Opposition by Mitsubishi Heavy Industries, Ltd to registration of trade mark application number 2048315 (9, 36, 38, 42, 45) - Qoin - in the name of BPS Financial Limited.

[2022] ATMO 4

TRADE MARKS ACT 1995

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

Re:Opposition by Mitsubishi Heavy Industries, Ltd to registration of trade mark application number 2048315 (9, 36, 38, 42, 45) - Qoin - in the name of BPS Financial Limited.

Delegate:	Louise Tuohy
Representation:	Opponent: FB Rice Pty Ltd, Patent and Trade Mark Attorneys Applicant: BPS Financial Limited
Decision:	2022 ATMO 4 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42, 44, 58 and 60 – none established – trade mark to proceed to registration

Background

1. This is an opposition brought by Mitsubishi Heavy Industries, Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) and relates to the registration of the following trade mark application in the name of BPS Financial Limited (‘Applicant’):

   Application Number:             2048315

   Trade Mark:  Qoin (‘Trade Mark’)

   Filing Date:  1 November 2019

   Specification:  Class 9: Computer programs and computer software for digital wallets; computer programs and computer software to enable the electronic trading of fiat currency and virtual currency; electronic financial platforms that enable payment and financial transactions; computer hardware for transmitting virtual currency and fiat currency between computers and/or electronic devices through peer-to-peer networks; electronic data files featuring interchangeable electronic cash comparable units having a specific cash value; software for providing an electronic financial platform that facilitates the transaction of payments and financial transactions over a computer network (‘Goods’)

   Class 36: Computerised transfer of funds; collection of fees; financial exchange services; on-line real-time currency trading; virtual currency exchange transaction services for transferrable electronic cash comparable units having a specific cash value; monetary services for receiving and disbursing payments and gifts in fiat currencies and virtual currencies over a computer network and exchanging fiat currencies and virtual currencies over a virtual network; providing a virtual currency for exchange and storage over a computer network; currency exchange services; payment verification services, namely, delivering payments and gifts from an origin to a destination; facilitating transfers of virtual currency through electronic transmission networks
   Class 38: Communication between computers and electronic devices; transmission of data by means of telecommunications; transmission of data by computers and other electronic means; transmission of services between computers and electronic devices; electronic transmission of currency through computers and electronic devices; transmission of virtual currency via electronic transmission networks; peer-to-peer currency exchange services, namely, electronic transmission of financial data through computers and electronic devices; transmission of financial information by electronic transmission networks
   Class 42: Software for providing an electronic financial platform that facilitates transactions of payments over a computer network; computer support services; computer software development; computer software engineering
   Class 45: Identity verification; licensing of computer programs; licensing of software; licensing of technology; licensing of Intellectual Property

   (‘Services’)

2. The trade mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 30 April 2020.

3. On 23 June 2020 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 23 July 2020. On 20 August 2020 the Applicant filed a Notice of Intention to Defend the opposition of the Trade Mark.

4. Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘Regulations’). Neither party requested a hearing or filed written submissions. The matter came before me, a delegate of the Registrar of Trade Marks, for a decision on the written record.

   Grounds of Opposition, Relevant Date and Onus

5. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 44 and 60 of the Act.

6. The date at which the rights of the parties are determined is 1 November 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

7. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   Evidence

   Evidence in Support

   ·Declaration by Tadafumi Himeno, Manager of Intellectual Property Administrative Group Intellectual Property Department of the Opponent, made on 18 November 2020 with Annexures TH -1 to TH-9 (‘Himeno declaration’).

   Evidence in Answer

   ·Statutory Declaration by Antonie Jakobus Wiese, Director of the Applicant, made on 24 February 2021 with Annexures A to O (‘Wiese declaration’).

   Evidence in Reply

   ·Declaration of Tadafumi Himeno, made on 22 April 2021 with Annexures TH-1 to TH-4 (‘Second Himeno declaration’).

   The Opponent

8. The Himeno declaration submits that the Opponent is an engineering and manufacturing company headquartered in Tokyo, Japan. The Opponent is part of the multinational corporate group, Mitsubishi Heavy Industries Group, which consists of approximately 300 group companies in Japan and around the world, employing 81,631 people worldwide.

   The Applicant

9. The Wiese declaration submits that the Applicant is an Australian company and part of the alternative payment industry.

   Legislative Background and Reasoning

   Section 58

10. Section 58 of the Act provides:

    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.

11. 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. In order to succeed under this ground of opposition the Opponent must establish three factors. These are:

    ·the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark;[3]

    ·the claimed Goods and/or Services are considered to be the ‘same kind of thing’ as the goods and/or services for which the trade mark relied upon by the Opponent has been used;[4] and

    ·a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[5]

    [3] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68; (1994) 120 ALR, [62] (Gummow J).

    [4] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

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

12. In the SGP the Opponent particularises the s 58 ground of opposition as follows:

    The Opposed Trade Mark is substantially identical with the Opponent’s trade mark 1991288, or alternatively, all of the Opponent’s Trade Marks, and which have been used continuously in Australia from a date before the priority date of the Opposed Trade Mark and in relation to services that are the same as, or similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered.

    The Applicant is thus not the owner of the Opposed Trade Mark within the meaning of section 58.

13. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[6] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

    [6] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

14. For the purposes of this comparison, I have reproduced the respective trade marks side by side:

Trade Mark	trade mark 1991288	trade mark 1991830	trade mark 1991831
Qoin	QoEn

1. On a side by side comparison there are clear differences between the respective trade marks. All the trade marks consist of four letters, starting with the letters Q and O. The third letter I in the Trade Mark is followed by the letter N. This is compared to trade marks 1991288, 1991830 and 1991831 where the third letter E is followed by the letter N. The letter I in the Trade Mark and the letter E in trade marks 1991288, 1991830 and 1991831 act as clear visual differences between the respective trade marks. Trade marks 1991830 and 1991831 also consist of the words KEY INDEX APPROACH and a device element. For these reasons, I find that the compared trade marks are not substantially identical. The total impression emerging from a side by side comparison is not one of similarity.

2. The Opponent has not established the ground of opposition under s 58 of the Act.

   Section 44

3. Section 44 of the Act provides:

   44  Identical etc. trade marks

   (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.

   (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.

   (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.

   (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.

4. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar goods and/or services or goods and/or services which are closely related to the Applicant’s Goods and Services.

5. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

   The Opposed Trade Mark is substantially identical with or deceptively similar to one or more of the Opponent’s Trade Marks within the meaning of section 44.

   The Opponent’s Trade Mark 1991288 for QoEn:

   (a) has a priority date of 21 February 2019 which is earlier than the filing date of the Opposed Trade Mark (1 November 2019); and

   (b) is registered in respect of services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered.

   The Opponent’s Trade Mark 1991830 for QOEN KEY INDEX APPROACH (with device):

   (a) has a priority date of 25 February 2019 which is earlier than the filing date of the Opposed Trade Mark (1 November 2019); and

   (b) is registered in respect of services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered.

   The Opponent’s Trade Mark 1991831 for QOEN KEY INDEX APPROACH (with device):

   (a) has a priority date of 25 February 2019 which is earlier than the filing date of the Opposed Trade Mark (1 November 2019); and

   (b) is registered in respect of services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered.

6. The three trade mark registrations nominated by the Opponent in the SGP (‘Opponent’s trade marks’) are reproduced below:

   Registration Number:             1991288

   Trade Mark:  QoEn

   Priority Date:  21 February 2019

   Specification:  Class 42: Testing, research or survey on building construction design, city planning and regional development; consultancy services in the field of testing, research or survey on building construction design, city planning and regional development; providing information in relation to testing, research or survey on building construction design, city planning and regional development; testing, research or survey on building construction design, city planning and regional development by using computer terminals; testing, research or survey on building construction design, city planning and regional development via the Internet; planning and consultancy services in relation to building construction design, city planning and regional development by using computer terminals; consultancy services in the field of building construction design, city planning and regional development via the Internet; providing information in relation to building construction design, city planning and regional development by using computer terminals; providing information in relation to building construction design, city planning and regional development via the Internet; testing, research or survey in the field of electricity; consultancy services in relation to testing, research or survey in the field of electricity; providing information in relation to testing, research or survey in the field of electricity; testing, research or survey in the field of energy; consultancy services in relation to testing, research or survey in the field of energy; providing information in relation to testing, research or survey in the field of energy; testing, research or survey in relation to energy, water supply sewerage systems, communication equipment, community facilities and other infrastructures in city and regional infrastructures for use in city planning and regional development; consultancy services in relation to energy, water supply sewerage systems, communication equipment, community facilities and other infrastructures in city and regional infrastructures for use in city planning and regional development; providing information in relation to energy, water supply sewerage systems, communication equipment, community facilities and other infrastructures in city and regional infrastructures for use in city planning and regional development; providing non-downloadable computer programs (‘Opponent’s Services’)

   Registration Number:             1991830

   Trade Mark:  

   Priority Date:  25 February 2019

   Specification:  Opponent’s Services

   Registration Number:             1991831

   Trade Mark:  

   Priority Date:  25 February 2019

   Specification:  Opponent’s Services

7. These trade marks are registrations by a person other than the Applicant and have a priority date earlier than the Relevant Date.

8. At paragraph [16] I found that the respective trade marks are not substantially identical. I will now consider whether the Trade Mark is deceptively similar to the Opponent’s trade marks.

9. The expression ‘deceptively similar’ is defined by s 10 of the Act:

   10  Definition of deceptively similar

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

10. In the case of Australian Woollen Mills v F. S. Walton and Company Ltd Dixon and McTiernan JJ provided the relevant test for comparison:

    [T]he marks ought not…be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded[7]

    [7] [1937] HCA 51; (1937) 58 CLR 641, [658].

11. In the Himeno declaration the Mr Himeno submits that the trade marks share significant visual and aural similarities. The Opponent’s trade marks and the Trade Mark are constructed similarly and the differing letters E and I can share some phonetic similarity. As the goods and/or services are often used and located online and enquired about by phone, confusion may occur as a result of the phonetic similarity and through mistyping of the Opponent’s trade marks when searching online.

12. The Himeno declaration also states that the term QoEn was coined to sound like the Japanese word 久遠 (ku-on), which means eternity. The term QoEn is pronounced ‘ku-won’ and is phonetically similar to the Trade Mark which could be articulated by consumers as ‘Co-in’ or “Quo-in’ (that is, ‘ku-win’ or ‘ko-win’). Moreover, in ordinary speech, consumers generally have a tendency to let the second letter or latter syllables of a word drop when verbalising them which would further emphasise the aural/phonetic similarities between the Opponent’s trade marks and the Trade Mark as the very slight differences between them would be less audible.

13. The Wiese declaration states that the Trade Mark is an originally conceived invented word. The Trade Mark is an original abbreviation of Queensland and oin which was intended as an oblique reference to a coin or token. Consumers would usually pronounce the Trade Mark as ‘kwoin’.

14. Visually, the Trade Mark presents as one word. In comparison the term QoEn in the Opponent’s trade marks may not be perceived as one word because of the capitalisation of the letter E. In addition trade marks 1991830 and 1991831 also consist of the words KEY INDEX APPROACH and a device element which further distinguishes these trade marks when viewed as a whole.

1. Aurally, the term QoEn in the Opponent’s trade marks which is stated by the Opponent as being pronounced as ‘ku-won’ would not lend it to be formed into a usual English word. In the Trade Mark the letter Q would be pronounced as K, followed by the common diphthong OI and the letter N. The pronunciation of the Trade Mark would be ‘k-oin’ which sounds like the English word ‘coin’. Consequently, any potential aural similarity shared by the trade marks is diminished in this context.

2. The trade marks also diverge conceptually. The term QoEn in the Opponent’s trade marks was coined to sound like the Japanese word 久遠 (ku-on), which means eternity. I consider that ordinary consumers would be unlikely to be aware of this precise meaning and view the term as an acronym having a meaning that had to be explained. In contrast the Trade Mark is a reference to the word coin and could be considered an Australian slang word. As such the respective trade marks are conceptually distinct.

3. For the above reasons, even allowing for imperfect recollection, I am satisfied that the visual, aural and conceptual differences are such that there would be no real tangible danger that the relevant consumers would be caused to wonder that the Goods and Services bearing the Trade Mark would have some sort of connection with the Opponent.

4. I find that the Opponent has not established the ground of opposition under s 44 of the Act.

   Section 60

5. 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.

6. To satisfy s 60 of the Act the Opponent must establish that a reputation existed in another trade mark in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

7. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   The Opponent has used the Opponent’s trade marks 1991288 for QoEn in class 42, 1991830 for QOEN KEY INDEX APPROACH (with device) in class 42, and 1991831 for QOEN KEY INDEX APPROACH (with device) in class 42, in Australia continuously since 9 August 2019 in relation to the Opponent’s Services.

   The Opponent has used the Opponent’s Trade Marks in Australia, from a date earlier than the priority date of the Opposed Trade Mark, and in relation to services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered.

   The Opponent has acquired a significant reputation in the Opponent’s Trade Marks through the sustained and continuous use of its marks in relation to the Opponent’s Services, being services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered and from a date before the priority date of the Opposed Trade Mark.

   The Opponent’s reputation in the Opponent’s Trade Marks is such that any use of the Opposed Trade Mark by the Applicant (or any other person), whether in relation to the services that are the same as, similar to, or otherwise closely related to, the goods and services in relation to which the Opposed Trade Mark is sought to be registered, or otherwise, would be likely to deceive or cause confusion contrary to section 60.

8. 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 concluded that it means ‘the recognition of the [trade mark] by the public generally’,2F[8] quoting with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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…3F[9]

   [8] [2000] FCA 1335, [81].

   [9] [1992] FCA 159, [118].

9. Justice Kenny 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 sale or turnover of goods sold under the 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 sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.4F[10]

   [10] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

10. What constitutes a significant or substantial number of persons in the relevant market must be considered. Heerey J in Le Cordon Blue BV v Cordon Blue International Ltd provided some guidance:

    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^.5F[11]

    [11] [2000] FCA 1587.

11. The Himeno declaration states that the Opponent’s services are specialised and pitched at urban development planners and investors. Therefore, the relevant market would be various levels of government, real estate developers, nonprofit organisations, planning consulting firms, individual investors and financial entities.  

12. The Opponent filed evidence that its trade marks had, before the Relevant Date, acquired a reputation in Australia that I assess below.

13. The Himeno declaration states that the Opponent first used its trade mark 1991288 in Australia on 9 August 2019 when it issued a press release via Annexure TH-6 is a copy of the press release dated 9 August 2019 which states:

    In October 2018, MHI signed a Memorandum of Understanding (MOU) with the Government of New South Wales in Australia to cooperate with providing energy management solutions for the comprehensive development plan for the Western Sydney region. As part of this effort, MHI is jointly conducting empirical studies of QoEn with the University of New South Wales, and within 2019 plans to announce the results of this research, including its application for the Western Sydney region.

14. Further, the Opponent’s trade marks are promoted on its international website which it claims is accessed by consumers in Australia. Annexure TH-8 provides extracts of reports and presentations from its website showing use of its trade marks.

15. In my assessment of the evidence, the promotion of the Opponent’s trade marks is limited to presentations and information regarding the development and utilisation of its index product and while the evidence shows use of the Opponent’s trade marks, it is unclear how widely this material has been accessed by Australian consumers. It is also important to note that no sales or advertising figures have been provided and that any use in Australia commenced a matter of months before the Relevant Date giving little time to establish a reputation.

16. I find that the evidence before me is not sufficient to establish that, at the Relevant Date, any of the Opponent’s trade marks had the requisite reputation.

17. The Opponent has not established the ground of opposition under s 60 of the Act.

    Section 42

18. Section 42(b) of the Act provides:

    42  Trade mark scandalous or its use contrary to law

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

    …

    (b)  its use would be contrary to law.

19. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

    The Opponent has used the Opponent’s trade marks 1991288 for QoEn in class 42, 1991830 for QOEN KEY INDEX APPROACH (with device) in class 42, and 1991831 for QOEN KEY INDEX APPROACH (with device) in class 42, in Australia continuously since 9 August 2019 in relation to the Opponent’s Services.

    In the light of the Opponent’s reputation in the Opponent’s Trade Marks, use of the Opposed Trade Mark in relation to the goods and services for which registration of the Opposed Trade Mark is sought would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) and, or alternatively, constitute the common law tort of passing off.

    Use of the Opposed Mark would therefore be contrary to law within the meaning of section 42.

20. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires it to show that use of the Trade Mark would be, rather than could or might be contrary to law.[12]

    [12] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

21. Section 18 of the Australian Consumer Law[13] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 is concerned with false and misleading representations. Case law relevant to the ACL has made it plain that s 18 imposes a more stringent test than that for deception or confusion under s 60 of the Act.[14] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

    [13] Competition and Consumer Act 2010 (Cth) sch 2.

    [14] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ). This case was decided under s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’), which was equivalent to s 18 of the ACL.

22. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[15] nor will it constitutepassing off.[16]

    [15] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered in connection with the TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are equivalent to ss 29(1)(g)-(h) of the ACL.

    [16] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [39] (French J).

23. I find that the Opponent has not established the ground of opposition under s 42(b) of the Act.

    Decision

24. 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.

25. The Opponent has not established a ground of opposition. Accordingly, I decide that Trade Mark number 2048315 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

26. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Regulations.

    Louise Tuohy
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    11 January 2022