Opposition by Linked Business Concepts Pty Ltd to registration of trade mark application 1694840 (35, 44) – 360 (Figurative) – in the name of Thomas International Ltd

[2020] ATMO 185

TRADE MARKS ACT 1995

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

Re:Opposition by Linked Business Concepts Pty Ltd to registration of trade mark application 1694840 (35, 44) – 360 (Figurative) – in the name of Thomas International Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Allens Patent & Trade Mark Attorneys

Applicant: Sparke Helmore

Decision:

2020 ATMO 185

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44, 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Linked Business Concepts Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Thomas International Ltd (‘Applicant’): 

Application Number:

1694840

Filing Date:

20 May 2015

Services:

Class 35: Psychological testing for the selection of personnel; efficiency or process auditing (examining, reviewing or assessing the working of a business or organization); business surveys; processing of business survey results; the aforesaid provided in relation to the assessment, management, retention and development of personnel for business purposes; surveys for business purposes, namely feedback questionnaires designed to assess gaps in performance and to identify opportunities for development, analysis and reporting of the same; business enquiries, business investigations, management consulting, organisation consulting, business research and efficiency expert services, namely assisting businesses to develop a competency framework, to identify performance gaps, and to create an environment for constructive and honest feedback; business enquiries, business investigations, management consulting, organisation consulting, business research and efficiency expert services, namely providing businesses with a competency framework, to identify performance gaps, and to create an environment for constructive and honest feedback from managers, colleagues and customers, analysis and reporting of same; commercial and industrial management assistance; consultancy and advice services, all performed in relation to personnel management; testing of individuals to determine training and employment skills; provision of the aforesaid services via the Internet

Class 44: Occupational psychology services; provision of information relating to psychology; preparing psychological profiles; medical diagnostic services (testing and analysis); psychological testing for medical purposes; psychological testing and examination; psychometric testing; aptitude testing; behavioural analysis for medical purposes; behavioural profiling; provision of information relating to behavioural modification; health assessment surveys; health risk assessment surveys; psychological testing and assessment services; personality, intelligence, aptitude, capability, performance and character assessment

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

Endorsements: Provisions of subsection 44(3)(a) and 44(4) applied

2.  Following the advertisement on 29 March 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 11 May 2018.  The Opponent then filed a Statement of Grounds and Particulars on 13 June 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 13 September 2018.

Evidence

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

   ·Declaration made on 24 December 2018 by Mark Andrew Williams, Lawyer, Trade Marks Attorney and Managing Associate at the Opponent’s representative, with Exhibits MAW-1 to MAW-8 (‘Williams declaration’).

   4.  The Applicant filed the following evidence in answer:

   ·Declaration made on 10 April 2019 by Vienna Jones, a lawyer employed by the representative of the Applicant, with Annexures VJ-1 to VJ-14 (‘Jones declaration’).  Annexures VJ-1 to VJ-11 consist of two declarations of Amir Qureshi, CEO of the Applicant, made 10 October 2017 and 1 February 2018 in support of the Application at the examination stage (‘Qureshi declarations’).

   5.  The Opponent did not file evidence in reply.

2. The entirety of the evidence filed by the Applicant, including publicly available information such as the public use of the Trade Mark, 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].

3. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is a issue that has arisen by that party not specifically identifying that information as sensitive.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 26 July 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions upon which they wished to rely.  The Applicant filed written submissions on 28 October 2019 (‘Applicant’s Submissions’).  The Opponent did not file any submissions.

5. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act 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

6. The Opponent is an Australian company that provides IT solutions for improved business and property management.   

   11.     The Opponent is the owner of the trade marks listed below (‘Opponent’s Trade Marks’).  The goods and services for which the Opponent’s Trade Marks are registered are collectively referred to as the ‘Opponent’s Goods and Services’. 

Number	Trade Mark	Priority Date	Goods or Services
907233	(‘Device Mark’)	22 Mar 2002	Class 9: Computer software for use in designing, installing and executing mainframe and client/server application programs, for integrating business functions, and for property and facilities management, maintenance and essential services, and business support functions Class 35: Business management consulting and services, especially in the fields of property and facilities management, maintenance and essential services; business management in the fields of information systems design, specification, procurement, installations, and implementation; business project and process management, planning and supervision services; commercial and industrial services management; preparing service reports
907234	360 PM  (‘Word Mark’)	22 Mar 2002	Class 9:  Computer software for use in designing, installing and executing mainframe and client/server application programs, for integrating business functions, and for property and facilities management, maintenance and essential services, and business support functions

12.     The relevant claims/statements in the Williams declaration can be summarised as follows:

·     The Opponent provides performance management tools by reference to the Opponent’s Trade Marks, which it has continuously used in Australia since 2001.  It uses the Opponent’s Trade Marks in its user interface, product brochures, system charts and general correspondence.  

·     The Opponent’s sales and advertising under the Opponent’s Trade Marks are significant.

13.     The Exhibits to the Williams Declaration show use of the Opponent’s Trade Marks on the Opponent’s website, product brochures, system charts and correspondence with its customers (including invoices).  The Opponent also provides confidential information regarding sales and advertising figures from 2013 until the date of the declaration.  I note that the Opponent does not provide any information about the number of customers or status of the Opponent in the market.  The Opponent only provides evidence of revenue and advertising expenditure for less than two years before the priority date, and this evidence (particularly the evidence of the Opponent’s revenue) suggests that the Opponent is a small local business with under 5 employees.  

The Applicant

1. The Applicant is a company, based in the United Kingdom, that provides clients with psychometric assessment tools as well as training and consultancy services in support of those tools focused on the retention, development, benchmarking and engagement of staff.  

   15.     The relevant claims/statements in the Jones declaration can be summarised as follows:

   · Following the application to register the Trade Mark a number of examination reports were issued raising objection pursuant to s 44 with respect to particular cited marks. Each of these objections was resolved following an amendment to the specification of the application and the provision of the Qureshi declarations showing honest concurrent or prior use of the Trade Mark with respect to the citations identified by IP Australia.[2]  

   [2] I note that the Opponent’s Trade Marks were among the citations raised by the Examiner in the examination process and, with respect to the Opponent’s Trade Marks, the Trade Mark application was allowed under the provisions of s44(3)(a), namely honest concurrent use.

   ·     Following acceptance of the Trade Mark on 21 March 2018 the Applicant continued to use the Trade Mark for the Applicant’s Services. 

   ·     The term ‘360’ is used by a number of traders in relation to business management services and a number of trade marks containing or consisting of the number 360 co-exist on the Trade Marks Register.

   16.     The relevant claims/statements in the Qureshi declarations can be summarised as follows:

   ·     The Applicant offers over 180 different forms of tests, assessments, training and tools.  The Trade Mark is used by the Applicant in respect of a behavioural and competency based set of assessment tools that were first developed in 2006.  The Trade Mark was first used in Australia in 2011 and has been used continuously since that date.

   ·     The Applicant conducts business globally through country-based licensees and licenses the Trade Mark to Australian licensees.  The Applicant and its Australian licensees use the Trade Mark on their websites, publications, marketing material and social media. 

   ·     The Applicant sponsors or presents at various events and has been the recipient of numerous business awards, indicating a strong presence in the market. 

   ·     The Applicant is not aware of any actual instance of confusion between the Trade Mark and any of the Opponent’s Trade Marks.  

   17.     The Annexes to the Qureshi declarations include documents setting out the number of ‘360 tests’ administered in Australia by the Applicant’s licensees however the declaration does not adequately explain the table such that I can fairly calculate the exact level of usage.  Without divulging any more information than necessary, I note that the 360 test is charged at a certain purchase price (it is not clear whether this price is in pounds, dollars or some other monetary unit) and hence it is not clear whether the total figures referred to in the table are the raw number of tests (which is a significant figure) or the raw number multiplied by the purchase price (which would result in a less significant raw number).  The annexes also provide monthly sales revenue figures for the Applicant’s licensees but this revenue, while significant, is incurred in connection with all the Applicant’s brands, not merely the Trade Mark.  Given that the Applicant offers 180 different forms of tests and assessments and the Applicant has made no attempt to break down this revenue to limit it to revenue incurred with respect to the Trade Mark, it is of little use in showing sales and/or market penetration for services offered under the Trade Mark.  

   18.     Furthermore, I note that many of the events sponsored and awards received by the Applicant are in the United Kingdom which is less relevant in showing the reputation of the Trade Mark in Australia.  It is also likely that the awards and events would be sponsored by reference to the Applicant and its name, and not the Trade Mark, which is used by the Applicant to refer to one (or a small number) of services in its detailed services range.  

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   20.     The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is 20 May 2015 (‘relevant date’), being the priority date of the application in Australia.[5]

   [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [4] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 44

3. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 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.

   22. To successfully oppose the application pursuant to s 44 of the Act 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 or sought to be 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, or goods which are closely related to, the Applicant’s Services (‘the third requirement’).

4. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, 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.

1. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks has a priority date that is earlier than the priority date of the Trade Mark.  The first requirement is satisfied; and I shall now consider the third requirement.

   Similar services

   25. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

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

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

   26.     McCormick & Company Inc v McCormick (albeit in respect of goods and not services) summarises the legal principles applicable when determining if the services for which the Device Mark (the Word Mark is solely registered for goods) are registered are services of the same description as the Applicant’s Services as follows:

   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. [6] 

   Closely related goods

   [6] [2000] FCA 1335 [17].

   27.     The case of Paypal, Inc v Braintree Communications Pty Ltd[7] summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are registered are closely related to the Applicant’s Services as follows:

   [7] [2017] ATMO 90.

   In Qantas Airways Ltd v Edwards[8] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[9]:

   [8] [2016] FCA 729 at [111].

   [9] (1999) 93 FCR 365; [1999] FCA 1020 at [37].

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [10] 

   [10] [2017] ATMO 90, [28]-[29].

   28.     The goods for which the Opponent’s Trade Marks are registered are, in essence, computer software that can be used for business functions and property management.  The Applicant’s Services relate to the provision of surveys, related consultation services and psychological services.  I note that the Applicant’s Services do not involve the installation, operation, maintenance or repair of the goods for which the Opponent’s Trade Marks are registered, nor do they have any particular function in relation to the goods.  The mere fact that a party, in providing the Applicant’s Services, may use computer software being the goods for which the Opponent’s Trade Marks are registered, is not a sufficient basis to find that the respective goods/services are closely related (otherwise the vast majority of services would be closely related to computer software). I am not satisfied that goods for which the Opponent’s Trade Marks are registered for are closely related to the Applicant’s Services as there is not a particular relationship between them.  As the Word Mark is only registered for goods, the third requirement is not satisfied with respect of the Word Mark.

   29.     I find that the services for which the Device Mark is registered are similar to the class 35 services for which the Trade Mark is sought to be registered as they are both broadly characterised as business consulting services.  While the Opponent’s services appear to be in respect of property and facilities management, and the Applicant’s in respect of psychological testing, in neither case is the specification restricted to those limited services (rather both specifications refer to broad ‘consulting services’), and as such the services are similar.   The third requirement is satisfied with respect to the Device Mark.

   Substantially identical and/or deceptively similar

2. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Marks[11].  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   [11] I note that it is strictly not necessary to consider this test in respect of the Word Mark, as the third requirement is not satisfied, however it is appropriate to discuss substantial identity here as it is relevant to the s58 ground of opposition.

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[12]

   [12] (1963) 109 CLR 407, 414.

   31.     The Trade Mark and the Opponent’s Trade Marks are set out below:

   360 PM           

   32.     On a side by side comparison there are clear differences between the respective trade marks, being the distinctive circular arrow device element used in the Trade Mark and the ‘PM’ elements in the Opponent’s Trade Marks.  The differences between the respective trade marks are sufficient for me to conclude that the trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Device Mark are deceptively similar.

   33.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[13]

   [13] Ibid [13].

   34.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[14] at [49]; Australian Woollen Mills[15] at 658.

   [14] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [15] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[16] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [16] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[17] at 594 – 595.

   [17] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[18]

   [18] [2012] FCA 1022, [38]-[46].

1. In the present case the similarity between the Trade Mark and the Device Mark is that they both evoke the number 360 (explicitly in the case of the Device Mark, and figuratively in the case of the Trade Mark, which consists of a circular arrow device that forms the number ‘0’).  The Applicant has included evidence of the large number of registrations and businesses trading by reference to the number 360.  The reason for this is that the number ‘360’ has a specific meaning in respect of business management or business consulting.  The Delegate is aware that the number 360 (or more accurately 360 degrees) refers to the provision of feedback or assessment from multiple sources (including both the subject’s superiors, but also from subordinate and lateral employees).  In the context of the services for which the Trade Mark and the Device Marks are registered/sought to be registered (being business consulting services) the number ‘360’ is both descriptive and common to the trade.[19]  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar. 

   [19] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34].

2. Stephen J observed[20] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   [20] Albeit in relation to trade practices.

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[21]

   [21] 140 CLR 216, 229.

3. There are numerous small differences between the respective marks, including the stylization and circular arrow device in the Trade Mark and the ‘star PM’ element in the Device Mark. A finding of deceptive similarity in this case would in effect infer that the Opponent has a monopoly on the use of the number 360 in respect of business consulting services (and other similar services and closely related goods). The Opponent does not have such a monopoly. Any confusion that might occur stems from the use of the descriptive term in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the Act.

4. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58 – Applicant not owner of trade mark

   39. Section 58 of the Act is reproduced below:[22]

   [22] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

   Note:For applicant see section 6.

   40.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[23]

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

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[24] and

   [24] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[25]

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

   41. The ground based on s 58 of the Act was particularised in the SGP as follows:

   The Opponent first used [the Opponent’s Trade Marks] as trade marks in Australia in respect goods and services in classes 9 and before the filing date of the Applicant's Trade Mark. The Applicant's Mark is substantially identical to the Opponent's marks and covers services which are closely related or the same kind of thing as the Opponent's goods and services. Given the Opponent's prior rights and use in Australia, the Applicant is not the owner of the Trade Mark.

   42. Given that I have found that neither of the Opponent’s Trade Marks are substantively identical to the Trade Mark, the Opponent has failed to established the first factor. As the Opponent must establish all three factors to succeed in the s 58 ground of opposition, I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

   Section 60

5. Section 60 of the Act is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

6. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[26]

   [26] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

7. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[27]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [27] [2000] FCA 1335, [81].

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[28]

   [28] (1992) 33 FCR 302, 343.

8. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[29]

   [29] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

9. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[30] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   [30] (2000) 50 IPR 1.

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[31]

   [31] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

10. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[32]

    [32] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

11. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The Opponent has used [the Opponent’s Trade Marks] in Australia from before the priority date of the present application and had acquired a reputation in those marks as at the priority date. Because of the Opponent's reputation in its trade marks in Australia at the Priority Date, use of the Trade Mark is likely to deceive or cause confusion.

12. The marketplace for business consulting services in Australia is a significant and diverse market. Based on the evidence of sales and advertising by the Opponent in the two year period prior to the relevant date, I am not satisfied that, at the relevant date, the Opponent had established a reputation in the Opponent’s Trade Marks sufficient for the purposes of s 60(a) of the Act. While the Opponent has traded under the Opponent’s Trade Marks for 14 years prior to the relevant date, the evidence of the Opponent’s revenue and advertising expenditure is for two years only and is characteristic of a small consulting business with a minimum external reputation. Nor is there particular evidence that satisfies me that the Opponent’s Trade Marks are held in such high esteem that a reputation can be found notwithstanding the low level of ongoing sales under the Opponent’s Trade Marks.

13. I note that even if I were to find reputation in the Opponent’s Trade Marks, I would not find that by reason of that reputation, any use of the Trade Mark would be likely to deceive and cause confusion.  I refer to the statements made by Stephen J in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[33] extracted at paragraph 36 above regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.  I would not be satisfied that any confusion that could arise between the Trade Marks and Opponent’s Trade Marks would arise because of the reputation of the Opponent’s Trade Marks as opposed to the shared use of the number ‘360’ which has a common descriptive use with respect of business consultancy and assessment services.

    [33] (1978) 140 CLR 216, 229.

14. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

    Section 42

15. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

16. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[34]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[35]

    [34] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [35] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

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

    The Opponent has used [the Opponent’s Trade Marks] in Australia from before the priority date of the present application and had acquired a reputation in those marks as at the priority date. As a result, use of the Trade Mark by the Applicant would constitute misleading and deceptive conduct contrary to the Australian Consumer Law and the tort of passing off.

18. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[36] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [36] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

19. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[37], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[38] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    [37] [2014] ATMO 65, [50].

    [38] [2003] FCA 104, [107].

    The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.[39]

    [39] [1989] FCA 506, [40] (citations omitted).

20. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

21. Section 62A of the Act 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.

22. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

    ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

    ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

    ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

23. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[40]:

    [40] [2004] EWCA Civ 1028; [2005] FSR 10.

    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.[41]

    [41] [2012] FCA 81, [147].

24. 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.[42]

    [42] Ibid [165]-[166].

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

    The Opponent has acquired a substantial reputation, including prior to filing date of Trade Mark, in respect of [the Opponent’s Trade Marks] in relation goods and services in classes 9 and 35. The Applicant knew, or should have known, that adopting and seeking registration of a trade mark that is substantially identical with or deceptively similar to a well-known third party's mark falls short of acceptable standards of commercial behaviour. The Trade Mark was therefore filed in bad faith.

1. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[43] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register a mark evoking the number 360 was a decision made to take advantage of the reputation of the Opponent’s Trade Marks. Not only have I found that the Opponent has little or no reputation in its trade marks in Australia (that would suggest that the Applicant was aware of the Opponent at the relevant date), there is no evidence of any reputation in the United Kingdom where the Applicant coined the Trade Mark. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.

   [43] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].

   Decision

2. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1694840 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.

3. I note that Trade mark application no. 1694840 is subject to several endorsements.  As the endorsements relate to multiple marks cited in examination, including marks that were not raised in the present Opposition proceeding, the endorsements do not need to be amended.

   Costs

4. 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 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   1 December 2020