ‘sponsorship or association’.[41] In Amalgamated, the Registrar’s delegate refused to register trade mark applications which contained the words ‘Summer Bay’ given this fictitious town in the television series ‘Home and Away’ was ‘extremely well known’ such that it connoted the goods sought to be registered were ‘dealt with under the aegis or sanction of the opponent’.[42]
[41] Pfizer Products Inc v Karam [2006] FCA 1663, [55] (Gyles J).
[42] Amalgamated (n 40).
Here, the circumstances are markedly different. The particulars outlined in the SGP are not substantiated by the evidence filed which is devoid of any financial or business performance metrics. The evidence fails to establish that ‘The Grade Cricketer’ enjoyed any form of notoriety even remotely approaching that of ‘Summer Bay’. Nor does it provide any cogent basis to infer that the purchasing public, when presented with the Claimed GS bearing the Trade Mark, would necessarily believe that the Opponent is in some way associated with it. Put simply, there is no evidence before me to establish that the Trade Mark contains any connotation that is likely to deceive or cause confusion.
Accordingly, the s 43 ground of opposition is not established.
Section 62A
Section 62A of the Act provides:
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.
A finding of bad faith will not be found easily given the ‘very serious’ nature of the allegation.[43] The concept of bad faith was considered in Fry Consulting Pty Ltd v Sports Warehouse (No 2) by Dodds-Streeton J who observed:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
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.
…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[44]
[43] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[44] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167] (‘Fry’).
The relevant part of this ground of opposition was particularised in the SGP as follows:
1. At the time the application was filed, the Opponent, collectively with the Applicant and Mr Ian Higgins, had used the trade mark “THE GRADE CRICKETER”, which they are owners of, in relation to the sale of goods and services for six years (2015 – present).
2. On a number of occasions before 4 February 2020, the Applicant demonstrated an appreciation of the Opponent’s use of the trade mark “THE GRADE CRICKETER” in the course of trade in relation to the four classes of goods and services for which registration is sought.
3. In light of 1 and 2 above, it is more probable than not that a reasonable person in the position of the Applicant on 4 February 2020 would have considered the trade mark “THE GRADE CRICKETER” to be jointly owned between themself, the Opponent, and Mr Ian Higgins.
4. Furthermore, the Applicant only applied for registration of “THE GRADE CRICKETER” after the Applicant and Mr Higgins had decided to part ways commercially with the Opponent. The Applicant is using the trade mark registration process to attempt to defeat the rights which the Opponent has with respect to the use of “THE GRADE CRICKETER” brand.
The Opponent’s Submissions emphasise that the application to register the Trade Mark was filed on the same day that the initial proposal was communicated to the Opponent. As this proposal was alleged to be ‘commercially unfavourable’ to the Opponent, the Opponent’s Submissions postulate that the concurrent filing of the application was made in bad faith because the Applicant anticipated a dispute and therefore sought to pre-emptively deprive the Opponent of joint title in the Trade Mark.[45] In contrast, the Applicant’s Submissions point out that the Applicant notified the Opponent that the application had been filed despite being under no obligation to do so.[46] This is because the Applicant held a reasonable belief that he was exclusively entitled to registration of the Trade Mark.
[45] Opponent’s Submissions, [50].
[46] Applicant’s Submissions, [66].
In my assessment, the act of filing the application on the same day that the proposal was sent to the Opponent, without more, is not sufficient to establish that the application was made in bad faith. It is clear from the evidence filed that each party believed that they were entitled to ownership of the Trade Mark, albeit in differing capacities. In this light, the Applicant’s act of filing an application is unlikely to be characterised as ‘unscrupulous, underhand or unconscientious’[47] by persons adopting the proper standards. Contrary to the particulars listed in the SGP, the evidence shows that the decision to file the application for registration was not made after the Trio ‘decided to part ways’. The date of filing was the same day that the initial proposal was put to the Opponent. Indeed, the Applicant voluntarily exposed himself to potential opposition by alerting the Opponent a mere nine days after the filing date of the application. In my view, this is at odds with a party acting in bad faith as it provided the Opponent with ample opportunity to seek advice and oppose the application.
[47] Fry (n 44) [166].
The s 62A ground of opposition has not been established.
Decision
Section 55 of the Act relevantly provides:
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 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.
The Opponent has not established a ground of opposition. It follows that trade mark application number 2066574 may proceed to registration 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 the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
The Applicant sought an award of costs. Costs usually follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Delegate of the Registrar of Trade Marks
20 October 2021
and Edelman JJ).
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