Qe Family Pty Ltd trustee v Proprietors of Strata Plan 48462

[2025] ATMO 155

TRADE MARKS ACT 1995

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

Re:Opposition by QE Family Pty Ltd trustee for Qe Tai Sing Family Trust to registration of trade mark application number 2410434 (class 43) – BYRON BAY BEACHFRONT APARTMENTS & Turtle Device - in the name of Proprietors of Strata Plan 48462

Delegate:

Tracey Berger

Representation:

Opponent: None

Applicant: None

Decision:

2025 ATMO 155

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 60, 62(a), 62(b) and 62A – no grounds established – trade mark to proceed to registration

Background

1. This is a decision on the opposition by QE Family Pty Ltd trustee for Qe Tai Sing Family Trust (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark detailed below in the name of Proprietors of Strata Plan 48462[2] (‘Applicant’):

Trade Mark:                  (‘Trade Mark’)

Number:2410434  (‘Application’)

Filing Date:                21 December 2023                (‘Relevant Date’)        

Specification:            Class 43: Rental of holiday accommodation; Accommodation rental agency services (holiday apartments)

(‘Applicants’ Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

[2] The Trade Mark was initially filed in the name of Medcraft Pty Ltd but was assigned to the Applicant on 31 May 2024.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 27 May 2024, followed by a Statement of Grounds and Particulars (‘SGP’) on 26 June 2024 (subsequently rectified).  The Applicant filed a Notice of Intention to Defend on 31 July 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support on 5 November 2024 consisting of a declaration of Michael Van Thanh Quach, director of the Opponent, made on 5 November 2024 with Annexures 1-9 (‘Quach’). The Applicant filed its evidence in answer on 28 December 2024 consisting of a declaration of Greg Medcraft, Chair of the Applicant, made on 28 December 2024 with Attachments 1-20 (‘Medcraft’). No evidence in reply was filed.

4.     Once the time for filing evidence had ended, the parties had an opportunity to request a hearing.  Neither party asked to be heard and the Applicant requested a decision without a hearing.  I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine.  I do so based on the aforementioned materials.

Grounds and onus

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

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3]  The standard of proof is the ordinary civil standard on the balance of probabilities.[4]  The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the Trade Mark.

Evidence

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

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

and Edelman JJ).

Opponent’s evidence

7.    Quach claims that the Trade Mark is used by his business Byron Bay Beachfront Apartments, which is a registered business name, for letterheads, merchandise and owners’ statements.  In support of this claim, Quach attaches an undated sample of a booking confirmation, an undated photo of a pen holder bearing the trade mark, copies of tax invoices for the period 1-31 October 2019 which appear to have been issued to different apartment owners (‘Statements’) and a Record of Registration for Business Name issued by the Australian Securities and Investments Commission (‘ASIC’) dated 27 November 2023 for Byron Bay Beachfront Apartments (‘Business Name’).

8.     According to Quach, the Opponent’s business operates the website at (‘Website’) which website is used for booking and receiving booking enquiries.  The WhoIs details for the Opponent’s Website domain are provided showing the registrant as QE Family Pty Ltd with Dr Quach as the registrant contact. 

9.     The Opponent’s business is also promoted on travel platforms like Booking.com and Expedia. Quach provides a booking enquiry email dated 10 June 2011 (‘2011 Email’) and an undated Booking.com listing for Byron Bay Beachfront Apartments, which includes customer reviews dating back to 2016 (‘Booking.com Listing’).

Applicant’s evidence

10.      Medcraft is the Chair of the Applicant, which is made up of the apartment owners at 39–41 Lawson Street, Byron Bay (‘Apartment Block’). He states that apartments in the block have been rented out for holidays under the Business Name for over 20 years. A historical snapshot of the Website from 2004 is provided, showing use of the Trade Mark in connection with holiday rental services.[5]

[5] Medcraft, Attachment 1.

11.     Medcraft annexes evidence that the Business Name has been registered as a trading name and then as a business name (after trading names under State law were replaced by business names):

i.from May 2000 to December 2003 by a family partnership connected to Wayne Jones that had a management rights agreement with the Applicant at that time;[6]

ii.from June 2000 to September 2008 by the Applicant;[7]

iii.from September 2008 by NBJ Pty Ltd, a company owned by Neville Watts who held the management rights with the Applicant at that time;[8]

iv.2014-2017 by McGolf Pty Ltd when the Applicant transferred the management rights to McGolf Pty Ltd (‘McGolf’); and

v.2017 to present by Mark McIntyre Family Trust.[9]  Mark McIntyre was associated with McGolf and transferred the Business Name to his trust in 2017, without the consent of the Applicant and in breach of the Management Rights Agreement between McGolf and the Applicant dated 31 March 2014[10] (‘Management Agreement’), after a business settlement with his former partner.  Mr McIntyre acknowledged in writing that the Applicant retains the rights to the Trade Mark.[11] 

[6] Ibid, Attachment 2.

[7] Ibid, Attachment 3.

[8] Ibid, Attachment 4.

[9] Ibid, Attachment 6.

[10] Ibid, Attachment 9.  The Management Agreement was extended to 31 March 2024 by Deed of Variation dated 16 December 2019 and provided as Attachment 10.

[11] Ibid, Attachment 8.

12.     The Management Agreement provides that:

·     Clause 14.7- The Manager acknowledges the [Applicant’s][12] exclusive intellectual property rights in the name ‘Byron Bay Beachfront Apartments’

·     Clause 14.8- The [Applicant] consents to the Manager using the Name on a website and registering the Name as a business name during the term of the Management Agreement.

[12] The Management Agreement refers to the Applicant as the Owner’s Corporation but the term Applicant is used in this decision for clarity.

13.     It is apparent from Medcraft that McGolf was contracted to provide onsite management and maintenance services at the Apartment Block (‘Management Business’) and as required by the Management Agreement, Mr McIntyre (the sole director and shareholder of McGolf) had to reside at the Apartment Block which Mr McIntyre did as the owner of Unit 5 of the Apartment Block.  Pursuant to the Management Agreement, McGolf also carried on a residential letting business whereby he let the apartments in the Apartment Block on behalf of the owners of those apartments (‘Apartment Letting Business’).    

14.     Medcraft attests that that McGolf operated and used the Website in accordance with the Management Agreement, and that its maintenance was funded by the Applicant under clause 14.1.2 of the Management Agreement.[13]  

[13] Medcraft (n 5), Attachment 11.

15.     On 3 April 2023, McGolf and the Opponent executed a contract of sale of the Management Business and Residential Letting Business and also, Michael Quach and Ms Veasna Quach executed a contract for the sale and purchase of Mr McIntyre’s apartment.  Medcraft declares that the Management Agreement has not been sold, transferred or otherwise assigned to the Opponent or any person related to Michael Quach.  Medcraft attaches an extract from the judgment of Thawley J in Quach v McIntyre[14] (reproduced below) which states that Mr McIntyre gave sworn evidence that the Management Agreement was not transferred to Quach:

[14] [2024] FCA 564.

16.     Further, Medcraft claims that the Opponent was aware that the Applicant did not consent to the transfer of the Business Name or any other interests the Opponent purported to receive from McGolf or Mr McIntyre as the Applicant’s Lawyers had responded to the Opponent’s correspondence seeking approval for those transfers.[15]

[15] Medcraft (n 5), Attachment 16 and 17.

17.     Medcraft declares that McGolf and the Applicant agreed to terminate the Management Agreement on 31 October 2023[16] and Medcraft states that the Manager of the Apartment Block (except Unit 5) is now Byron Bay Luxury Homes.  On 9 November 2023, the Applicant wrote to McGolf requesting return of all intellectual property to the Applicant including the business name for the Name, the Website and domain name, but no response has been received.[17]

[16] Ibid, Attachment 14.

[17] Ibid, Attachment 15.

18.     In relation to the Opponent’s claim that its business is promoted on the Website and other online travel agency websites, Medcraft declares that only Unit 5, being the apartment owned by Michael and/or Veasna Quach, is available for letting on these websites.  The other 11 apartments in the Apartment Block are now available on the website at managed by Byron Luxury Homes.

Discussion

Section 58

19.     Section 58 provides:

58  Applicant not owner of trade mark

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

20. The term ‘owner’ is not defined in the Act. However, it is well established that the owner of a trade mark is the person who first uses it in Australia, or first files an application for the trade mark in Australia, whichever is the earlier. Accordingly, for the Opponent to succeed on this ground of opposition, it must establish the following requirements must be satisfied:

·the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark [18] (‘First Requirement’);

·the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark relied upon by the Opponent has been used[19] (‘Second Requirement’); and

·a person other than the Applicant has the earlier claim to ownership based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register the Trade Mark or (b) any actual use of the Trade Mark[20] (‘Third Requirement’).

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

[19] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

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

21.     The Opponent particularlises this ground of opposition in its SGP as follows :

This turtle with 'Byron Bay Beachfront Apartments' logo is owned and used by QE Family Pty Ltd trustee for Qe Tai Sing Family Trust, that operates holiday rental at 39-41 Lawson Street, BYRON BAY NSW 2481. It has been used since 1991, when the complex was built.

The applicant, Greg Medcraft/Medcraft Pty Ltd, does not own this logo. The applicant does not have a real estate licence. The applicant does not intend to use it himself. The applicant has re-assigned to SP48462, which is a (sic) owner corporation established under Strata Schemes Management Act 2015 (NSW). The owners corporation, SP48462, does not trade under the Strata Schemes Management Act 2015 (NSW). Therefore, the logo cannot be used for holiday letting by SP48462.

22.     The Opponent’s evidence does not establish that it has continuously used the Trade Mark since the Apartment Block was built in 1991 and there are a number of issues with the Opponent’s evidence.  Annexures 1 and 2 are undated.  Annexure 3 purports to show use of the Trade Mark on the Statements for letting services and maintenance of the Apartment Block in 2019 but these reports indicate that they were generated by ‘Michael’ on 5 November 2024.  The Booking.com Listing appears to only offer Dr Quach’s apartment for rent.  The Opponent has produced an ASIC Certificate for registration of the Business Name but this certificate provides no information as to the person or entity which has registered the name.  Even if the Business Name was registered by the Opponent in November 2023, Quach does not explain how the business operated prior to this time. 

23.     The Opponent claims in its SGP that the Applicant cannot be the owner of the Trade Mark because neither Greg Medcraft or his company Medcraft Pty Ltd have a real estate licence, the Applicant does not intend to use the Trade Mark and the Applicant does not trade under the Strata Schemes Management Act 2015 (NSW). None of these matters are addressed in the Opponent’s evidence. In any case, holding a real estate licence is not a requirement for owning a trade mark. A trade mark owner can authorise a qualified individual or entity to use the mark for services that require specific licences or credentials. Moreover, s 106(1) of the Strata Schemes Management Act 2015 (NSW) provides that an owners corporation for a strata scheme can hold and manage personal property on behalf of the owners corporation and hence the Applicant can own the Trade Mark and operate or authorise the operation of a holiday accommodation rental business under the Trade Mark.

24.     It is apparent from the Applicant’s evidence that the Trade Mark has been used in relation to the holiday rental accommodation business since at least 2004.  Further, the Applicant provides a detailed history of the persons and entities responsible for operating the business under the Trade Mark on behalf of the Applicant.  I am satisfied on my assessment of the Applicant’s evidence that the Applicant was the owner of the Trade Mark from at least 2004.

25.     It appears that the Opponent’s claim to ownership of the Trade Mark is based on an alleged transfer of the Management Agreement from McGolf/McIntyre in 2023.  It seems that as a result of this purported transfer, Dr Quach gained access to the Website and related business documents, including the Statements and the 2011 Email. Clause 11 of the Management Agreement allows McGolf to transfer its interests in the Management Agreement but only under specific conditions.  The Applicant denies that any such transfer occurred, and McIntyre has also reportedly denied the transfer according to the Judgment. The Opponent has not responded to these denials or provided any evidence of a transfer. Furthermore, the Management Agreement requires any new assignee to sign a Deed of Covenant agreeing to the terms of the Management Agreement, which agreement includes an acknowledgment that the Applicant owns the Business Name. Therefore, even if a transfer did occur, it did not include ownership of the Trade Mark, which remains with the Applicant.

26.     The s 58 ground of opposition is unsuccessful.

Section 60

27.     Section 60 provides:

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

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

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

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

28.     To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation, the use of the Trade Mark would be likely to deceive or cause confusion.

29.     In its SGP, the Opponent claims that the Trade Mark belongs to the business established for holiday rental at the Apartment Block which business is owned by the Opponent and the Trade Mark has acquired a reputation through use in relation to the business since 1991.

Reputation

30.     Reputation, in the context of section 60, refers to the ‘recognition of [the other mark] by the public generally’.[21]  The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[22]  What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[23]   In the present case, the relevant market is relatively large being Australian and international travellers looking to book holiday accommodation.

[21] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

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

[23] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

31.   Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[24]  The reputation of a trade mark may be established in a variety of ways, including by demonstrating that a significant number of people have been exposed to the trade mark,[25] or by providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[26]  

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

[25] Ibid [118].

[26] McCormick (n 13), [86].

32.     The Opponent has not adduced any data about the nature and extent of use or promotion of the Trade Mark.  In the absence of any empirical data from the Opponent, such as annual revenue figures from letting apartments in the Apartment Block for holiday rental, occupancy rates, promotional expenditure by the Opponent, it is not possible to find that the Opponent has a reputation in the Trade Mark. 

33.     The s 60 ground of opposition fails.  

Section 42(b)

34.     Section 42(b) provides that that an application for the registration of a trade mark must be rejected if its use would be contrary to law.

35.     The Opponent claims in its SGP that use of the Trade Mark would infringe copyright and constitute passing off.

36.     There is no evidence adduced by the Opponent as to ownership of copyright in the Trade Mark. 

37.     The elements of passing off are:

i.reputation in the relevant mark;

ii.misrepresentation leading to deception; and

iii.damage, or likelihood of damage, to the goodwill of the business relating to the relevant mark.[27]

[27] Reckitt & Colman Products Limited v. Borden Inc (1990) 17 IPR 1 (Lord Oliver).

38.     I have already found that the Opponent has not established a reputation in the Trade Mark.  Further, the Opponent has not established through evidence any of the other elements required to establish passing off.  Hence the s 42(b) ground of opposition is unsuccessful.

Section 62(a)

39. Pursuant to s 62(a), the registration of a trade mark may be opposed on the ground that the application, or a document filed in support of the application, was amended contrary to the Act.

40.     The Opponent particularised this ground of opposition in its SGP as set out below:

The trade mark application was amended contrary to the Trade Mark Act because it (sic) the applicant asked for registration under Medcraft Pty Ltd or SP48462. Medcraft Pty Ltd does not intend to use the logo. SP48462 cannot trade under the Strata Scheme Management Act 2015 (NSW).

41. The Opponent has not adduced any evidence on this ground. The document assigning the Application from Medcraft Pty Ltd to the Applicant is not in evidence. However, I note that this document was found by IP Australia to meet the necessary requirements for IP Australia to record the change of ownership. Under Reg 21.15(4), I am not bound by the rules of evidence and am entitled to inform myself of any matter that I reasonably believe is appropriate. Accordingly, I have reviewed the document filed to record the assignment to the Applicant and consider that based on this document, it was appropriate for IP Australia to record the change of ownership. Further as noted at [23], the Applicant can own and use or authorise use of the Trade Mark under s 106(1) of the Strata Schemes Management Act 2015 (NSW). In the circumstances, I am not satisfied that the Application was amended contrary to the Act.

42.     The ground of opposition under s 62(a) is not established.

Section 62(b)

43.     Section 62(b) provides that the registration of a trade mark may be opposed on the basis of evidence or representations that were false in material particulars.

44.     The Opponent alleges in its SGP that the Opponent is the owner of the Trade Mark and that the Examiner accepted the Application based on false information because the Examiner assumed that the Website identified by the Examiner’s Google search was owned by the Applicant when it is the Opponent’s website.

45.     To succeed on this ground, the Opponent must not only demonstrate that there were representations made that were false in material particulars but also that there is a causal connection between those false representations and the decision to accept the application for registration.[28]

[28] Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company (2018) 262 FCR 76

46.     The purpose of a Google search being conducted in the course of examining a trade mark application is to assist in a determination of whether or not the trade mark is capable of distinguishing an applicant’s goods.  It is not to confirm whether or not an Applicant is the owner of a trade mark.  Third party use of a trade mark is not a ground for objection at the examination stage.  The examiner’s only responsibility at the filing and examination stages in relation to ownership of a trade mark is to confirm that the Applicant has a legal personality.

47.     The Examiner did not identify any grounds for rejection during examination of the Application.  Even if the Examiner identified the Website during the Google search and attributed the Website to the Applicant, this does not constitute evidence or representations that were false in material particulars and did not affect the decision to accept the Application.

48.     Accordingly, the ground of opposition under s 62(b) is not established.

Section 62A

49.     Section 62A states that a trade mark may be opposed on the grounds that the application for the mark was made in bad faith.

50. The term ‘bad faith’ is not defined in the Act. However, Justice Bennett considered the concept of bad faith and summarised the relevant principles in DC Comics v Chequout Pty Ltd:

·     Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

·     Bad faith does not require dishonesty.

·     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 fell 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.

·     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.[29]

[29] [2013] FCA 478, [62].

51.     The Opponent particularises this ground of opposition as follows:

The applicant is seeking to defraud the public by claiming ownership of reputation it has built over the years by the business, now known as QE Family Pty Ltd trustee for Qe Tai Sing Family Trust trading as Byron Bay Beachfront Apartments.

52.     I have already found that the Applicant is the owner of the Trade Mark and hence cannot ‘defraud the public’ by asserting that ownership.  In my view, there is nothing in the evidence to support the Opponent’s claim that the Applicant filed the Application in bad faith and accordingly, the s 62A ground of opposition fails.

Decision

53.    Section 55 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.

54.     The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2410434 may proceed to registration not less than one month from the date of this decision. 

55.    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.

56. 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, in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

5 August 2025