Opposition by Strathfield Independents to registration of trade mark application number 2018552 (class 45) – STRATHFIELD INDEPENDENTS and device - in the name of Geoffrey Markwell.
[2021] ATMO 134
•5 November 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSReOpposition by Strathfield Independents to registration of trade mark application number 2018552 (class 45) – STRATHFIELD INDEPENDENTS and device - in the name of Geoffrey Markwell.
Delegate: Nicole Worth
Representation: Applicant: Self-represented
Opponent: Self-represented
Decision: 2021 ATMO 134
Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – grounds of opposition under ss 41, 44, 58A, 58, 60, 43, 59, 62A – no grounds established – trade mark may proceed to registration.
Background
This decision is pursuant to an opposition brought by Strathfield Independents (‘Opponent’) under s 52 of the Trade Marks Act 1995 (‘Act’) to registration of the trade mark detailed below in the name of Geoffrey Markwell (‘Applicant’).
Trade Mark: (‘Trade mark’)
Application No.: 2018552
Filing Date: 8 July 2019
Services: Class 45: Providing information regarding political issues.
The Trade Mark was accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks on 9 December 2019. The Opponent filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’), which after a number of rectifications was taken to be filed on 23 December 2019. The Applicant filed a Notice of Intention to Defend on 23 May 2020.
The parties filed evidence in due course, discussed in more detail below. At the conclusion of the evidence stages of the opposition, the parties were given an opportunity to request a hearing. The Applicant requested a hearing by way of written submissions. The hearing was originally allocated to a Hearing Officer who, due to unforeseen circumstances, was unable to decide the matter. It has therefore come before me, a delegate of the Registrar of Trade Marks, to decide on the basis of the SGP, the evidence described below, and the written submissions of the Applicant (not all of which has been taken into account for reasons discussed later in this decision).
Any references to parts, sections or regulations, below, are references to parts, sections or regulations of the Act or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
Grounds of Opposition, Onus and Standard of Proof
In its SGP, the Opponent nominated grounds of opposition under ss 41, 44, 58A, 58, 60, 43, 59 and 62A, all of which were pursued in its evidence.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The rights of the parties are to be determined as at the date of the application [3] which is generally, but not always, the filing date.[4] Here the relevant date is the filing date, being 8 July 2019.
[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 and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).
[4] See sections 6, 12, and 72 of the Act.
Evidence
The evidence filed in this matter comprises declarations by the following persons, as set out below.
Evidence in support
Susan McDonald, Secretary of the Opponent, with Annexures A to Z and AA to AW, dated 3 December 2019 and 9 December 2019 (collectively ‘McDonald 1’).
Evidence in answer
Geoffrey Markwell, with Attachments 1 to 15, dated 12 November 2020 (‘Markwell’).
Evidence in reply
Susan McDonald, with Annexures 2021A to 2021T, dated 12 January 2021 (‘McDonald 2’).
As a preliminary matter I mention that the Opponent raises a number of new matters in its evidence in reply. In turn, the Applicant has attempted to respond to them in his written submissions. An opponent’s evidence in reply should be limited to matters raised in an applicant’s evidence in answer (thereby being ‘in reply’ to it). Where evidence in reply contains new information there is no requirement that the Registrar disregard it.[5] Nonetheless, if the Registrar is to consider the new material there should be compelling reasons for doing so and procedural fairness would normally dictate that the Applicant be given an opportunity to respond. Here, I have not found it necessary to consider the new information raised in the evidence in reply. Nor have I considered an email sent by Ms McDonald to another officer of IP Australia as requested by the Opponent, because it was not filed as evidence and therefore the Applicant has had no opportunity to see or respond to it. I likewise have not considered the Applicant’s response to the new information.
[5] See reg 21.15(4) which states ‘The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’.
A summary of the relevant facts and events presented in the parties’ evidence is as follows. As it is a relatively complex account of competing parties’ desire to use the name ‘Strathfield Independents’, I have omitted facts and events that have not materially affected the outcome of my decision.
In 2012 a group of residents of Strathfield, NSW, began a campaign to save Strathfield council from amalgamation with other local councils. The Applicant was one of the residents. The group became known as ‘Save Our Strathfield’. A prominent person in that campaign was Nella Gaughan, also known as Nella Hall (Hall appears to be her married name, although this is not explicitly stated. For convenience I will refer to her as Ms Hall). The Applicant was also active in the campaign, and he and Ms Hall seem to be somewhat aligned.
In 2015 Ms Hall filed an application to register the trade mark depicted below (registration no. 1672481), in respect of ‘Charitable services, namely organising and conducting volunteer programmes and community service projects’ in class 35. The application was accepted and that trade mark is currently registered. I note that the registration was applied for, and remains in, the name of Nella Gaughan.
The campaign to save Strathfield Council from amalgamation was ultimately successful.
As the 2017 local government elections approached, some of the group of residents decided to field candidates under the name ‘Save Our Strathfield Independents’, the name serving as a reminder of the group’s history in fighting amalgamation. Both the Applicant and Ms Hall were candidates in the elections. A number of contemporaneous exhibits[6] show use of the sign depicted below. Ms Hall was the primary candidate and was elected as a councillor. As at the date of McDonald 1 Ms Hall was still a councillor.
[6] See for example McDonald 1, Annexures K and H.
According to the Applicant in 2018 the group’s name evolved to ‘Strathfield Independents’, which was used along with the clock tower image. A flyer[7] which depicts the Trade Mark, advertising an event on Saturday 1 August 2018, is adduced by the Applicant. The Opponent questions its veracity because 1 August 2018 was a Wednesday and not a Saturday. The Opponent also avers that its own evidence shows it is unlikely that the name evolved in the way and at the times described by the Applicant, however it is not necessary to recount that evidence here. It is sufficient to say that, given the question over the 2018 date of the event advertised in the flyer, it is not clear as to whether the group called itself ‘Strathfield Independents’ in 2018.
[7] Markwell, Attachment 2.
Mr. Matthew Blackmore, now a member of the Opponent, was also an independent candidate at the 2017 Strathfield council elections for a group named ‘The Mayor’s Independent Team’. Mr Blackmore was elected as a councillor and as at the date of McDonald 2 was still a councillor. According to the Applicant ‘a new name would be required for the next council election and Matthew Blackmore started to use the name Strathfield Independents’.
Nonetheless, evidently at least as early as September 2014 Mr Blackmore had intended to use the name Strathfield Independents as the name of a political party. An email[8] dated 11 September 2014 from Mr Blackmore to a person with an email address at ‘@efa.nsw.gov.au’ (which McDonald 2 explains is the Electoral Commission of NSW) states that he would like to start the process of checking whether the name Strathfield Independents was acceptable to register. However, as described later, the name was not registered as a political party until 2019. The Opponent declares that Mr Blackmore has always used ‘Strathfield Independents’ in his email signature, although the only evidence of this is an email dated 11 January 2019.[9]
[8] McDonald 1, Annexure O.
[9] McDonald 1, Annexure AA.
It is to activities and events that took place during 2019 that significant parts of the evidence are dedicated.
On 6 February 2019 the Applicant registered the business name Strathfield Independents.
Also on 6 February 2019 the Applicant registered the domain name ‘strathfieldindependents.com.au’. As at the date of McDonald 1 it does not appear the web page at that address displayed the trade mark, although it is headed ‘Strathfield Independents’. As at the date of McDonald 1 it also disclaims any association with the now registered local party Strathfield Independents (discussed further below).
On 19 February 2019 the Applicant created a Facebook® page for Strathfield Independents. At least twice during 2019 the profile picture of the Facebook® page was changed such that it no longer displayed the Trade Mark. First it was replaced with an image wherein the clock tower device was combined with the words ‘Nella Hall Independents’, as shown below, with the caption ‘Our new name!’.
Then it displayed an image of Kim Jong Un, leader of North Korea, a later post stating ‘Disclaimer – this page is not associated with Strathfield Independents as represented by Matthew Blackmore’. A majority of posts on the Facebook® page are quite acrimonious in tone and primarily criticise Mr Blackmore. In any event the name of the Facebook® page nonetheless remained Strathfield Independents until 24 October 2019 when its name was changed to Strathfield Independents Fact Check. This was explained in a later post to be because ‘The posts on this site are just to correct the claims made by Matthew Blackmore – hence the name Strathfield independents fact check’.
Mr Blackmore also created a Facebook® page named Strathfield Independents, although it is not stated when he first created it. The earliest post in evidence in is April 19 (presumably of 2019, the year the post was retrieved for inclusion in evidence).
On 7 March 2019 Mr Blackmore filed an application to register the trade mark depicted below (registration no. 1994565), in respect of ‘Charitable services, namely organising and conducting volunteer programmes and community service projects’ in class 35. The application was accepted and that trade mark is currently registered. According to the Applicant the trade mark application was not opposed on account of it being in relation to services unrelated to the Applicant’s.
On 4 April 2019 an application to register Strathfield Independents as the name of a political party was filed with the NSW Electoral Commission on behalf of the Opponent. Ms McDonald was listed as the party secretary[10] and a declaration of party membership by Mr Blackmore is also adduced.[11] Approximately two and a half months later, on 24 June 2019, another application to register the name Strathfield Independents with the NSW Electoral Commission was filed, listing the Applicant as the registered officer. On behalf of the Opponent Ms McDonald filed an objection to this second application. On 29 July the NSW Electoral Commission approved the Opponent’s application to register the name, and Strathfield Independents was included in the Local Government Register of Political Parties. The outcome of the second application to register the name is not given although I assume it likely to have been denied given the prior registration by the Opponent.
[10] McDonald 1, Annexure M.
[11] McDonald 1, Annexure N.
On 8 July 2019 the Applicant filed the subject application to register the Trade Mark. As the owner of registration 1672481, Ms Hall has provided a letter[12] authorising the Applicant to register the Trade Mark. (The letter is signed in the name of Nella Gaughan). The subject application was originally also opposed by Mr Blackmore, although he has since had his name removed as an opponent.
[12] Markwell, Attachment 15.
Whilst the Applicant asserts that he did not oppose Mr Blackmore’s trade mark application because it related to different services, he did nonetheless file a complaint with Strathfield Council about it, on 18 September 2019. The Applicant alleged Mr Blackmore’s use of his trade mark breached the ‘Model Code of Conduct for Local Councils in NSW’ because the trade mark resembled the logo used by Strathfield Council, shown below.
No action was taken in respect of the complaint, primarily because it was not considered that the Code of Conduct governed the use of logos (as opposed to the council crest). Nonetheless the Opponent did shortly after, on 20 September 2019, file an application to register another trade mark, shown below (application no. 2038836). However, there is no statement to the effect that use of trade mark 1994565 has ceased.
Elections for Strathfield council are again approaching, in December 2021. The Opponent declares that Strathfield Independents aim to have one or more of their candidates elected as councillors to Strathfield Council, as does the group the Applicant associates itself with.
Legislation and reasons
It is convenient to begin with the ground of opposition under s 41 because it informs my findings under s 44. The remaining grounds of opposition are discussed in turn, although in no particular order.
Section 41
Section 41 of the Act provides that an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s designated goods or services from the goods or services of other persons.[13] At the same time, trade marks are presumed to be registerable[14] unless it can be shown to the Registrar’s satisfaction that a ground of opposition applies (when the consideration is made in an opposition context).[15]
[13] Section 41(1) of the Act.
[14] Section 33 of the Act.
[15] This ‘presumption of registrability’ applies to the grounds of opposition under ss 41, 44 and 43.
I mention firstly that at times the Opponent appears to have misconstrued s 41. Section 41 relates to an ability to distinguish an applicant’s goods or services from other trader’s similar goods or services at large. It does not relate to an inability to differentiate from another specific trader(s) – those considerations are more appropriate under s 44.
The starting point for the assessment to be made under s 41 is a consideration of the Trade Mark’s inherent adaptation to distinguish the services claimed in the application from those of other traders.
Inherent adaptation to distinguish goods or services is to be tested:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[16]
[16] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
The word STRATHFIELD signifies a geographic location and the word INDEPENDENTS signifies, in respect of politics, ‘a candidate for election or an elected representative in parliament who is not formally affiliated with a political party’.[17] The words of the Trade Mark therefore have an ordinary signification, being candidates who are not affiliated with a political party that are from Strathfield or who act for the people of Strathfield. The words of the Trade Mark therefore form part of the ‘common heritage’ of language that the public retains the right to use. No applicant has a prima facie right to a monopoly over such words.[18]
[17] Macquarie Dictionary, online edition, Macmillan Publishers Australia 2021.
[18] However an applicant might show that because of the extent to which it has used such a trade mark, or the extent to which it has or intends to use it and/or any other circumstances, the trade mark does distinguish or is capable of distinguishing the applicant’s goods or services.
Here, however, the Trade Mark does not comprise only the words STRATHFIELD INDEPENDENTS. It also contains a stylised image of a clocktower which forms a prominent part of the Trade Mark. There is no reason apparent to me that others, actuated only by proper motives, should want to use that image. Whilst clocktower images are not unusual as representations of town halls or municipal buildings (and therefore have a degree of association with the services carried out in such environments), this particular rendering of the image is relatively unusual. The image imbues the Trade Mark with sufficient distinctiveness to distinguish the Applicant’s services from the similar services of others.
Accordingly, the ground of opposition under s 41 fails.
Sections 44 and 58A
Section 44 of the Act provides that the application for registration of the Trade Mark must be rejected if the Trade Mark is in respect of similar services or closely related goods to an earlier trade mark owned by someone other than the Applicant, and is either substantially identical or deceptively similar to it.
The Opponent nominates trade mark registrations 1672481 and 1994565 as the basis for the ground of opposition under s 44. The details of those trade marks are shown below for convenience.
Registration 1672481 Registration 1994565 Priority date: 4 February 2015 Priority date: 7 March 2019 Class 35: Charitable services, namely organising and conducting volunteer programmes and community service projects. Class 35: Charitable services, namely organising and conducting volunteer programmes and community service projects. Ownser: Nella Gaughan Owner: Matthew Blackmore
Both of the above trade marks are owned by persons other than the Applicant and have priority dates earlier than the Trade Mark.
Both of the earlier trade marks are registered in respect of ‘Charitable services, namely organising and conducting volunteer programmes and community services projects’ in class 35. The Applicant’s services are ‘providing information regarding political issues’. Principles for the comparison of services include:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence…
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumer of the services perceive the services…[19]
[19] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [339], (‘Accor’).
Bearing these principles in mind, particularly the first, I am not satisfied that the inherent character of the Applicant’s service is similar (within the meaning of s 14 of the Act) to the services of the earlier trade marks. Simply as a function of the language used to describe the respective services,[20] they are on their face different. The Applicant’s is an information service, and the earlier marks’ services are charitable services entailing volunteer programmes and community services projects. Whilst the owners of the earlier marks may provide information in the course of carrying out their volunteer programmes and community projects, that is not the primary feature of their services. I bear in mind that:
The mere fact that services have an incidental feature in common is not sufficient to render them “similar”, within the defined meaning of that term, because incidental services are to be treated as taking their character from the whole.[21]
[20] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [148]-[186], wherein the analysis of whether services were similar to other services relied upon the language used to describe them.
[21] Ibid, [173].
The burden is upon the Opponent to establish the ground. Given that the services appear on their face to be different, I consider the comment of the Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd relevant here: ‘It seems to us that the resolution of any ambiguity about that matter would necessarily require evidence going to the degree, boundaries and measure of any overlap’.[22] No evidence has been adduced regarding the alleged similarity of services. For that reason the ground under s 44 fails.
[22] Accor, n 19, [190].
Section 58A is predicated on a finding that s 44 is established but is overcome by way of the exception under s 44(4) (being that an applicant has been able to show continuous use of its trade mark from a time prior to the priority date of the earlier mark). Given that s 44 is not established, it is not necessary to determine ultimate first use (and in any event there is no evidence to conclusively show it was not the Applicant). The ground under s 58A likewise fails.
Section 43
Section 43 provides that a trade mark must be rejected if, because of some connotation contained within it, its use would be likely to deceive or cause confusion.
The SGP explains that the basis of the ground of opposition under s 43 is that deception or confusion would arise because the Trade Mark features the same image as trade mark 1672481 and because it uses the words STRATHFIELD INDPENDENTS which is the name of a registered local government political party.
Section 43 is concerned with a connotation arising from the trade mark itself, not from deception or confusion occurring arising from a reputation in some other trade mark.[23] For that reason the ground of opposition as it relates to trade mark 1672481 is unfounded. In any event there evidently exists an actual association between the owner of 1672481 and the Applicant, and so a connotation (were it to exist) would not be deceiving or confusing.
[23] Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J).
As to a connotation of association with the registered local government political party STRATHFIELD INDEPENDENTS, the rights of the parties are to be determined as at the filing date, 8 July 2019. Although the Opponent had applied to register the name as political party prior to the filing date, it was not until 29 July 2019 that the application was approved and the party was registered. At the filing date, therefore, there was no registered local government party named STRATHFIELD INDEPENDENTS. I mention also that before registration of the party, the Applicant himself had registered the business name ‘Strathfield Independents’ and domain name ‘strathfieldindependents.com.au’, and created a Facebook® page named ‘Strathfield Independents’. This would tend to indicate there was no exclusivity in the Opponent’s use of STRATHFIELD INDEPENDENTS as at the filing date and so any connotation would not necessarily have been deceptive or confusing.
Section 58
Section 58 provides that registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
To establish the ground the Opponent must establish earlier use of another trade mark (or authorship combined with an application to register[24]) which is at least substantially identical to the Trade Mark[25] and which has been used for services which are the ‘same kind of thing’.[26]
[24] Lomas v Winton Shire Council [2002] FCAFC 413, [37] (Cooper, Kiefel and Emmett JJ).
[25] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936, [62] (Gummow J).
[26] Re Hicks Trade Mark (1897) 22 VLR 636, 640.
The Opponent seems to base this ground of opposition on trade mark 1672481, asserting that both it and the Trade Mark contain identical clocktower images. Whilst this is true, the respective trade marks also contain differing words. Trade mark 1672481 contains the words SAVE OUR STRATHFIELD and the Trade Mark contains the words STRATHFIELD INDEPENDENTS. It may be argued that the words STRATHFIELD INDEPENDENTS have so little distinctiveness they do not not serve to differentiate, however the same cannot be said for SAVE OUR STRATHFIELD. SAVE OUR STRATHFIELD has a degree of inherent adaptation to distinguish, even if it might be not to the extent that it would be registrable in its own right (although I make no finding as to whether or not this would be the case). The difference between the words in the respective trade marks precludes a finding of substantial identity, and the ground insofar as it is based upon trade mark 1672481 fails at this hurdle.
It is not entirely clear whether the ground is also based upon the sign depicted in paragraph 13 (SAVE OUR STRATHFIELD INDEPENDENTS and clocktower image) and trade mark 1994565. I will comment briefly in the event that it is. The unregistered sign depicted in paragraph 13 is not substantially identical to the Trade Mark for the same reasons as discussed above in respect of trade mark 1672481. The presence of the word INDEPENDENTS in that sign may render it more similar to the Trade Mark, but not to the degree that the two are substantially identical. Trade mark 1994565 contains an entirely different image, and for that reason is also not substantially identical to the Trade Mark. Accordingly neither of these signs can support a ground of opposition under s 58, and the ground fails.
Section 60
Section 60 provides that the Trade Mark may be opposed on the ground that another trade mark had acquired a reputation before the priority date of the Trade Mark (being in this case the same as the filing date), and because of that reputation use of the Trade Mark would deceive or cause confusion.
The Opponent must therefore first establish a reputation in another trade mark. Reputation in the context of s 60 refers to the recognition of the trade mark by the public generally,[27] and is often inferred from evidence of a high volume of sales together with substantial advertising expenditures and other promotions, or from public visibility of the trade mark over an extensive period together with a significant promotional campaign.[28]
[27] McCormick & Company Inc v McCormick [2000] FCA 1335, [81].
[28] Ibid [86].
It appears for the purpose of the s 60 ground of opposition the Opponent relies upon the same signs as those in respect of s 58, being trade marks 1672481 and 1994565 and possibly the unregistered sign depicted in paragraph 13. Based upon the evidence before me, I cannot be satisfied that a reputation resides in any of them.
The name SAVE OUR STRATHFIELD may have gained a degree of recognition as the name of a movement to save Strathfield Council from amalgamation. However, on the evidence before me I cannot be satisfied that it ascends to the sort of reputation contemplated by s 60. The SGP contains, on page 4 of a letter intended to provide further information in respect of the grounds, what appears to be montage of either three or four newspaper headlines or articles. However all are from the same publication (Inner West Courier) on the same date and therefore would not, in my estimation, represent sustained public visibility. Flyers and emails sent under the banner of trade mark 1672481 have evidently been distributed, however there is no indication of the number that were distributed or the extent of emails lists, and so it is difficult to infer to what extent the public may have seen them. Similarly, there is no indication that correspondence sent to government entities, bearing either trade mark 1672481 or the unregistered sign in paragraph 13, were made available to any audience other than the recipient. I note that a ‘Mayoral Minute’ included on page 20 of the letter attached to the SGP refers to ‘the formation of the Save our Strathfield (SoS) Residents Action Group’ but there is no indication to whom this was distributed.
There is also comparatively little information about the extent of use of trade mark 1994565. For example, there is no indication of the number of Facebook® followers of the ‘Strathfield Independents’ page created by Mr Blackmore. Nor is there any indication of the number of members in the party. The evidence indicates only one campaign event that has been conducted by the Opponent under the name ‘Strathfield Independents’, being a ‘street meeting’ on Saturday 7 March, however it would appear that the date of Saturday 7 March did not occur until 2020, after the priority date. A flyer bearing trade mark 1994565 is alleged to have been distributed to all households in Strathfield Local Government Area during June to August 2019, however there is no statement as to how many households are in that area nor how many flyers were distributed before the priority date as opposed to after it. Another flyer bearing the name ‘Strathfield Independents’ is alleged to have been distributed to those same households in October to December 2019, however this is after the priority date.
The Opponent bears the onus of establishing reputation to the Registrar’s satisfaction. Reputation cannot be assumed, rather it must be established as a question of fact.[29] I am not able to ascertain, on the evidence before, the extent to which any of the trade marks relied upon to establish the ground may have been recognised by the public. Given that reputation has not been established in these trade marks, the ground of opposition under s 60 fails.
[29] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [117] (Lockhart J).
Section 59
Section 59 provides that the Trade Mark may be opposed on the ground that the Applicant is not intending to use, or authorise use, of the Trade Mark.
The act of filing an application for registration gives rise to a presumption of intention to use the Trade Mark, and mere non-use does not displace the presumption.[30]
[30] Suyen Corporation v Americana International Limited [2010] FCA 638, [207] (Dodds-Streeton J).
The Opponent avers that, as at the date of the SGP, the Applicant’s ‘Strathfield Independents’ Facebook® page no longer displayed the Trade Mark and the web site at ‘ had never displayed the Trade Mark.
The Applicant’s ‘Strathfield Independents’ Facebook® page did, at least at July 9 (presumably of 2019 when the page was captured for inclusion in evidence) display the Trade Mark. This tends to indicate that the Applicant had an intention to use it when he filed the application to register the Trade Mark the day before, and the posts upon that page (as with the information upon the Applicant’s website) do fall within the bounds of ‘providing information regarding political issues’, albeit perhaps only in respect of what the Applicant considers to be relevant.
Moreover, there is nothing to indicate that as at the filing date of 8 July 2019, the Applicant and/or his associates had no intention of using the Trade Mark themselves as the name of a political party. Such a scenario is not inconceivable given the history of the Applicant and the ‘Save Our Strathfield Independents’ group.
Whilst some of the actions of the Applicant could be construed as being undertaken with the intent of frustrating the Opponent’s or Mr Blackmore’s political ambitions, they do not indicate that that was the sole purpose of the Applicant’s application to register the Trade Mark.
I am not satisfied that the presumption of an intention to use has been displaced, and in any event the Applicant has shown use of the Trade Mark which would tend to support his intention to use it. The ground under s 59 therefore fails.
Section 62A
Section 62A provides that the registration of the Trade Mark may be opposed on the basis that the application was made in bad faith.
Bad faith refers to conduct that falls short of the standard of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area; and whether the Applicant’s decision to apply for registration of the Trade Mark, in light of the knowledge he had at the time, would be regarded as being in bad faith by persons adopting proper standards.[31]
[31] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164] (Dodds-Streeton J).
The Opponent avers that the Applicant filed the trade mark application as a weapon against Mr Blackmore and the Opponent, and asserts that the Applicant no longer uses the Trade Mark. To substantiate its claim the Opponent identifies a timeline of actions taken by Mr Blackmore and the allegedly retaliatory actions taken by the Applicant. The first difficulty with the timeline is that it claims Mr Blackmore has always used the words ‘Strathfield Independents’ in his email signature since his election in 2017, however the only evidence of this is a single email from January 2019. The second difficulty is that it makes no mention of the Applicant’s registration of the business name or domain name, or creation of his Facebook® page, all of which occurred prior to Mr Blacknore’s application to register trade mark 1994565 and prior to any of the subsequent actions outlined in the timeline.
Whilst there is clearly some animosity directed at Mr Blackmore and the Opponent by the Applicant, much of it appears to be based on the Applicant’s own belief that Mr Blackmore and the Opponent are usurping the name ‘Strathfield Independents’. (I make no finding that this is the case, only that it is clear the Applicant believes it so). On the evidence before me the Applicant’s knowledge at the time he filed the application to register the Trade Mark appears to be that a) the political party with which he was affiliated had previously used the name ‘Save Our Strathfield Independents’, b) possibly they had used the name ‘Strathfield Independents’ in 2018 but the evidence of this is questionable given it provides the wrong date, and c) in 2019 Mr Blackmore and the Opponent took actions to secure the name ‘Strathfield Independents’, as did the Applicant. There is nothing to indicate that the Applicant was aware of the Opponent’s application to the NSW Electoral Commission to register the name ‘Strathfield Independents’ when he filed the application to register the Trade Mark. Whilst the Applicant may have been aware of Mr Blackmore’s trade mark application, it was in respect of services somewhat different to those of the Applicant and the Applicant appears to be of the opinion that they therefore would not conflict. I am not satisfied on the evidence that the Applicant acted in an unscrupulous or underhand manner, or that persons observing acceptable commercial standards would consider his decision to apply for registration of the Trade Mark was in bad faith.
Accordingly the ground under s 62A fails.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application no. 2018552 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
Nicole Worth
Hearing Officer
Delegate of the Registrar of Trade Marks
5 November 2021
Key Legal Topics
Areas of Law
-
Intellectual Property
-
Administrative Law
Legal Concepts
-
Standing
-
Procedural Fairness
-
Statutory Construction
-
Remedies
0
11
0