Opposition by Medical Score UAB to registration of trade mark application number 2425231 (classes 9, 44) -

[2025] ATMO 188

TRADE MARKS ACT 1995

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

Re:Opposition by Medical Score UAB to registration of trade mark application number 2425231 (classes 9, 44) - Mindway - in the name of Mindway Group Pty Ltd

Delegate:

Sheona Robertson

Representation:

Opponent: Vytas Linas Brazaitis

Applicant: Self-represented

Decision:

2025 ATMO 188

Trade Marks Act 1995 (Cth) – opposition under s 52 – ground pursued under s 62A – ground not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Medical Score UAB (‘Opponent’) to registration of the trade mark the subject of application number 2425231 (‘Application’) in the name of Mindway Group Pty Ltd (‘Mindway’). The relevant details of the Application are as follows:

Trade mark:

Mindway (‘Trade Mark’)

Filing date:

3 February 2024

Goods and services:

Class 9: Downloadable software applications (apps)

Class 44: Mental health services

1. The Application was initially filed in the name of Ryder Jack Mckenzie but was assigned to the Mindway on 17 November 2024. The change in ownership of the Application was recorded with this Office on 18 November 2024. In this decision, a reference to the ‘Applicant’ includes both Mindway and Ryder Jack Mckenzie.

2. The Application was examined as required under s 31 of the Act and was advertised as accepted for possible registration on 4 July 2024.

3. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 6 August 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 5 September 2024. The Applicant filed a Notice of Intention to Defend on 18 September 2024.

4. The Opponent filed as evidence in support a declaration made on 19 November 2024 by Evaldas Cerkesas, a lawyer acting on behalf of the Opponent, with Annexes 1 to 8 (‘Cerkesas’).

5. The Applicant filed as evidence in answer two declarations made by Ryder Mckenzie as Director of Mindway:

1. declaration made on 18 February 2025 with Evidence 9 to 17 (‘Mckenzie 1’); and

2. declaration made on 4 April 2025 with Evidence 18 to 21.

1. The Opponent did not file any evidence in reply.[1]

   [1] On 4 April 2025 the Opponent filed a further declaration by Evaldas Cerkesas made on 3 April 2025. This declaration was filed before the Applicant’s deadline to file its evidence in answer. The parties were notified by way of letters dated 14 April 2025 that this evidence was filed early and would be disregarded, and that no further action would be taken on the early filed evidence. The Opponent made no attempt to refile the second Cerkesas declaration, or file any further evidence.

2. Once the period for filing evidence had ended the parties were given an opportunity to request a hearing. The Applicant requested a decision without a hearing.

3. The matter was allocated to me as a delegate of the Registrar of Trade Marks (‘Registrar’) for a decision based on the written record. I have decided this matter as required by s 55 of the Act on the basis of the materials referred to above.

Grounds of opposition, onus and standard of proof

1. The SGP nominates a ground of opposition under s 62A of the Act.

2. The Opponent bears the onus of establishing the nominated ground of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3]

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

   [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

   and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 3 February 2024 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.

The Applicant

1. The Applicant delivers tailored wellbeing support under the Trade Mark by way of a mobile application which incorporates mindfulness, guided meditation, mood tracking, journaling and counselling services.

2. The Applicant registered the domain name ‘mindwayapp.com’ on 12 December 2022, followed by the domain name ‘mindwayeap.com.au’ in July 2024 which has become the landing page for the ‘mindwayapp.com’ website.

3. The Applicant has an Instagram account under the name ‘mindwayapp’.

4. The Applicant’s ‘Mindway: Tailored Mindfulness’ application is available to download via the Apple App Store. The Applicant also has an application on the Google Play Store under the name ‘Mindway for Work: Mindfulness’. The applications were first launched on their respective platforms on 23 May 2023. In January 2025, the names of these applications were amended for marketing purposes to ‘Mindway: Tailored EAP’.

The Opponent

1. The Opponent offers personalised plans, by way of a mobile application, to help overcome overthinking, negative thought patterns and anxiety, or to assist with mindfulness. The features of the mobile application include mindfulness audio exercises and activity journals.

2. The Opponent registered the domain name ‘mindway.app’ on 9 June 2023. The Opponent operates a website from this web domain.

3. The Opponent also operates an Instagram account under the name ‘mindway.app’.

4. The Opponent’s ‘Mindway: Stop Overthinking’ application has been available to download via the Apple App Store and Google Play Store since January 2024.

Discussion

1. 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.

2. The phrase “bad faith” is not defined in the Act, although examples are provided in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth). In the context of s 62A, bad faith does not require dishonesty or fraud; it is “a wider notion, potentially applicable to diverse species of conduct”.[4]

   [4] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J).

3. As explained by Bennett J in DC Comics v Cheqout Pty Ltd:

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

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[5]

   [5] [2013] FCA 478, [62].

4. Conduct that is “exploitative and designed to acquire a springboard or advantage” can amount to conduct that falls short of acceptable commercial standards.[6]

   [6] Ibid [66].

5. As noted by the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, an allegation of bad faith under s 62A is a serious one:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[7]

   [7] [2009] ATMO 26, [12] (Delegate Nancarrow).

6. It is asserted in Cerkesas that the Opponent first used the Trade Mark earlier than the Applicant, and that the Applicant filed the Application in bad faith to prevent the Opponent from using ‘Mindway’ in connection with its own activities.

7. It is declared in Mckenzie 1 that the Applicant first used the Trade Mark as the primary brand for its business activities on 5 December 2022. This first use was by way of an Instagram post which features a device that contains the word ‘Mindway’ in large, stylised text in conjunction with an image of a smiling thought cloud and the phrase ‘Be kind to your mind.’ in smaller lettering.

8. According to Evidence 10 and 11 to Mckenzie 1, the earliest post on the Opponent’s Instagram page is dated 31 January 2024 and the Opponent’s application was first released on the Google Play and Apple App stores on the same date. I note that this evidence, being the earliest provided examples of use of the Opponent’s ‘Mindway’ trade mark, significantly postdates the Applicant’s earliest evidenced use and predates the Relevant Date by just four days.

9. It is further declared in Mckenzie 1 that prior to its first use of the Trade Mark the Applicant undertook Google, business name and trade mark searches and was not able to identify an existing use of ‘Mindway’ in Australia in the same area of business as the Applicant’s business, or any registered trade marks in classes 9 or 44. While no evidence is provided in relation to these searches, I am satisfied on the balance of the evidence that they were undertaken well before the Opponent’s first use of its ‘Mindway’ trade mark.

10. Having regard to the evidence discussed above, I consider it is likely that the Applicant began using the Trade Mark prior to the Opponent and that the Applicant was not aware of the Opponent’s use of a ‘Mindway’ trade mark at the Relevant Date. In any event, mere awareness of the Opponent is not, on its own, sufficient to indicate that the Application was made in bad faith. There is no evidence before me which suggests that the Applicant, at any stage, recognised the Trade Mark as being the property of the Opponent.

11. The Opponent notes that the Trade Mark is the word ‘Mindway’ solus, the implication being that the Applicant’s use of ‘Mindway’ with additions such as ‘app’ or ‘EAP’ on social media or in domain names demonstrates that the Applicant does not have an intention to use the Trade Mark as sought to be registered. The Applicant’s intention to use the trade mark is relevant to a ground of opposition under s 59 of the Act, which is a ground not particularised in the SGP. I note also that in filing the Application the Applicant is presumed to have a genuine intention to use the Trade Mark as filed. As stated by Fullagar J in Aston v Harlee Manufacturing Co:

    [T]he making of the application itself is, I think, to be regarded as prima facie evidence of intention to use. I cannot think that the Registrar is called upon to institute an inquiry as to the intention of any applicant, and I think that, on an opposition or on a motion to expunge, the burden must rest on the opponent, or the person aggrieved, of proving the absence of intention.[8]

    [8] (1960) 103 CLR 391, 401.

12. In any event, it is clear from the evidence of the Applicant’s applications on the Apple App Store and Google Play Store that the Applicant’s business uses the name ‘Mindway’ solus.

13. The evidence before me does not establish that at the Relevant Date the Applicant’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. Accordingly, I am not satisfied on the balance of probabilities that the Application was made in bad faith. The ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (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.

2. The Opponent has not established the ground of opposition under s 62A of the Act. Trade mark application number 2425231 may proceed to registration not less than one month from the date of this decision.

3. If the Registrar is 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.

Costs

1. The Applicant sought an award of costs in its favour. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Sheona Robertson

Hearing Officer

Delegate of the Registrar of Trade Marks

11 September 2025