Pacer Auto Products Pty Ltd v CW Brands Pty Ltd

[2024] ATMO 56

TRADE MARKS ACT 1995

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

Re:Opposition by Pacer Auto Products Pty Ltd to registration of trade mark application number 2164839 (1, 2 ,3, 4, 17) - PACER - in the name of CW Brands Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Andrew Caska of Caska Intellectual Property Pty Ltd

Applicant: Guy Provan of Golja Haines & Friend

Decision:

2024 ATMO 56

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 58, 60 and 62A – none established – trade mark to proceed to registration

Background

1. This opposition is bought by Pacer Auto Products Pty Ltd (‘Opponent’) under s 52 of the Trade Mark Act 1995 (Cth)[1] to the registration of the following trade mark application (‘Application’) in the name of CW Brands Pty Ltd (‘Applicant’):

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

   Trade Mark Number:             2164839

   Trade Mark:  PACER (‘Trade Mark’)

   Filing Date:  19 March 2021

   Specification:  Class 1:  Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions; tempering and soldering preparations; adhesives used in industry; two-pack preparations comprising resin and a catalyst for use as resins and adhesives; epoxy resin for fibreglass; fibreglass repair kits containing epoxy resin; resin monomer and catalysts for use in polymerising resin preparations; rust converting preparations; rust stabilising preparations; filler materials for paints; motor vehicle body fillers; putty fillers for vehicle bodywork; reinforced plastic fillers; industrial solvents including acetone, methylene chloride, methyl ethyl ketone, and isopropyl alcohol; expanding foam preparations provided in pressurised containers

   Class 2:  Paints, varnishes, lacquers; preservatives against rust and corrosion of metals, and against deterioration of wood; anti-rust compounds; chemical rust inhibitors; coating preparations for protection against rust; paints for the control of rust; primers and sealers for applying to rusted metal; primers being paints, etch primer, galvanising primer, undercoat being paint; rubberised paint; sound deadening paint; car body fillers (resins)fillers for use in paint; fillers in the nature of paint; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists

   Class 3:  Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; oil and grease removing preparations; wax and grease removing preparations; paint stripping preparations; rust removing preparations; vehicle wash preparations, vehicle wash and wax preparations; vehicle polishing preparations

   Class 4:  Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; kerosene; methylated spirit; fish oil (inedible)

   Class 17:  Rubber, gutta-percha, gum, and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; elastomeric sealants for filling gaps; silicone rubber sealants; automobile windscreen sealants; polyurethane sealing compounds (‘Applicant’s Goods’)

2. The Application was examined as required by s 31 and advertised for possible registration on 11 January 2022.

3. On 25 February 2022 the Opponent filed a Notice of Intention to Oppose the registration of the Trade Mark followed by its Statement of Grounds and Particulars (‘SGP’) on 24 March 2022. The Applicant filed a Notice of Intention to Defend the proceeding on 26 May 2022.

4. Thereafter the parties filed evidence in accordance with the Regulations. The Opponent filed the following evidence in support:

• Declaration of Trent Charles Crowhurst, Director of the Opponent, made on 31 August 2022 with Exhibits A to ZD (‘TC’).

1. The Applicant filed the following evidence in answer:

• Declaration of Oliver James Dartnall, Director of the Applicant, made on 29 November 2022, with Annexures OD-1 to OD-24 (‘Dartnall’).

1. The Opponent file the following evidence in reply:

• Declaration of Rosemary Crowhurst, Director of the Opponent, made on 30 January 2023 (‘RC’).

• Declaration of Gordon Wilson, former General Manager of the Opponent, made on 30 January 2023, with Exhibit GWA (‘Wilson’).

• Declaration of Michelle Wonson, General Manager of Hyper Life Pty Ltd for the Opponent, made on 30 January 2023 (‘Wonson’).

1. Once time for filing evidence had ended both parties were given the opportunity to request either an oral hearing or hearing by way of written submission. Both parties requested an oral hearing via videoconference. As a delegate of the Registrar of Trade Marks I heard the matter by videoconference on 21 February 2024. Andrew Caska of Caska Intellectual Property Pty Ltd appeared on behalf of the Opponent. Guy Provan and Alan Jaques of Golja Haines & Friend appeared on behalf of the Applicant. The representatives’ oral submissions were supported by written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A.

2. The date at which the rights of the parties are to be determined is the filing date 19 March 2023 (‘Relevant Date’) which is also the priority date for the purposes of s 60.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Section 58

1. Section 58 provides:

   58  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.

2. In the SGP the Opponent particularises the s 58 ground of opposition as follows:

   1. Pacer Auto Products Pty Ltd, the Opponent, is the owner of the mark "PACER” and variations thereof including "PACER AUTO PRODUCTS" and those with an image of a vehicle silhouette;

   2. The mark “PACER” has been used by the Opponent, and its predecessor in title, since at least 1996 and has been continuously used to the present day in relation to the relevant goods including automotive products such as at least chemicals, degreasers, paints, cleaning products and sealants that are relevant to classes 1, 2, 3, 4 and 17 of AU 21648393;

   3. The use of the mark by the Opponent is well prior to 19 March 2021.

1. To establish this ground, the Opponent must establish the following requirements:

2. that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[4]

3. that the Applicant’s Goods are the ‘same kind of thing’ as the goods or services for which the trade mark(s) relied upon by the Opponent was used;[5] and

4. that a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark(s) relied upon by the Opponent prior to whichever is earlier of: (a) the application to register or (b) any actual use of the Trade Mark in Australia by the Applicant.[6]

   [4] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 68, [62] (Gummow J).

   [5] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

   [6] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

5. I will now consider whether the Trade Mark is identical or substantially identical to the Opponent’s trade mark.

6. The test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[7] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [7] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

7. In the SGP the Opponent nominated its plain word PACER and PACER AUTO PRODUCTS trade marks and its trade marks with an image of a vehicle silhouette as basis for this ground. For the purposes of comparison, I have reproduced the respective trade marks below:

Opponent’s trade marks

Trade Mark

PACER

(‘PACER trade mark’)

PACER

PACER AUTO PRODUCTS

(‘PACER AUTO PRODUCTS trade mark’)

(‘Opponent’s logo trade mark A’)

(‘Opponnet’s logo trade mark B’)

1. One a side by side comparison I note that all the trade marks contain the word PACER. The Trade Mark and the Opponent’s PACER trade mark are for the word PACER solus. The Opponent’s PACER AUTO PRODUCTS trade mark consists of the word PACER and the term AUTO PRODUCTS. The Opponent’s logo trade marks consist of a device showing the outline of the top half of a car above the words PACER AUTO PRODUCTS PTY LTD and the term QUALITY HAS NO FINISH LINE.

2. I find that the Opponent’s PACER trade mark and the Trade Mark are identical. The Opponent’s PACER AUTO PRODUCTS trade mark and the Trade Mark are substantially identical, as the essential feature of the compared marks is the word PACER and the term AUTO PRODUCTS is wholly descriptive of the Opponent’s car care and cleaning goods.[8] However I do not find that the Opponent’s logo trade marks are substantially identical to the Trade Mark. The device element and term QUALITY HAS NO FINISH LINE in the logo trade marks are unlikely to go unnoticed on a side by side comparison. The total impression emerging from a side by side comparison is not one of resemblance. As such I will confine the discussion to the Opponent’s trade marks that are substantially identical.

   [8] PhamGlobal Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [52] (Greenwood, Jagot and Beach JJ).

3. In TC, Mr Crowhurst states that the Opponent operates an online retail store and physical retail and service premises in Auburn NSW. The Opponent submits that it has continuously operated its business since 2006 and sells a mixture of third party and branded products. The Opponent states that it has manufactured and sold the following generic termed and lesser known brands under its PACER trade mark:

   • Multiclean Plus;
   • Supa-Rip;
   • Grape Wash;
   • Mag Wheel Cleaner;
   • Budget wash and shine;
   • Painters Delight Tyre Dressing;
   • Fabric Cleaning Solution;
   • Protectall Blue Tyre Shine;
   • Super Gloss Tyre Shine;
   • Restorall;
   • Tar & Wax Remover;
   • Window Cleaner Ammonia Free;
   • Window Cleaner Streak Free; and
   • Emerald Auto Cologne.

(‘Opponent’s goods’)

1. Exhibit AC-B to RC, Exhibit ACME D to Wonson, and Exhibit S to TC comprise the same copy of an undated product guide from the Opponent. The guide shows use of the PACER trade mark used in relation to the Opponent’s goods. In TC, Mr Crowhurst states that the undated guide is from about 2019, noting that the document includes the previous format of its logo trade mark which was updated in about 2020. RC did not provide a date for the catalogue, and in Wonson, Ms Wonson believes that labels (which feature the Opponent’s logo trade mark) applied to the Opponent’s goods displayed in the guide are from about the year 2008.[9]   

   [9] Wonson [Exhibit ACME B]

2. Exhibit GW A to Wilson comprises an undated copy of the Opponent’s product catalogue. The catalogue shows use of the plain word PACER trade mark used in relation to the Opponent’s goods. Mr Wilson states that the catalogue is dated 2017.

3. Exhibit U to TC comprises a copy of the Opponent’s price list dated 2018. The price list shows use of the PACER trade mark in relation to microfiber cloths.   

4. In my assessment of the evidence, I am not satisfied that the evidence shows use of the Opponent’s PACER trade mark or the PACER AUTO PRODUCTS trade mark. The Opponent’s product guide is an internal document and none of the declarants could provide an accurate date of production/publication or information on how long the product guide had been in use, or how many of the product guides may have been distributed or where the product guides were distributed and displayed. In regard to the Opponent’s product catalogue, Wilson stated the display date of the catalogue being 2017 however no such date appears on or in the catalogue and the distribution of the catalogue has not been verified by the Opponent. The Opponent’s pricing list’s show use of the PACER trade mark in relation to microfiber cloths however this item would not be goods of the same kind.

5. Under s 58 the burden is on the Opponent to provide clear, dated evidence that the trade marks have been used in respect of particular goods and the evidence before me does not satisfactorily satisfy this burden. As such I am not satisfied that on the balance of probabilities the Opponent has used its PACER trade mark or PACER AUTO PRODUCTS trade mark on or in relation to goods which are the ‘same kind of thing’ as the Applicant’s Goods prior to the Relevant Date.  

6. Therefore, the s 58 ground of opposition has not been established.

Section 60

1. Section 60 provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   1. The Opponent has an extensive reputation in the mark "PACER” and variations thereof including "PACER AUTO PRODUCTS" and/ or logo forms with a vehicle silhouette since at least 1996 in relation to the relevant goods including automotive products such as at least chemicals, degreasers, paints, cleaning products and sealants that are relevant to classes 1, 2, 3, 4 and 17 of AU 2164839.

   2. The use of and reputation established in the mark by the Opponent is well prior to 19 Mar 2021;

   3. Use of the mark AU 2164839 “PACER" by the Applicant would be likely to deceive or cause confusion.

1. I have already found under the s58 ground that there was no use of PACER trade mark or the PACER AUTO PRODUCTS trade mark in relation to the Applicant’s Goods, so I only need to consider if the Opponent has established a reputation in the logo trade marks.

2. I also note that the particulars are limited to any reputation established by the Opponent with respect to the Applicant’s Goods. The Opponent does not particularise any reputation relevant to retail services offered under any trade marks and has chosen not to amend its particulars following evidence. It would not be fair for the Applicant to have to respond to grounds not particularised in the Opposition so I do not consider any evidence of reputation in respect of any good or service other than those particularised in the SGP.

3. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

4. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[10] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [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…[11]

   [10] [2000] FCA 1335, [81].

   [11] [1992] FCA 159, [118].

5. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the 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 its esteem, or image, projected by that trade mark. The quantum sale, 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 sponsorship, 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 sale 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 association of the trade marks with the goods or services themselves.14F11F[12]

   [12] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

6. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[13]

   [13] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

7. Each mark is separate when considering the operation of s 60 and it is appropriate to consider the use of which they have been put.

8. The Opponent submits that its reputation has been shown to extend from at least 2006 to the present day and manufacturers its own goods listed at paragraph [19]. In Crowhurst, Mr Crowhurst states that the Opponent sells products to trade customers including small repair shops and motor dealerships and to non-trade customers. Exhibit X to TC comprises sales figures for the financial years 2014 to 2019 for the sale of Opponent’s goods. Exhibit Y to TC comprise copies of tax invoices issued by the Opponent dated from 2012 to 2021.

9. Mr Crowhurst states that the Opponent maintains a Facebook business account under the handle PACER AUTO PRODUCTS. Exhibit R to TC comprises a copy of a Facebook post under the Opponent’s handle dated 12 August 2020. The post promotes the Opponent’s Window Cleaner which features the Opponent’s logo trade mark A on the label.  Exhibit F to TC comprises a copy of a Facebook post under the Opponent’s handle dated 6 November 2020. The post promotes the Opponent’s marine products and features the Opponent’s logo marine trade mark on the label of its Glass Cleaner, Hull Cleaner (also sold under name Mag Wheel Cleaner), Boat Wash (also sold under the name Grape Wash) and Restorall.[14]

   [14] TC Exhibits F,

1. In my assessment of the evidence, I am not convinced that any of the Opponent’s logo trade marks have the reputation claimed by the Opponent for the goods. The sales figures for the Opponent’s goods are minimal and the tax invoices only show sales of the Opponent’s goods under their generic or lesser known names. The Opponent has not provided any advertising figures and the promotion of the Opponent’s logo trade marks in relation to its goods is limited to a small selection of examples from its Facebook account. Overall, I am not satisfied that the Opponent’s claim to a reputation in Australia in its logo trade marks is supported by the evidence. The Opponent has not established, as a matter of fact, that its goods bearing any of its trade marks were recognised in Australia at the Relevant Date by a significant or substantial number of potential consumers.

2. As s 60(a) has not been established, it is not necessary for me to consider s 60(b).

Section 42(b)

1. Section 42(b) provides:

   42 Trade Mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   [ …]

   (b)  its use would be contrary to law.

1. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

   1. The Opponent has an extensive reputation in the mark "PACER” and variations thereof including "PACER AUTO PRODUCTS" and/ or logo forms with a vehicle silhouette since at least 1996 in relation to the relevant goods including automotive products such as at least chemicals, degreasers, paints, cleaning products and sealants that are relevant to classes 1, 2, 3, 4 and 17 of AU 2164839;

   2. Use of the mark AU 2164839 “PACER” would be contrary to law as it breaches Australian Consumer Law (misleading and deceptive conduct) and also constitutes Passing Off.

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on s 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[15]

   [15] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. Section 18 of the Australian Consumer Law[16] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60.[17] I have found that the Opponent has failed to establish a ground of opposition under s 60. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

   [16] Competition and Consumer Act 2010 (Cth), sch 2.

   [17] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[18] nor will it constitutepassing off.[19]

   [18] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

   [19] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

4. The Opponent has not established the ground of opposition under s 42(b).

Section 62A       

1. Section 62A provides:

   62A  Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. In the SGP the Opponent particularises the ground of opposition under s 62A as follows:

   1. Even the simplest form of search would have revealed the Opponent’s prior use of the mark – however, the Applicant still chose to file an identical mark for similar goods;

   2. The goods are quite specialised goods generally for automotive use – and the Applicant has specifically sought to cover the Opponent’s goods;

   3. The Applicant would have been aware of the Opponent’s mark at the time of filing as it is understood that the Applicant has Sydney based operations close by to Opponent.

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations of applications made in bad faith:

   ·     persons who monitor new property developments, register the name of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·     persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and

   ·     persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

2. These illustrations are not exhaustive. In DC Comics v Cheqout Pty Ltd (‘DC Comics’) Bennett J observed that all of the circumstances surrounding the application to register a trade mark are relevant.[20] Moreover, conduct after the priority date can be used to shed light on the Applicant’s subjective intent at the filing date.[21]

   [20] [2013] FCA 478, [62].

   [21] Ibid, [71].

3. The test for bad faith incorporates subjective and objective elements. That is, I must consider what the Applicant actually knew at the filing date, and then consider whether, armed with that knowledge its decision to file the Trade Mark would be considered to be in bad faith by persons who adopt proper standards of behaviour in business. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’)[22] Dodds-Streeton J made the following comments, quoting from Harrisons’s Trade Mark Application:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton “the Robin Hood test”. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words “bad faith” suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[23]

   […]

   [22] [2012] FCA 81.

   [23] Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

4. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand, or unconscientious character.[24]

   [24] Fry (n 7) [2012] FCA 81, [147], [165]-[166].

5. The Opponent submits that the Applicant was aware of the Opponent’s trade mark and the goods used in relation to the Opponent’s trade mark. The Opponent challenged statements made in Dartnall regarding the Applicant’s awareness of the Opponent’s trade mark. For example in Dartnall, Mr Dartnall states that before lodging the Trade Mark he carried out an availability search of the Register, and because the Opponent had no registrations, he was not made aware of their existence at the time. The Opponent submits that a basic Google search is the first port of call for any trade mark search and such a search would have returned results in connection with the Opponent.[25] As such the Opponent submits that the Applicant’s failure to conduct even the very most basic internet search for common law marks constitutes a failure to act in accordance with the standards of commercial behaviour.

   [25] Crowhurst, Exhibits ZE and ZF.

6. Moreover, the Opponent states that the Applicant has included the items vehicle wash preparations, vehicle wash and wax preparations; vehicle polishing preparations in its specification and that the Applicant does not make or sell these goods, and why would the Applicant elect to include these goods if they were not aware of the Opponent and its use of an identical mark on these goods.

7. The onus is on the Opponent to establish bad faith and it will not be easily given the serious nature of the allegation.[26] In this case the evidence does not establish reputation in the Opponent’s trade mark in Australia for the goods rather the evidence shows use in respect of retail services. While this in itself is not determinative of s 62A, the absence of an established reputation in Australia makes it harder to conclude that the Applicant was aware of the Opponent’s trade marks and sought an unfair advantage by adopting the Trade Mark, or that the Applicant was otherwise acting in a way falling short of acceptable commercial standards.

   [26]  Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

8. On balance, I am not satisfied that the filing of the Application in the circumstances existing at the Relevant Date was conduct that constitutes bad faith.

9. The Opponent has not the established the ground under s 62A.

Decision

1. Section 55 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.

2. Accordingly, I decide that trade mark number 2164839 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221, in the amounts set out in Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

27 March 2024