Opposition by Mars Australia Pty Ltd to registration of trade mark application no(s). 2026493 and 2026495 (29, 30, 31) – MM and MM Marquis stylized - in the name of Marquis Macadamias Ltd

[2021] ATMO 152

TRADE MARKS ACT 1995

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

Re:Opposition by Mars Australia Pty Ltd to registration of trade mark application no(s). 2026493 and 2026495 (29, 30, 31) – MM and MM Marquis stylized - in the name of Marquis Macadamias Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: Gabriella Rubagotti,of counsel instructed by Baker McKenzie

Applicant: Jurgen Bebber of Corrs, Chambers, Westgarth

Decision:

2021 ATMO 152
Trade Marks Act 1995 (Cth) - Section 52 opposition.
Trade Mark Application No. 2026493- Section 44 established for all goods – evidence insufficient– Trade Mark refused.
Trade Mark Application No. 2026495 – no ground of opposition established.

Background

1. Marquis Macadamias Ltd (‘the applicant’), filed trade mark application numbers 2026493 and 2026495 on 30 July 2019 in classes 29, 30 and 31 of the International Classification of Goods and Services. Current details of the applications are set out below.

   Trade mark:   (“Trade Mark”)

   Trade mark application no: 2026493            

   Filing Date:  30 July 2019

   Specification:  Class 29: Candied nuts; Edible nuts; Flavored nuts; Flavoured nuts; Food products made from cooked nuts; Food products made from dried nuts; Food products made from nuts; Food products made from preserved nuts; Ground nuts; Macadamia nuts, processed; Mixtures of fruit and nuts; Mixtures of nuts and dried fruits; Nuts, prepared; Pastes made from nuts; Preparations consisting wholly or principally of nuts; Prepared nuts; Prepared snacks made from nuts; Processed nuts; Roast nuts; Roasted nuts; Salted nuts; Blanched nut kernels; Nut butter; Nut oils; Nut milk; Nut products for food; Nut-based spreads; nut-based snack bars; Milk substitutes

   Class 30: Chocolate coated macadamia nuts; Chocolate coated nuts; Chocolate spreads containing nuts; Chocolate-based spreads also containing nuts; Chocolate-coated nuts; Coated nuts (confectionery); Gingerbread nuts; Nut confectionery; Nut flours; Sandwich spread made from chocolate and nuts; Sauces containing nuts; Sauces flavoured with nuts; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Confectionery; Ice confections; Confectionery bars; Sauces (condiments); Sauce mixes; Sauce powders; Mixes for preparing sauces

   Class 31: Edible nuts (unprocessed); Fresh nuts; Kola nuts; Macadamia nuts, unprocessed; Nuts (fruits); Raw nut kernels; Unprocessed nuts

   Trade Mark:                          (“Second Trade Mark”)

   Trade mark application no: 2026495            

   Filing Date:  30 July 2019

   Specification:  Class 29: Candied nuts; Edible nuts; Flavored nuts; Flavoured nuts; Food products made from cooked nuts; Food products made from dried nuts; Food products made from nuts; Food products made from preserved nuts; Ground nuts; Macadamia nuts, processed; Mixtures of fruit and nuts; Mixtures of nuts and dried fruits; Nuts, prepared; Pastes made from nuts; Preparations consisting wholly or principally of nuts; Prepared nuts; Prepared snacks made from nuts; Processed nuts; Roast nuts; Roasted nuts; Salted nuts; Blanched nut kernels; Nut butter; Nut oils; Nut milk; Nut products for food; Nut-based spreads; nut-based snack bars; Milk substitutes

   Class 30: Chocolate coated macadamia nuts; Chocolate coated nuts; Chocolate spreads containing nuts; Chocolate-based spreads also containing nuts; Chocolate-coated nuts; Coated nuts (confectionery); Gingerbread nuts; Nut confectionery; Nut flours; Sandwich spread made from chocolate and nuts; Sauces containing nuts; Sauces flavoured with nuts; Snack bars containing a mixture of grains, nuts and dried fruit (confectionery); Confectionery; Ice confections; Confectionery bars; Sauces (condiments); Sauce mixes; Sauce powders; Mixes for preparing sauces

   Class 31: Edible nuts (unprocessed); Fresh nuts; Kola nuts; Macadamia nuts, unprocessed; Nuts (fruits); Raw nut kernels; Unprocessed nuts

2. Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 31 December 2019. Subsequently Mars Australia Pty Ltd (‘the opponent’) filed its Notices of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notices of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).            

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 17 August 2021.

   Grounds of Opposition

5. The Notice nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) and those grounds under sections 42(b), 44, 60 and 62A were pursed at the Hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

   Evidence in Support

   • Declaration of Pamela Mallari (“Mallari declaration”) dated 2 September 2020 accompanied by Annexures PM-1 to PM-22

   Evidence in Answer

   • Declaration of Larry McHugh (“McHugh declaration”) dated 3 December 2020 accompanied by Annexures A to F
   • Declaration of Jennifer Louise Wrigley dated 3 December 2020 accompanied by Annexures A to E

   Evidence in Reply

   • Declaration of Robert Anthony Arnold dated 5 February 2021 accompanied by Annexures RAA-1 to RAA-14.

   Discussion

   Section 44 – Deceptive similarity

6. Subsection 44(1) of the Act is relevant in this case and reproduced below:

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

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or
   (ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

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

7. To establish a ground of opposition under section 44 of the Act, the opponent must show all of the following:

   Øa trade mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

   Øthe trade mark in the name of the other person must be in respect of similar goods/services or closely related goods/services; and

   Øthe priority date of the trade mark of the other person is earlier than the priority date of the applicant’s trade mark.

8. The opponent has listed six trade mark registrations it owns which it has put forward in support of the section 44 ground of opposition. The details of the trade mark registrations are as follows:

9. I note that the opponent’s trade marks have an earlier priority date than the applicant’s trade marks. I also consider that the opponent’s claimed goods are the same and similar as those of the applicant’s. Both parties goods are concerned with chocolate confectionery products, including chocolate covered nut products, intended for general human consumption. The applicant is also involved in selling nuts which are related to chocolate covered nuts and likely to be sold in close proximity to each other.

10. Now I need to determine whether any of the opponent’s trade marks are substantially identical or deceptively similar to either of the applicant’s trade marks.

    Trade Mark Application No. 2026493

11. It is clear that trade mark application no. 2026493 is not substantially identical with any of the opponent’s trade mark registrations according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4].

    [4] (1963) 109 CLR 407 at 414

Applicant’s trade mark	Opponent’s trade marks
M&M’s

1. It is obvious the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (“Shell”).[5] There exist differences between the opponent’s trade marks such as the ampersand and the “ ‘s ” within some of the opponent’s trade marks or a single letter “M”. When you consider that the Trade Mark is for two single letters being “MM” the visual and aural differences  between the Trade Mark and the opponent’s trade marks are sufficient to preclude a finding of substantial identity.

   [5] (1963) 109 CLR 407 at 414

2. Deceptive similarity is defined in section 10 of the Act as follows:

   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.

3. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: [6]

   The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … 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 impression that such persons would get from the defendant’s [trade mark]

   [6] (1961) 109 CLR 407 at 415

4. The Court added at 416, that:

   [The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

5. The decisive question is whether the use of the Trade Mark for the goods in class 29, 30 and 31 would result in a tangible danger of confusion or deception given the previous registrations for the opponent’s trade marks. I find that it would.

6. The opponent’s trade marks are the letters M and M&M. The Trade Mark is for the letters MM with a line underneath. In comparing the respective trade marks it becomes apparent that the Trade Mark shares similarities to the opponent’s M&M’s trade mark in that they both have two letter “M” as the main feature of the trade marks. In issues of imperfect recollection the fact that trade marks have a common first element may be of significance[7]. Ultimately:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[8]

   [7] See In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279.

   [8] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).

7. The applicant has argued that the average consumer would see the Trade Mark as a “crown device” due to the stylization of the font of the two letter “M”. However, I do not believe that is the case. These are two letter “M” with a line underneath. If consumers were to vocalise the Trade Mark it is likely they would not say it was a “crown device” but rather “em em” or “em and em” which is very similar if not the same to how the opponent’s trade marks would be pronounced. There are more similarities between the respective trade marks than there are differences.

8. The principal of conceptual confusion is summed up in John Fitton & Co. Ltd’s Application[9] where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

   With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is direction not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from the one and same trade source.

   [9] 66 RPC 113

9. Therefore, it needs to be determined whether a prospective purchaser, although aware that the respective trade marks are different, may still be caused to wonder whether they are the property of the same entity. To hold such a belief requires that the respective trade marks are seen to have some sort of relationship – that the applicant’s Trade Mark “MM” would be seen as a member of the opponent’s “family” of M&M trade marks because of a commonality that has been produced by a mutual feature.

10. As already discussed, the two letter “M” is the common element in all the trade mark representations of the opponent and the applicant. The applicant argues that the small differences between the trade marks are significant given that these are essentially two letter trade marks. I note the addition of the ampersand and “-‘s” suffix to some of the opponent’s trade marks but these variations do not detract from a common identity of being an double letter “MM” being applied to chocolate covered nuts and similar goods. Contrary to the applicant’s arguments, I am in agreement with the opponent that once the common element of the double “MM” is imperfectly recalled, it is likely to induce the public into believing that goods branded with the trade marks emanate from the same trade source.[10] 

    [10] John Fitton & Co. Ltd’s Application 66 RPC 110, per Assistant-Comptroller Chisholm at 113.

11. Although the trade marks look different when viewed side by side, marks are often imperfectly remembered by prospective purchasers. They may have a general impression, in this case of the trade mark registrations incorporating the double “M” and consequently become confused as to the origin of the goods when faced with the applicant’s Trade Mark, particularly when the marks are applied to the same or similar goods.

12. I am satisfied there is a real tangible danger of use of the respective trade marks resulting in confusion in the marketplace for the applicant’s goods and the opponent’s goods. In view of my finding that the Trade Mark is deceptively similar to the opponent’s trade mark the opponent has established the opposition ground based on section 44 of the Act in regards to trade mark application no. 2026493.

13. Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the applicant to overcome a section 44 ground of opposition on the basis of prior continuous use, honest concurrent use or other circumstances which would make registration proper. I now turn to the applicant’s evidence.

14. The applicant has no evidence of use prior to February 2020 according to the McHugh declaration. This is after the priority date of the Trade Mark. I also note from the evidence very limited examples of the applicant’s use of the Trade Mark solus. The use demonstrated in the applicant’s evidence is insufficient to overcome the section 44 ground of opposition.

    Trade Mark Application No. 2026495

15. The opponent has argued that the Second Trade Mark is substantially identical or at least deceptively similar to its five trade mark registrations shown in paragraph 11 above. I say now that I do not consider the respective trade marks to be substantially identical, not only for the reasons outlined in paragraph 12 but for the additional reasons that the Second Trade Mark is for the double “MM” device in small front atop the striking and large font word MARQUIS. The addition of the word MARQUIS in such a prominent and striking position within the Second Trade Mark precludes a finding of substantial identity.

16. Deceptive similarity is defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the opposed trade mark.[11] The likelihood of deception must be finite and non-trivial.[12]

    [11] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 [415] (‘Shell’)

    [12] Registrar of Trade Marks v Woolworths Limited 45 IPR 411 [43]

17. In comparing the respective trade marks it becomes clear that the most prominent and striking feature of the Second Trade Mark is the word MARQUIS which is positioned in a prominent place in large font. The letters “MM” are positioned in small text along the top of the trade mark as follows: 

18. The large word MARQUIS even with the small “MM” is memorable and striking in a consumer’s mind. I am satisfied that the Australian consumer would focus on the striking and prominent “MARQUIS” word element within the trade mark and refer to the applicant’s Second Trade Mark as MARQUIS.

19. I am not satisfied there is a real tangible chance of these the trade marks being confused in the marketplace. In this case I am satisfied that the visual and oral differences between the trade marks are sufficient to preclude a finding a deceptive similarity. Therefore, the opponent has not established its section 44 ground of opposition in relation to trade mark application 2026495.

    Section 60 - Reputation in Australia

20. Section 60 of the Act provides:

    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.

21. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks below:

    M&M’s          

22. The opponent’s M&M’s trade marks have attained registration in a number of different classes. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade marks be substantially identical or deceptively similar to the Second Trade Mark.

23. It is for me to determine whether the opponent has established that before 30 July 2019 any of the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Second Trade Mark would be likely to cause the public confusion.

24. The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths (‘Woolworths’): [13]

    (ii) 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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[14]

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

    [13] [1999] FCA 1020 [50]

    [14] [1973] HCA 43; (1973) 129 CLR 353, 362

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[15] by Kenny J:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

   [15] [2000] FCA 1335 [81]

2. The reputation of the opponent in its various M&M trade marks in relation to its confectionary goods has been well established through a number of separate oppositions and court cases. The applicant has not disputed the opponent’s significant reputation in Australia for its goods. Briefly put:

   ·The opponent has been operating in Australia since the launch of its Mars bar in 1954 and is one of the largest manufacturers and distributers of confectionary in Australia.[16]

   ·The opponent launched its M&M branded goods in Australia in 1985.[17]

   ·The opponent has engaged in significant advertising of its M&M branded goods within Australia on a continuous basis since 1985 and this advertising has grown considerably over the years.[18]

   ·The opponent has expansive business interests and also owns well-known trade marks such as BOUNTY, CELEBRATIONS, MALTESERS, MARS, MILKY WAY, SNICKERS and TWIX.[19]

   ·The advertising expenditure the opponent engages in for its M&M branded goods is very significant. [20]

   ·The variety of goods upon which the opponent has used a variety of its M&M trade marks has been extensive and continues to grow.[21]

   ·The opponent sells its M&M branded goods through a number of large third party retailers including Coles, Woolworths, IGA, 7-Eleven, Big W, Caltex, Coles Express, Woolworths Petrol and BP.[22]

   ·From 2008 until 2019 the total sales from goods branded with the opponent’s M&M trade marks is very considerable. [23]

   [16] Mallari declaration [8] to [9]

   [17] Annexure PM-9 accompanying the Mallari declaration

   [18] Annexures PM-12, PM-15 to PM-19 accompanying the Mallari declaration

   [19] Mallari declaration [9]

   [20] Confidential Annexure 22 accompanying the Mallari declaration

   [21] Mallari declaration [31] and Annexure PM-10 accompanying the Mallari declaration

   [22] Mallari declaration [35] and Annexures PM-12 and PM-13 accompanying the Mallari declaration

   [23] Confidential Annexure 21 accompanying the Mallari declaration

3. Taken together, I am satisfied that the opponent’s M&M trade marks had a very significant reputation in Australia for confectionary and snack foods before the priority date of the Second Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Second Trade Mark by the applicant would be likely to deceive or cause confusion. This is the main point of contention between the two parties.

4. The applicant has agreed that the opponent has a significant reputation in its M&M trade marks for confectionary.

5. In considering the respective trade marks it becomes clear that the only similarity between them is the use of two letter “M”. The opponent has argued that the key distinguishing feature in the Second Trade Mark is the combination of the double letters “MM” which is an unusual and distinctive term in the context of the relevant confectionary goods of interest to the applicant and the opponent. The opponent goes on to state the double “MM” on confectionary items created a similarity of idea and impression with consumers that would give rise to a real risk that consumers might have cause to wonder that the Second Trade Mark used on the applicant’s goods was somehow related to the opponent’s M&M branded goods. However, I am not persuaded by this reasoning.

6. The Second Trade Mark is for the combination of the small font “MM” above the striking and prominent word “MARQUIS”. The opponent’s M&M trade marks focus on the double letter “M” and can sometimes include animated confectionary characters and some trade marks are for the “M” device solus. There are significant differences between the respective trade marks which outweigh the commonality of the double letter “M”. The Second Trade Mark contains the additional word MARQUIS which has a distinct meaning in its own right. The whole of the Second Trade Mark is MM MARQUIS which contains a very distinct and different idea from the opponent’s M&M trade marks.

7. When the trade marks are considered as wholes, as they must, I am not satisfied that use of the Second Trade Mark will lead a significant number of consumers to experience a reasonable doubt[24] as to the existence of some sort of connection between the opponent’s M&M trade marks and the Second Trade Mark. There are simply too many striking differences.

   [24] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4]

8. The opponent has accordingly not established its ground of opposition under section 60.

   Section 42(b) – Contrary to Law

9. Section 42(b) of the Act is reproduced below:

   Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) …

   (b) its use would be contrary to law.

10. I have found that the use of the Second Trade Mark is not, at a minimum, likely to “deceive or confuse” under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established the ground of opposition under section 42(b).

    Section 62A – Application made in bad faith

11. Section 62A of the Act provides:

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

12. Bennett J in DC Comics v Cheqout Pty Ltd[25] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [26], wherein her Honour commented:

    Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in the 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 [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

    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…

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

    [25] [2013] FCA 478; (2013) 101 IPR 334.

    [26] [2012] FCA 81; (2012) 94 IPR 551, at [164].

13. I am not persuaded that the opponent has discharged the onus of establishing that the applicant, as at the priority date, applied for the Second Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behavior.

14. As outlined in the McHugh Declaration, the applicant engaged external marketing agency BCM to develop a new name and logo for the applicant. The applicant states:

    BCM undertook a thorough process and BCM consulted with a wide number of stakeholders within the Applicant and beyond, including customers. As a result of the consultation carried out by BCM, it identified brand positioning criteria for the Applicant’s business which included values such as stability, leadership, prestige and so forth. Mr McHugh also explains that the reason BCM developed a logo incorporating two capital Ms was to capture the initials of both of the Applicant’s former company names (Marquis Macadamias and Marquis Marketing).

15. The opponent has argued that this explanation of events surrounding the adoption of the Second Trade Mark is unconvincing and states:

    In this matter, the applications to register the MM and MM Marquis Trade Marks were at their priority dates (viz. 30 July 2019) made in bad faith as they were designed to acquire a springboard or advantage by exploiting the reputation of Mars’ M&M’S Trade Marks. It is clear from the evidence, that at the time that the trade mark applications were filed, that Mars had developed considerable business goodwill and a substantial reputation in the M&M’S Trade Marks in Australia (as to which see section E above). There can be little doubt that the Applicant was aware of Mars’ M&M’S Trade Marks, particularly given that Mr McHugh, as the Applicant’s CEO, was responsible for the sales and marketing of its confectionery products under the MM and MM Marquis Marks, which products are plainly the same as or similar to Mars’ M&M’S products and intended for the same broad class of consumers.

16. I am not persuaded by the above that the opponent has discharged the onus upon it sufficient to establish the bad faith ground of opposition which is a serious allegation. While the parties may operate in the same marketplace there is nothing in the evidence to suggest that the opponent’s trade marks had any bearing on the applicant’s choice of Second Trade Mark.

17. Indeed, the evidence before me does not support the opponent’s assertions that the applicant applied for the Second Trade Mark in bad faith and I find that the opponent has not established this ground of opposition either.

    Decision

18. Section 55 of the Act provides:

    55  Decision

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:          Forlimitationssee section 6.

    Trade Mark Application No. 2026493

19. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 44. Accordingly, I refuse to register trade mark application no. 2026493.

    Trade Mark Application No. 2026495

20. I find that the opponent has not met the onus upon it, in terms of any of the grounds of opposition argued at the hearing. The trade mark application no. 2026495 may accordingly proceed to registration 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 of the Second Trade Mark shall not occur until the appeal has been decided or discontinued.

    Costs

21. The opponent and the applicant requested its costs in the event of success in these opposition matters. As the applicant has successfully defended one opposition and the opponent has been successful in establishing one opposition, I am satisfied that it is appropriate for each party to bear their own costs in these matters.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    8 December 2021