Punt Club Pty Ltd v Sportsbet Pty Ltd

[2023] ATMO 194

TRADE MARKS ACT 1995

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

Re:Opposition by Punt Club Pty Ltd to registration of trade mark application number 2163173 (classes 9, 38 and 41) – BET WITH MATES (Figurative) - in the name of Sportsbet Pty Ltd

Delegate:	Sheona Robertson
Representation:	Opponent: Nicholas Floreani of Counsel, instructed by Thomson Geer Applicant: Stephen Rebikoff of Counsel, instructed by Clayton Utz
Decision:	2023 ATMO 194 Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under ss 42, 58, 60 and 62A – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Punt Club Pty Ltd (‘Opponent’) to registration of the following trade mark:

Application Number:

2163173

Trade Mark:

 (‘Trade Mark’)

Applicant:

Sportsbet Pty Ltd (‘Applicant’)

Filing Date:

15 March 2021

Goods/Services:

Class 9: Electric and electronic apparatus, devices and machines; computer hardware including hardware for the operation of online games; computer software and computer programs, including software relating to betting, the storage and processing of information and data and for online transmission and viewing of sports and games information and events; downloadable software applications; software for use in games, gambling and betting apparatus, devices and machines; Internet gambling software; software for operation of online games; computer, electronic, video and CD ROM games; interactive computer games; interactive sports, racing, event wagering and other gambling solutions; online games including casino games and game shows; data recording apparatus for use with games, betting and gambling apparatus devices and machines; parts and accessories for all the aforesaid goods, including user manuals and instructional books sold as a unit therewith; electronic publications

Class 38: Telecommunications; Providing access to a website on the Internet for the purpose of social networking; chatroom services; chat room services for social networking; providing online forums for information retrieval and communication, including enabling the transmission and sharing of information, photos, audio and video content and documents, establishing forums and groups for the exchange of information and gathering statistics; electronic mail services; web casting services; communication by computer and mobile electronic devices; providing access to computer, electronic and online databases; electronic transmission of data, messages and information; providing online forums for communication on topics of gambling; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, audio and video images; message sending

Class 41: Entertainment; sporting and cultural activities; gambling services; betting on horses; betting services; providing information, including online, about education, training, entertainment, sporting and cultural activities; interactive entertainment; sporting and cultural services; education services; on-line television entertainment services concerning gaming, entertainment and sports; provision of recreation and entertainment information including information on sports and games, betting, racing events, contingencies and odds; sporting events; betting services; betting information services; wagering services; education services relating to responsible betting, gambling; sports wagering services and approved betting competitions; advisory and consultancy services in relation to the foregoing

(‘Applicant’s Goods & Services’)

1. The application for the Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 16 August 2021.

2. The Opponent filed a Notice of Intention to Oppose on 15 October 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 15 November 2021. The Applicant filed a Notice of Intention to Defend on 11 February 2022.

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 16 May 2022 by Jason Anthony Neave (‘Mr Neave’), Founder and Chief Executive Officer of the Opponent and Tabs 1-9 of Exhibit folder JN-1 (‘Neave 1’).

4. The Applicant filed the following evidence in answer:

   ·Declaration made on 13 July 2022 by Adrian Michael Ryan, General Counsel for the Applicant, and Exhibit AMR-1 (‘Ryan 1’); and

   ·Declaration made on 13 July 2022 by Jason Noel Thatcher (‘Mr Thatcher’), Head of Brand and Advertising for the Applicant, and Exhibits JNT-1 to JNT-12 (‘Thatcher Declaration’).

5. The Opponent filed the following evidence in reply:

   ·Declaration made on 19 September 2022 by Mr Neave, and Exhibits JN-1 and JN-2 (‘Neave 2’).

6. Following the filing of the evidence in reply, the Applicant sought to file further evidence in the form of a declaration made on 29 November 2022 by Adrian Michael Ryan (‘Ryan 2’).

7. Neave 1, the Thatcher Declaration and Ryan 2 contain clauses to the effect that information within those declarations is confidential. However, the confidential information is not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1]  Arguably, there are sensitive commercial matters in these declarations which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.

   [1] [2008] ATMO 17.

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. Both parties requested an oral hearing. The Opponent filed written submissions on 8 September 2023 (‘Opponent’s Submissions’). The Applicant filed written submissions on 15 September 2023 (‘Applicant’s Submissions’).

9. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks (‘Registrar’) and was heard by video conference on 21 September 2023. At the hearing Stephen Rebikoff of Counsel, instructed by James Neil and Sean McGuire of Clayton Utz, appeared for the Applicant and Nicholas Floreani of Counsel, instructed by Josh Simons and Sharon Bandick of Thomson Geer appeared for the Opponent.

10. As a delegate of the Registrar, I have decided the opposition as required by s 55 of the Act. In doing so I take account of the materials filed during the proceedings, being the materials mentioned in paragraphs [3] to [7] and [9] of this decision as well as the Opponent’s Submissions, the Applicant’s Submissions and the parties’ oral submissions made at the hearing.

    Preliminary Issue

11. In a letter to the Registrar dated 29 November 2022, the Applicant asserted that Neave 2 contained allegations which could and should have been included in the evidence in support. The Applicant seeks to put forward Ryan 2 in response to these allegations. The Applicant claims that if Ryan 2 were not to be considered, this would be highly prejudicial to the Applicant and adverse to the public interest, as it would go against the principles of procedural fairness to deny the Applicant an opportunity to respond to these allegations.

12. The ‘new allegations’ in question concern paragraphs 5(b) to 5(e) of Neave 2, which outlines a conversation Mr Neave allegedly had with a former employee of the Applicant some years ago. It appears these allegations go to the ground of opposition under s 62A of the Act.

13. Regulation 21.19 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) affords the Registrar discretion to consider whether available information is relevant and should be considered in making a decision in the proceedings. However, reg 21.19 is not a substitute for the evidence stages of an opposition, and compelling reasons are required for inclusion of any new material that was not properly filed during the evidence stages

14. For the reasons which follow Ryan 2 does not change the outcome of this matter, and therefore I have not found it necessary to consider this issue any further. 

    Grounds of opposition, onus and standard of proof

15. The SGP nominated grounds of opposition under ss 42, 58, 60 and 62A of the Act.

16. The Opponent bears the burden of establishing at least one of the grounds of opposition[2] on the ordinary civil standard of the balance of probabilities.[3]  The date at which the rights of the parties are assessed is 15 March 2021 (‘Relevant Date’), being both the priority date and the filing date of the Trade Mark.

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

    [3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    The Opponent

17. The Opponent provides services in the entertainment and sporting industries relating to betting, gambling, wagering, gaming and competitions, including management services for social betting clubs (‘Opponent’s Services’). The Opponent’s Services are offered through a mobile application which helps users keep track of bets placed, amounts, wins and losses and statistics, amongst other things. The Opponent’s Services can be used for a variety of sporting and entertainment events.

18. It is declared in Neave 1 that the Opponent has an earlier claim to ownership of the Trade Mark on the basis of its use of the term ‘bet with your mates’ (‘Opponent’s Alleged Mark’) in connection with the Opponent’s Services since at least January 2011, being some 10 years earlier than the Relevant Date.

19. Exhibit Tabs 3 to 5 of Neave 1 contain extracts of the website (‘Opponent’s Website’) and the Opponent’s Facebook page showing use of the Opponent’s Alleged Mark since January 2011. Multiple variants of the Opponent’s Alleged Mark are shown in Exhibit Tabs 3 to 5 of Neave 1, including:

    ·‘Bet with your mates’ on a historical extract of the Opponent’s Website dated 6 January 2011;

    ·‘Start a club and bet with your mates on Sports and Races | PuntClub’ appears as an advertisement under a post on the Opponent’s ‘PuntClub.com’ Facebook page;

    ·‘START A PUNTERS CLUB & BET WITH YOUR MATES’ on both the Opponent’s Website and the Opponent’s Facebook page;

    ·‘Bet with your mates. Go places. Buy horses.’ on the Opponent’s Website;

    ·Photographs of a banner topped with the words ‘BET WITH YOUR MATES’ in prominent lettering in a post on the Opponent’s Facebook page dated 24 March 2018;

    ·‘Start a punters club and bet with your mates!’ in a post on the Opponent’s Facebook page; and

    ·‘Punt Club | Starts a Punters Club and Bet With Your Mates’ appears as an advertisement under a post on the Opponent’s Facebook page.

20. It is declared in Neave 1 that the Opponent has used the Opponent’s Alleged Mark on its mobile application since 2014. Paragraph 17 of Neave 1 contains images showing use of the Opponent’s Alleged Mark on the Opponent’s mobile application. The first image shows use of the term ‘Bet with your mates. Go places. Buy horses’ and the second image shows use of the term ‘Bet With Your Mates’ in yellow font above the plain text ‘No chasing money. No spreadsheets. Ever.’. These images are undated.

21. The Opponent claims significant investment in the Opponent’s Alleged Mark, including by way of:

    ·promotion of the Opponent’s Services on mediums such as Google AdWords and branded products. Examples of promotional material demonstrating use of the Opponent’s Alleged Mark from as early as January 2011 are provided at Exhibit Tabs 5 and 6 to Neave 1. Exhibit Tab 6 to Neave 1 is a Google AdWords Report for the period 1 June 2017 to 30 June 2017; and

    ·online advertising campaigns on the website of the Daily Telegraph in March 2022, being after the Relevant Date. Exhibit Tab 7 to Neave 1 contains a screenshot of the Daily Telegraph website showing yellow banners on both sides of the website’s homepage featuring the words ‘Start a Punters Club and bet with your mates’, together with a central banner that features a device containing the words ‘THE PUNTERS CLUB’ above the words ‘THE DAILY TELEGRAPH’ in smaller font.

22. Paragraph 14 of Neave 1 contains a table setting out the marketing costs for the Opponent’s Alleged Mark between 2013 and 2022. Expenditure appears to have grown exponentially over a ten year period and was particularly substantial in 2021.

23. It is claimed in Neave 1 that the Applicant was aware of the Opponent’s business since at least 2014, when Mr Neave met with three of the Applicant’s employees to pitch a collaboration. It is declared in Neave 2 that the Applicant indicated its level of interest in the Opponent’s business by way of ongoing testing of the Opponent’s platform. However, no collaboration ever eventuated.

24. According to Neave 1, a number of senior executives of the Applicant became active users of the Opponent’s Services and the Applicant subsequently released a product with the name ‘Sportsbet Punters Club’. It is the Opponent’s position that this conduct constituted an attempt to steal business secrets from the Opponent, a breach of the Opponent’s Website terms and conditions and copyright infringement. Exhibit Tab 9 of Neave 1 contains articles published in 2015 discussing a prior dispute between the Applicant and the Opponent regarding the Applicant’s use of the product name ‘Sportsbet Punters Club’. The Opponent filed an interlocutory application with the Supreme Court of South Australia in 2015 (a copy of which is attached as Exhibit AMR-1 to Ryan 1) but the dispute was settled later that year.

25. It is declared in Neave 2 that shortly after the proceedings in the Supreme Court of South Australia, the declarant met with Josh Sprague (‘Mr Sprague’), the Applicant’s former ‘Head of Innovation’, at a networking event in Adelaide, and that as a result of this meeting the Opponent became aware that the Applicant:

    ·     had studied the Opponent’s business, and was interested in its mobile application;

    ·     had developed a paper that was presented to the Applicant’s executive team regarding options for the Applicant to achieve a similar platform to that of the Opponent, including (a) the Applicant developing its own version; (b) licensing the Opponent’s technology or (c) purchasing the Opponent;

    ·     ultimately decided to pursue the first option and develop its own version of the Opponent’s platform.

26. Furthermore, it is declared in Neave 1 that there have been several instances wherein users have incorrectly assumed a connection between the Opponent and the Trade Mark. Cited as an example of such confusion is an occasion where the Opponent was congratulated on selling their business to the Applicant. No precise details or documentary evidence is provided of any confusion.

    The Applicant

27. The Applicant is an online wagering services business founded in Darwin in March 1991. The Applicant has grown to become the largest online bookmaker in Australia. The Applicant’s Goods & Services are offered by way of the Applicant’s website, (‘Applicant’s Website’), the Applicant’s mobile application, and by telephone.

28. In 2021, the Applicant’s business generated considerable revenue and had a substantial number of registered customers. Exhibit JNT-1 to the Thatcher Declaration contains an investor presentation dated September 2021 that includes information about the Applicant’s business growth.

29. The Applicant’s marketing activities include television, digital radio and online advertising as well as sponsorship of various sporting codes and organisations such as Racing Victoria, Racing.com, the AFL and the NRL.  

30. The Applicant’s ‘BET WITH MATES’ product is a betting management tool that offers a social betting service to aid groups of users to bet on sporting and entertainment events. The product is available to the Applicant’s registered customers by way of the Applicant’s Website and via the Applicant’s mobile application.

31. It is declared that the Applicant’s marketing leadership team formally approved the name ‘Bet With Mates’ in November 2020. Paragraph 17 of the Thatcher Declaration describes the process of the creation of the ‘Bet With Mates’ product name. The name was selected from a number of alternate options for its impact, simplicity, ease of articulation, relatability, affinity with the Australian themes of mateship and larrikinism, and alignment with the Applicant’s key business values and brand identity. The device featured in the Trade Mark was designed in-house by the Applicant’s marketing team under leadership from the Applicant’s design and brand teams.

32. It is declared in the Thatcher Declaration that at the time of the Applicant’s adoption of the Trade Mark, Mr Thatcher did not have any knowledge of any use by the Opponent of the phrases “start a punters club and bet with your mates” or “bet with your mates”, and there was no mention of the Opponent’s use of these phrases during the Applicant’s discussions regarding the creation of the Trade Mark.  

33. The Applicant commenced using its ‘Bet With Mates’ punters club product under and by reference to the Trade Mark in June 2021, following a ‘soft launch’ in May 2021 in which the Applicant’s customers received direct marketing such as SMS, push notifications and digital banner advertising. It is declared in the Thatcher Declaration that the product has enjoyed significant success since its launch.  

34. The Applicant used television commercials to advertise the product launch. The commercials were entitled ‘Bet With Mates – Kings’, ‘Bet With Mates – Portal’ and ‘Bet With Mates – First Contact’. They were promoted nationally over a six-week period. Screenshots of the advertisements are attached as Exhibit JNT-2 to the Thatcher Declaration.

35. The ‘Bet With Mates’ product has also been advertised online and on social media, national radio, billboards and in press advertisements. Examples of these methods of promotion for the Applicant’s ‘Bet With Mates’ product featuring the Trade Mark are included as Exhibit JNT-3 to the Thatcher Declaration. The Applicant’s investment in promotion of the Trade Mark in Australia appears to have been substantial.

36. Third party publicity for the Applicant’s ‘Bet With Mates’ marketing campaign was widespread. Examples of third party websites discussing the product launch are attached as Exhibit JNT-4 to the Thatcher Declaration.

37. Mr Thatcher declares that he is not aware of any consumer confusion between the Trade Mark and the Opponent or the Opponent’s Alleged Mark. He declares that he has made inquiries with the Applicant’s customer service team and has been advised that no enquiries have been received regarding any confusion.

    Discussion

    Section 58

38. Section 58 of the Act relevantly provides:

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

39. To succeed under this ground, the Opponent must establish:

    (i)the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;[4] 

    (ii)the Applicant’s Goods & Services are the ‘same kind of thing’ as the goods and/or services for which the trade mark relied upon by the Opponent has been used;[5] and

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

    [4] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

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

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

1. Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[7] Authorship in this context refers to the first party to adopt the trade mark with an intention of using it in Australia in respect of the Applicant’s Goods & Services, or goods of the same kind.[8]

   [7] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

   [8] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

2. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), Deane J discussed the nature of use required to establish ownership and commented:

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.[9]

   [9] (1984) 156 CLR 415, 432.

3. The Opponent’s particulars in relation to the s 58 ground of opposition are summarised as follows:

   ·the Opponent’s Alleged Mark is substantially identical to the Trade Mark;

   ·the Opponent has rights, including at common law, to the Opponent’s Alleged Mark prior to the Relevant Date in relation to the same goods or services as the Applicant’s Goods & Services; and

   ·prior to the Relevant Date, the Opponent used the Opponent’s Alleged Mark on goods and services in the sports and entertainment industry including at least one of the Applicant’s Goods & Services.

4. The Opponent claims legal ownership of the Trade Mark at common law by virtue of use of the Opponent’s Alleged Mark in respect of the Opponent’s Services since at least 2011.

5. In order to satisfy requirement (iii) of paragraph [40] of this decision, any use of the Opponent’s Alleged Mark by the Opponent must constitute use ‘as a trade mark’. Section 17 of the Act provides that a trade mark is ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. The concept of use ‘as a trade mark’ was explained by the Full Court in Coca-Cola Co v All-Fect Distributors Ltd:

   Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of “trade mark” in s 17 – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.[10]

   [10] [1999] FCA 1721, [19] (Black CJ, Sundberg and Finkelstein JJ).

6. The Applicant contends that the Opponent has not used either the Opponent’s Alleged Mark or phrases containing the Opponent’s Alleged Mark ‘as a trade mark’. The Applicant submits that the use of the phrase “bet with your mates” by the Opponent is descriptive, namely it indicates that customers can use the Opponent’s Services to place bets with their friends.

7. There is merit to the Applicant’s submission. Of particular significance is the Opponent’s inconsistent use of the phrase “bet with your mates”, as indicated by the various terms listed at paragraph [20] of this decision. Scant examples are provided in the evidence of use of the phrase “bet with your mates” in isolation. Most of the examples provided show use of the phrase “bet with your mates” in close relation to other words or phrases. In these examples the words “bet with your mates” are presented in the same font, style and size as the remaining words such that they appear integrated and are read as a whole. The net effect of such use of the Opponent’s Alleged Mark is to merely indicate to consumers that the Opponent provides group betting services. In my opinion, the words “bet with your mates” in these phrases would not be viewed as signifying the source of the Opponent’s Services or distinguishing the Opponent’s Services from those of other traders in the relevant industry. Consequently, I do not consider such representations amount to use of the Opponent’s Alleged Mark as a trade mark.

8. It is also relevant that the evidence of the Opponent’s use of phrases that incorporate the Opponent’s Alleged Mark invariably appear under or alongside a clear badge of origin, namely the umbrella brand PUNT CLUB. All references to the Opponent’s Alleged Mark on the Opponent’s Website provided in evidence appear under a banner at the top of the webpage that prominently features a ‘PUNT CLUB’ device. Similarly, any use of phrases which incorporate the Opponent’s Alleged Mark in, or alongside, the Opponent’s Facebook posts provided in evidence appears to be use in close relation to the Opponent’s PUNT CLUB device and the Opponent’s Facebook profile name ‘PuntClub.com’. As stated by the Applicant, use of the Opponent’s Alleged Mark in this manner reduces the likelihood that the phrase “bet with your mates” would be understood to act as a badge of origin.[11]

   [11] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [56] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ); Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik & Ors [2002] FCA 390, [191] (Allsop J).

9. The remainder of the evidence provided by the Opponent in support of its use of the Opponent’s Alleged Mark prior to the Relevant Date suffers similar limitations.

10. In the Google AdWords Report provided as Exhibit Tab 6 of Neave 1, the phrase ‘Bet With Your Mates’ used in advertising for the Opponent’s Services is categorised as a ‘Headline 2’ AdWord, suggesting it is secondary to the ‘Headline 1’ AdWords ‘Punters Club’ and ‘Punters Club Australia’. While it is not clear how the AdWords operate in practice, the ambiguity does not assist the Opponent’s case.

11. While the Opponent claims that the marketing costs tabled in Neave 1 relate to the Opponent’s Alleged Mark, it is unclear whether such expenditure relates to use of the Opponent’s Alleged Mark solus, or in close connection with the Opponent’s PUNT CLUB brand. It is possible to infer from the remainder of the evidence that the Opponent’s marketing efforts in relation to the Opponent’s Alleged Mark would also clearly reference the Opponent’s PUNT CLUB brand.

12. Having regard to the deficiencies in the evidence outlined above, I am not satisfied that the use of the Opponent’s Alleged Mark relied upon by the Opponent is use ‘as a trade mark’ for the purpose of satisfying requirement (iii) of paragraph [40] of this decision. As requirement (iii) has not been established, it is not necessary for me to consider requirements (i) and (ii).

13. On balance, I do not consider the Opponent has established an earlier claim to ownership of the Trade Mark. The s 58 ground of opposition has not been established.

    Section 60

14. Section 60 of the Act relevantly provides:

    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.

15. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:

    i.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; and

    ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

16. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is ‘the recognition of the [trade mark] by the public generally’.[12]  Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[13]

    [12] [2000] FCA 1335, [81].

    [13] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

17. As O’Bryan J observed in Rodney Jane Racing Pty Ltd v Monster Energy Company:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[14] 

    [14] [2019] FCA 923, [83].

18. Reputation must be established amongst a significant or substantial number of persons in the relevant market.[15] In Le Cordon Bleu BV v Cordon Bleu International Ltee the Court observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods or services in question.[16]

    [15] Renaud Cointreau & Cie v Cordon Bleu International Ltee[2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

    [16] [2000] FCA 1587, [91] (Heerey J).

19. The Opponent asserts that it has used the Opponent’s Alleged Mark and variants thereof in connection with the Opponent’s Services, and as a result of this use the Opponent developed a reputation in these trade marks prior to the Relevant Date, such that use of the Trade Mark by the Applicant is likely to deceive or cause confusion.

20. The Applicant submits that the Opponent has not established that the phrase “bet with your mates” itself has a reputation among a significant or substantial number of persons in Australia, in connection with the Opponent, as distinct from any reputation which may exist in the Opponent’s PUNT CLUB brand.

21. I agree with the Applicant. There is nothing in the Opponent’s evidence which clearly demonstrates that a significant or substantial number of persons in the market for the Opponent’s Services would recognise the phrase “bet with your mates” as being associated with the Opponent. As explained above in relation to the s 58 ground of opposition, the evidence illustrates use of several different terms listed at paragraph [20] of this decision which include the phrase “bet with your mates”, but very few examples of use have been provided.

22. The Opponent has provided marketing costs stated to be in respect of the Opponent’s Alleged Mark. Whilst these figures have grown exponentially over a ten year period, it is not clear to me that they relate to use of “bet with your mates” or variations thereof as a trade mark. To this point, the nature of the use of the Opponent’s Alleged Mark discussed in relation to the s 58 ground of opposition is also relevant to the s 60 ground. If the Opponent’s Alleged Mark has not been used as a trade mark in Australia, then it follows that any reputation acquired is not due to use of the Opponent’s Alleged Mark as a trade mark.

23. I note that the Opponent submits that there has been confusion between the Opponent and the Trade Mark. However, there is insufficient evidence before me to suggest that a consumer wanting to purchase the Applicant’s Goods & Services would be caused to wonder whether the Applicant’s ‘BET WITH MATES’ goods and services are somehow related to the Opponent’s Services. The Opponent provides a single example of an instance of confusion between the Opponent and the Applicant in Neave 1, namely that the Opponent has been congratulated on selling their business to the Applicant. However, the Opponent has not provided any context for this alleged confusion. It is not clear whether the confusion resulted directly from the Opponent’s use of the Opponent’s Alleged Mark and the Applicant’s use of the Trade Mark, or whether there may be an alternative explanation in light of the history between the parties discussed at paragraph [24] of this decision. In the absence of further details, I am not persuaded that this instance of confusion resulted from the reputation in the Opponent’s Alleged Mark.

24. Having regard to the available evidence and the above reasons, I am not satisfied that the Opponent’s Alleged Mark acquired a reputation in Australia prior to the Relevant Date such that there is a likelihood of confusion between the Opponent’s Alleged Mark and the Trade Mark.

25. The ground of opposition under s 60 of the Act has not been established.

    Section 42

26. 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.

27. It is clear from the SGP that this ground is being made under s 42(b) of the Act. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would (rather than could) be contrary to law on the balance of probabilities.[17] 

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

28. It is claimed in the SGP that use of the Trade Mark by the Applicant would be contrary to law, being the common law tort of passing off and ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).

    Australian Consumer Law

29. It is stated in the Opponent’s Submissions that use of the Trade Mark by the Applicant would convey false, misleading or deceptive representations in breach of ss 18(1), 29(1)(g) and 29(1)(h) of the ACL, namely that:

    ·the Applicant is the Opponent;

    ·the Applicant has the sponsorship or approval of the Opponent; and/or

    ·the Applicant’s Goods & Services have the same performance characteristics, uses or benefits as the Opponent’s Services.

30. The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,[18] which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL.

    Passing Off

    [18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

31. It is stated in the Opponent’s Submissions that use of the Trade Mark by the Applicant would constitute a breach of the tort of passing off because it wrongly suggests a connection, in the course of trade, with the Opponent’s Services, and threatens to damage the Opponent’s established reputation and goodwill. It is the Opponent’s contention that it can be inferred from the history of dealings between the Opponent and the Applicant that the Applicant’s selection of the Trade Mark was a deliberate attempt to inflict damage on the Opponent’s business.

32. Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

    the scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[19]

    [19] [1989] FCA 506, [40] (Hill J).

33. As s 18 of the ACL is the equivalent of s 52 of the TPA,[20] the above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

    [20] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).

34. As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.

35. The ground of opposition under s 42(b) of the Act is not established.

    Section 62A

36. Section 62A of the Act provides:

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

37. The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather ‘it is a wider notion, potentially applicable to diverse species of conduct’[21] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth). 

    [21] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).

38. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

    Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

    The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]

    [22] [2013] FCA 478, [62].

39. Justice Bennett also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[23]

    [23] Ibid [66].

40. Accordingly, I must determine what the Applicant knew at the time of making the application for the Trade Mark and then, considering that knowledge, whether the Applicant’s conduct fell short of acceptable commercial behaviour and is of ‘an unscrupulous, underhand or unconscientious character’.[24]

    [24] Fry Consulting (n 23) [166].

41. An allegation of bad faith under s 62A is a serious one. In this regard, I note the following comments of the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

    The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[25]

    [25] [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

42. In the SGP, the Opponent asserts that by reason of the following, the Applicant was aware of the Opponent’s Alleged Mark prior to filing the application for the Trade Mark:

    ·the Opponent and the Applicant engaged in discussions regarding a possible collaboration in 2014, being many years prior to the Relevant Date;

    ·the Applicant subsequently released a new product in 2015 named ‘Sportsbet Punters Club’. The Opponent alleged that this product was an infringement of the Opponent’s rights, including intellectual property rights, and the dispute was subsequently settled; and

    ·the Applicant has since discontinued its ‘Sportsbet Punters Club’ product and launched a new product under the Trade Mark.

43. It is declared in Neave 1 that, given the prior history of dealings between the Opponent and the Applicant and the Applicant’s prior use of the ‘Sportsbet Punters Club’ product name, the Applicant has been aware of the Opponent’s Alleged Mark since at least 2014 and the Applicant’s choice of the Trade Mark was a deliberate attempt to associate itself with the reputation and goodwill established by the Opponent.

1. The Opponent submits that, a reasonable and experienced person would consider the Applicant’s offer of the Applicant’s Goods & Services under the Trade Mark, so as to benefit from the goodwill in the Opponent’s Alleged Mark and the Opponent’s business, to be in that nature of unacceptable commercial behaviour.

2. It is not disputed that the parties were aware of each other prior to the Applicant’s selection of the Trade Mark. It is clear from the evidence provided that the Applicant was aware that the Opponent operated a group betting platform under and by reference to the name ‘PUNT CLUB’.

3. However, mere awareness of, or prior dealings with, the Opponent do not on their own indicate that the application for the Trade Mark was made in bad faith. Awareness or prior dealings can amount to bad faith when combined with other circumstances. The question is whether, in all the circumstances, the Applicant’s knowledge was such that the decision to apply for the Trade Mark at the Relevant Date would be regarded as in bad faith by persons adopting proper standards.[26]  

   [26] Fry Consulting (n 23) [167].

4. I do not consider the evidence establishes that the Applicant was aware of the Opponent’s use of the Opponent’s Alleged Mark at the time it adopted the Trade Mark. The prior dealings between the Applicant and the Opponent documented in the evidence are limited to discussions regarding a potential collaboration between the Applicant’s business and the Opponent’s business, and a now settled dispute regarding the use by senior executives of the Applicant’s business of the Opponent’s mobile application and the Applicant’s subsequent release of its ‘Sportsbet Punters Club’ product. These matters were concluded several years before the Applicant selected the Trade Mark. I am not persuaded that there is any meaningful connection between the parties’ prior dealings and the Applicant’s decision to adopt the Trade Mark.

5. Neither does the evidence establish that the Applicant at any stage acknowledged the Opponent’s trade mark rights in the Opponent’s Alleged Mark. To the contrary, as stated in the Applicant’s Submissions, the Applicant considers the Opponent’s Alleged Mark to be descriptive and the Applicant does not consider the Opponent’s use of the Opponent’s Alleged Mark constitutes use as a trade mark.

6. Regarding the conversation between Mr Neave and Mr Sprague referred to at paragraph [26] of this decision, even if the Applicant studied the Opponent’s mobile application and generated a report discussing options for the Applicant to obtain a similar platform as alleged, I do not consider the Applicant’s conduct in reviewing the product offering of a competitor and generating a report on the findings to be, in itself, in the nature of unacceptable commercial behaviour. I understand competitive analysis of this kind to be a commonplace business practice which is unlikely to be deemed ‘unscrupulous’ by reasonable and experienced persons.  Moreover, it is declared in Neave 2 that the Applicant ultimately decided to develop its own mobile application, independent of a competitor’s preexisting application.

7. The events outlined in paragraphs [87] and [89] above are not sufficient to suggest a pattern of unscrupulous behaviour on the part of the Applicant that would enable a finding that the Applicant adopted the Trade Mark with the intention of misappropriating the Opponent’s goodwill and reputation.

8. The Opponent asserted in its oral submissions that it would be ‘uncanny serendipity’ if the Applicant should independently contrive the same, or a very similar, trade mark to that used by the Opponent for more than a decade. However, as discussed above in relation to the s 60 ground of opposition, I am not satisfied that the Opponent has established a reputation in the Opponent’s Alleged Mark. The Opponent’s reputation is not such that the use of the Opponent’s Alleged Mark or a substantially identical mark would likely result in a springboard or advantage for the Applicant. On that basis, I do not consider that, in adopting the Trade Mark, the Opponent sought to benefit from the Opponent’s reputation and goodwill.

9. Overall, the evidence before me does not establish that, at the time of filing the application for the Trade Mark, the Applicant’s conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. Accordingly, I am not satisfied that the application for the Trade Mark was made in bad faith.

10. The s 62A ground of opposition has not been established.

    Decision

11. Section 55 of the Act relevantly provides:

    (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)  to refuse to register the trade mark; or

    (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

12. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2163173 may proceed to registration not less than one month from the date of this decision. 

13. If the Registrar is 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.

    Costs

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

    Sheona Robertson
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    28 November 2023