Puma SE v Bangkok Rubber Public Company Limited

[2014] ATMO 75

TRADE MARKS ACT 1995

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

Re:Opposition by PUMA SE to registration of trade mark application 1478613 (25) – PAN with wildcat head- filed in the name of Bangkok Rubber Public Company Limited.

Delegate:	Bianca Irgang
Representation:	Opponent: Peter Hallett of Watermark Patent and Trade Mark Attorneys Applicant: Mark Williams of Allens Linklaters
Decision:	2014 ATMO 75 s. 52 opposition: sections 42(b), 44, 59, 60 and 62A pressed – no ground of opposition established.

Background

1. Bangkok Rubber Public Company Limited (‘the applicant’) filed application number 1478613 on 6 March 2012 in class 25 of the International Classification of Goods and Services. Details of the application are set out below.

Trade mark:  

Trade mark application:        1478613

Filing Date:  6 March 2012

Specification:  Class 25: Clothing including sportswear, T-shirts, shirts, pants, shorts, jackets, scarves and underwear; footwear including sports shoes, sneakers, sandals, and socks; headwear including hats and caps

1. PUMA SE (‘the opponent’) filed a Notice of Opposition (‘the Notice’) to the registration of the application on 21 September 2012. Thereafter the opponent and applicant filed evidence as allowed by the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Melbourne as a delegate of the Registrar of Trade Marks on 30 May 2014. Mr Peter Hallett of Watermark Patent and Trade Mark Attorneys appeared for the opponent. The applicant was represented by Mr Mark Williams of Allens Linklaters.

Grounds of Opposition

1. The Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’).  The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [2] [2009] FCA 891, para 22-27 (2009) 82 IPR 13. See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32])

2. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on those grounds under sections 42(b), 44, 59, 60 and 62A of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that these grounds have not been established.

3. Therefore, the grounds remaining for my consideration are those under sections 42(b), 44, 59, 60 and 62A of the Act. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods and services specification, there is no requirement for any of the other grounds of opposition to be considered.

Evidence

1. The evidence provided for this matter consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Neil Narriman[3]	Head of Intellectual Property Department at PUMA SE	8 January 2013	NN-1 to NN-12
Evidence in Answer
Mark Andrew Williams[4]	Senior Associate with Allens Patent and Trade Mark Attorneys	19 June 2013	MAW-1 to MAW-3
Kittinun Panicharkrai	Managing Director of Bangkok Rubber Public Company Limited	26 August 2013	KP-1 to KP-2
Mark Andrew Williams[5]	Senior Associate with Allens Patent and Trade Mark Attorneys	16 August 2013	MAW-4 to MAW-6
Evidence in Reply
Neil Narriman[6]	Head of Intellectual Property Department at PUMA SE	19 November 2013	NN-13 to NN-20

[3] For ease of reference throughout the decision this declaration will be referred to as Narriman 1

[4] For ease of reference throughout the decision this declaration will be referred to as Williams 1

[5] For ease of reference throughout the decision this declaration will be referred to as Williams 2

[6] For ease of reference throughout the decision this declaration will be referred to as Narriman 2

Discussion

Section 44 –Substantially Identical or deceptively similar

1. Section 44 of the Trade Marks Act relevantly provides:

   44       Identical etc. trade marks

   (1)Subject to subsections (3) and (4), and application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)…; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

2. To establish its opposition under the terms of section 44 of the Act the opponent must show all of the following:

Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

Øthe priority date of the trade mark(s) of the other person is earlier than the priority date of the application.

10. The opponent cited three trade mark registrations in support of the section 44 ground of opposition which are as follows:

Number(s)	Class	Trade Mark
302230	25
330997	25
1312276	18, 25, 28

11.  The opponent is the registered owner of the above trade marks all of which have earlier priority dates than that of the opposed trade mark. The trade mark registrations cover the same and similar goods in class 25 to the goods in class 25 that relate to the applicant’s trade mark. The key issue to now be decided is whether the applicant’s PAN and wildcat head device trade mark is either substantially identical or deceptively similar to the opponent’s various PUMA and puma device trade marks (hereto collectively referred to as the opponent’s ‘PUMA trade marks’). The respective trade marks can be seen below:

Opponent’s trade marks

Applicant’s trade mark

(‘wildcat device trade mark’)

(‘half wildcat device trade mark’)

(‘PUMA trade mark’)

(the applicant’s ‘Pan and wildcat head device trade mark’)

12.  It is obvious the applicant’s PAN and wildcat head device is not substantially identical with any of the opponent’s PUMA trade marks according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd, (1963) 109 CLR 407 at 414. There exists the suffix “-AN” rather than “-UMA” at the end of the applicant’s trade mark which acts as a clear visual and verbal difference from the opponent’s PUMA and wildcat device trade mark. The differing stylization of the wildcat devices in the respective trade marks also act as a clear visual differenced which preclude the respective trade marks from being considered substantially identical.

13. Deceptive similarity is defined in section 10 of the Trade Marks Act as follows:

10  Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

14.  The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited (1961) 109 CLR 407 at 415:

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

15.  The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

16.  The decisive question is whether the use of the applicant’s PAN and wildcat head device trade mark for the goods in class 25 given the previous registrations for the opponent’s PUMA trade marks in class 25 would result in a tangible danger of confusion or deception. I do not consider it would. In coming to this decision it is important that trade marks are considered in their entirety – ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[7]

[7] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

17.  Upon consideration of the trade marks it becomes apparent that the common elementS of the opponent’s trade mark registrations are the prominent word PUMA (trade mark registration no. 330997) and the graphic devices of a leaping wildcat. The applicant’s trade mark is the word PAN and the stylized head of a wildcat.

18.  The opponent has argued that its wildcat device trade mark is so similar to the wildcat head portion of the applicant’s composite trade mark that consumers are likely to believe that that goods branded with the applicant’s PAN trade mark are somehow related to the opponent’s PUMA branded goods. I am not satisfied that this is likely the case. The applicant’s composite trade mark is for the word PAN and the wildcat head device which is distinctly different from the opponent’s PUMA trade marks. The opponent has argued that as both trade marks contain a wildcat device and the words PAN and PUMA both begin with the letter ‘P’, this increases the level of similarity between the respective trade marks in consumers minds. However, I am not persuaded by this argument. The word PAN is unlikely to be mistaken for the distinctive word PUMA and the respective wildcat devices are visually quite different. When the trade marks are considered as wholes, the word PAN sufficiently differentiates the applicant’s wildcat head device trade mark from the opponent’s PUMA trade marks. The opponent has argued that the word PAN is a shortening of the word ‘panther’ and only emphasizes the similarity of the trade marks, but once again, I am unconvinced of this. There is nothing in the evidence to suggest that a consumer is likely to view the word PAN with accompanying wildcat head device to be a ‘panther’ head and somehow related to the opponent’s respective PUMA trade marks. The applicant’s trade mark is not deceptively similar to any of the opponent’s PUMA trade marks.

19. In view of my finding that the opposed trade mark is not substantially identical or deceptively similar to the opponent’s PUMA trade marks the opponent has not established its ground of opposition based on section 44 of the Act.

Section 60 - Reputation in Australia

20. Section 60 of the Act 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.

21. Unlike sections 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is for me to determine whether the opponent has established that before 6 March 2012 its trade mark(s) were recognized by the public generally, or at least by a significant number of persons in the sporting clothes and footwear market and whether because of that, the use by the applicant of its trade mark would be likely to cause the public confusion.

22.  Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[8] by Kenny J at paragraph 81:

What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

[8] [2000] FCA 1335

23.  The Narriman 1 declaration states the opponent has used the PUMA trade mark on footwear since 1948 (Annex NN-1). Currently the opponent applies its PUMA trade mark to a broader range of goods including footwear, apparel and accessories for sports such as cricket, football, running, motorsports, golf and sailing. Mr Narriman states that the opponent employs over 11,000 people worldwide and has offices, subsidiaries, licensees and an extensive distribution network in more than 80 countries throughout the world, with its core offices located in Germany, the United States and Hong Kong (Annex NN-2). 

24.  The Narriman 1 declaration at paragraph 27 contains substantial marketing figures for goods sold under the opponent’s PUMA trade marks both worldwide (for the last 10 years) and in Australia (since 2011 at paragraph 38). The evidence before me demonstrates that the opponent has very widely advertised and promoted its goods to consumers through television commercials, magazine advertisements, online stores and billboards (Annex NN-8 and NN-10). The opponent has also heavily promoted its PUMA branded goods through sponsorship deals with well-known athletes and athletic teams including Usain Bolt, Deigo Maradona and seven football federations at the 2010 FIFA World Cup in South Africa (Annex NN-9). The opponent also sponsors a number of high profile and accomplished sports teams and individuals in Australia including Hawthorn Football Club, West Coast Eagles (both purportedly sponsored for decades) and Adam Gilchrist and Mathew Wade.

25.  Mr Narriman attests at paragraph 36 of his declaration that the total sales in Australia for goods branded with the opponent’s PUMA trade marks in 2011 were very considerable, particularly given the average cost of the opponent sporting goods. I am satisfied that the opponent had a very considerable and pervasive reputation in Australia for its all of its aforementioned PUMA trade marks before the priority date of the applicant’s trade mark.

Likelihood of confusion and deception in the marketplace

26.  I am satisfied that the opponent had a reputation in its PUMA trade marks before the priority date of the applicant’s trade mark. I need to determine whether because of given this repuation in Australia, use of the applicant’s trade mark would be likely to deceive or cause confusion.

27.  The opponent has demonstrated it has a considerable reputation in its PUMA trade marks within the Australian marketplace. However, I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s PUMA goods and those goods of the applicant bearing the PAN and wildcat head device trade mark

28.  In order to establish section 60 the opponent not only has to show that a trade mark had a reputation at the relevant date but also that use of the applicant’s trade mark would be likely to deceive or to cause confusion.  The Registrar’s delegate in Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd[9] observed that:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

[9] (2010) 85 IPR 647

29.  And in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[10] the delegate observed that:

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties.  Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

[10] [2012] ATMO 124 at [40]

30. Given the reasons already outlined in my discussion of section 44 regarding the lack of similarity between the respective trade marks I do not believe that the applicant’s use of its PAN and wildcat head device trade mark would be likely to deceive or cause confusion in the marketplace even if that use is in relation to the same goods and directed at the same consumers. I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the applicant bearing its PAN and wildcat head device trade mark.

31.  I am not satisfied that the applicant’s use of its trade mark will result in any significant degree of confusion or deception. The opponent has not established the section 60 ground of opposition.

Section 42(b) - Contrary to Law

32. Section 42 of the Act provides:

An application for the registration of a trade mark must be rejected if:
                 (a) the trade mark contains or consists of scandalous matter; or
                 (b) its use would be contrary to law.

33.The opponent’s attorney submitted that use of the applicant’s trade mark for the relevant goods would breach Sections 18 and 29 of the Australia Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations.

34.As I have found that the use of the opposed trade mark is not, at a minimum, likely to “confuse” under sections 44(1) or 60, it follows that the use is not, on the stricter test posited by Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established its ground of opposition under section 42(b).

Section 59 - Intention of use

35.Section 59 of the Act reads as follows:

59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note:  For applicant see section 6.

36.Under section 59 the onus is on the opponent to make its case under section 59, as for any other ground of opposition. Like proof in any other matter under civil or administrative law the intentions or lack thereof of an applicant must be assessed on the balance of probabilities and the onus of proof can then shift[11]. The mere nomination of the section 59 ground cannot shift the onus[12].

[11] Pfizer Products Inc v Karam (2006) 70 IPR 599 at [26] per Gyles J; Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2004) 61 IPR 130 at [12]-[13]

[12] Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430

37.In the current matter, the applicant was put on notice prior to the hearing date that the section 59 ground was to be relied upon by the opponent. The main thrust of the opponent’s arguments surrounding this ground of opposition focus on:

·At the time of filing, the applicant had no bona fide intention to use the trade mark as filed as the applicant intended to use a different trade mark, namely, the wildcat head device without the word PAN.

·The Narriman 2 declaration at paragraph 6 and Annex NN-16 which show the applicant’s products bearing the image of the wildcat solus.

38.The opponent’s submissions rely heavily on the applicant’s apparently limited use of its PAN and wildcat head device trade mark on its sporting goods in its evidence. The Narriman 2 declaration outlines his opinions of the applicant’s evidence on use and critiques the Panichakrai declaration stating:

“…However, I am aware that the Applicant’s products frequently bear only the image of a wildcat without the word PAN. Attached and marked Annex NN-16 are screen shots taken from the Applicant’s current website at showing images of footwear bearing the wildcat device appearing in the opposed mark.

…It is my opinion that the promotion and sale of the Applicant’s products depicted in Annex NN-16 in Australia would be likely to cause consumer confusion, having regard to the reputation of the PUMA trade marks both worldwide and in Australia…”

39.The opponent’s investigations may indeed have shown that the applicant does use the wildcat head device solus on its goods but I also not that there are many instances in the applicant’s evidence where the applicant has used the wildcat head device with the word PAN. The opponent has fallen short of making a persuasive case for the applicant’s lack of either an intention to use at the time of filing, or of a genuine intention to use the trade mark in the future.

40.I am not prepared to accept that Mr Narriman’s inconclusive research substantiates the opponent’s claim that the applicant has no intention of using its applied for PAN and wildcat head device trade mark on all its claimed goods in Australia. I do not accept that this evidence has been sufficient to shift the onus onto the applicant.

Section 62A – Application made in bad faith

41.Section 62A of the Act provides:

62AApplication made in bad faith

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

42.In relation to the opposition ground under section 62A of the Act, Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc(No 2)[13], said:

[13] Fry Consulting Pty Ltd v Sports Warehouse Inc(No 2) [2012] FCA 81 at 165 -167 (‘Sports Warehouse’).

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.

The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

43. As can be seen above, a mere awareness of the opponent operating in Australia would not be enough by itself to establish bad faith on the part of the applicant. In addition to that awareness there may be other factors that inform a finding under section 62A. The intention of the section can be seen from examples provided at its introduction in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth):

• 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.

44.Mr Hallet, counsel for the opponent, has stated that the application was made in bad faith by the applicant having regard to the matters outlined in Narriman 2 being:

·The applicant’s website shows images of footwear bearing the wildcat device of the opposed mark without the term PAN, thus indicating an intention on the part of the applicant to adopt a mark which resembles the PUMA trade marks, particularly the PUMA ‘half-cat’ device even more closely than the opposed mark as applied for.

·In addition to using a similar wildcat device on its footwear, the applicant has also adopted a form strip device on its footwear which is strikingly similar to the PUMA form strip which is well-known in Australia and is protected by a number of trade mark registrations.

45.In his second declaration, Mr Narriman asserts that the applicant is not only using the wildcat head device solus but that the applicant is also using a form strip on its goods which is strikingly familiar to the form strip which has appeared on the opponent’s footwear for decades (the Puma form strip). Narriman 2 goes on to state that the applicant’s use of a similar form strip and with the wildcat device establishes there is a likelihood of confusion in the marketplace.

46.He goes on to make comments at paragraph 6(g) regarding the applicant’s Licensee and distributor of the PAN brand, Athletic Bangkok Athletic Co, Ltd, having a history of adopting trade marks which are strikingly similar to those of other traders. In support of this assertion Mr Narriman referred to annex NN-20 accompanying the Narriman 2 declaration. Annex NN-20 contains images of selected pages from the 1981 catalogue of Athletic Bangkok Athletic Co, Ltd, purportedly showing use of device trade marks owned by footwear manufacturers Adidas AG and Diadora Sport R.r.l.

47.  A consideration of annex NN-20 reveals it is a copy of one page from a PAN shoes catalogue from 1981 in which the opponent has attempted to suggest various lines on the sports shoes are copies of the Adidas AG ‘three stripes’ and Diadora Sport R.r.l ‘stylised arrowhead’. While the catalogue picture does show a sports shoe with three stripes and a shoe with two stripes and what may loosely be considered an arrowhead I do not believe that this constitutes a history of adopting trade marks similar to well-known brands. Indeed, from the evidence it appears that the opponent and applicant have been aware of each other for decades having co-existed in the Thai marketplace for the last 30 years.

48.  Mr Hallet has also suggested that the applicant’s unexplained failure to refute the evidence of bad faith put forward by the opponent should lead the Registrar to draw an inference that the unfiled evidence would not have assisted the applicant’s case, and that the opponent’s evidence that might otherwise have been contradicted can be more readily accepted[14].

[14] Jones v Dunkel (1959) 101 CLR 298, and 308, 312, and 320-321

49.  It may be the case that a combination of circumstances (e.g. the use of the wildcat head solus along with the applicant’s Licensee apparently adopting trade marks similar to other well-known trade marks) creates an inference regarding the applicant’s motives for filing the Trade Mark. While the relevant standard of proof for the opposition is the balance of probabilities, Hearing Officer Nancarrow observed in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited[15]: “That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.” It has also been said that “the more serious the allegation, the more cogent the evidence required to support it.”[16]

[15] Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited [2009] ATMO 26

[16] DC Comics v Cheqout Pty Ltd [2013] FCA 478 at [62].

50.  At most, I have before me an opponent attempting to cast a possible inference of bad faith upon the applicant by virtue of a single catalogue page from 1981, an assertion that the stripes used by the applicant on some of its shoes may possibly resemble the PUMA form strip and that the applicant has been known to use its wildcat head device solus. In the end, I am not satisfied on the opponent’s arguments and evidence that the applicant’s decision to apply to register the Trade Mark was one of “an unscrupulous, underhand or unconscientious character” (see Sports Warehouse (supra)). The onus of establishing bad faith rests on the opponent and I find in this particular case, the onus of proof has not been discharged. On the balance of probabilities, I find that the Trade Mark was not filed in bad faith.

51. The ground of opposition under section 62A of the Act has not been established.

Decision

52.At the priority date of the opposed application subsection 55(1) of the Act provided:

Decision

55 (1). Unless the proceedings are discontinued or dismissed, 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.

Note:  For limitations see section 6.

53.The opponent has not established any of the grounds of opposition. The trade mark application may proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the trade mark shall not occur until the appeal has been discontinued or registration is ordered by the courts.

Costs

54.Both parties made a claim for costs. As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
19 August 2014