Opposition by Stichting BDO to registration of trade mark application number 2308443 (classes 35 and 41) -
[2025] ATMO 96
•30 May 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Stichting BDO to registration of trade mark application number 2308443 (classes 35 and 41) - BDQ (word) - in the name of Building Designers’ Association of Queensland Inc T/A Building Design Queensland
Delegate: | Benjamin Goldsworthy |
Representation: | Opponent: Shauna Ross, of Counsel, instructed by Jacqui Symonds of Davis IP Pty Ltd Applicant: Self-represented |
Decision: | 2025 ATMO 96 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60 and 62A – s 59 established – trade mark refused. |
Background
On 3 November 2022, the Building Designers’ Association of Queensland Inc T/A Building Design Queensland (‘Applicant’) filed an application under the Trade Marks Act 1995 (Cth)[1] to register trade mark 2308443, details of which I extract below:
Priority date: 3 November 2022 (‘Relevant Date’)
Trade mark: BDQ (‘Trade Mark’)
Specification: Class 35: Promoting the commercial and business interests of professionals provided by an association for its members; Provision of business support or advice provided by an association for its members Class 41: Training and education provided by an association for its members (‘Applicant’s Services’)
[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Trade Mark was examined under s 31 and acceptance was advertised on 4 April 2023. On 5 June 2023 Stichting BDO (‘Opponent’) filed its Notice of Intention to Oppose. On 5 July 2023 the Opponent filed its Statement of Grounds and Particulars (‘SGP’).[2] On 17 August 2023, the Applicant filed its Notice of Intention to Defend.
[2] This was later amended to add s 59 as a ground of opposition.
On 23 November 2023, the Opponent filed its Evidence in Support (‘EIS’), consisting of a declaration of Basile Dura, General Counsel and Secretary of the Board for the Opponent, dated 16 November 2023 (‘Dura’), with Exhibits BD-01 to BD-21. After the amendment of the SGP to add s 59 as a ground of opposition, in respect of the s 59 the Opponent later filed a declaration of Rhiannan Solomon, Trade Marks Attorney at Davis IP, dated 14 June 2024 (‘Solomon’), with Exhibit 1 as EIS for that ground of opposition.
On 22 February 2024, the Applicant filed its Evidence in Answer (‘EIA’) being a declaration of Robert John Bebrouth, Chief Executive Officer of the Applicant, dated 22 February 2024, with Attachments 1 to 6 (‘Bebrouth-1’). In respect of the s 59 ground of opposition, the Applicant later filed a declaration of John Robert Bebrouth, dated 12 July 2024 (‘Bebrouth-2’).
On 16 August 2024, the Opponent requested to be heard. The Applicant did not request to be heard on the matter.
On 25 March 2025 the matter was heard by teleconference in part by me and in part by Hearing Officer Adrian Richards. I have carefully reviewed a recording of the part of the oral submissions made before Hearing Officer Richards, the SGP and evidence of the parties. At the hearing, the Opponent was represented by Shauna Ross, of Counsel, instructed by Jacqui Symonds of Davis IP Pty Ltd.
I am to decide the matter as a delegate of the Registrar of Trade Marks (‘Registrar’).
Onus and grounds
The Opponent has the onus of establishing one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The SGP pursued grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60 and 62A.
The date at which the rights of the parties are to be determined is the Relevant Date.
Evidence
EIS
It is not necessary for me to extensively summarise Dura and its Exhibits. However, Dura declares that the Opponent is an international network of public accounting, tax and advisory firms which perform professional services under the sign BDO. The fee income worldwide for the Opponent is extremely substantial. The services are provided in 164 countries out of almost 2000 offices. The letters ‘B’, ‘D’ and ‘O’ are an abbreviation of the names of some of founders of the Opponent, Binder, Dijker and Otte. Dura declares that its BDO trade mark was first used in Australia in relation to accountancy, financial, consulting, education services, other associated services and associated goods since at least as early as 1993, and possibly as early as 1975.[5] Dura in general states that use has continued since and that, ‘[a]ll of the Opponent’s goods and services are provided under the BDO trade mark.’[6]
[5] Dura, [17].
[6] Dura, [11].
I note that Solomon, in support of the ground of opposition under s 59, in summary simply reproduces Bebrouth-1 and notes that the ‘comments [in Bebrouth-1] indicate that the Applicant filed the BDQ application merely for the purpose of preventing others from doing so, and not because they had a genuine intention to use the mark’.[7] Solomon adds that it, ‘is my view that the Applicant’s own evidence indicates that at the time of filing the Opposed Application, the Applicant did not have a genuine intention to use, or authorise the use of, BDQ as a Trade Mark in Australia in connection with the services covered in the opposed application, nor did it have an intention to assign the BDQ mark to a body corporate for use by the body corporate in Australia’.[8]
[7] Solomon, [7].
[8] Solomon, [8].
EIA
Bebrouth-1 relevantly declares that:
Building Designers Association of Queensland Inc t/a Building Design Queensland is a membership based not for profit association incorporated in the state of Queensland Australia. It was formed in March 1990 and promotes, educates and advocates for and on behalf of Building Designers and other Building Design Industry Professional in Queensland only.
Building Designers Association of Queensland Inc t/a Building Design Queensland (BDQ) has approximately 700 members and two full time staff members. BDQ practices only in the state of Queensland and provides promotion, education and advocacy for and on behalf of its members. BDQ does not provide any good or service.
Bebrouth-1 also declares that:
BDQ submitted its trade mark application 2308443 essentially to negate either of its two competitors from registering the trade mark.
Bebrouth-1 further declares that:
BDQ does not provide any of the services of the Opponent.
… BDQ only provides the services of promotion, education and advocacy for its membership base within the Build & Design space in Queensland.
Attachment 1 to Bebruth-1 is a screen capture of the Applicant’s website which appears to have been taken on 21 February 2024. It shows the Trade Mark, though it is not apparent what services are on offer. Whilst there is a section titled ‘Finding a Building Design Professional’ it is not apparent whether consumers can search a database or whether this section provides the user information about how to find such a person. Attachment-2 is a copy of letterhead and does not appear to show the Trade Mark. This is dated 21 February 2024. Attachment 3 is a screen capture of the Opponent’s Facebook page dated 21 February 2024. It shows the Trade Mark, though it is not apparent what services are on offer. Attachment 5 is a screen capture of an Instagram account dated 21 February 2024. Attachment 6 is a screen capture of the Opponent’s LinkedIn page dated 21 February 2024. Whilst trade marks which contain the letters ‘B’, ‘D’ and ‘Q’ are shown in places, including the following sign , it is not clear what specific services are on offer.
Bebrouth-2 attempts to respond to the allegations of a lack of intention to use the Trade Mark made in Solomon and contextualise some of the statements made in Bebrouth-1. It is worth extracting the majority of the text in Bebrouth-2 and I do so below:
I have discovered an error of fact when transferring from my draft document to the stated declaration dated 22 February 2024. I missed the last line altogether and it makes a difference to the interpretation of the statement. The Opponent has relied on the error in their final submission for denying the Trade Mark under section 59.
Building Designers Association of Queensland Inc t/a Building Design Queensland
The paragraph in error was –
“Building Designers Association of Queensland Inc t/a Building Design Queensland (BDQ) has approximately 700 members and two full time staff members. BDQ practices only in the state of Queensland and provides promotion, education and advocacy for and on behalf of its members. BDQ does not provide any good or service.”
The paragraph should have stated to be factually correct –
“Building Designers Association of Queensland Inc t/a Building Design Queensland (BDQ) has approximately 700 members and two full time staff members. BDQ practices only in the state of Queensland and provides promotion, education and advocacy for and on behalf of its members. BDQ does not provide any good or service outside its membership base”
Proposed Remedy
The Opponent be given the opportunity to resubmit their final submission should it be deemed to have significant impact on the success or otherwise of their submission.
…
In the event that Part A is dismissed then I submit the following.
In my opinion, it is disingenuous for the Opponent to use the statement “BDQ does not provide any good or service” in isolation when applying for the Trade Mark application to be dismissed under section 59” when earlier in the paragraph some, but not all, of the services provided by BDQ are clearly described.
The previous sentence in the declaration states “BDQ practices only in the state of Queensland and provides promotion, education and advocacy for and on behalf of its members.” There is no doubt BDQ is a service provider for and on behalf of its membership base. BDQ would not have a reason to exist if it did not provide services to its membership base and has functioned as Not for Profit Association for thirty four years. BDQ does not provide any good or service outside its membership base and, as such is not commercial threat whatsoever to the Opponents clients.
The Opponent highlights the statement “BDQ submitted its trade mark application 2308443 essentially to negate either of its two competitors from registering the trade mark.”
This is a factual statement now but is a consequence of making the submission. By way of explanation, trade mark application 2308443 was the first of three trade mark applications made and as such was used as a “learning tool” to understand the Trade Mark Application Process. Once the other two trade mark applications using the “stylised BDQ logos” were successfully submitted, the matter of what to do with this application was discussed.
decision was taken to leave the application insitu essentially to negate either of its two competitors from registering the trade mark.
The second reason to leave the application insitu was to be able to revert to this stylised logo in the event of a brand or image change in the future.
Both these decisions were made in good faith at the time and the individual decision makers had no knowledge of the TRADE MARKS ACT 1995 - SECT 59 or hold qualifications in Law.
It is the Applicants view that without any detailed reason why it has launched its objection or any validation for its objection that the Opponents objection be dismissed.
Consideration
Section 59
Section 59 provides:
59 Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
The amended SGP particularises the ground of opposition under s 59 as follows:
In the [EIA], the Applicant states the following:
… BDQ does not provide any good or service.
BDQ submitted its trade mark application 2308443 essentially to negate either of its two competitors from registering the trade mark.
These comments indicate that at the time of filing the opposed application, the Applicant did not have a genuine intention to use, or authorize the use of, BDQ as a Trade Mark in Australia in connection with the services covered in the opposed application, or to assign the BDQ mark to a body corporate for use by the body corporate in Australia.
Bebrouth-2 attempts to clarify that the statement that ‘BDQ does not provide any good or service’ should be read as ‘BDQ does not provide any good or service outside its membership’. Whilst there is a broad statement that that the Applicant submitted the application for the trade mark to negate competitors, I recognise that the statements made by persons who are unfamiliar with the system for registration of trade marks may bear unintentional imputed legal meanings. I do not consider the statement of itself to necessarily completely define the contours of the intentions of the Applicant in filing the application for registration of the Trade Mark.
However, Bebrouth-2 expands on the reasons for the application for the application for the Trade Mark. The Opponent’s Counsel summarises the relevant evidence as follows:
The Applicant used the application ‘as a learning tool’.
The application was itself to negate the competitors from being able to register the Trade Mark.
Two other applications are owned by the applicant and the declarant states that the Applicant intends to continue use of these trade marks. However, there is no such direct statement regarding the Trade Mark. This is suggestive of a lack of intention to use.
The declarant further states that the Applicant wanted to be able to revert to the stylised logo in the event of a branding change away from the Applicant’s other trade marks.
I note that there is little if any evidence of use of the Trade Mark for the Applicant’s Services shown in evidence.
In Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd (‘Energy Beverages’)[9] O’Callaghan J noted the following in relation to s 59:
In order to demonstrate the requisite intention, it must be shown that the applicant for registration had “a real intention to use, not a mere problematical intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”. See Ducker’s Trade Mark [1929] 1 Ch 113 at 121 (Lord Hanworth MR, Lawrence and Sankey LJJ agreeing).
It is not sufficient if the intention to use is “a speculative possibility” or “a general intention to use the mark at some future but unascertained time”. See Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380; (2010) 275 ALR 526 (Yates J), upheld on appeal in Optical 88 Ltd v Optical 88 Pty Ltd (2011) 197 FCR 67 at 93-94 [87]-[88] (Cowdroy, Middleton and Jagot JJ).
[9] [2023] FCA 999.
The Applicant has not offered effective resistance to the issues raised by the Opponent in respect of the intentions around the application for the Trade Mark. The declarant in Bebrouth-1 and Bebrouth-2 has noted that the intention was to negate the ability of competitors to register the trade mark. I have noted that the Applicant appears to have been ready to contractually undertake to forgo use of purported statutory rights that would arise under the Act in respect of the Trade Mark.[10] To the extent that there is any direct statement of intention to use a trade mark on the part of the Applicant, it is in respect of trade marks other than that of the Trade Mark. This suggests the matter of the use of the Trade Mark was unresolved. When read in conjunction with the statement in Bebrouth-2 that the Applicant wanted flexibility to rebrand, this complicates the ability of the Applicant to establish that there was a requisite intention to use the Trade Mark at the time of filing.
[10] Bebrouth-1, 2.
The matter before me is similar to that in Imperial Group Limited v Morris & Co Ltd[11] where on the facts an application for registration of a trade mark was filed to prevent competitors from using a similar trade mark. There the trade mark was expunged for lack of bona fide intention to use the trade mark. Overall, the Applicant’s own evidence does not reflect that there was a real intention to use. Rather, the EIA and EIR present a mere possible theoretical intention to use. Energy Beverages was another such case where the applicant’s own evidence was counterproductive and resulted in s 59 being established. Here, based on Bebrouth-1 and Bebrouth-2 the potential use by the Applicant was merely an indeterminate possibility of future use. The intention to use the Trade Mark appears to have been speculative and unsettled at the time of filing the application for the Trade Mark. Section 59 requires that there must be an intention to use the trade mark, not an intention to block potential applications made by other persons alongside a speculative possibility that the applicant might at some point use that trade mark.
[11] (1982) FSR 72 (CA), 83 (Shaw LJ) referred to approvingly in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [62] (French CJ, Gummow, Crennan and Bell JJ, Heydon J agreeing at [87]) in the context of s 92(2)(b). See also Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271, [59]-[60] (McKerracher J) in the context of s 59.
Weighing the EIR and the EIA, I am satisfied that the Applicant did not have the requisite intention to use the Trade Mark at the time of filing the application for registration.
Accordingly, the ground of opposition under s 59 has been established.
Decision and costs
Section 55 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.
The Opponent has established a ground of opposition under s 59. Accordingly, I refuse registration of trade mark 2308443.
Costs
Both parties have sought costs. It is normal for costs to follow the event. I see no reason to make an exception here. I award costs against the Applicant under s 221 in the amounts according to Schedule 8 of the Regulations.
Benjamin Goldsworthy
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
30 May 2025
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