Re: Opposition by 3Floorsup Pty Ltd to registration of trade mark application number 1829549 (class 42) Fiix in the name of Fiix Inc

[2019] ATMO 177

TRADE MARKS ACT 1995

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

Re:Opposition by 3Floorsup Pty Ltd to registration of trade mark application number 1829549 (class 42) - FIIX - in the name of Fiix Inc.

Delegate:

Jock McDonagh

Representation:

Opponent: Marcus Fleming of Counsel instructed by Norman Waterhouse Lawyers

Applicant: Andrew McRobert of Counsel instructed by Norton Rose Fulbright Australia

Decision:

2019 ATMO 177

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pursued under sections 42(b), 44, 58, 60 and 62A not established – application to proceed to registration

Background

1. This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Fiix Inc (‘the Applicant’). Relevant details of the application are set out below.

Trade Mark Application No	1829549
Trade Mark	FIIX (‘the Trade Mark’)
Filing Date:	3 March 2017 (‘the Priority Date’)
Services:	Class 42: Software as a service; online provision of web based software; software creation, design, development, advisory and engineering; Platform as a service (PAAS) providing asset and maintenance management computer software namely computer maintenance management software and enterprise asset management software; Software as a service (SAAS) providing asset and maintenance management computer software namely computer maintenance management software and enterprise asset management software (‘the Services’)

1. The application was examined in compliance with section 31 of the Act and was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 July 2017. 3Floorsup Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark on 26 September 2017, and a Statement of Grounds and Particulars (‘SGP’) on 25 October 2017. Thereafter the Applicant filed a Notice of Intention to Defend on 13 December 2017. The parties filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. Hearing Officer Nicole Worth heard the matter in Canberra on 27 May 2019 as a delegate of the Registrar of Trade Marks. Marcus Fleming of Counsel, instructed by Norman Waterhouse Lawyers, represented the Opponent. The Applicant was represented by Andrew McRobert of Counsel, instructed by Norton Rose Fulbright Australia.

3. Soon after the hearing, Hearing Officer Worth left the Office on extended leave. I have been delegated to complete and issue the decision, based on Hearing Officer Worth’s notes, the recording of the hearing, along with evidence and submissions filed for this matter.

   Grounds of Opposition

4. The Opponent nominated grounds of opposition under sections 42(b), 44, 58, 60 and 62A of the Act, all of which were pursued at the hearing. The onus is upon the Opponent to establish one or more of its grounds of opposition on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].]

5. On 2 May 2019, the Opponent sought to add a ground of opposition under section 58A of the Act. At the hearing, Hearing Officer Worth directed the parties to file submissions relating to the request, which would be dealt with in the decision on the substantive matter.

6. I have considered the submissions regarding the request to amend the SGP. A condition precedent for section 58A to apply is that I find that the requirements for the section 44(2) ground are established, but that having regard to the evidence filed by the Applicant, section 44(4) should apply. As will become apparent later in this decision, the condition precedent does not arise. Therefore, there is no need for me to consider the late request to add to the SGP.

7. The date at which the rights of the parties are to be established is the date of filing of the application for registration[2]. In this case, this date is also the priority date for sections 44 and 60.

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

   Evidence

8. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Steven Ronald Quayle (‘first Quayle declaration’)	Chief Executive Officer of the Opponent	15.03.18	SRQ-1 to SRQ-22
Evidence in Answer
Georgina Stacey Hey (‘Hey declaration’)	Partner of Applicant’s legal representative	26.06.18	GH-1 to GH-3
Marc Castel  (‘Castel declaration’)	Chief Executive Officer of the Applicant	25.06.18	MC-1 to MC-30
Evidence in Reply
Victoria Jane Martin (‘Martin declaration’)	Chartered Trade Mark Attorney and partner of the Opponent’s UK legal representative	29.08.18	VJM-1 to VJM-3
Steven Ronald Quayle (‘second Quayle declaration’)	Chief Executive Officer of the Opponent	30.08.18	SRQ-23 to SRQ-30

1. The first Quayle declaration states that the Opponent is an Australian company headquartered in Riddells Creek, Victoria. The Opponent commenced business as ‘3Floorsup’ in July 2005, and incorporated as ‘3Floorsup Pty Ltd’ in June 2007. It has a United States of America subsidiary named ‘FIXD LLC’ (formerly named ‘3Floorsup USA LLC’).

2. The declaration provides that the Opponent is a specialized business engaged in the design, development, and provision of ‘high end’ websites and sophisticated mobile software applications. One of the types of software is what is known as a ‘Computerised Maintenance Management System’ (CMMS). The software can be used by organisations that perform maintenance or repairs to equipment, assets, or property.

3. According to the first Quayle declaration, in 2008 the Opponent released a web-based CMMS product in Australia (and elsewhere) that was marketed under the trade mark ‘WTGservice’. The product was targeted at customers in the wind and energy industry in conjunction with Suzion Energy Australia and AGL Energy.

4. The first Quayle declaration states that between 2009 and 2013, the Opponent continued development of the WTGservice product, including with financial support from the Commonwealth government and the City of Melbourne. The Opponent modified its product to make it suitable for use beyond the energy industry, to facilitate its use by any business to track and manage the maintenance of equipment, assets, and property.

5. The first Quayle declaration advises that in 2013, the Opponent in conjunction with the WTGservice product decided to rebrand the product under the name and trade mark FIXD. This involved registration of the domain name fixd.io, a Twitter account and a YouTube account both in the name FIXD.

6. The Opponent commenced use of the following logo in association with its CMMS product from late-August 2014:

7. The first Quayle declaration further advises that from 25 November 2015, the Opponent ceased branding its product under WTGservice and used the word FIXD and the logo shown above on its product lines. I shall refer to other evidence from the Opponent where appropriate to grounds of opposition.

8. The Castel declaration states that the Applicant was founded in Canada on 4 June 2008, with a vision of modernising the CMMS market.  Its operations extended to across North America, Australia, the European Union, and Asia. Part of its marketing strategy was to offer its CMMS product free for a limited time.

9. The Castel declaration further states that it commenced offering its free CMMS product in Australia on 25 May 2009. The Applicant first coined its FIIX trade mark in March 2016, filing trade mark applications in Canada and USA in May 2016, the European Union in July 2016 and Australia in March 2017 as shown above.

10. The Hey declaration provides information relating to separate opposition proceedings initiated by the Applicant against the Opponent’s trade marks, but ultimately withdrawn by the Applicant.

11. The second Quayle declaration provides evidence in response to the Castel and Hey declarations, and I shall refer to it in discussion under the specific relevant grounds of opposition.

    Discussion

    Section 44:  Identical etc. trade marks

    21.   Sections 44(2) to 44(4) of the Act provide:

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

    (a)it is substantially identical with, or deceptively similar to:

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

    (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

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

    Note 1:For deceptively similar see section 10.

    Note 2:For similar services see subsection 14(2).

    Note 3:For priority date see section 12.

    Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

    (3)If the Registrar in either case is satisfied:

    (a)that there has been honest concurrent use of the 2 trade marks; or

    (b)that, because of other circumstances, it is proper to do so;

    the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

    Note:For limitations see section 6.

    (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

    (a)beginning before the priority date for the registration of the other trade mark in respect of:

    (i)the similar goods or closely related services; or

    (ii)the similar services or closely related goods; and

    (b)ending on the priority date for the registration of the applicant’s trade mark;

    the Registrar may not reject the application because of the existence of the other trade mark.

    Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

    Note 2:For predecessor in title see section 6.

    Note 3:For priority date see section 12.

    .

12. The Opponent is the owner of the following trade mark registrations:

Trade Mark Number	Trade Mark	Priority Date	Services
1812420	FIXD (‘Opponent’s word mark’)	1 December 2016	Class 42: Hosting of software as a service (SaaS); software as a service (SaaS).
1812421	(‘Opponent’s logo’)	1 December 2016	Class 42: Hosting of software as a service (SaaS); software as a service (SaaS).

1. The priority date of the Opponent’s word mark is earlier than that of the Trade Mark, and it is obvious that the Services are similar to those of the Opponent.  Accordingly, it remains for me to decide whether the trade marks of the parties are either substantially identical or deceptively similar.

2. In Registrar of Trade Marks v Woolworths[3] (‘Woolworths’) French J said at [39]:

   The logic of subs 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as "conceptually distinct" but accepted that one could not be addressed in isolation from the second:

   "The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive."

   [3] [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499

3. The assessment of the likelihood of deception or confusion is informed by the factors referred to in Woolworths by French J who said at [50]:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

4. The principle at item (v), above, and the words of Mason J in the Berlei Hestia Industries Ltd case in particular, apply with equal facility to both the Applicant’s and the Opponent’s goods.

5. The Opponent argued that the Opponent’s word mark was both substantially identical with and deceptively similar to the Trade Mark.

6. In submissions regarding the issue of substantial identity, the Opponent highlighted the similarities between the marks when compared side by side, both commencing with the word ‘FIX’ and both sounding the same and both conveying the idea of fixing. The Applicant did not concur with any of these contentions.

7. In considering the issue of substantial identity, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[4] set out the relevant test for comparison: 

   [the trade marks] should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison…

   [4] (1961) 109 CLR 407 at 414-415.

8. On a side by side comparison, the visual, aural and conceptual differences between the trade marks are such that they are not substantially identical. These differences can be summarized as follows:

   ·     FIXD contains one vowel, while FIIX has two;

   ·     FIXD could be pronounced with two syllables (‘fixed’), FIIX with one (either ‘feex’ or ‘fix’); and

   ·     While FIXD clearly conveys the idea of ‘fixed’, the past participle of the verb ‘to fix’, the same cannot be said of FIIX, which might be slightly suggestive of ‘fix’.

9. I find that the Opponent’s word mark is not substantially identical with the Trade Mark.

10. 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.

11. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell Company (Aust) Limited v Esso Standard Oil (Aust) Limited[5]:

    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]

    [5] (1961) 109 CLR 407 at 415

12. 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.

13. The decisive question is whether the use of the Trade Mark for the services in Class 42 given the prior registration for FIXD in Class 42 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.’[6]

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

14. Upon consideration of the trade marks it is clear to me that there are sufficient visual, aural, and conceptual differences to prevent a person of imperfect recollection considering the marks to be similar.

15. The visual differences between the Opponent’s word mark (and logo) and the Trade Mark are sufficient to prevent deception or confusion. As mentioned above, the aural differences are marked.

16. In coming to this conclusion, I have also taken into consideration the limited conceptual similarity between the respective trade marks. While the Opponents word mark and logo suggest having fixed something, FIIX does not. The double vowel conceit tends to be an attempt at cleverness in playing with what is presumably the word ‘fix’.

17. I am not satisfied that there is likely to be deception or confusion when all surrounding circumstances have been taken into consideration. In particular, the market for the Services is not that of ordinary consumer goods, rather the market for the Services are IT professionals working at large entities, who will typically take great care in selecting a SaaS provider. This ground of opposition has not been established.

18. Having found that section 44 has not been established, the condition precedent for considering the section 58A ground do not arise, so I need not consider whether or not I should amend the SGP to add it.

    Section 58: Applicant not owner of trade mark

19. Section 58 of the Act provides:

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

    Note:For applicant see section 6.

20. In proceedings such as these, the owner of an impugned trade mark is the person who has first authored[7] and publicly used that trade mark[8] (or one at least substantially identical[9] to it) in relation to particular goods (or goods which are the ‘same kind of thing or are ‘of like kind’)[10] or has applied to register it for those goods – whichever is the earlier.

    [7] Shell Co (Aust) Ltd v Rohm and Haas Co [1948] HCA 27; (1948) 78 CLR 601 at 625 and 627.

    [8] Buying Systems (Australia) Pty Ltd v Studio Srl [1995] FCA 1063; (1995) 30 IPR 517

    [9] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049

    [10] In re Hicks’s Trade Mark (1897) 22 VLR 636; Jackson & Co v Napper (1886) 35 Ch D 16

1. In the SGP, the Opponent particularized the Opponent’s word mark as the first authored mark for the purposes of the ground. As I have already found that the Applicant’s trade mark is not substantially identical with the Opponent’s word mark, this ground of opposition cannot be established.

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

2. Section 60 of the Act 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.

   Note:For priority date see section 12.

3. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

4. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[11]  by Kenny J at [81] – [82]:

   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?

   [11] (2000) 51 IPR 102

5. Further, at [86], Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

   48.   The Opponent submitted that it had a substantial Australian and global customer base, including both long-term and new clients, all of whom were provided SaaS and CMMS services under the Opponent’s word mark. It also submitted that a significant campaign to introduce the rebranding from WTGservices to FIXD commenced from 25 November 2015.

   49.   The Opponent referred to overlap of services offered by the Applicant, and the parties are clearly in the same market. This is an accurate statement, with which I concur.

   50.   The Opponent also submitted that there had been instances of actual confusion in the marketplace. However, I note that this is based on a statement made by the Applicant (when it was Opposing the Opponent’s FIXD registrations) to the effect that there was a likelihood of confusion. Those opposition proceedings did not result in determination regarding confusion, so I give it little weight.

   51.   The Applicant points to the short period of time the Opponent launched its marks in Australia and before the Priority Date, and notes that the EIS and EIR does not distinguish between worldwide marketing, sales, and revenue and those that relate to Australia. Further, the Australian revenue cited in the first Quayle declaration (at [45]) is in fact quite modest.

   52.   The opponent has not established reputation as it has not shown evidence high volumes of sales, substantial advertising expenditures, other promotion, consumer esteem or any other relevant evidence of reputation during the period between the launch of its rebranded services as FIXD on 25 November 2015 and the Priority Date.

   53. I concur with the Applicant’s submissions at [51] above and adopt them.

   54.   This ground of opposition has not been established. Consequently, I am not satisfied that the Opponent’s word mark had acquired a reputation in Australia before the Priority Date.

   Subparagraph 42(b)

   55. Subparagraph 42(b) of the Act provides:

   42Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)…

   (b)its use would be contrary to law.

   56.   The Opponent relies on sections 18 and 29 of the Australian Consumer Law 2010 (‘the ACL’), and the common law tort of passing off.

   57. However, in the circumstances of this matter, if the Opponent has not established that the use of the Trade Mark would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the Trade Mark would ‘mislead or deceive’ under the ACL (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[12], Gibbs C.J. said (at page 6):

   [12] [1982] HCA 44; (1982) 42 ALR 1

   The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

   58.   In the same case Mason J. said (at page 15):-

   “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

   59.   The tort of ‘passing off’ is an action available where a business wrongly suggests a connection, in the course of trade, with another’s goods or services where there is damage, or a threat of damage to the proprietary interests in the reputation or goodwill that the wronged person has built up.[13]

   60.   The tort of passing off can be traced back to Reddaway v Banham [1896] AC 199. It was in this case that Lord Herschell laid down the test for this tort, the elements of which are still used today and include goodwill, misrepresentation and damage.

   61.   To establish goodwill, a plaintiff must be prove that the ‘get-up,’ packaging, shape, brand and so on, must be associated by consumers with the product and therefore the get-up of the good or service must hold a reputation.[14] As stated by Bennett J in Natural Waters ‘the requisite reputation will be more readily found where the get-up is unique or striking, rather than descriptive, mundane, merely functional, or in common use’.[15]

   62. Since the Opponent has not established the requisite reputation under section 60, it cannot establish the elements of the tort of passing off.

   63.   The opposition under subparagraph 42(b) is not established.

   [13] Vieright Pty Ltd v Myer Stores Ltd [1995] FCA 173.

   [14] Natural Waters of Viti Limited v Dayals (Fiji) Artesian Waters Ltd [2007] FCA 200 (‘Natural Waters’)per Bennett J at [59].

   [15] At [59]

   Section 62A

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

   62A Application made in bad faith

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

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

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

8. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[16]:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[17]

   [16] [2004] EWCA Civ 1028; [2005] FSR 10.

   [17] [2012] FCA 81, [147].

9. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[18]

   [18] Ibid [165]-[166].

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

    Prior to and at the time of filing of the opposed application for the Fiix mark on 3 March 2017, and before the applicant’s purported first use of the Fiix mark on 25 November 2016 in Australia, the applicant was aware of or should have been aware of the opponent’s prior use of and reputation in the Fixd mark. The applicant filed the opposed application with an intention of using the mark in a manner which would cause consumers to mistakenly associate the applicant or the Fiix mark with the Opponent and/or the Fixd mark.

11. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[19]  The mere knowledge, before the filing date, of another person’s trade mark, without more, does not alone constitute the basis for a finding of bad faith.[20] 

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

    [20] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12 at [64].

12. The Applicant’s FIIX trade marks in the USA, EU, and Canada all pre-date the Opponent’s marks. I accept that the application for the Trade Mark is merely an extension into Australia of a trade mark already in use internationally by the Applicant.

13. I am satisfied that the Castel declaration provided a clear and convincing explanation of the development and adoption of the Trade mark.

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

    Decision

    73. At the relevant date, section 55 of the Act provided:

    55Decision

    (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.

    74.   The Opponent has not established its opposition to the registration of the Trade Mark.

    75.   The Trade Mark may then proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

    76.   Costs ordinarily follow the event and I see no reason to deviate from this. I order costs against the Opponent at the scale set out in Schedule 8 of the Regulations.

    Jock McDonagh

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    11 December 2019