Opposition by Publishing ByChelle Pty Ltd to registration of trade mark application number 2027292 (classes 9, 38, 41) – AUSBIZ – in the name of Ausbiz TV Pty Ltd
[2021] ATMO 130
•1 November 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Publishing ByChelle Pty Ltd to registration of trade mark application number 2027292 (classes 9, 38, 41) – AUSBIZ – in the name of Ausbiz TV Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Sam Hallahan of counsel instructed by LegalVision ILP Pty Ltd Applicant: Robert Clark of counsel instructed by Inside Eagles Pty Ltd |
| Decision: | 2021 ATMO 130 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58 and 60 pursued – none established – trade mark may proceed to registration |
Background
This decision concerns an opposition brought by Publishing ByChelle Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: AUSBIZ (‘Trade Mark’)
Application Number: 2027292
Applicant: Ausbiz TV Pty Ltd (‘Applicant’)
Priority Date: 7 August 2019
Specification: Class 9: Computer firmware; Firmware; Apparatus for converting digital values into graphic information; Apparatus for processing digital video signals; Apparatus for recording digital information; Digital telecommunications apparatus
Class 38: Electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums; Video-on-demand transmission; Webcasting a television programme via the internet; Digital transmission services; Transmission of digital media files; Wireless broadcasting; Wireless communication services; Delivery of messages by audiovisual media; Delivery of messages by electronic media
Class 41: Multimedia production, other than for advertising purposes; Production of audio and/or video recordings, other than advertising; Production of audio entertainment; Production of audio recordings, other than advertising; Production of cable television programmes; Production of entertainment videos; Production of news and current affairs programmes; Production of radio and television programmes; Production of sound recordings, other than advertising; Production of television programs; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Rental of facilities for the production of television programmes; Video production services, other than advertising; Providing online videos, not downloadable
(‘Claimed GS’)
The trade mark application’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 8 January 2020. The Opponent filed a notice of intention to oppose on 8 January 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 15 January 2020. A notice of intention to defend was filed by the Applicant on 30 March 2020.
Evidence in Support (‘EIS’) was filed by the Opponent and the Applicant filed Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’) and an oral hearing was subsequently requested. Submissions were filed by the Opponent on 9 July 2021 (‘Opponent’s Submissions’) and by the Applicant on 16 July 2021 (‘Applicant’s Submissions’).
As a delegate of the Registrar of Trade Marks, I heard this matter by video conference on 23 July 2021. Sam Hallahan of counsel presented submissions on behalf of the Opponent and Robert Clark of counsel presented submissions on the Applicant’s behalf.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. However, only ss 42(b), 58 and 60 were pressed in written submissions and at the hearing. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 7 August 2019, being both the filing and priority date of the Trade Mark.
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot
Evidence
The following declarations were filed as evidence:
| EIS |
|
| EIA |
|
| EIR |
|
EIS
Hespe 1 states that the Opponent was founded and incorporated on 29 August 2017. The Opponent operates a publishing and media business which has provided various publications and publishing services domestically and abroad under the name ‘AUSBIZ’ (‘Opponent’s Mark’).[3] This name was adopted because it reflects the Opponent’s core goods and services – namely, ‘print and digital magazine publication and multimedia production for the Australian business sector’.[4]
[3] Hespe 1, [9].
[4] Ibid [11].
Hespe 1 asserts that since 27 November 2017, the Opponent’s Mark has been continuously used in relation to publications and multimedia production services. These goods and services are offered via the websites operated at and (together ‘Opponent’s Websites’). The declarant explains that the Opponent’s goods and services are also promoted via inflight magazines which are circulated throughout Australia. These magazines include Regional Express (Rex) Airline’s inflight magazine titled ‘True Blue’ as well as Alliance Airlines inflight magazine titled ‘Alliance Magazine’.
According to Hespe 1, the Opponent has amassed a readership of 3.3 million customers since its inception and has published ‘14 bi-monthly editions’ of a magazine under the Opponent’s Mark.[5] Promotion of the Opponent’s Mark has occurred through flyers, electronic direct mail marketing and the distribution of media kits. The Opponent’s Mark has also been displayed on the Opponent’s Websites, its social media accounts and at the August 2019 Asia-Pacific International Mining Exhibition held in Sydney.
[5] Ibid [16].
10. Hespe 1 details the Opponent’s advertising expenditure and turnover derived from use of the Opponent’s Mark for each financial year between 2017/2018 to 2019/2020. The figures disclosed are reasonable and the declarant notes that the 2019/2020 figures were significantly affected by COVID-19.[6] In the declarant’s view, the Opponent’s Mark has been extensively used and promoted in relation to publications and multimedia production services such that it has acquired a reputation in Australia.
[6] Ibid [31].
11. Hespe 1 also discusses the Applicant’s use of the Trade Mark. In the declarant’s view, the Applicant first used the Trade Mark on 1 April 2020 and ought to have been aware of the earlier use of the Opponent’s Mark in Australia. It is claimed that the Opponent and Applicant target the same consumer market and operate through the same trade channels. As a result, the declarant asserts that confusion between the trade marks is likely and gives evidence of an example of actual confusion that had occurred between the Opponent’s Mark and the Trade Mark. The remainder of Hespe 1 contains general submissions regarding the merits of the grounds of opposition under ss 42 and 60 of the Act.
EIA
12. According to the Merritt Declaration, the Applicant is ‘a digital media company, providing live and on-demand news, expert analysis and commentary’[7] that is primarily focused on business, finance and investment matters. Its business model is ‘entirely digital’ and the Applicant’s content is available across multiple podcasting platforms. The Trade Mark appears on the Applicant’s website at ausbiz.com.au and also on its software application which enables users to access the Applicant’s streaming content. The Trade Mark is also visible across the Applicant’s social media accounts.
[7] Merritt Declaration, [6].
13. The Merritt Declaration responds to the EIS. Relevantly, the declarant submits that the Opponent operates as ‘Publishing ByChelle’[8] (‘PBC’) and it creates content for magazines that are inserted into the inflight magazines of different airlines. It is asserted that the EIS demonstrates use of the Opponent’s Mark ‘as the title of an in-flight magazine or as the title of an insert into inflight magazines of another name’.[9] As such, the declarant contends that the Opponent does not provide the same or similar services to the Claimed GS. Criticism is also levelled at the Opponent’s purported readership numbers given it is unclear how this figure was discerned and there is no evidence to substantiate it.
[8] Ibid [37].
[9] Ibid [40]–[42].
14. The Merritt Declaration provides what are essentially submissions in relation to each ground of opposition nominated in the SGP. The declarant outlines the various searches undertaken by the Applicant prior to filing the application for registration of the Trade Mark. In this regard, the Applicant’s first use of the Trade Mark is declared as being in June 2019. The Merritt Declaration also disputes the example of actual confusion provided in Hespe 1 noting that it ‘was conveniently received by the Opponent on 15 July 2020’ which coincided with the Opponent’s EIS preparation period.[10]
EIR
[10] Ibid [68(c)(ii)].
15. Hespe 2 submits that the Applicant has misunderstood the EIS. The declarant reiterates that the Opponent publishes a magazine that is titled with the Opponent’s Mark and this magazine is disseminated on flights and is also available online. The latter constitutes a standalone product that is not an insert to other magazines.
16. According to Hespe 2, it is common for businesses in the media industry to incorporate a parent company that, in turn, creates and operates multiple sub-brands. In this case, PBC is the parent company and its sub-brands include the Opponent’s Mark, ‘True Blue’ and ‘Alliance’.[11] The declarant states that each sub-brand ‘was created to target different audiences and produce different content’ and each has ‘their own individual reputation’.[12]
[11] Hespe 2, [9].
[12] Ibid [10].
17. Hespe 2 also directly responds to the EIA. The declarant asserts that the Opponent’s goods and services are of the same nature to the Claimed GS and have the same purpose. Both parties operate in the same industry and the declarant believes that the Opponent and Applicant are competitors given both ‘create and distribute content related to business, finance and investment’.[13] The declarant reiterates that the Opponent’s Mark has a reputation in Australia and reference is made to several letters attesting to the repute of the Opponent’s ‘AUSBIZ’ magazine.[14]
[13] Ibid [15(e)].
[14] See Annexure K to Hespe 2.
18. Hespe 2 disputes that first use of the Trade Mark was 17 June 2019. Reference is made to an internet archive search of the Applicant’s website together with third party materials which indicate that the Applicant’s first use was in April 2020. The remainder of Hespe 2 responds to statements in the Merritt Declaration including querying the nature of various searches undertaken by the Applicant prior to filing the application for the Trade Mark.
Discussion
Section 58
19. Section 58 of the Act relevantly provides:
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.
20. The ground of opposition was particularised in the SGP as follows:
1. The Opponent was the first to adopt and use AUSBIZ (the Mark) in Australia in connection with goods/services that are similar to or closely related to the Goods and Services covered by the Trade Mark Application.
2. The Opponent commenced use of the Mark in December 2017.
3. The Opposed Mark within the Trade Mark Application is substantially identical with or deceptively similar to the Mark used by the Opponent.
21. The concept of trade mark ownership was considered in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (‘Anchorage’) wherein the Full Court of the Federal Court stated:
ownership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[15]
[15] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ) (‘Anchorage’).
22. Accordingly, the Opponent must establish the following to succeed under this ground of opposition:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[16] (‘First Requirement’);
the Claimed GS are the ‘same kind of thing’ as the goods and services for which the trade mark relied upon by the Opponent has been used[17] (‘Second Requirement’); 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[18] (‘Third Requirement’).
[16] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[17] Re Hicks’s Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).
[18] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
23. The Opponent’s Mark was identified as having been used before the application was filed and prior to any use by the Applicant of the Trade Mark. It is common ground between the parties that the Trade Mark and the Opponent’s Mark are substantially identical.[19] I agree and the First Requirement is accordingly satisfied.
[19] Opponent’s Submissions, [25]; Applicant’s Submissions, [8].
24. With respect to the Second Requirement, the Opponent does not claim to be the owner of the Trade Mark in respect of all the Claimed GS. Rather, its ownership claim pertains to the following subset of services within the Claimed GS (‘Subset services’):[20]
(i) electronic transmission (uploading, posting or displaying) of data, information, pictures, images, audio and/or video via online forums;
(ii) digital transmission services;
(iii) transmission of digital media files;
(iv) delivery of messages by electronic media;
(v) multimedia production, other than for advertising purposes.
[20] Opponent’s Submissions, [30].
25. The central point of contention concerns whether the evidence demonstrates that the Opponent’s Mark has been used in relation to goods or services which are the same as or of the same kind as the Claimed GS. The meaning of ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same" or "goods essentially the same... though they pass under a different name owing to slight variations in shape and size"[21]
[21] [2007] FCAFC 184, [89] (emphasis added) (citation omitted).
26. More recently, the Full Court of the Federal Court observed in Anchorage that determining whether goods or services are of the same kind can be resolved by ‘asking whether the relevant goods or services are essentially the same’.[22]
[22] Anchorage (n 15) [64].
27. The Opponent’s position is that each party provides ‘multimedia business-focused content’ albeit through different mediums given the Opponent’s content is delivered via ‘text and pictures’ whereas the Applicant’s content is provided via video.[23] In contrast, the Applicant contends that the Opponent’s position is too broad brush and the correct approach requires an analysis of ‘good by good and services by service’ with reference to the evidence filed.[24] In this setting, the Applicant submits that the evidence filed rises no higher than demonstrating use of the Opponent’s Mark in respect of advertising services and a print magazine. Neither of which are the same kind as the Claimed GS.
[23] Opponent’s Submissions, [29].
[24] Applicant’s Submissions, [10].
The evidence filed by the Opponent contains numerous documents which postdate the filing date of the application. When confined to documents dated prior to 7 August 2019, being the filing date, the evidence consists of a 2017/2018 media kit, five ‘features list’ flyers, cover pages from nine issues of the ‘AUSBIZ’ magazine and five invoices.[25] Considered in its entirety, this evidence fails to demonstrate that the Opponent’s Mark has been used in relation to services of the same kind as any of the Claimed GS.
[25] See Annexures B, F, L and N to Hespe 1. Discussed in more detail at [29] to [33] of this decision.
29. As regards to the 2017/2018 media kit, this document pitches ‘AUSBIZ’ as being ‘an inflight business magazine carried on two Australian airlines’. Consistent with this pitch, the title page states that ‘AusBiz. is a highly targetted and informative business magazine found on board both Regional Express and Alliance Airlines’.[26] The document outlines the ‘passenger profile’ and editorial content of the ‘AUSBIZ’ magazine and details the advertising rates and technical specifications for placing an advertisement within the magazine. In the Applicant’s view, the document is problematic because it does not demonstrate use of the Opponent’s Mark as a trade mark,[27] and the name being used to distinguish the services is in fact PBC. While there may be some merit in this criticism, closer consideration is not required. This is because the document, at its highest, demonstrates use of the Opponent’s Mark in relation to advertising services. Advertising services are not services that are the same kind of thing as any of the services set out in the Claimed GS. It follows that the 2017/2018 media kit does not assist the Opponent’s ownership claim because this evidence does not satisfy the Second Requirement.
[26] See Annexure B to Hespe 1 (emphasis added).
[27] Applicant’s Submissions, [16]. The Applicant submits that the Opponent’s Mark is being used ‘as a name of a magazine, not as a trade mark intended to distinguish between the services of one trader and another’.
30. The five ‘features list’ flyers suffer similar issues to the 2017/2018 media kit. As the name suggest, each flyer features a list of editorial content for the bi-monthly edition of the ‘AUSBIZ’ magazine. Notably, each flyer references the readership of the ‘AUSBIZ’ magazine, details ‘[email protected]’ as the contact email and contains the following statement:
Let us create a tailored package for you that will suit your brand and/or your client. There are plenty of marketing and advertising options available, and when working with Publishing ByChelle, flexibility and imagination are paramount.[28]
[28] See, eg, ‘Dec 18/Jan 19 Features List’ contained in Annexure L to Hespe 1.
31. This evidence, even when viewed in its most favourable light, goes no further than demonstrating use of the Opponent’s Mark in relation to advertising services, which as outlined above does not satisfy the Second Requirement.
32. With respect to the nine different cover pages of the ‘AUSBIZ’ magazine, the Applicant expressed similar criticisms as those made in relation to the 2017/2018 media kit. Again, it is not necessary to consider the underlying merits of same given the nature of the evidence. At its highest, the most that can be gleaned from this evidence is that the Opponent’s Mark was used in relation to a magazine. Plainly, a magazine, being a good, is not a service of the same kind to the Subset services nor is it the same kind of thing as any of the goods encompassed by the Claimed GS. To this end, the availability of the magazine online does not materially advance the Opponent’s ownership claim given, at best, the evidence would establish use of the Opponent’s Mark in relation to an online or downloadable magazine.[29] Goods of this nature are not essentially the same as the firmware and digital apparatus that fall within the Claimed GS. As such, the cover pages of the ‘AUSBIZ’ magazine do not satisfy the Second Requirement.
[29] The fact that a publication is accessible electronically does not, in isolation, equate to trade by the Opponent in digital transmission or wireless communication services. Nor, in the absence of further cogent evidence, does it render these services integral to the provision of such goods.
33. In relation to the five invoices, these documents do not establish use of the Opponent’s Mark in relation to services of the same kind as the Claimed GS. Each invoice has been issued by PBC in respect of advertisements placed by third parties in the ‘AUSBIZ’ magazine. The fact that the Opponent’s Mark appears in the description details of each invoice merely implies the existence of a publication which utilises the Opponent’s Mark. Put another way, this evidence fails to demonstrate use of the Opponent’s Mark in relation to goods or services of the same kind to the Claimed GS.
34. Accordingly, the evidence before me fails to demonstrate use of the Opponent’s Mark in relation to goods or services that are the same or of the same kind as the Claimed GS. As such, the Second Requirement is not satisfied. Given all three requirements outlined at [22] of this decision must be satisfied in order to establish this ground of opposition, it is not necessary to consider the Third Requirement.
35. The s 58 ground of opposition has not been established.
Section 60
36. Section 60 of the Act relevantly provides:
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.
37. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 7 August 2019 (‘Relevant Date’). The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
38. This ground of opposition was particularised in the SGP as follows:
1. The Opponent commenced use of the Mark in December 2017 in relation to multimedia production and digital media related goods and services.
2. The Opponent has since promoted its goods/services under the Mark in Australia via its website, social media, printed media, television and various business affiliations.
3. The Opponent’s Mark has acquired a reputation in Australia in relation to the Mark before the Priority Date of the Trade Mark Application.
4. Due to the Opponent’s acquired reputation in Australia, the Applicant’s use of the Opposed Mark is likely to deceive, mislead and cause confusion.
The Opponent’s Submissions identified the Opponent’s Mark as underpinning this ground of opposition.
Reputation
The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[30] Her Honour quoted with approval the following statement of Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (‘ConAgra’):
[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 ...[31]
[30] [2000] FCA 1335, [81] (‘McCormick’).
[31] [1992] FCA 159, [118] (‘ConAgra’).
41. Further, Kenny J explained in McCormick that:
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 … 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.[32]
[32] McCormick (n 30) [86].
42. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is contextualised by the nature of the relevant market.[33] Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[34]
[33] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[34] ConAgra (n 31) [77].
43. The Opponent posits that the relevant market is ‘relatively small’ and confined to ‘people who consume multimedia news and information content about the Australian business sector’.[35] Conversely, the Applicant submits that the relevant market is potentially ‘the Australian population at large’ given the Claimed GS are drafted broadly and are in no way limited to a business audience.[36] In my view, the Applicant’s characterisation is preferable insofar as the relevant market for multimedia news and information content with a business focus would be large given such content would be sought by a broad cross section of the population.
[35] Opponent’s Submissions, [44].
[36] Applicant’s Submissions, [24].
44. In my assessment, the evidence filed does not establish that the Opponent’s Mark had acquired a reputation in Australia before the Relevant Date. The first use of the Opponent’s Mark is stated to have been on 27 November 2017.[37] As such, reliance is placed upon approximately one year and eight months of use of the Opponent’s Mark before the Relevant Date. By any reasonable measure, this is a short period of time in which to establish a reputation. During this period, the Opponent’s Mark was primarily used in relation to nine published issues of the ‘AUSBIZ’ magazine. The Opponent contends that the magazine is an inflight magazine which means there was significant exposure of the Opponent’s Mark based on the number of passengers that fly with the relevant airlines[38] and the fact that passengers on these airlines are a ‘captive audience’.[39] The Applicant, correctly in my view, points out that this contention does not withstand scrutiny. Relevantly, it is artificial to assume that an inflight magazine would be viewed by all passengers. Even if an inflight magazine was viewed, an insert containing the ‘AUSBIZ’ magazine may go unnoticed by a passenger casually perusing it. Moreover, the number of passengers that fly with an airline includes repeat travellers.[40] As such, the potential exposure for new readership to the Opponent’s Mark is accordingly diminished. Based on this analysis, it is unlikely that the Opponent’s Mark had been exposed to a substantial number of Australian consumers before the Relevant Date.
[37] Hespe 1, [14].
[38] According to the statistics supplied in the 2017/2018 media kit, approximately 2.3 million passengers fly on the relevant airlines (being Regional Express and Alliance Airlines) annually.
[39] According to the 2017/2018 media kit, Regional Express and Alliance Airlines do not offer onboard WiFi or entertainment screens on seatbacks.
[40] According to the 2017/2018 media kit states that a characteristic of the passenger profile is that ‘70% travel more than 11 times a year’.
45. Meanwhile, the turnover and advertising figures provided are reasonable. However, no firm conclusions may be drawn from these figures which represent only 20 months of trading and have not been adequately particularised as to what goods and/or services they relate to. Likewise, the Opponent points out that the ‘AUSBIZ’ magazine has been available online and promoted via flyers, electronic direct mail marketing and social media. Nevertheless, the evidence is devoid of any figures to contextualise these activities. Both Hespe declarations are silent on the number of times the ‘AUSBIZ’ magazine has been accessed online or downloaded. Similarly, neither Hespe declaration discloses the distribution frequency or reach of the flyers and electronic direct mail marketing. Instead, Hespe 1 simply states that they are distributed on ‘a regular basis’. Further, I note the domain was created by the Opponent after the Relevant Date[41] and the Opponent’s social media accounts had a modest number of followers.[42] Whilst neither factor is fatal to the Opponent’s case, it nevertheless is reflective of the fact that the Opponent’s Mark did not enjoy a reputation amongst a significant number of Australian consumers at the Relevant Date.
[41] See Annexure G to Hespe 1 which states the ‘Domain Created Date’ as being 18 November 2019.
[42] See Annexure H to Hespe 1. According to the screenshots, which are taken after the Relevant Date, the Opponent’s Facebook account had 138 followers, its Instagram account had 4,852 followers and its LinkedIn account had 12 followers.
46. In relation to the letters attesting to the repute of the Opponent’s Mark, I note over half of the letters have been provided by individuals who contributed content to PBC and/or the ‘AUSBIZ’ magazine or are a personal friend of Ms Hespe. Naturally, this raises questions of partiality. These letters are not sufficient to establish that the Opponent’s Mark enjoyed a significant reputation as at the Relevant Date.
47. Finally, I note the example of actual confusion provided by the Opponent which consists of a written exchange between Ms Hespe and a third party. The third party informed Ms Hespe that they had recently been interviewed for ‘Startup on the AuzBiz digital channel’ and asked ‘Is your AuzBiz magazine connected with this show??’. In my view, this example is not particularly probative given it occurred approximately 11 months after the Relevant Date, misspells the relevant trade marks and the confusion appears to have stemmed from an awareness of the Trade Mark and not the Opponent’s Mark. At any rate, one instance of alleged confusion is by no means compelling in terms of establishing that the Opponent’s Mark enjoyed a reputation in Australia as at the Relevant Date.
48. For the above reasons, I am not satisfied that the Opponent’s Mark had acquired a reputation in Australia as at the Relevant Date amongst a significant or substantial number of Australian consumers. Given the first limb of s 60 has not been satisfied, consideration of the second limb is not required.
49. The s 60 ground of opposition has not been established.
Section 42
50. Section 42(b) of the Act relevantly provides:
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.
51. To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be contrary to law.[43] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 7 August 2019.
[43] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
52. The SGP identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
For the reasons stated at [44] to [47] of this decision, the Opponent has failed to establish the s 60 ground of opposition. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[44] Consequently, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding with respect to the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[45]
[44] 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, 198 (Gibbs CJ).
[45] Monster Energy Company v USA Nutraceuticals Group Inc [2017] ATMO 22, [58].
54. The observations of Hill J addressing the relationship between s 52 of the superseded Trade Practices Act 1974 (Cth)[46] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:
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.[47]
[46] Section 52 of the superseded Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[47] [1989] FCA 506, [40].
55. With this in mind, I am not satisfied that use of the Trade Mark would amount to passing off at common law because I do not consider s 18 of the ACL would be contravened.
56. Accordingly, the s 42(b) ground of opposition has not been established.
Decision
57. Section 55 of the Act relevantly provides:
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.
58. The Opponent has not established a ground of opposition. It follows that trade mark application number 2027292 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 registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.
Costs
59. The Applicant has sought an award of costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Opponent per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
1 November 2021
and Edelman JJ).
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Costs
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Standing
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Remedies
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