Opposition by Wild Flour Cafe Pty Limited to registration of trade mark application number 1992777 (Class 30, 35, and 40) – WILDFLOUR ARTISAN BAKERY & CAFÉ & device - in the name of Michael Rose.
[2021] ATMO 74
•30 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Wild Flour Cafe Pty Limited to registration of trade mark application number 1992777 (Class 30, 35, and 40) – WILDFLOUR ARTISAN BAKERY & CAFÉ & device - in the name of Michael Rose.
Delegate: Blake Knowles Representation: Opponent: Bird & Bird.
Applicant: Moulis Legal.Decision: 2021 ATMO 74
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 58, and 62A raised by opponent – no grounds established – trade mark to proceed to registration.Background
This is a decision on the opposition to registration of a trade mark application number 1992777 (‘Application’) by Wild Flour Cafe Pty Limited (‘Opponent’). On 1 March 2019 (‘Relevant Date’), Michael Rose (‘Applicant’) filed an application to register the following trade mark:
The Application was initially made in respect of services in classes 30, 35, 40, and 43. However, a divisional application (number 2034306) was lodged on 2 September 2019, which removed class 43 from the Application. The Application now claims the following goods and services:
Class 30: Coffee; Coffee beans; Coffee beverages; Coffee beverages with milk; Coffee drinks; Coffee products; Coffee-based beverages; Preparations with a coffee base; Preparations with a tea base
Class 35: Distribution of goods (not being transport services) and wholesale of goods; Intermediary business services relating to the commercialising of goods (wholesaling); Retail services; Retailing of goods (by any means); Wholesaling of goods (by any means); Administration of the business affairs of franchises; Provision of assistance (business) in the operation of franchises
Class 40: Coffee grinding; Coffee roasting; Food and drink processing (for others)
(‘Goods & Services’)
As required by the Trade Marks Act 1995 (Cth) the Trade Mark was examined. The Trade Mark was advertised for opposition purposes and the Opponent filed notice of its intention to oppose registration of the Trade Mark on 14 November 2019 and a statement of grounds and particulars (‘SGP’) on 13 December 2019. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 4 March 2020.
The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14[1]. The Opponent filed Evidence in Support on 4 June 2020. The Applicant filed Evidence in Answer on 2 September 2020. The Opponent did not file Evidence in Reply.
[1] Unless otherwise stated, each reference to a section or regulation in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) or regulation of the Trade Marks Regulations 1995 (Cth).
Neither party requested an oral hearing. The Applicant filed written submissions on 12 July 2021. The Opponent did not file submissions and requested that the opposition be decided based on the evidence filed. I have therefore decided the matter based on the grounds particularised in the SGP, the evidence filed by the parties, and the Applicant’s written submissions.
Grounds and onus
The SGP nominated grounds of opposition under ss 42(b), 58, and 62A. The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]
[2] Pfizer Products Inc v Karam [2006] FCA 1663, 22 (Gyles J); 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) 91 CLR 592, 595 (Kitto J).
Evidence
The following evidence was filed under reg 5.14:
Evidence in Support (‘EIS’)
Declaration of Lauren Yehezkel, Director of the Opponent, made on 3 June 2020 with Exhibits LY-1 to LY-11.
Evidence in Answer (‘EIA’)
Declaration of Michael Rose, Applicant, made on 2 September 2020.
Ms Yehezkel in the EIS declares that the Opponent was incorporated in May 2018. The Opponent commenced operation of a café business in Redfern New South Wales on 6 September 2018, with the lease at the premises commencing in April 2018.
Ms Yehezkel states that since opening its business the Opponent has provided:
· Café and hospitality services and catering services.
· Baked food products sold for consumption on its premises and for takeaway consumption.
· Retail services, in relation to the goods that it bakes, plus other goods including pretzel kits (for customers to make their own pretzels), high tea boxes, ground coffee, flour kits for baking, an assortment of baked goods, and gift vouchers.
· Coffee grinding services, for the purpose of packaging and selling packs of coffee to customers.
Ms Yehezkel annexes to the declaration examples of use of the Opponent’s trade mark, namely:
·Café menu
·A sample of ‘retail’ products, including bagged coffee and a pretzel making kit.
·Photos of takeaway or catered foods and an invoice dated 8 September 2018 relating to the provision of catering services.
·Invoices issued between June-September 2019 relating to wholesale of food products.
·Photographs of the Opponent’s café and coffee cups.
·Screenshots of the Opponent’s website, and social media posts. This includes:
oa Facebook post dated May 2018 which indicates the café would be opening in July 2018.
oAn Instagram post dated 12 May 2018 which indicates that the Opponent was hiring baristas, bakers, cooks, and all-rounders.
oa Facebook post dated 24 June 2018 indicating that the Opponent had obtained printed takeaway cups by that date.
oA Facebook post dated 6 September 2018 which indicates that the Opponent had commenced operating as a café at that time.
oA Facebook post dated 25 October 2018 which displays the Opponent’s trade mark being used on a box of lamingtons, presumably for takeaway consumption or as part of a catering service.
oAn Instagram post dated 14 December 2018 consisting of a photo a box bearing the Opponent’s trade mark and containing various slices, again, presumably for takeaway consumption or as part of a catering service.
oAn Instagram post that dated ‘May 4’ (presumably either in 2019 or 2020) consisting of a photo a box bearing the Opponent’s trade mark and containing various foods, a candle, and a small jar (the contents of which are not clear).
Ms Yehezkel also includes a number of extracts from websites such as Yelp, Zomato, Trip Advisor, and Restaurant Guru, Google, Daily Addict, and Seven Miles which contain positive reviews and ratings for the Opponent’s business. However, each of the reviews is either undated or dated after the Relevant Date.
Ms Yehezkel provides examples of confusion between the Opponent’s and Applicant’s businesses, being an undated Facebook review and a Google review dated 28 August 2019.
Ms Yehezkel also declares that the Opponent is the owner of registered trade mark no. 2031080 for WILD FLOUR in Class 43. The filing date of this registration is after the Relevant Date, so the registration does not form the basis for any grounds of opposition.
Ms Yehezkel annexes Exhibits which indicate that the Opponent’s trade mark has been used as a plain word ‘Wild Flour Café’ and in slightly stylised formats, namely:
Mr Rose declares in the EIA that he commenced use of the Trade Mark before the Relevant Date, and that he had a clear intention to use the Trade Mark, coupled with preparatory steps manifesting an objective commitment to use. Mr Rose states that he engaged graphic designers and interior designers between August-December 2018.
Mr Rose states that he settled on the Trade Mark in conjunction with input from his graphic designer in December 2018. He states that when preparing to operate his business, both he and his graphic designer conducted searches to assess the availability of the name, including domain name searches and trade mark register searches. He declares that when no conflicting trade marks were identified, he progressed with plans to launch his business under the Trade Mark.
Mr Rose states that his business extends to wholesale services, including bakery products that are available for purchase through supermarket and food retail outlets.
Discussion
Section 58
To establish this ground, the Opponent must show use in Australia, by some person other than the Applicant, of a trade mark that is substantially identical to the Trade Mark[4] and which has been used for goods that are the ‘same kind of thing’ as the Goods & Services.[5]
[4] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513.
[5] Re Hicks Trade Mark (1897) 22 VLR 636, 640.
The trade mark relied on by the Opponent must have been used in the course of trade prior to the Relevant Date, or prior to the date of first use of the Trade Mark by the Applicant, whichever is earlier.
As a preliminary, I mention that the Applicant has not satisfied me that he has used the Trade Mark prior to the Relevant Date. While the Applicant states that he undertook preparatory steps manifesting an objective commitment to use the Trade Mark before the Relevant Date (namely, engaging graphic and interior designers), this claim is vague and unsupported by any exhibits. It should have been at least possible to support such as claim by providing dated correspondence, for example, a business name registration certificate, domain name registration, invoices from his designers, social media posts, lease agreements, advertisements for staff etc. While such material might not necessarily establish that there has been use of the Trade Mark in the course of trade before the Relevant Date, it would at least provide some objective verification of the Applicant’s statements. In the absence of any such evidence supporting use of the Trade Mark, I will consider that the Applicant’s rights commence at the Relevant Date.
I will now consider the questions of whether there has been use of a substantially identical mark before the Relevant Date, and whether that use is in relation to goods or services that are the ‘same kind of thing’.
The test for substantial identity requires trade marks to be assessed as follows:
they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[6]
[6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham’), the court held that a comparison of marks is to be carried out cognisant of the essential elements of the trade marks, noting that essential elements are unlikely to be found in mere descriptive elements[7]. The court went on to find that the following two trade marks were substantially identical, based on the common presence of the words INSIGHT and a similar device:
[7] [2017] FCAFC 83, [51]-[52] (Greenwood, Jagot, and Beach JJ).
However, the Applicant also refers to the more recent case of Chris and Dora Di Lorenzo Partnership v Denversian Pty Ltd (‘Black Sheep’),[8] where the Federal Circuit Court held that the following two trade marks were not substantially identical:
BLACK SHEEP
[8] [2020] FCCA 1718 (Baird J).
In Black Sheep, Baird J held that the two marks were not substantially identical based on the device element being an essential element of the second mark (which also acted to connect the first and second words). Baird J concluded that the presence of this device constituted a ‘striking difference’ between the two marks under consideration.[9]
[9] Ibid, [109].
Turning to the present comparison, it is necessary to compare the Trade Mark against the different versions of the Opponent’s trade marks used prior to the relevant date, namely:
v
Wild Flour Café
(‘Opponent’s trade marks’)
I consider that the Trade Mark is substantially identical to each of the Opponent’s trade marks. I give very little weight to the descriptive material in the Trade Mark, and I consider the essential element of all marks is the words WILD FLOUR. The conjoining of those words in the Trade Mark is insignificant as the mark would still be clearly recognised as a term comprising two distinct words. I also consider that the wheat kernel which forms part of the letter ‘W’ in the Trade Mark cannot be characterised as an essential element. That element is not particularly noticeable when the mark is viewed in its entirety. When I first viewed the mark, it did not draw any special attention and simply appeared to be a flourish or brushstroke intended to stylise the letter W. It was only on closer inspection that the nature of this element as a wheat kernel became apparent. In this context, the wheat kernel does not create a ‘striking difference’ between the two marks under consideration in a similar manner to the distinctive device element considered in Black Sheep.
As I have determined that the Opponent has used various trade marks prior to the Relevant Date that are substantially identical to the Trade Mark, I must now consider whether the use is in relation to goods or services that are the ‘same kind of thing’ as the Goods & Services of the Application.
The test for whether goods and/or services are ‘the same kind of thing’ is a narrower assessment than whether they are goods or services ‘of the same description’ or are ‘closely related’.[10] In the context of a trade mark opposition, the test highlights the significant limitation of ownership of ‘common law’ trade mark rights as compared to ownership of a registered trade mark.
[10] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [12]-[13] (Kenny J).
In Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’), Allsop J said:
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: Jackson v Napper 35 Ch D 160. 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” (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or “goods essentially the same… though they pass under a different name owing to slight variations in shape and size” (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[11]
[11] Ibid, [89].
The first step in making an assessment as to whether goods or services of the respective parties are the ‘same kind of thing’ is to determine the goods or services in relation to which there has been use of the Opponent’s trade marks prior to the Relevant Date. If the evidence does not establish use of the Opponent’s trade marks for particular goods and services before the Relevant Date, then any use claimed in relation to such goods and services must be disregarded.
I am satisfied that EIS establishes use of the Opponent’s trade marks prior to the Relevant Date in relation to café services, takeaway services, and catering services.
I am also satisfied that the Opponent has at some point also used its trade marks in relation to particular goods sold at its café. These include packaged ground coffee, candles, and pretzel baking kits, pictured below:
However, while the evidence is clear that the Opponent’s trade marks are used on the abovementioned goods, it is not clear when these goods were sold, and whether it was before or after the Relevant Date. The Opponent merely indicates that products have been sold ‘since’ the business commenced in September 2018, without providing any specifics as to the date that these products were first on sale. Use of the word ‘since’ is somewhat ambiguous as it can either indicate use beginning from the commencement date, or subsequent to the commencement date.
In fairness to the Opponent, I have attempted to resolve this ambiguity by very close examination of the images provided in the EIS. A zoom on one photo of the Opponent’s store around the time of its opening on 8 September 2018 displays packaged coffee on the shelf:
However, the photo also indicates that the trade mark used on those goods was ‘Leaf & Berry’, and not any of the Opponent’s trade marks. It is also unclear whether these goods are for retail sale by the Opponent or are displayed on the shelf for decorative purposes (with the beans intended to be eventually used by the Opponent’s baristas). Similarly, a close inspection of the Facebook and Instagram posts, and Wayback extracts of webpages in the EIS, also does not verify that the coffee, pretzel kit, or candle bearing the Opponent’s marks as pictured above were sold prior to the Relevant Date. As the onus in these proceedings is on the Opponent, I cannot be satisfied based on the evidence that there has been use of the Opponent’s trade marks for ground coffee, candles, and pretzel baking kits, or other goods, prior to the Relevant Date.
I am also not satisfied there has been use of the Opponent’s trade marks for retail services. The provision of foods and beverages from the Opponent’s café in my view is more accurately characterised as a café, takeaway, or catering service, not a retail service. Similarly, I consider the sale of products such as bagged coffee, pretzel kits, or candles branded with the Opponent’s own marks to be use in relation to goods, and not retail services. Even if I am incorrect on this point, I have found that the evidence does not substantiate that these specific goods were sold before the Relevant Date. Therefore, even if sale of these particular goods was characterised as a retail service, it does not support the ground of opposition.
Finally, I am not satisfied that the Opponent has provided coffee grinding services. Ms Yehezkel states that the Opponent has “ground coffee for the purpose of packaging and selling packs of coffee to customers”. This statement describes an internal business function of the Opponent (akin to its preparation of food or beverages for sale in its café) and does not appear to be a distinct service that the Opponent is providing to others.
As I have determined that the evidence only establishes use of the Opponent’s marks before the Relevant Date in relation to café, takeaway, and catering services, I must decide whether these specific services are ‘the same kind of thing’ as the Goods & Services of the Application.
Turning first to Class 30 of the Application, these goods can be summarised as coffee, coffee drinks, and coffee-based beverages. While coffee products are considered by the Registrar to be closely related to café and coffee shop services[12], that does not mean they are ‘the same kind of thing’. The test for determining whether goods and services are closely related (for the purposes of determining a conflict between trade marks filed and/or registered under s 44 or for determining trade mark infringement under s 120) is a broader and more pliable test than the test under s 58 for establishing ownership of a trade mark at common law. According to Colorado, in order to determine whether goods and services are ‘the same kind of thing’, I must essentially decide whether the respective goods and services are true equivalents.
[12] Kicking Horse Coffee Co. Ltd [2018] ATMO 193.
Coffee/tea and coffee and tea based beverages as goods in Class 30 are generally in the nature of sealed goods intended for sale through retail or wholesale channels. Logically included within this definition would be packaged coffee beans, instant coffee, tea bags, coffee pods, and prepared drinks such as iced coffee/tea or coffee flavoured milks in bottles or cartons. I do not consider coffee or tea as ‘goods’ would include a hot coffee or tea of the type available at a café or coffee shop. The provision of hot coffee or tea (which is usually in an unsealed ready to drink cup) is more in the nature of a service which encompasses the preparation of a coffee or tea according to customer specifications, and the serving of that beverage for immediate consumption. As such, the provision of services involves additional aspects that are absent when a consumer simply buys a coffee or tea product off the shelf. I am therefore not satisfied that the coffee and tea related goods in Class 30 of the Application are the ‘same kind of thing’ as the Opponent’s café, takeaway, and catering services.
Turning next to Class 35 of the Application, the most relevant of the services covered is retail services. Generally, retail services relating to food and beverages would encompass the sale of packaged goods originating from a number of different trade sources. Conversely, the café, takeaway, and catering services provided by the Opponent would generally involve the provision of food and beverages prepared by the cafe for immediate consumption. While there are some similarities between the respective services, and many businesses will provide both provision of food and beverage services and retail services (for instance, a café may sell items such as chewing gum, cigarettes, newspapers etc.), there are also notable differences and the respective services therefore cannot be considered as true equivalents. As such, I do not consider that the retail services in Class 35 of the Application are the ‘same kind of thing’ as the café, takeaway, and catering services of the Opponent.
With regards to the remaining services in Class 35, ‘wholesaling’ and ‘distribution’ generally involves the provision of bulk quantities of products to retailers for on-selling to the ultimate consumers. The various franchising type services are in the nature of advisory services. In both cases, these Class 35 services are not true equivalents of café, takeaway, and catering services provided by the Opponent, and are clearly not the ‘same kind of thing’.
Turning next to Class 40 of the Application, these services are coffee grinding and roasting, and food and drink processing for others. These are in the nature of food preparation and processing, and do not involve provision of food and beverages for immediate consumption. The customers for such services would normally be other businesses in the food retail or café/restaurant industry, rather than the ultimate consumer of the food or beverage products in question. Again, while there are similarities between these services and the café, takeaway, and catering services of the Opponent, they are not true equivalents and therefore not ‘the same kind of thing’.
For the reasons given above, I am not satisfied that the Goods & Services are the ‘same kind of thing’ as those services for which use of the Opponent’s trade marks can be demonstrated before the Relevant Date. Therefore, the ground of opposition under s 58 is not established.
Section 42(b)
To establish this ground, the Opponent must establish that at the Relevant Date, use of the Trade Mark would be contrary to law.
The Opponent alleges that the use of the Trade Mark would constitute misleading and deceptive conduct under sections 18 and 29 of the Australian Consumer Law, in addition to the tort of passing off. The Opponent claims that consumers are likely to be misled or deceived that the Goods & Services are those of the Opponent, or affiliated with the Opponent, based on the reputation of the Opponent’s trade marks, and the similarity of the respective trade marks and goods and services of the two parties.
In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:
It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed. [13]
[13] McCormick & Company Inc v McCormick [2000] FCA 1335, [85]-[86].
The EIS indicates that the Opponent’s trade marks were in use for approximately six months prior to the Relevant Date. This is a relatively short period of time, although this is not necessarily fatal to the Opponent’s case. However, the Opponent has also not provided any revenue figures or promotional expenditure which would assist in determining whether a reputation has been established in this period. Further, the online reviews of the Opponent’s business appearing in the EIS are generally undated or were written after the Relevant Date, and the social media figures (i.e. number of followers and likes) are not provided as of May 2020, not at the Relevant Date.
The EIS contains two instances of apparent confusion, being complaints on social media. However, one is dated 28 August 2019 (after the Relevant Date), and the other is undated. As such, I give this evidence no weight in determining whether reputation existed in the Opponent’s trade marks at the Relevant Date.
As I am unable to determine that reputation existed in the Opponent’s trade marks at the Relevant Date, there is no basis on which to conclude that consumers are likely to be misled or deceived.
As the Opponent has not established a likelihood of consumers being misled or deceived, s 42(b) is not established.
Section 62A
Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by determining whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in the relevant industry.[14] I am without evidence as to any standards of behaviour peculiar to this industry, so I proceed in my assessments here based on general commercial behaviour.
[14] DC Comics v Cheqout Pty Ltd (2013) 212 FCR 194, 206 [62] (Bennett J).
The Opponent in the SGP alleges that at the Relevant Date, the Applicant was aware of the Opponent’s trade marks and the Opponent’s reputation in Australia.
The Applicant declares in the EIA that he, in conjunction with his graphic designer, conducted trade mark and domain name searches prior to commencing his business. He states that those searches did not identify any conflicting trade marks, and on this basis, he continued with plans to launch his business.
It is possible that if the due diligence undertaken by the Applicant had been more comprehensive, the enquiries may have identified the Opponent’s unregistered trade marks as a potential obstacle. However, I am not satisfied that the filing of an application in ignorance of another person’s unregistered trade mark is an act falling short of standards of acceptable commercial behaviour which constitutes bad faith. In this case, the lack of knowledge of the Opponent’s unregistered trade marks at the time of filing the Application means that the subjective element of bad faith is lacking, and the ground cannot be made out.
In view of the above, the ground of opposition under s 62A is not established.
Decision and costs
The Opponent has not established any of the grounds of opposition. As such, my decision is to register the Trade Mark. Noting the appeal period, it should proceed to registration one month from the date of this decision. But if the Registrar of Trade Marks is served with a notice of appeal before that time, registration should not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of the opposition should be in accordance with the Court’s order or direction.
The Applicant in the Notice of Intention to Defend indicated that he wished to apply for an award of costs. Costs usually follow the event. There being no reason to make an exception here, I award costs against the Opponent.
Blake Knowles
Hearing Officer
Delegate of the Registrar of Trade Marks30 July 2021
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