Opposition by Morgan & Hassam Investments Pty Ltd to registration of trade mark application 1764972 (31, 35) - FRENCH BLUE (Logo)

[2018] ATMO 141

TRADE MARKS ACT 1995

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

Re:Opposition by Morgan & Hassam Investments Pty Ltd to registration of trade mark application 1764972 (31, 35) - FRENCH BLUE (Logo) - in the name of French Blue Pty Ltd.

DELEGATE:

Iain Campbell Thompson

REPRESENTATION:

Opponent: Griffith Hack

Applicant: Self represented – written submissions

DECISION:

2018 ATMO 141

Trade MarksAct1995

Section 52 opposition to registration: slight reputation of Opponent’s Trade Mark - trade marks visually, aurally and conceptually dissimilar – confusion unlikely - grounds under sections 62A, 60, and 42 not established.

Opposition to registration not established.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) French Blue Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:

Application No:         1764972

Priority Date:             14 April 2016

Goods/Services: Class 31: Agricultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables; natural plants; natural flowers; dried flowers

Class 35: Wholesale and retail services including online retail services in relation to agricultural, horticultural and forestry products, raw and unprocessed grains and seeds, fresh fruits and vegetables, natural plants, natural flowers, dried flowers, artificial flowers, homewares including vases and plant pots, gift hampers, gifts, toys including soft toys, stationery including greeting cards, balloons, candles, chocolate and confectionery; retail florist services, including floral arrangements

Trade Mark:

(‘the Trade Mark’)

1. The Trade Mark was examined as required by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 1 September 2016.

1. As allowed by section 52 of the Act, Morgan & Hassam Investments Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 14 September 2016.

1. Thereafter, the opposition process has followed the timetable hereunder:

14 October 2016 – Statement of Grounds and Particular (‘the SGP’) filed by the Opponent particularising grounds under sections 62A, 60, and 42(b);

9 November 2016 – Notice of Intention to Defend filed by the Applicant;

16 February 2017 – Evidence in Support filed by the Opponent -

Declarations1  of William Michael Morgan, Director of the Opponent, made on 16 February 2017;

20 May 2017 – Evidence in Answer filed by the Applicant –

Declaration of Rachel Thompson, Director of the Applicant, made on 18 May 2017;

28July and 2 August 2017 – Evidence in Reply filed by the Opponent – Declaration of William Michael Morgan made on 28 July 2017; Declaration of Chantal Lahey, graphic designer, made on 1 August 2017;

25 November 2017 – written submissions filed by the Applicant.

1. Both parties have been informed of their right to be heard or to make written submissions. Neither party requested to be heard and the Applicant, as noted above, has made written submissions. Now, in order that the Registrar may discharge his obligation under section 55 of the Act to decide the matter, it has been passed to me as one of his delegates to decide on the basis of the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus & Relevant Date

1. The Opponent bears the onus of establishing one or more grounds of opposition which are detailed in the SGP on the balance of probabilities.2

1 One of these declarations contains confidential material.

1. The relevant date at which the grounds under section 52 must be considered is the filing date of the opposed application.3

Evidence

The Opponent

1. Mr Morgan states that the Opponent has used the trade mark FRENCH FLOWERS and that which appears below in relation to florists’ services since 2012:

2. Collectively, ‘the Opponent’s Trade Mark’. I note that although Mr Morgan refers to the trade mark immediately above as being a stylised trade mark, the trade mark is rendered in a common font and lacks any stylisation. That trade mark is, therefore, essentially no more than the words ‘French Flowers’.

1. Concerning use of the Opponent’s Trade Mark, Mr Morgan states:

The Opponent has used [the Opponent’s Trade Mark] on its Facebook[®] page 438 since at least April 2012. Exhibited to this declaration and marked WM-4 is a sample of extracts of screen captures from the Opponent's Facebook page showing use of the FRENCH FLOWERS mark between April 2012 and April 2016. As at 9 February 2017, the Opponent had 7,562 'likes' on Facebook.

The Opponent has used  the FRENCH FLOWERS mark on  its lnstagram[®] page french_flowers since around August 2013. Exhibited to this declaration and marked WM-5 are copies of a sample of screen captures from the Opponent's lnstagram page showing use of the FRENCH FLOWERS Marks between August 2013 and April 2016.  As at 9 February 2017, the Opponent had 2,487 'followers' on lnstagram.

In or about 2013, I caused the domain name .com.au to be registered to the Opponent. Exhibited to this declaration and marked WM-6 is a copy of the Whois domain name search for that domain name which shows the registrant as at 9 February 2017 is the Opponent.

The Opponent has used the FRENCH FLOWERS Marks on the website at (Website) since at least April 2013. Exhibited to this declaration and marked WM-7 is a sample of extracts of screen captures from Internet

2 Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J

at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]- [133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.

Archive Wayback Machine showing use of the FRENCH FLOWERS mark on the Opponent's Website from April 2013 to April 2016.

The screen captures from the Internet Archive WayBack Machine of the Opponent's Website were captured by Griffith Hack Lawyers at my request. I have been provided with these screen captures by Griffith Hack Lawyers and the captures accord with my memory of the French Flowers Website in 2013 to 2016.

1. The Opponent also, at the priority date, operated an online shop at frenchflowers.com.au.

1. Concerning the Opponent’s physical shops, Mr Morgan declares:

The Opponent opened its first physical retail store on 1 May 2012 located in West End, Brisbane, Queensland. The Opponent traded at this location until 31 March 2013.

The Opponent opened a second physical retail store on 1 August 2012 located in the Brisbane City, Queensland. The Opponent continues to trade at this location.

Since the Opponent's physical stores opened, those stores have displayed extensive signage and other branding material showing the FRENCH FLOWERS Marks both inside and other the stores, including window signage. Annexed to this declaration and marked WM-8 is a copy of photographs of the Opponent's retail stores displaying the FRENCH FLOWERS Marks.

The Opponent receives orders in its physical stores from customers in-store and through phone orders.

1. Notwithstanding Mr Morgan’s claim that the Opponent (at the time of making his declaration) received orders at its West End shop, I infer from the above that the Opponent had, at the priority date, one physical shop and it was located in Brisbane City.4

The Applicant

1. Ms Thompson lives in a North Eastern suburb of Melbourne and states that she has loves of gardening, flowers and France and that the idea for the Trade Mark grew out of these:

Aside from flowers and gardening, I am also in love with France, its history, architecture, culture and food. So much so that in 2012 my partner and I bought a house in the Loire Valley and we immerse ourselves there once or twice a year. In 2015 my partner and I were married in our little town in the Loire Valley, with all our family and friends with us to celebrate the occasion. It was a most amazing time for us. Our colour theme for the weekend was French Blue to match the beautiful rustic

4 I note that the Opponent’s website to which Mr Morgan refers currently states:

“French Flowers no longer operates a physical store but plan on continuing to sell online, delivering to your loved ones. We are currently finalzing [sic] our supplier and should be up and running on June 1, 2018. We apologies [sic] for any inconvenience.”

shutters on all of the windows. French Blue is a colour I have loved for as long as I can remember.

With the support of my husband and with a view to having opportunities to spend more time with our young daughters, I took a leap of faith. I commenced studying floristry and started my own small studio at home and freelanced with other florists.

After much thought and consideration of potential business names and much searching for availability of names through ASIC and domain name registries, I decided on French Blue. I found it a tough process to secure a name that has special meaning, is available to use in all formats including web domains and which does not impinge on or conflict with any other businesses. I found there was no registered company or business named French Blue on the ASIC business search website. I undertook all of the relevant searches suggested by ASIC including trade mark searches. I was satisfied there were no impediments for me to proceed so I registered French Blue Pty Ltd in October 2015 and the domain name frenchblue.com.au.

In early November 2015 I created a short brief for a group of designers to create a logo that would form the basis of the look and feel of the business. I received 187 designs to choose from and worked with the chosen designer to finesse the final design.

Other

1. Ms Lahey is a graphic designer who states that, in her opinion, the Applicant’s Facebook® page and business card do not accurately depict the colour French Blue. Whatever the colour French Blue is, the relevance of Ms Lahey’s declaration to the grounds of opposition under consideration in this decision is not apparent.

Section 60

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The trade mark is similar to an earlier third party trade mark, which has been used in Australia and has acquired a reputation, and because of that prior mark, use of the applied for trade mark will deceive or confuse.

Particulars

The Opponent has used the FRENCH FLOWERS trade mark in Australia since at least April 2012 and has acquired a reputation in the FRENCH FLOWERS trade mark in relation to the Goods and Services.

As a result of the reputation of the Opponent's FRENCH FLOWERS trade mark, use of the Opposed Mark is likely to result in deception and confusion in the Australian market, including deception or confusion as to the origin of the goods or services and/or whether they have been endorsed, licensed, or approved by the Opponent.

Discussion

1. 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.

Note:       For priority date see section 12.

1. In order to found this ground the Opponent must establish to the Registrar’s satisfaction that, at the priority date:

·    the reputation of the trade mark on which it relies5 was such that

·    the use of the Trade Mark would be likely to confuse or deceive.

Reputation

1. In McCormick & Co Inc v McCormick (‘McCormick’) Kenny J asked: 6

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”.

1. In Le Cordon Bleu B.V. v Cordon Bleu International Ltee7 Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)8 was to be:

5 Under section 60 of the Act it is not necessary that the trade mark on which the Opponent relies be registered.

6 [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
7 [2000] FCA 1587; (2000) 50 IPR 1.

8  The word ‘reputation’ was not used in  subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the

... one of which a significant number of persons were aware...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.

(Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). 9

1. Regarding the measurement of reputation, in McCormick Her Honour went on to state:10

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

1. Based on the confidential turnover and advertising figures supplied by the Opponent, and consideration also of its social media exposure, I consider that the reputation of the Opponent’s Trade Mark to have been low in Brisbane, and very slight if considered on a national basis, at the priority date.

Confusion or Deception

1. Concerning the assessment of confusion or deception in Registrar of Trade Marks v Woolworths French J observed:11

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential

word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

9 [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

10 Op cit at [86].

11 [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].

elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

(i)  […] it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

(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 […] 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 [1973] HCA 43; (1973) 129 CLR 353 at 362:

"...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."

1. And  in  Pottle  Productions  Inc  v  Rute Ithalat Ve  Ihracat  Anonim  Sirketi the  Registrar’s delegate explained:12

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade

12 [2012] ATMO 124 at [40].

mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

1. The reputation of the Opponent’s Trade Mark was, in my assessment, quite slight at the priority date: the business had not been established for a particularly long time – it consisted of a single shop in Brisbane which had some following on social media as many local businesses do.

1. Further, the Opponent’s Trade Mark possesses very low, if any, inherent adaptation to distinguish. Prima facie, any trader who either imports flowers from France, or specialises in selling flowers typical of France,13 might need to use the expression ‘French Flowers’.14 Additionally, the word ‘French’ is a common surname that occurs over 5000 times on the Australian Electoral Roll: any person with the surname ‘French’ who owns a florist shop might reasonably wish to call that business ‘French Flowers’.

1. Moreover, the trade marks under consideration are visually, aurally, and conceptually quite different: the dominant words in the Trade Mark are the words ‘French Blue’ which is a colour.15 The words ‘French Blue’ are how the Trade Mark will be identified both visually and aurally – the word ‘flowers’ performs only a descriptive function in the Trade Mark. Accordingly, the Trade Mark denotes, in my consideration, ‘Flowers by French Blue’. The Opponent’s Trade Mark, on the other hand, denotes either ‘flowers imported from (or typical of) France’ or ‘flowers sold by a person with the surname French’.

1. On the above basis, any similarity of the trade marks is very slight.

1. Accordingly, considering both the evidence of use of the Opponent’s Trade Mark and the dissimilarity of the trade marks, I do not consider that there is any real risk of confusion between the parties’ trade marks because of the reputation of the Opponent’s Trade Mark.

1. The Opponent has not established its ground under section 60.

13 See for example popular-flowers-of-france.

14 Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (The ‘Persian Fetta’ trade mark) [2010] FCA 1367; (2010) 191 FCR 297; (2010) 90 IPR 117.

15https://en.wikipedia.org/wiki/Bleu_de_France_(colour)

Section 42

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The use of the Opposed Mark would be contrary to law as the use would be misleading and deceptive in contravention of the Australian Consumer Law.

Particulars

The Opponent is the owner of the FRENCH FLOWERS mark in Australia and through prior use of the Opponent's FRENCH FLOWERS trade mark, it has acquired a significant reputation in the FRENCH FLOWERS trade mark.

Due to this significant reputation, the similarity with the Opposed Mark and that the Opposed mark is, or is intended to be, used in respect of the same or similar services, use of the Opposed Trade Mark is likely to cause consumers to be misled or deceived in contravention of sections 18 and 29 of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 and is also likely to constitute passing off.

Discussion

1. Section 42 of the Act relevantly 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.

1. As observed by the Registrar’s delegate in Monster Energy Co v USA Nutraceuticals Group Inc:16

In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the [ACL] is a more stringent test than that for deception or confusion under s 60,17 I am

satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.

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, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act 1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.18 Section 53(d) of the TPA is the equivalent provision to s 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac

16 [2017] ATMO 22.

17  See, eg: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd   [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, at p 198 (Gibbs CJ).

Banking Corporation19 also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

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.

1. Such is the situation here: the Opponent has not established the ground under subparagraph 42(b) of the Act.

Section 62A

Statement of Grounds and Particulars

1. In its Statement of Grounds and Particulars the Opponent asserts:

The Opponent has used the FRENCH FLOWERS trade mark in Australia since at least April 2012 and has acquired a reputation in the FRENCH FLOWERS trade mark in relation to a variety of goods and services, including:

Flowers, arrangements and bouquets of flowers; floral decorations; agricultural, horticultural and forestry products; and raw and unprocessed grains and seeds;

Wholesale and retailing (including online) of natural and synthetic plants and flowers and flower arrangements;

Flower delivery;

Flower arrangement design services and advisory services relating to horticulture.

(Opponent's Goods and Services)

In or around March and April 2016:

the Opponent became aware of the Applicant's proposed use of FRENCH BLUE FLOWERS when the Applicant filed a business name application;

the director of the Opponent, Mr Will Morgan, telephoned the director of the Applicant asserting trade mark rights in FRENCH FLOWERS; and

following the telephone conversation referred to […] above, on 14 April 2016, the Applicant proceeded to file its trade mark application for the [Trade Mark].

The adoption and filing of the [Trade Mark] by the Applicant was and is exploitive conduct and behaviour designed to acquire a springboard or unfair advantage.

The Applicant's conduct falls short of the standard of reasonable commercial behaviour observed by reasonable and experienced persons in the field.

Discussion

1. Section 62A of the Act provides:

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.

1. After referring to the judgment of Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2)20 Bennett J, in DC Comics v Cheqout Pty Ltd, stated: 21

Justice Dodds-Streeton observed (at [163]) that the examples of bad faith given in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom a party which is, at least in conscience, entitled to a mark. However, her Honour noted that the illustrations are merely inclusive and do not limit the breadth of the concept of bad faith. Her Honour observed (at [145]) that the bad faith must be at the time of the application, that the onus is on the opponent seeking to establish bad faith and that the standard of proof is on the balance of probabilities.

Given limited Australian authority, her Honour (at [145]–[166]) also considered relevant authorities from the United Kingdom. These cases stated, relevantly:

Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

Bad faith does not require dishonesty.

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.

It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.

20 [2012] FCA 81; (2012) 201 FCR 565.

21 2013] FCA 478; (2013) 212 FCR 194; (2013) 299 ALR 110; (2013) 101 IPR 334.

The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.

All  the  circumstances  surrounding  the  application  to  register  the  mark  are relevant.

An act of bad faith cannot be cured by an action after the date of application.

Justice Dodds-Streeton concluded (at [164]) that bad faith in the context of s 62A does not require (although it includes) dishonesty or fraud and that it is a wider notion, potentially applicable to diverse species of conduct. Her Honour rejected the proposition that mere awareness that an overseas company owning the mark operated or intended to operate in Australia would amount to bad faith, concluding that this would be unduly absolute. Justice Dodds-Streeton instead adopted as a touchstone the United Kingdom formulation of conduct falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons (at [165]). Her Honour observed that the applicant’s mental state is also relevant, and stated (at [166]) that:

... 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.

1. Mr Morgan declares as to a phone call he made to Ms Thompson on 13 April 2016 in which he alerted Ms Thompson to his shop name, ‘French Flowers’.

1. Ms Thompson states, concerning the phone call from Mr Morgan:

Late in the evening on 13 April 2016 I received a call on my mobile phone from Mr Morgan, a director of the opponent. He immediately started questioning me as to who I thought I was, using the name French Blue Flowers. He explained that a friend had called him to advise him that another business was using the words French and Flowers. He was abusive to me during the call and used inappropriate language. Mr Morgan said he had checked my website and was calling to advise me that I should stop trading immediately as I was impinging on his trade mark, French Flowers. My husband was present and asked me what was going on. I wrote a note whilst Mr Morgan spoke, stating that a company called French Flowers is accusing me of impinging on their trade mark. My husband wrote that I should ask him for his trade mark number. I asked Mr Morgan for his trade mark number whereby he replied “I don’t have it with me”. This is contrary to a statement in his statutory declaration where he claims he told me “We are planning to pursue a trade mark application and are in the process of trade marking our name French Flowers and we are planning to be the first franchised flower shop in Australia”.

I explained to Mr Morgan that I was a small start-up and was working from my garage which was converted to a studio and had no idea who French Flowers were and had never heard of them. Mr Morgan became enraged that I did not know that his business existed and continued on a rant saying "we are the most stylish flowers in Brisbane,

we are the Pearson’s of Sydney" and needed some help to recall some of our most respected florists in Melbourne.

Mr Morgan did ask if I had a registered business name French Blue Flowers, which I answered I wasn’t sure as I had registered a business name when I first started studying floristry to allow me to purchase wholesale flowers. I was just trading under French Blue Pty Ltd at that stage. I explained that I had established the business as French Blue and used flowers as a descriptor on my logo and in words on Facebook and Instagram. French Blue on its own was not available for social media. He became very upset that I may not have a business name as French Blue Flowers and told me if I did not have this name registered, I had no right to use it in social media.

The phone call ended once I told him that I needed to check into all of this information and make enquiries with a trade mark attorney.

1. While the verity of the accounts concerning the phone conversation are impossible (and unnecessary) to assess, I observe that mere foreknowledge of another person’s trade mark, without more (such as a prior business relationship between the people concerned, or holding a trade mark to ransom) does not constitute bad faith. Significantly, there is no evidence either that Ms Thompson had any foreknowledge of the Opponent’s Trade Mark prior to the phone call, or that there was any form of relationship between Ms Thompson and the Opponent, or that the Applicant has held the Trade Mark to ransom. Further, the trade marks concerned are, as discussed above, dissimilar.

1. I consider that it was only natural under the circumstances that the parties describe that the Applicant would apply to register the Trade Mark in order to determine what its rights in fact were.

1. The Opponent has not established its ground under section 62A of the Act.

Decision

1. Section 55 of the Act relevantly 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:       For limitations see section 6.

1. The Opponent has not established a ground of Opposition.

1. The trade mark application may then 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 shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The Applicant has requested its costs in these proceedings and as it has been the successful party it is appropriate that, as provided by section 221, I award costs against the Opponent at the official scale set out in Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson Hearing Officer

Trade Marks Hearings 11 September 2018