Proven Associated Services Pty Ltd and Amandeep Nagpal1 v Global Car Group Pte Ltd

[2023] ATMO 207

TRADEMARKSACT1995

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

Re:Opposition by Proven Associated Services Pty Ltd and Amandeep Nagpal to registration of trade mark application numbers 2145923, 2172767,

2204125 – CARS24 – and 2145924, 2172768, 2204126 – CARS24 (Stylised) – all in the name of Global Car Group Pte Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: Mark Metzeling of Macpherson Kelly

Applicant: Luke Merrick of counsel instructed by Corrs Chambers Westgarth

Decision:

2023 ATMO 207

Trade Marks Act 1995 (Cth) – oppositions under section 52 – ss 58 and 62A considered – neither established – trade marks may proceed to registration

Background

1. This matter concerns oppositions brought by Proven Associated Services Pty Ltd and Amandeep Nagpal1 (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of six trade mark applications in the name of Global Car Group Pte Ltd (‘Applicant’) which are for either the plain trade mark, CARS24, or a stylized version thereof shown below:

¹ Amandeep Nagpal is a joint opponent of application 2145923 only. Unless otherwise stated in these reasons references to the Opponent are references to Proven Associated Services Pty Ltd.

1. The applications have varying class coverage. Taken together they span the following goods and services:

Class9:

Computer software applications for smart phones and tablet devices and downloadable

computer software and computer software recorded on CDROM and DVD for use in facilitating the buying and selling of automobiles, motor vehicles, bikes and for determining the valuation and residual value of automobiles including bikes; computer ecommerce software to allow users to perform electronic business transactions pertaining buying and selling of automobiles including bikes

Class12:

Vehicles for locomotion by land; automobile bodies; driverless cars; caravans; electric vehicles; safety devices, anti-theft devices and alarms, non-skid devices, hoods, chains, chassis, axles, brakes, engines, motors, bumpers, clutches, connecting rods, couplings, gear boxes, suspension, sun-blinds, shock absorbers, horns, side view mirrors, mudguards, spoilers, torque converters, torsion bars, transmission chains and shafts, seats, treads, turbines, undercarriages, upholstery, valves, tyres, wheels, running boards, balance weights, steering wheels, propulsion mechanisms, windows, sun-blinds, windscreens, wipers, seat covers, covers for vehicle steering wheels, and spare wheel covers, for land

vehicles

Class35:

Advertising, promotion services relating to bikes, motor vehicles and automobiles,

wholesaling and retailing services relating to the purchase and sale of bikes, motor vehicles and automobiles, their parts, fittings, accessories, merchandise, promotional items associated with or relating to bikes, motor vehicles and automobiles; car dealerships for second-hand cars and motor bikes; car bazaar, mediation services in the buying and selling of new and second hand vehicles and bikes, marketing, auction services

Class37:

Automobile detailing, reconditioning, and conversion services; repair and maintenance of automobiles; Advisory services relating to vehicle repair; Automobile service station services; Information and consultancy services relating to vehicle repair; Battery charging service for motor vehicles; Vehicle cleaning, greasing, lubrication and polishing

Class39:

Services connected with the hiring of transport vehicles; Automobile rental services; Providing information about automobiles for lease by means of the internet; Providing information relating to car rental services; transportation reservation services; motor vehicle transportation service for others in the nature of transport and physical relocation of motor vehicles; shipment of goods, namely, car and truck shipping services; transport of motor vehicles and land vehicles; Car hire services; Advisory services relating to transport;

Providing information relating to travel and transport, via electronic means; travel

information services; Travel agency services, namely arranging transportation for travelers;

arrangement of vehicle rental; car hire services; vehicle rental; shipping, pickup, and delivery services for automobiles

Class 42: Hosting website featuring an online marketplace of automobiles and bikes, providing online

non-downloadable web based software tools for use by automotive dealerships in the field of marketing and reputation management which allows automotive and bike dealerships to collect and monitor customer reviews and post customer reviews to the dealer's review website; Technical consulting in the field of automobile including bike engineering

1. The applications were examined by this Office, accepted for possible registration and publicly advertised as such, after which and in accordance with the Trade Marks Regulations 1995 (Cth) (‘Regulations’), the Opponent2 filed Notices of Intention to Oppose followed by Statements of Grounds and Particulars. The Applicant filed Notices of Intention to Defend the oppositions. Thereafter, the parties filed evidence which is described and considered later.

2. Afterwards, the parties were offered and took the opportunity of an oral hearing which was convened by video-conference on 9 November 2023. At the hearing the Opponent was represented by Mark Metzeling, a partner of the firm, Macpherson Kelly, and the Applicant was represented by Luke Merrick of counsel, instructed by Steven Stern, a partner of Corrs Chambers Westgarth. Also in attendance was Rachel Gibney from that firm. Both parties provided written outline submissions in accordance with an invitation to do so by this Office. I took the hearing and have made this decision acting as a delegate of the Registrar of Trade Marks.

The nature of the dispute and the grounds of opposition

1. The Applicant is a Singaporean company incorporated on 13 April 2015. Since May 2021 it has through a local company, Global Cars Australia Pty Ltd (incorporated 30 October 2020), carried on a business in Australia buying and selling used motor vehicles. The trade mark applications were made earlier than the commencement of the Applicant’s Australian business, either on 28 December 2020 or on 21 April 2021.

² In the case of TM 2145923, along with Amandeep Nagpal

1. The Opponent is an Australian company and accountancy business incorporated on 13 January 2018 which from 7 July 2018 onwards claims trade mark rights in CARS24 and other indicia which include or might be said to imply the terms CARS and 24. At its broadest, that claim is made in relation to what is described as ‘motor vehicle services’.

2. The grounds of opposition relied upon by the Opponent empower me to refuse the applications if, as claimed, they were made in bad faith (s 62A of the Act), or the Applicant is not the owner of the trade marks (s 58 of the Act).

Preliminary observations and findings

1. There is no contest about key matters of law. The focus of attention is on the weight to be accorded to evidentiary matters in reaching findings of fact.

2. The tenor of the Opponent’s written and oral submissions makes it plain that the primary ground is ownership. There are aspects of s 58 of the Act where strictly legal considerations delimit the boundaries of the opposition. In particular, the success of s 58 requires the Opponent to be the owner of a trade mark which, in the words of the Act, is substantially identical to the applied-for marks.

3. This deceptively simple statement hides complexities in terms of how the law defines an ‘owner’ and whether the mark relied upon is a trade mark, but I have for the moment looked past those matters and concentrated on the requirement of substantial identity, taking guidance from Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd where Windeyer J said:

   In considering whether marks are substantially identical 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.3

4. Relevantly, the Opponent relies upon its use of:

(i)CARS24

³ [1963] HCA 66, [12].

(ii)

1. The parties have a common interest in the same mark, CARS24, and I find that the ‘substantial identity’ of that interest is unaffected by an occasional character space between CARS and 24, or by the initial capitalization of ‘Cars’ as shown, for example, on the webpage below:

1. Secondly, I find that a side-by-side comparison of the stylized marks shown below results in a total impression of dissimilarity and so I find they are not substantially identical.

1. Finally, the comparison of CARS24 and  is that of marks which are conceptually the same but which, on balance, I find not to be substantially identical. The test of substantial identity has

   borrowed from s 7 of the Act and so it has been said that two marks are substantially identical if they differ by additions or alterations that do not substantially affect their identity4. The cases have found identity where the compared marks differed only by pluralisation, or font, or the inclusion of minor stylistic flourishes, but here I find that, even when I ignore the coloration of the Applicant’s mark5, the differences go deeper than the simple borders or outlines which might be discounted in other comparisons.

2. The success of s 58 requires also, from a purely legal perspective, that the Opponent establishes use in relation to the same, or the ‘same kind of thing’ as what is claimed by the Applicant6. Even if I accept the Opponent’s broad claim to the provision of ‘motor vehicle services’ there is, at the very least, no coincidence of interest with the applications insofar as some claim class 9 and class 12 goods. I will later look to the services but note here that I reject the Opponent’s misconceived submission that s 14 of the Act (defining ‘similar goods’ and ‘similar services’) provides me with guidance on what is the ‘same kind of thing’.

3. Returning to evidentiary matters, I observe here that the Opponent sought to introduce out-of-time declaratory evidence within weeks of the oral hearing and against protest by the Applicant. A preliminary question arises as to the admissibility of that material which comprises:

   ·     the declaration of Meenakshi Nagpal made 11 October 2023; and

·     the declaration of Sanjay Marwal made 10 October 2023.

⁴ See, for example, PDP Capital Pty Ltd -v- Grasshoper Ventures Pty Ltd [2021] FACFC 128, at 161 per Jagot, Nicholas and Burley JJ.

⁵ I note from the Register that the relevant applications are not limited by colour.

⁶ Re Hick’s Trade Mark (1897) 22 VLR 636 at 640.

1. It is not the practice of this Office to consider evidence filed out of time7 unless the Opponent can make a compelling case. Typically, that would include an explanation why the evidence was not filed in keeping with the Regulations. In Fed Square Pty Ltd v Federation IP Pty Ltd the Delegate wrote:

   ‘The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.’8

1. Part 51, Section 2.5 of the Trade Marks Manual of Practice and Procedure, lays out other factors the Registrar will take into account in these circumstances. In its 12 October 2023 letter to this Office arguing for admission of the out-of-time evidence, the Opponent addressed these. The explanation why the evidence was not filed earlier is not in my view compelling. However, the Opponent relied upon the case of Satnam Imports Pty Ltd v Simon Walter Sharp9 for the proposition that there is public interest in ensuring that the Register gives an accurate reflection of trade mark ownership. I agree and am inclined to think that the out-of-time evidence is relevant to s 58 and the furtherance of that ideal.

2. I made my own observations at the hearing about the content and potential weight of the declarations and neither side sought to comment. I note, too, that the Applicant did not seek an opportunity to file further evidence in response. I consider that the public interest in determining the opposition fairly favours consideration of the declarations and I find that the Applicant is not disadvantaged by their admission. I exercise my power under reg 21.15(4) of the Regulations to have regard to the late-filed evidence.

⁷ Trade Marks Manual of Practice and Procedure, Part 51, Section 2.5.

⁸ [2015] ATMO 42, [55] (Hearing Officer H. Wilson).

⁹ [2018] ATMO 130.

Discussion

Section 58

1. With reference to my preliminary findings on substantial identity, the s 58 ground of opposition has not been established with regard to applications 2145924, 2172768 and 2204126 for the stylised mark. Further consideration of s 58 is thus limited to the plain mark, CARS24.

2. Section 58 states that ‘[t]he registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.’ The owner of a trade mark for particular good/services is the person who first used it in Australia, or first filed a trade mark application in Australia in respect of those goods/services. To succeed under s 58 the Opponent must show that a person other than the Applicant has an earlier claim to ownership of the trade mark based on use which is prior to whichever is the earlier of the date of application to register the trade mark, or the date of actual use of the trade mark by the Applicant.

3. The Act does not define trade mark ownership. Some cases have found it necessary to distinguish between authorship and ownership but that is not required here. What matters more in this case is that ownership entails first adoption and use as a trade mark in Australia and both parties claim priority based on actions said to be preparation for use of the trade mark in Australia.

4. Aside from the out of time declarations already mentioned, the Opponent’s evidence comprises:

·     the declaration of Amandeep Nagpal made 9 March 2022 as Evidence in Support (‘EIS’);

·     the declaration of Amandeep Nagpal made 18 August 2022 in response to a Notice Requiring Production of a Document; and

·     the declarations of Amandeep Nagpal made 24 August 2022 and C Hanns made 1 February 2023 as Evidence in Reply (‘EIR’).

1. The EIS is claimed to be confidential. As is so often the case, there are matters of public record in the declaration and exhibits which are very obviously not confidential. Nevertheless, the Opponent has to some degree tied my hands by its ambit claim of confidentiality in what it describes as all aspects of the ‘business activities’ of the Opponent detailed therein. Some of these matters have in my assessment most likely lost whatever confidentiality they had by way of the publication of a decision

on a related dispute between the parties, discussed later. Of that which remains, I have been conscientious to avoid restating specific information which might compromise the Opponent but that process is imperfect and the alternative is that I can say almost nothing in support of the Opponent’s grounds of opposition.

1. With this in mind, the Opponent claims that from a time as early as 2015, Mr Amandeep Nagpal and his wife, Meenakshi Nagpal, turned their minds to establishing a business which would be a ‘one- stop’ provider of financial, insurance and other services under names having the common element, ‘24’, such as Payroll24, Estate24, Business24, Trucks24 and Cars24.

2. It is said that in 2016-18, enquiries were made to identify and, where required, obtain, the licenses and approvals to offer, in particular, motor vehicle financing services. It is said that these enquiries led Mrs Nagpal to undertake study and work experience relevant to the intended business. The evidence also refers to an IT consulting firm, Marwal Tech Pty Ltd, having been instructed to provide a website development plan for a ‘Cars24’ website.

3. As stated, the Opponent was formed in January 2018. On incorporation, Mr and Mrs Nagpal became its directors. The Opponent was, and remains, an accountancy business.

4. I pause here to look at the evidence of what is claimed to have been the preparatory steps to use CARS24 prior to incorporation of the Opponent. I revert to the declarations of Mrs Nagpal and Sanjay Marwal. Mrs Nagpal declares that since:

   ‘… at least 2015, [the Opponent] and its predecessors in title, have offered taxation, accounting and financial services. From the period spanning since at least July 2018 to the present, [the Opponent] additionally offered (and offers) assistance services to third parties to assist with the attainment of motor vehicle financing, purchasing (or renting/leasing) motor vehicles, and the provision of related services under its the trade mark, "Cars24"’

5. She goes on to explain that in June 2016 she enrolled in a diploma course which she completed in early 2018. Annexures to her declaration show completion of a Diploma of Finance and Mortgage Broking Management. She then refers to her 2018-20 work experience with Red Rock Brokers Group Pty Ltd., which I note is essentially an affiliate group of mortgage and other loan brokers.

1. Sanjay Marwal is a director of Marwal Tech Pty Ltd and declares that:

‘[i]n or about early November 2016, Amandeep Nagpal engaged Marwal Tech for information technology support to be provided in relation to Mr. Nagpal's business venture to be known as “Cars24”. Specifically, Mr Nagpal engaged Marwal Tech to create and provide workflow charts for the development of customer relationship management (ORM) software for Cars24; and consult on and provide guidance in relation to the software platform on which to develop a website for Cars24. Marwal Tech carried out the [work] during November 2016. On or about 15 November 2016, Marwal Tech invoiced Amandeep Nagpal for the [work]. Annexed hereto and marked SM-01 is a copy of the invoice …’

1. Annexure SM-01 shows an invoice to Mr Nagpal for two hours’ work, described as ‘software design, plan and flow chart for software development (SD card attached with the document)’.

2. The declarations suffer variously in that they outline events which preceded the formation of the Opponent by some years10; rely on testimony from the principals of the Opponent, or on the recollections of a third party who performed two hours’ work some seven years before his declaration; do not show any use of CARS24; and claim training in mortgage brokering and finance as needs-be qualification for the Opponent to offer ‘motor vehicle services’.

3. In my assessment, this evidence points to nothing higher than preparatory steps to offer financial services which may or may not relate in some form to motor vehicles. On balance I give it low probative weight in terms of ownership of the trade mark CARS24 before the priority dates of the applications11.

4. I note that it took another two years for the domain name <cars24.com.au> to be registered on 25 December 2018. Registration was in the name of Amandeep Nagpal, not the Opponent, which had been incorporated for almost a year. The evidence is that from 26 February 2019 the domain

¹⁰ With the exception of the work experience with Red Rock Brokers Group Pty Ltd, something which does not alter my assessment.

¹¹ See also f.n. 16 later.

<cars24.com.au> resolved to a webpage, reproduced below from the Wayback Machine internet archive:

1. The Opponent asserts actual use of CARS24 based on this web presence, a claim vigorously countered by the Applicant whose evidence in answer (‘EIA’) includes the declaration of Jason Macintosh, Chief Legal Counsel of the Applicant’s Australian subsidiary, made 17 June 2022. Mr Macintosh states that:

   ‘[i]n or around September 2020, the Applicant became aware that the domain name

   <cars24.com.au> … had been registered by Mr Nagpal. At that time, the Applicant’s searches of the <cars24.com.au> website re-directed to Proven’s website … . That website did not display or use any mark containing CARS24 or the Proposed Logo depicted in the Nagpal Declaration. Annexed to this declaration and marked JM-15 is a copy of a screenshot of the redirection from cars24.com.au to the [Opponent’s] website and a screenshot of a capture taken by the Wayback Machine demonstrating that as at 23 February 2021 that redirect was still in place.’

1. Annexure JM-15 does not show use of CARS24 on the Opponent’s website and, insofar as the three webpages in evidence can be considered complete, does not refer to ‘motor vehicle services’. So whilst the webpage at [34] clearly shows CARS24, there is no evidence of functionality from that page and the Applicant’s evidence is that as late as September 2020, it redirected internet users to the website where the Opponent’s accountancy services are promoted. Further, as now described, records show that by July 2021 Mr Nagpal had lost ownership of the domain name (and, by implication, any control of website content).

1. The Applicant approached Mr Nagpal three times during 2020-21 with a view to purchasing the domain name. Mr Nagpal’s responses were in my view ambivalent, on the one hand stating that he had no intention to sell the domain name but, on the other, he later stated that an existing business stood behind the domain name but if the price was right he might be induced to part with the domain name.

2. When that price went past hundreds of thousands of dollars, correspondence ended and the Applicant, together with associated companies, filed a complaint under the .au domain name dispute resolution policy (the ‘auDRP proceedings’) naming Aman Nagpal and Proven Associated Services Pty Ltd as respondents.

3. The auDRP proceedings resulted in a published 22 July 2021 decision12 of the WIPO Arbitration and Mediation Center which ordered transfer of <cars24.com.au> to the Applicant’s local subsidiary company, Global Cars Australia Pty Ltd.

4. The Opponent’s EIR revisits the auDRP proceedings and submits that the domain name was lost because the Opponent ‘was self-represented and did not submit relevant and requisite evidence in a proper manner and/or format.’13 The full decision which has been put into evidence shows that the domain name redirected to <provenaccountants.com.au> but that, sometime before the date of the WIPO decision (July 2021), the domain name resolved to a page only showing links to websites for used car sales. Further, the informal submissions from Mr Nagpal in the auDRP proceedings show that, again in July 2021, he still intended to obtain a financial service provider license and a motor dealer’s license.

¹² Global Car Group Pte Ltd., Cars24 Services Private Limited, Global Cars Aus Pty Ltd. v. Aman Nagpal, Proven Associated Services Pty Ltd, WIPO Case No. DAU2021-0022

¹³ This is partly correct. The respondents did not file a formal response in accordance with the auDRP Rules but the panelist nonetheless considered in full an informal response on June 22, 2021 and a supplemental response on July 7, 2021 which included material evidence.

1. There is some basis to the Opponent’s objection that it could have made a better job of its defence in the auDRP proceedings and I am sure that the material in the proceedings before me now is more fulsome (the Opponent’s written submissions run to 35,000 words, for instance), yet there remains from the auDRP proceedings tell-tale signs of lack of firm commitment to CARS24 as exemplified by the followed passage from Mr Nagpal’s statement in those proceedings:

   ‘My name is Amandeep Nagpal, Sole trader Proven Accountants and Director of another company Proven Associated Services Pty Ltd. I don't want any legal assistance for the time being but if dispute further escalates then I may seek legal advice. For the better understanding about respondent (me) and my project, my statement is mentioned herein I did my Bachelors of Accounting in 2002 and completed my chartered Accountants course in 2005. I got my permanent residency in 2008 and permanently moved to Australia in 2012. Thereafter further studied to become a CPA , MIPA, Tax & ASIC Registered Agent, etc and have started business in 2015 in name of Proven Accountants initially as Sole Trader and later on changed my structure to company namely Proven Associated Services Pty Ltd in 2018 with ABN 31 623 798 827. We initiated steps for our project which includes Sales, Purchase & Finance of business, cars, trucks & machinery including our existing services. We initiated few initial steps including licensing in 2017 and got licenses required for the same in 2018 and started providing under mentioned services in field of Accounting & Taxation; Business Loans, Car Loans, Trucks Loans, Personal Loans, Home Loans, etc; Real Estate Services including Sale & Purchase of Properties & Business, etc’

2. Aside from the claim to web use, a secondary limb rests on the claim that Mr Nagpal offered services under CARS24 to his accounting clients. In his EIR, he states that ‘I have over 100 Clients currently serviced or under process related to car services mentioned in

   ProjectCars24, We have over 20 clients for Trucks24 & 10 clients for Business24.’

1. An earliest date of 7 July 2018 is advanced when ‘motor vehicle services’ were provided to the Opponent’s clients by reference to CARS24. Observing the confidentiality claim, what I can describe

is that on that day a third party acquired a truck by reference to TRUCKS24.14 It is said that this same third party was made aware, and by reference to CARS24, that a car was also available15.

1. More broadly, the Opponent asserts that from January 2019 it carried out motor vehicle rental, financing and acquisition services directly under the trade mark CARS24. The EIS describes certain parties and transactions. In July 2022, the Opponent and Mr Nagpal received a Notice Requiring Production of a Document (‘Notice to Produce’) issued by this Office at the Applicant’s request under s 202 of the Act. The Notice to Produce elicited copies of the invoices for five transactions. They are dated 7 February 2019, 30 September 2019, 24 December 2019, 18 May 2020 and 13 October 2020. Aside from an email address appearing on the invoices - [email protected] - there is no use at all of CARS24, as a trade mark or otherwise. What does appear prominently is the mark shown below.

1. 
   As I have already found, use of this mark is not use of CARS24. Even were it so, something must be said of the Opponent’s claim to use in respect of ‘motor vehicle services’, or as it was sometimes more narrowly put in submissions, ‘motor vehicle rental, financing and acquisition’. The Opponent, an accountancy business, does not sell cars. It does not buy cars. If it has done anything by reference to the trade mark, it facilitates the purchase, rental or repair/servicing of cars. There is miscellaneous evidence that the Opponent entered into arrangements with third parties who might assist the Opponent’s customers in one way or another. A 10 September 2021 letter from the third party loan provider makes reference to CARS24 and confirms a 2019 understanding to provide

¹⁴ I note that the domain name <trucks24.com.au> was registered by Mr Nagpal later on 3 February 2019.

¹⁵ I note that the dealing with this third party pre-date acquisition of the domain name and a relevant web presence and that, on the evidence described shortly, pre-date Mr Nagpal’s apparent capacity to offer finance for the purchase.

funding. A 7 July 2021 letter from a third party automotive repair and rental business is said to confirm another 2019 understanding and recites CARS24 in the letter. That said, there is no evidence of car rental, by reference to CARS24 or otherwise.

1. Nowhere is there firsthand evidence of use of CARS24. Confronted by the Applicant’s criticism of the EIS, the Opponent collated a bundle of what it described as confirmatory statements from its clients. Many of those statements were sent to the Registrar. Whether confidentiality remains in their content is moot, but I have nevertheless tried to avoid unnecessary disclosures. It is enough to refer to one extract:

   ‘My understanding was that the services referred to in my previous letter, were being provided under the CARS24 brand division of Mr Amandeep Nagpal's business. This is the reason why his CARS24 logo appears on the top left of the invoice:

… I knew everywhere I saw this logo it related to the CARS24 range of services which I understood was a new venture Mr Nagpal was building and would eventually stand on its own as a website similar to CARSALES.COM.AU.’

1. This statement speaks for itself in terms of the shortcomings I have already identified. Taking all the evidence into account and bearing in mind that it is the Opponent who bears the onus of proof to establish ownership of CARS24 on the balance of probability16, I find that the s 58 ground has not been established against applications 2145923, 2172767 and 2204125.

2. In terms of the material put forward to support a claim of genuine preparations to use CARS24, the case law makes it plain the Opponent must prove an existing intention to use the mark and show an

¹⁶ Pfizer Products Inc v Karam [2006] FCA 1663.

objective commitment to that use.17 The evidence here indicates to me that Mr Nagpal had CARS24 in mind but the proof of commitment to use it is lacking and in some measure is contradicted by a certain willingness to sell at least the domain name if the Applicant had met his price.

1. The remaining evidence is equally flawed. As a matter of law, the registration of the domain name is not trade mark use of CARS24 and there is no proof that the domain name was employed in relation to an operational website or even redirected internet users to an online location where motor vehicle services can be adequately identified.

2. The transactions spanning February 2019 to October 2020 rely upon invoices that use a complex device mark with graphic elements about which I have commented already, noting that use of the sign cannot be treated as use of CARS24.

3. Moreover, those five invoices simply recite ‘car purchase assistance’ as the service rendered and in the most favourable scenario might have shown the Opponent to have offered some very specific business assistance or financial advice. The consequence is that any claim to ownership by reason of use in respect of the ‘same kind of thing’ as the services of the applications would have been vanishingly narrow.

4. For all these reasons I find that the ground of opposition under s 58 has not been established in respect of any of the applications.

5. Before turning to s 62A I say something more of the Applicant’s EIA which also includes the declaration of Vikram Chopra made 16 June 2022 and other material from Mr Macintosh which, amongst other things, develops a claim to use of CARS24 by the Applicant prior to the dates on

¹⁷ Probably more. Athough the Opponent cites the case of Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261 at [40], that was a removal for non-use case and a distinction can be made between the relevance of intention to use and preparations for use when considered in the context of applications for removal, and those cases concerned with ss 58 or 59 (see, for example, Australian Trade Mark Law, Burrell & Handler (2nd ed) at p 262: 'it must be demonstrated that there is actual trade in the goods or services or at least a clear intention to offer supply': Moorgate Tobacco case : 'Mere planning and other purely preliminary activities will not of themselves be sufficient to constitute use': Ibid

which applications 2145923 (28 December 2020), 2172767 and 2204125 (21 April 2021) for the plain mark were made.

1. In short, it has become unnecessary for me to consider that evidence because the implication of my s 58 finding is that on 28 December 2020 or 21 April 2021 the Applicant became the owner of the trade mark CARS24 (for the services for which the mark is sought to be registered in the various applications), there being no antecedent claim to ownership by another person.

Section 62A

1. The evidence from both sides is plentiful but nowhere did I identify a direct assertion of copying. The parties appear to be locked in conflict both having a genuine belief in their own entitlement to CARS24. The evidence would suggest that both businesses are operating in Australia as this dispute has unfolded18.

2. In September 2021, the Opponent registered the domain name <cars24australia.com.au>. The resolving website created therefrom went on to claim that it “… is the world’s largest auto portal” and that the operator of it “sells a car every six minutes”. On 5 May 2023, Global Car and Global Cars Aus Pty Ltd, commenced proceedings in the Federal Court of Australia against the Opponent and Mr Nagpal under the Australian Consumer Law in relation to those statements. Those proceedings have been allocated VID306/2023 and are currently before the Court.

3. In these circumstances, it is not unusual to find an assertion of bad faith behaviour. Section 62A provides that ‘the registration of a trade mark may be opposed on the ground that the application was made in bad faith’. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2), Dodds-Streeton J said that ‘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’. Her Honour continued, stating that:

¹⁸ The Applicant operates a website at 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. …

… in my view, … the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

1. The Statements of Grounds and Particulars for applications 2145923 and 2145924 rely on s58 only, but for applications 2172767, 2172768, 2204125 and 2204126 rely on both s58 and s62A. The relevant date is therefore 21 April 2021 when applications 2172767, 2172768, 2204125 and 2204126 were filed and the evidence is clear that the Applicant knew of the Opponent by that time.

2. Of itself, the Applicant’s knowledge of the Opponent and its trade mark is not determinative. The assertion of bad faith relies on (i) the Applicant having covertly attempted to purchase the domain name through an agent who denied association with the Applicant, and (ii) when the Opponent did not sell the domain name, the Applicant’s action in making the applications.

3. I find that it is common practice for those attempting to secure a domain name to use a third party to shield their identity and I consider it common knowledge for those intermediaries to frequently disavow connection with their masters. It may say little of modern business methods or ethical conduct, but I would stop short of describing this practice as unscrupulous or unconscientious. Further, there is no causal relationship between this conduct and the filing of the applications.

4. So far as the EIA assists me in connection with s 62A, I note only the uncontradicted evidence that the Applicant group of companies is the first user of CARS24 in an absolute sense; has operations and trademark registrations in many countries pre-dating the Opponent’s claim to first use; and in the Applicant’s words, ‘made a legitimate commercial decision to expand into the Australian market.’

5. I accept that claim and the legitimacy of its decision to file the applications. In its action doing so I can find nothing which would suggest behaviour of an unscrupulous, underhand or unconscientious character and so find no evidence of bad faith. Accordingly, the s 62A ground is not established.

Decision

1. The Opponent has not established any ground of opposition. Therefore, under s 55, I direct that all six trade mark applications proceed to registration 30 days after the date of this decision. If the Registrar is served with a notice of appeal, I direct that registration shall not occur until the appeal is withdrawn or discontinued. Otherwise, the disposition of the applications should be in accordance with the Court’s order or direction.

2. It is usual for costs to follow the event and so I would normally award costs against the Opponent under s 221 in line with Schedule 8 of the Regulations. However, on this occasion matters are complicated by the nomination of Mr Nagpal as a joint opponent of one of the applications.

3. It makes little sense for me to engage in an arbitrary attribution of costs against Mr Nagpal when the circumstances are that he is not only the principal protagonist, but was the joint opponent of application 2145923, the earliest priority application for the plain mark and arguably the foundation case against which the Applicant would have measured most of it’s effort and in-principle argument. For these reasons I award costs, equally, against the Opponent and Amandeep Nagpal and on the basis that full schedule costs attach to application 2145923 with reduced costs for the other 5 oppositions.

Debrett Lyons Hearing Officer

Delegate of the Registrar of Trade Marks 13 December 2023