Pawrent, Inc. v Wenchelle Gianatti

[2018] ATMO 181

TRADE MARKS ACT 1995

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

Re:Opposition by Pawrent, Inc. to registration of trade mark application 1723223 (44) – PAWRENTING - in the name of Wenchelle Gianatti

Delegate:	Nicholas Smith
Representation:	Opponent: Self-Represented Applicant: Self-Represented
Decision:	2018 ATMO 181 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 43, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Pawrent, Inc. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Wenchelle Gianatti (‘Applicant’): 

Application Number:	1723223
Filing Date:	22 September 2015
Services:	Class 44: Advisory services relating to the care of animals (‘Applicant’s Services’)
Trade Mark:	PAWRENTING	(‘Trade Mark’)

1. Following the advertisement on 18 February 2016 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 17 April 2016, which was subsequently amended on 22 April 2016 to correct the name of the Opponent.  The Opponent then filed a number of documents comprising a Statement of Grounds and Particulars on 15 and 16 May 2016.  The Applicant filed a Notice of Intention to Defend on 6 July 2016. 

2. On 6 June 2016 this office provided the Opponent with notice that its Statement of Grounds and Particulars was inadequate. This office stated that if the grounds particularised by the Opponent under ss 44 and 58A of the Act were not amended or further information provided, the offending grounds would be deleted from the Statement of Grounds and Particulars. On 24 June 2016 the Opponent provided additional information, which this office deemed to be insufficient. By letter dated 29 June 2016 this office notified the Opponent that it would be deleting the grounds ss 44 and 58A particularised by the Opponent in its Statement of Grounds and Particulars. The Opponent subsequently sought review of the decision in this office before the Administrative Appeals Tribunal. On 1 May 2017 the application for review was withdrawn and subsequently dismissed by the Tribunal.

3. The Statement of Grounds and Particulars, as rectified by this office (‘SGP’) raised grounds of opposition under ss 43, 60 and 62A of the Act.

   Evidence

   5. The Opponent filed Evidence in Support of its opposition (‘EIS’) between 3 and 12 October 2016.  This evidence consists of the following declarations:

   -Richard Myers, the president and owner of the Opponent, made on 2 October 2016 with Exhibit P1 (‘Myers 1’);

   -Richard Myers, made on 5 October 2016 with Exhibit P2 (‘Myers 2’);

   -Richard Myers, made on 9 October 2016 with Exhibit P3 (‘Myers 3’);

   -Richard Myers, made on 10 October 2016 with Exhibit P2 continued (‘Myers 4’);

   -Richard Myers, made on 11 October 2016 with Exhibit P4 (‘Myers 5’);

4. Each of the Myers Declarations, including publically available information such as content of the website operated by the Opponent, is claimed to be confidential to the Opponent.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

5. The Applicant filed Evidence in Answer (‘EIA’) on 11 October 2017.  This evidence consists of a declaration made on 11 October 2017 by the Applicant with Exhibits 1-15 (‘Gianatti Declaration’).

6. The Opponent filed Evidence in Reply (‘EIR’) on 18 December 2017.  This evidence consists of a declaration made on 17 December 2017 by Richard Myers (‘Myers 6’).  Myers 6 appears to attach multiple additional declarations each made on 17 December 2017, which I will treat as part of Myers 6.

7. Both the Gianatti Declaration and Myers 6 contain a large number of statements in the nature of submissions rather than evidence and will be treated as such in the proceedings.  Both these declarations also contain various insults, ad hominem attacks and accusations of lying, fraud and criminal activity.  While I have reviewed all the material provided by the parties, unless such accusations are directly relevant to the grounds on which the Trade Mark is opposed and supported, I have given such material little or no weight.  When summarising the evidence I have focused on the information relevant to determining the various grounds of opposition to the registration of the Trade Mark.

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  Neither party chose to avail themselves of these opportunities at that time.  By letter issuing from IP Australia on 31 January 2018 the parties were notified that as neither party had requested a hearing the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had one month from the date of the letter to file any written submissions they wished to reply upon.  Neither party filed any further submissions.

9. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.  In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

   12.      The Opponent is an online seller of merchandise including clothing relating to pets and pet care.  The Opponent was established in 2013 however prior to the application, the Opponent’s founder, Richard Myers, commenced trading in 2002.

10. The Myers Declarations contain the following claims/statements:

    ·    In 2002 Richard Myers started an e-commerce site in 2002 from the domain name pawrent.com, which sold pet-themed merchandise around the concept of ‘pawrent’.  Mr Myers came up with the name ‘pawrent’ in 1999/2000, being a combination of the words ‘paws’ and ‘parent’ to describe pet owners who treat their pets as family (‘Parents have children…Pawrents have pets’).  The domain name pawrent.com was registered on 30 November 2001.

    ·    Mr Myers and subsequently the Opponent has promoted the pawrent.com website and related business through newsletters, competitions and partnerships with/donations to animal welfare organisations, including in 2016 animal welfare organisations in Australia.  The Opponent also advertises through pet-specific media such as Pets magazine.  The Opponent has registered PAWRENT (the ‘Pawrent Mark’) as a trade mark internationally.

    ·    The Applicant in 2015 registered the domain names <pawrenting.com.au> and <pawrenting.co.uk>.  On 30 August 2015 the Opponent sent the Applicant a cease and desist letter in respect of their registration of the domain names.  The Applicant’s filing of the Trade Mark after the receipt of the cease and desist letter indicates that the Applicant acted in bad faith.

    ·    On 15 December 2014 the Opponent obtained an Australian Business Number (ABN).  In April 2016 the Applicant sought to cancel the ABN on the basis that the Opponent was not carrying on a business in Australia.  On 24 May 2016 the Australian Business Register wrote to the Opponent noting that its ABN had been incorrectly cancelled and was now reinstated.  The initial letter was written by the Applicant’s husband Allen Gianetti, and attempted to mislead the Australian Business Registrar as to his identity.

    ·    On 20 May 2016 the Opponent received (and later filled) an order from Karratha, West Australia.  The Opponent in 2015 and 2016 received visits to its website from Australia.

    ·    The Applicant sought to register its ABN in 2016.  In the same year it changed its related company Vineyard Publishing Pty Ltd to Pawrent Pty Ltd in 2016, however it does not actively trade and indeed does not maintain an active website from its domain name <pawrenting.com.au>.  Any use of the Trade Mark will cause confusion with the Opponent’s Pawrent Mark.

    The Applicant

    14.      The EIA provides no evidence as to the Applicant or the nature of the business it operates or proposes to operate. 

11. The Gianatti Declaration contains the following claims/statements:

    ·    The term ‘pawrent’ is a common word in Australia and the claim that Richard Myers invented the word is a lie. 

    ·    The Opponent has no reputation in Australia and has little or no activity in Australia.  It has no Facebook page and its Twitter page, as of 11 October 2017, has 537 followers worldwide.

    ·    The Opponent does not trade in Australia.  There is no evidence that prior to the relevant date the Opponent had any Australian employees, customers or subscribers.  The Applicant notes that the Opponent’s evidence of donations to animal welfare organisations in Australia took place after the relevant date.

    ·    The Applicant has not engaged in bad faith as the Pawrent Mark was not registered in Australia.

    ·    The Applicant denies signing any letter to cancel the registration of the Opponent’s ABN in Australia and the EIS provides no proof as to the signatory of the letter.

12. The Gianatti Declaration contains some extracts showing the use of the word ‘pawrent’ between 1870 and 1920, however such extracts do not show use in the form used by the Applicant (some of them appear to be misspellings, or otherwise archaic English).  The Gianatti Declaration does enclose the results of a Google search, dated November 2017, showing the Pawrent Mark being used descriptively. 

13. I note that the Applicant’s evidence in respect of the letter written to the Australian Business Register seeking to cancel the Opponent’s ABN is evasive; while it is correct that the EIS does not identify the author of the letter written to the Australian Business Register and that the Applicant did not sign the letter, the EIR makes it clear that the letter was written and sent by the Applicant’s husband.

    Grounds of Opposition, Onus and Standard of Proof

    18. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish at least one of those grounds.

14. The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 22 September 2015 (‘relevant date’), being the priority date of the application in Australia.[4]

    [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

    [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

    [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

    Discussion

    Section 60

    20. Section 60 of the Act is reproduced below:

    Section 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.

    21. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[5] 

    [5] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

    22.      In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had 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’.[6]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [6] [2000] FCA 1335, [81].

    [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 …[7]

    [7] (1992) 33 FCR 302, 343.

15. On the subject of reputation Kenny J 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 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 its 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.[8]

    24. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[9] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide 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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[10]

    25.      Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[11]

    [8] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

    [9] (2000) 50 IPR 1.

    [10] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

    [11] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <

16. The Opponent has particularised the ground of opposition in the SGP as follows: 

    Our brand Pawrent incorporates not only the text pawrent and slogan, but also a distinctive paw graphic, copy written logo in which our Australian followers and customers have accepted and come to expect. Our social network pages have Australian followers. We have a database of Australian subscribers that subscribe to and receive our newsletter. Our Pawrenting Australia website has been live since 2014. We have relationships with Australian magazines product manufacturers and online followers of our social media. Our site has advertisers. We have sponsored and featured Australian businesses on our website. Pawrent, lnc (owner Richard Myers) has an extensive records and history of financial and physical investment in their Pawrent brand trademarks, copyrights and products. ln contrast to the applicants brief efforts and investment. Applicant has no previous or current presence online or in commerce. Also, Pawrent, lnc's ABN # was registered before the applicants ABN#.

17. The Opponent provides no evidence of the recognition, reputation or esteem in which the Pawrent Mark was held in Australia as at the relevant date.  The Opponent has failed to provide any evidence of sales to Australia, marketing in Australia or visitors to its website from Australia at or before the relevant date.  There is no evidence of a database of Australian subscribers or relationships with Australian businesses at the relevant date.  The EIS does contain some evidence of designs for an Australian website but it is not clear when it launched and whether it has any visitors.  Finally the fact that the Opponent had applied for an ABN prior to the Applicant’s ABN is not relevant to this ground.

1. As the Opponent has failed to demonstrate that Pawrent Mark had acquired a reputation before the relevant date I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Section 43

2. Section 43 of the Act is reproduced below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

3. To establish a ground of opposition under s 43 of the Act, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [12]

   [12] [2006] FCA 1663; (2006) 70 IPR 599, [53].

4. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [13]

   [13] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

5. The ground of opposition pursuant to s 43 of the Act was particularised in the SGP as follows:

   Richard Myers (owner of Pawrent, lnc.) created the word pawrent in the year 2000 and has been trademarked and copy written since then. A pawrent is pet parent. Pawrenting is the act of being a pet parent and all things which involve caring for a pet. Pawrent's trademarked slogan is "Parents have children, Pawrents have pets".

   We have also created definitions for our intellectual property pawrent, pawrenting, fosterpawrent, grandpawrent and pawrenthood that are trademarked/copy written and are known. Our websites also entail the interaction of pawrents, grandpawrents and fosterpawrents who seek not only comradery, but also advisory from peers in relation to their pets.

   The applicants trademark application was filed under "Advisory services relating to the care of animals", therefore causing confusion as our brand is about the caring of pets and animals. The applicant's use of Pawrenting will further cause confusion of our brand as we already have presence in Australia and other major countries where our logo and property is being worn on apparel and our sites and social media pages are being used. Australians and others may misinterpret the applicant's use as being part of our internationally recognized brand, thus causing confusion. The applicants goods and services involve pets. Pawrenting is a derivative of Pawrent which is a connotation of caring for a pet. Our followers and customers have come to accept and expect to see our logo and slogan along with our creations pawrent, pawrenting, fosterpawrent, grandpawrent and pawrenthood.

   I Richard Myers invented the word pawrent out of the love for my dog Chase in the year 2000. I have press releases to prove this as well as receipts of sales in commerce since then. I registered the domain Pawrent.com in 2001. Our company also owns many other domains that relate to our brand, including com.au. Our logo, text and brand are distinctively creative, unique and custom. We have other websites as well. I have celebrity friends that know my/our brand and have social media presence for our brand that grows daily. Our followers and customers expect to see our distinctive logo, text and slogan whenever the word pawrent or and derivative we've created is viewed by them on our websites, social sites, products and ads. Our products, brand definitions and social pages have been worn, seen and shared all over the world.

6. The Opponent has not provided any submissions to clarify the particulars in the SGP. However, when reading the SGP as a whole, it appears that the SGP relates to the reputation the Opponent claims in the Pawrent Mark and related words. As can be seen in the case law referred to above, the considerations set out in the SGP are not the appropriate considerations in this matter. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties.

7. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

   Section 62A

8. Section 62A of the Act is reproduced below:

   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.

9. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names 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;

   ·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.

10. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[14]:

    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.[15]

    [14] [2004] EWCA Civ 1028; [2005] FSR 10.

    [15] [2012] FCA 81, [147].

11. 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.[16]

    [16] Ibid [165]-[166].

12. The Opponent has particularised this ground of opposition in the SGP as follows:

    The applicant was made aware on August 30, 2015 (before filing this application) via cease and desist that Pawrent,lnc (owner Richard Myers)created Pawrent in 2000, holds international rights and has extensive international presence. Despite the cease and desist, the applicant filed this application. She not only has failed to withdraw the application, but additionally has filed for the same mark in the Philippines. The Philippines trademark office includes the following statement in their application process, "Identical with, or confusingly similar to WELL-KNOWN MARKS - Marks that are identical with or similar to marks that are known internationally and in the Philippines will be refused registration". Again, applicant persisted with their application, despite receiving our cease and desist prior.

    Applicant owner of No# 1723223 Joyce Wenchelle Gianatti sent in a letter to the ABN office making false statements that Richard Myers/Pawrent, Inc had no trademarks or presence in the United States or any trademarks at all. She was trying to get my ABN# canceled so she could impersonate our brand.

    The ABN office told me they tried contacting her, though she never answered their calls. This is because she knew this was criminal activity. Fortunately, the ABN office reinstated my number once they figured it out that it was fraudulent activity. Applicant owner has also registered a business name with our Intellectual property, pawrent with ASIC. She recently changed her company name within the last week from Vinyard Publishing PT LTD to Pawrent PTY LTD, though as they are trying to trademark pawrenting, a derivative of Richard Myers / Pawrent, Inc.'s trademarks and copyrights.

13. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[17]  In the present case the allegations made by the Opponent in its particulars and evidence do not fall within the non-exhaustive examples set out in the Explanatory Memorandum referred to in paragraph 36 above (there is no evidence that the Applicant intended to sell the Trade Mark to the Opponent).  Furthermore the allegations relating to the Opponent’s conduct after the relevant date (with respect to letters to the Australian Business Register and applications in the Philippines) are not relevant to this ground of opposition.  This ground simply relates to whether the application to register this particular Trade Mark was made in bad faith, not whether the Applicant has engaged in sharp or dubious business practice subsequent to the relevant date. 

    [17] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26,[12].

14. As discussed above under the s 60 ground of opposition, there is no evidence before me to suggest that at the relevant date the Opponent had any reputation, presence or customer base in Australia. On 30 August 2015 the Opponent sent the Applicant a cease and desist letter in response to their registration of the domain names <pawrenting.com.au> and <pawrenting.co.uk>. This letter:

    ·    referred to the Pawrent Mark being ‘internationally trademarked’ (despite the fact that the Pawrent Mark was not registered in Australia, the location of the Applicant): and

    ·    accused the Applicant of violating the Opponent’s trade mark rights and engaging in various other infringing behavior despite the fact that, at the time, the Opponent had not yet sought to register a trade mark in Australia, the Applicant did not trade and had no active website. 

    The decision of the Applicant to protect any rights it may have in the Trade Mark by subsequently seeking registration does not appear to be an action that was unscrupulous, underhanded or unconscientious in character; rather it appears to be an entirely appropriate response taken by a business that sought to trade under under an unregistered trade mark to protect its rights in the mark in its own jurisdiction.

15. I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

16. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade Mark application no. 1723223 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.

    Nicholas Smith
    Hearing Officer
    Oppositions and Hearings
    6 November 2018