Opposition by Duncan Farquhar to registration of trade mark application 2103656 (41) – EcoConnect – in the name of Kristy Hobson

[2022] ATMO 14

TRADE MARKS ACT 1995

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

Re:Opposition by Duncan Farquhar to registration of trade mark application 2103656 (41) – EcoConnect – in the name of Kristy Hobson

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Self-represented
Decision:	2022 ATMO 14 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 43, 44, 58, 58A, 59, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Duncan Farquhar (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Kristy Hobson (‘Applicant’): 

Application Number:	2103656
Filing Date:	3 August 2020
Services:	Class 41: Academies (education); Academy education services; Accreditation (certifying) of educational achievement; Adult education; Adult education services; Advisory services relating to education; Arranging and conducting of in-person educational forums; Arranging of exhibitions for educational purposes; Association services being the provision of training and education to members of the association; Business educational services; Conducting of educational conferences; Conducting of educational courses; Conducting of educational events; Conducting of exhibitions for educational purposes; Consultancy services relating to education; Design of educational courses, examinations and qualifications; Dissemination of educational material; Education academy services; Education advisory services; Education services; Educational advisory services; Educational assessment services; Educational consultancy services; Educational examination; Educational institute services; Educational instruction; Educational research; Educational seminars; Educational services; Educational services provided by schools; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Higher education services; Hire of educational materials; Information relating to education; Information services relating to education; Kindergarten services (education or entertainment); Life coaching services (training or education services); Mentoring (education and training); Organisation of competitions (education or entertainment); Organisation of contests (education or entertainment); Preschools (education); Primary education services; Providing facilities for educational purposes; Providing information in the field of education; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of children's educational services through play groups; Provision of education courses; Provision of education services via an online forum; Provision of educational courses; Provision of educational examinations; Provision of educational information; Provision of facilities for education; Provision of information relating to education; Publication of educational materials; Publication of educational texts; Rental of educational material; Rental of educational materials or apparatus; Setting of educational standards; Technological education services; University education services; Vocational education; Vocational guidance (education or training advice) (‘Applicant’s Services’)
Trade Mark:	EcoConnect	(‘Trade Mark’)

1. 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.

2. Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 5 March 2021 (‘SGP’). The SGP raised grounds of opposition under ss 43, 44, 58, 58A, 59, 60 and 62A. The Applicant filed a Notice of Intention to Defend on 19 May 2021.

   Evidence

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

   ·Declaration made on 5 July 2021 by Duncan Farquhar, the Opponent, with 2 attachments (‘Farquhar 1’).

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 6 October 2021 by Kirsty Leigh Hobson, the Applicant, with Annexures KLH-1 to KLH-51 (‘Hobson declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 14 October 2021 by Duncan Farquhar with 2 attachments (‘Farquhar 2’).

6. The entirety of the evidence the Applicant, including publicly available information such as the public use of the Trade Mark or the contents of national trade mark registries, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

7. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  The Applicant has done so only in respect of certain annexures clearly marked as confidential.  If, in my summary of the remaining evidence I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as such.

8. 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.  The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

9. 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.

   The Opponent

10. The Opponent is an individual based in Wagga Wagga appears to be connected to an entity known as EcoConnections (the exact relationship is unclear but it appears that EcoConnections is a limited partnership of some nature and that the Opponent is the individual behind the entity).  EcoConnections is the owner of the trade mark listed below (‘Opponent’s Trade Mark’). 

Number	Trade Mark	Priority Date	Goods or Services
2047987	Ecoconnect	31 Oct 2019	Class 42: scientific research relating to ecology; scientific research relating to biology; scientific research relating to genetics; scientific research relating to bacteriology; environmental consultancy services; setting of environmental standards; biological research; provision of information relating to environmental sustainability; environmental surveys; ecological surveys (‘Opponent’s Services’)

1. It is very difficult to assess the evidence provided by the Opponent in this matter since each declaration simply references 2 attachments.  One of those two attachments (to each declaration) consists of a letter from the Opponent making statements, unsupported by any documentary evidence, about the EcoConnections business and the relationship between the parties.  In addition, Farquhar 2 attaches a copy of the ABN lookup report which confirms that the EcoConnections entity has held an active ABN since 2000.  Farquhar 1 does refer to websites purportedly operated by the Opponent but no print-outs of the websites are annexed to the declaration.  It would not be appropriate for me, as delegate of the Registrar to visit and have regard to the present content of the websites since extracts have not been included in the evidence and in any event the content may have changed since the date of the declarations. Moreover, the grounds of opposition generally require me to consider the situation as it was at the filing date of the Trade Mark, which is even earlier than the date of these declarations.   

2. The relevant claims/statements in the letters attached to the Farquhar Declarations can be summarised as follows:

   ·     The Opponent’s Trade Mark has been in continuous use since 2000 for a variety of services including connecting people to species, project management services and managing research and development partnerships.  The Opponent’s Trade Mark is used as the major component of the URL ecoconnect.me.

   ·     The Opponent may wish to use the Opponent’s Trade Mark for areas such as waste management research, education and consulting services.  It aims to use the Opponent’s Trade Mark to mean a specific act of connecting a person to a species or describing another relationship with nature managed by EcoConnections.

   ·     EcoConnections has reached out to the Applicant with a view of licensing the Opponent’s Trade Mark to the Applicant but no agreement was reached.  Hence the trade mark application is in bad faith.

   ·     The Applicant’s website is not live and it appears that the Applicant’s business has been discontinued. 

3. As noted in paragraph 12 above, other than the fact that the EcoConnections has had an active ABN since 2000, none of the statements referred to above are supported by any documentary evidence.        

   The Applicant

4. The Applicant is an Australian individual that is the founder and owner of a business trading under the business name EcoConnect – Environmental Education and Consulting, registered with ASIC on 22 August 2017. 

5. The Hobson Declaration is lengthy and provides considerable evidence on the Applicant’s personal history and services offered under her business that is not necessary to summarise for the purposes of the decision other than to note that the Applicant’s business is clearly an active and ongoing one with an active website at The relevant claims/statements in the Hobson Declaration can be summarised as follows:

   ·     The Applicant has since 2017 operated a business under the EcoConnect name providing environmental education and waste, recycling and sustainability consulting.   The Applicant came up with the EcoConnect name in July/August 2017 and conducted a search for the name in Google and with IP Australia before establishing the business.  The Applicant did not identify any similar businesses in the field of waste recycling and waste management trading under a similar name.

   ·     To the extent that the Applicant’s Services are similar to the Opponent’s Services, the Applicant has been providing the services before the priority date of the Opponent’s Trade Mark of 31 October 2019, indeed they have been offered since October 2017.

   ·     The Opponent operates a website at which as of 2020 simply referred to the Opponent raising funds for research and development.  It did not suggest that the Opponent was offering any of the Opponent’s Services.  

   ·     The Applicant and the Opponent had communications prior to the commencement of the proceeding but the Applicant regards those communications as without prejudice and confidential and does not wish to discuss them.    

   Grounds of Opposition, Onus and Standard of Proof

6. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 44, 58, 58A, 59, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

7. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the filing date 3 August 2020 (‘relevant date’), which is also the priority date for the purposes of ss 44 and 60.[4]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] 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).

   [4] 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).

8. In the present case the Opponent has, by signed letter, made a number of statements about the EcoConnections business that are unsupported by any documentary evidence. Indeed in most cases the Opponent’s evidence simply repeats the particulars in the SGP. The only documentary evidence attached is an ABN record that shows that the EcoConnections business has held an ABN since 2000, not that there has been any actual trading. Given that the grounds of opposition in respect of ss 58, 58A and 60 are particularised by reference to the use of and reputation in the Opponent’s Trade Mark and there is no documentary evidence of use or reputation I have no hesitation deciding that the Opponent has not discharged the onus on it with respect to the grounds of opposition under ss 58, 58A and 60 of the Act. It remains necessary to consider the grounds of opposition under ss 43, 44, 59 and 62A of the Act.

   Discussion

   Section 44

9. The relevant provisions are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)…

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)            a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)           a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.
   Note 2: For similar services see subsection 14(2).
   Note 3: For priority date see section 12.

   Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)            the similar goods or closely related services; or

   (ii)           the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

10. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

    ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

    ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

    ·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

11. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to accept the application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.

12. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark and is identical to the Trade Mark.  The first and second requirements are satisfied. 

    Similar services

13. Section 14 relevantly provides:

    14Definition of similar goods and similar services

    (2)For the purposes of this Act, services are similar to other services:

    (a)if they are the same as the other services; or

    (b)if they are of the same description as that of the other services.

1. McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Mark is registered are services of the same description as the Applicant’s Services as follows (I note that the case involved goods rather than services but the principles remain relevant):

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [5] 

   [5] [2000] FCA 1335, [17] (Kenny J).

2. The Opponent’s Services are broadly categorised as scientific research services, environmental consultancy services, and survey services relating to the environment.  The Applicant’s Services are broadly categorised as educational services.  I consider the Opponent’s Services are not services of the same description as the Applicant’s educational services.  The Applicant’s Services involve teaching existing information or providing advice on the teaching of information.  The clientele for such services is generally students or educational institutions.  The Opponent’s Services involve providing research services to third parties on environmental issues.  These services are not targeted at, nor do they involve the education industry in any obvious way, rather they appear to be targeted at entities seeking specific environmental research or surveys.

3. I note that the Applicant’s Services do include consultancy services relating to education and the Opponent’s Services do include environmental consultancy services.  While the nature of the respective services are similar, being consultancy services, such services are targeted at different markets and used for different purposes, and it is unlikely that consumers in the market would have an expectation that an individual or entity would have the ability to provide specialist consultancy services in respect of very different areas such as the educational industry and the environment. 

4. As such I fail to identify any of services for which the Opponent’s Trade Mark is registered that are similar or closely related to the Applicant’s Services. I find that the Opponent has failed to establish the ground of opposition under s 44.

5. I also note that had I reached a different conclusion and found that the consulting services were closely related, the Applicant has provided significant evidence of the use of the Trade Mark for consulting services prior to the priority date of the Opponent’s Trade Mark, and as such I would have found the s 44 ground of opposition not established by means of the operation of s 44(4) of the Act.

   Section 43

6. Section 43 is reproduced below:

   43 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.

7. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [6]

   [6] [2006] FCA 1663, [53].

8. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [7]

   [7] [2002] FCA 288, [19].

9. The ground of opposition pursuant to s 43 was particularised in the SGP as follows:

   Ecoconnections aims to use the word 'ecoconnect' to mean a specific act of connecting a person to a species or describing another relationship with nature that is recognised, encouraged and managed by Ecoconnections. The use of the word 'ecoconnect' for provision of advice about waste management is a confusing use of the trademarked term.

10. Neither the existence of the Opponent’s Trade Mark nor any intention that the Opponent has in its use is of relevance under s 43. The first step in establishing this ground of opposition requires the Opponent identify some connotation inherent in the Trade Mark. The Opponent has provided no evidence to suggest such a connotation exists.

11. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

    Section 59

12. Section 59 is reproduced below:

    59 - Applicant not intending to use trade mark
    The registration of a trade mark may be opposed on the ground that the applicant does not intend:

    (a)    to use, or authorise the use of, the trade mark in Australia, or

    (b)    to assign the trade mark to a body corporate for use by the body Corporate in Australia;

    in relation to the goods and/or services specified in the application.

13. The relevant date for assessing the Applicant’s intention to use the Trade Mark is the filing date being 3 August 2020.[8]

    [8] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (‘Food Channel’).

14. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd where he stated:

    In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[9]

    [9] (2008) 75 IPR 478, 497 [160].

15. There is a presumption that where an application has been filed the applicant, has the requisite intention.  However:

    There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

    The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[10]

    [10] Ibid [162]-[163] (citations omitted).

16. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

    The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[11]

    [11] Ibid [161] (citations omitted).

17. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention.  If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal.

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

    Particulars’ here are that the applicant’s website is not currently live and thus it appears the business has been discontinued.

19. The Opponent has not provided sufficient evidence in support of this ground of opposition to shift the evidentiary onus, nor has it made any submissions on this ground. Furthermore the Applicant has provided evidence of an active website connected to her business and evidence of the actual use of the Trade Mark. The Opponent has failed to establish a ground of opposition pursuant to s 59.

    Section 62A

20. 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.

21. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) 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.

22. 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 v Teton Valley Trading Co Ltd:[12]

    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.[13]

    [12] [2004] EWCA Civ 1028 (Pill, Arden LJJ and Sir William Aldous).

    [13] [2012] FCA 81, [147].

23. 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.[14]

    [14] Ibid [165]-[166].

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

    The owner of TM 2047987 reached out to the applicant for TM 2103656 with a view to licensing the use of the trademarked word 'ecoconnect'. No agreement was reached. This application is an attempt to achieve a trademark registration for a closely related class of services.

25. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[15] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision made to take advantage of the reputation of the Opponent’s Trade Mark, since there is no evidence that the Opponent has ever traded under the Opponent’s Trade Mark and the Applicant has provided detailed evidence as to the creation of her business under the Trade Mark. Finally I note that the mere failure of the parties to settle this dispute prior to the commencement of an opposition is not a basis to find that the Applicant has acted in bad faith. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

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

    Decision and Costs

26. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 2103656 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been 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 application should be in accordance with the Court’s order or direction.

27. 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. I accordingly award costs against the Opponent under section 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    2 February 2022