Re: Opposition by Action North America Inc to registration of trade mark application number 1765969 (classes 12, 35) - pwonly - in the name of Aobao International Pty Ltd
[2021] ATMO 52
•15 June 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Action North America Inc to registration of trade mark application number 1765969 (classes 12, 35) – pwonly – in the name of Aobao International Pty Ltd
| Delegate: | Nicholas Barbey |
| Representation: | Opponent: Not represented at the hearing Applicant: IP Wealth |
| Decision: | 2021 ATMO 52 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 44, 58, 58A, 60 and 62A considered – s 58 partially established – remaining grounds not established – application to be amended and proceed to registration |
Background
This decision concerns an opposition brought by Action North America Inc (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:
Trade Mark: pwonly (‘Trade Mark’)
Application Number: 1765969
Applicant: Aobao International Pty Ltd (‘Applicant’)
Priority Date: 22 April 2016
Specification: Class 12: engines for automobiles; engines for motor land vehicles; motor land vehicle engines
Class 35: retailing of motorcycles and motorcycle parts and accessories (by any means)
(‘Applicant’s GS’)
Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.
The Trade Mark’s acceptance for possible registration was advertised in the Australian Official Journal of Trade Marks on 15 April 2019. The Opponent filed a notice of intention to oppose registration of the Trade Mark on 17 June 2019 followed by a Statement of Grounds and Particulars (‘SGP’) on 17 July 2019. A notice of intention to defend was filed by the Applicant on 20 September 2019.
The evidence stages followed and they comprised of:
| Evidence in Support (‘EIS’) |
|
| Evidence in Answer (‘EIA’) |
|
The Applicant requested an oral hearing and filed submissions on 10 March 2021 (‘Applicant’s Submissions’). The Opponent did not file submissions and took no further part in the matter. As a delegate of the Registrar of Trade Marks, I heard this matter by telephone conference on 17 March 2021. The Applicant was represented at the hearing by Michelle Calder and Megan Thompson, both of IP Wealth.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A of the Act. To be successful in this opposition, the Opponent bears the onus of establishing at least one of these grounds.[1]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 22 April 2016, being both the filing and priority date of the Trade Mark.
[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
Evidence
The Opponent’s evidence
According to the Pham Declaration, the Opponent is the registered owner of the words ‘PW ONLY’ in the United States of America[3] and it is also the owner of the following Australian trade mark registration:
Trade Mark: PW ONLY (‘Opponent’s Mark’)
Registration Number: 1761747
IR Number: 1294156
Priority Date: 25 February 2016
Specification: Class 16: Decals
Class 25: Clothing, namely, hats, shirts, jackets, sweaters, hoodies, jerseys, pants
Class 35: Retail and online retail store services featuring clothing, decals, books, motorcycle engine parts, motorcycle frame parts, engine oil, motorcycle tires
[3] See Annexure LP-3 to the Pham Declaration which contains a copy of the certificate issued by the United States Patent and Trademark Office for registration number 4,865,719 in respect of classes 16, 25 and 35. The registration date is stipulated as being December 8, 2015.
The Pham Declaration explains that the Opponent and Applicant have previously appeared before the Registrar. In Action North American Inc v Aobao International Pty Ltd (‘Earlier Proceeding’),[4] the Applicant opposed the extension of protection to Australia of the Opponent’s Mark. The delegate in the Earlier Proceeding determined that the grounds of opposition under ss 42(b), 58, 59, 60 and 62A of the Act were unsuccessful and protection was subsequently extended to the Opponent’s Mark. Relevantly, the evidence filed demonstrated that the Opponent was the first to use the trade mark ‘PW ONLY’ in Australia. As such, the delegate found that the Opponent was the owner of the trade mark ‘PW ONLY’.
[4] [2018] ATMO 133 (‘Earlier Proceeding’).
The DeNardis Declaration, which was originally filed as evidence in answer in the Earlier Proceeding, provides a brief history of the Opponent as well an overview of the usage of the Opponent’s Mark. Relevantly, the Opponent is an American entity that was established in 1997 and has a global customer base. First use of the Opponent’s Mark in relation to motorcycle parts occurred in 2005 and, since at least 2006, the Opponent has continuously sold motorbike parts and accessories by reference to the Opponent’s Mark to Australian consumers.[5] Orders may be placed by Australian consumers through the Opponent’s websites[6] or via its online eBay® store. To this end, Confidential Annexures D and E to the DeNardis Declaration disclose particulars regarding sales made under the Opponent’s Mark to Australian consumers between 2007 and 2008.
The Applicant’s evidence
[5] DeNardis Declaration, [11].
[6] See According to Cheng 1, the Applicant was established in 2002 and is a retailer, wholesaler and importer specialising in motorcycle spare parts. Mr Cheng declares that the Applicant has continuously used the Trade Mark in Australia in relation to motor vehicle and motorcycle parts (including the retail of same) since October 2008. At the time of adopting the Trade Mark, Mr Cheng states that the Applicant was unaware of the Opponent and the Opponent’s Mark. The Applicant only became aware of the Opponent’s Mark in May 2016 when it received an examination report from IP Australia. Mr Cheng observes that no instances of confusion between the respective trade marks have been brought to the Applicant’s attention.
11. Originally filed as evidence in support in the Earlier Proceeding, Cheng 2 provides particulars regarding the Applicant’s turnover and advertising expenditure since it first adopted the Trade Mark until early 2016. The domain name, (‘Domain Name’), was registered by the Applicant in October 2008 and links to a website featuring the Trade Mark as well as various iterations of same. According to Cheng 2, the Trade Mark has been promoted by the Applicant via a social media platform as well as through various print mediums.
Discussion
Section 58
12. Section 58 of the Act relevantly provides:
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.
13. At the outset, it is necessary to consider what bearing, if any, the decision in the Earlier Proceeding has on the current s 58 ground of opposition. The delegate in the Earlier Proceeding found ‘PW ONLY’ (i.e. the Opponent’s Mark) to be substantially identical to ‘PWONLY’ (i.e. the Trade Mark) and considered each party’s claim for retail of motorcycle spare parts to be ‘the same kind of thing’.[7] In the delegate’s view, the evidence demonstrated that the Opponent was the first to use the trade mark ‘PW ONLY’ and there was no compelling basis to infer that it had been abandoned. Accordingly, the delegate decided that the Opponent was the owner of the trade mark ‘PW ONLY’ in Australia in relation to the retailing of motorcycle spare parts.[8]
[7] Earlier Proceeding (n 4) [22].
[8] Ibid [23].
14. In this case, the trade marks, parties and evidence filed are essentially identical to that which was before the delegate in the Earlier Proceeding. Given the current s 58 ground of opposition involves a similar line of inquiry to the Earlier Proceeding, the question naturally arises as to whether a form of issue estoppel exists due to the delegate’s finding in the Earlier Proceeding.[9] Despite multiple opportunities to do so, neither party raised this specific point. In my view, deliberation as to whether an estoppel applies to the current opposition ground is ultimately unnecessary. For the reasons outlined below, I am satisfied by the evidence before me that the Opponent is the owner of the Trade Mark with respect to the ‘retailing of motorcycle parts and accessories (by any means)’ as particularised in the application. As such, I see no reason to disturb the delegate’s finding in the Earlier Proceeding. There are, however, additional matters that were not required to be assessed by the delegate which do require attention.
[9] See, eg, Bogaards v McMahon [1988] [1988] FCA 161, [45]; Blair v Curran [1939] HCA 23; (1939) 62 CLR 464, 531-532; Administration of the Territory of Papua and New Guinea v Guba [1973] HCA 59; (1973) 130 CLR 353, 453.
15. Turning to the matter at hand, the ground of opposition was particularised in the SGP as follows:
The Opponent commenced use of its PW ONLY trade mark in Australia around 2006 in relation to the same kind of thing as the goods/services covered under the Applicant’s trade mark which is before the filing date of the Applicant’s mark and/or first use of the Applicant’s trade mark. Therefore, the Applicant is not the owner of the PWONLY trade mark.
16. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd (‘Anchorage’) wherein the Full Court of the Federal Court observed:
ownership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[10]
[10] [2018] FCAFC 6, [49] (‘Anchorage’).
17. Accordingly, the Opponent must establish the following requirements to succeed under this ground of opposition:
the trade mark relied upon by the Opponent is at least substantially identical to the Trade Mark[11] (‘First Requirement’);
the Applicant’s GS 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[12] (‘Second Requirement’); and
a person other than the Applicant has the earlier claim to ownership based on use of the trade mark relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Trade Mark by the Applicant[13] (‘Third Requirement’).
[11] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (‘Carnival Cruise’).
[12] Re Hicks’ Trade Mark (1897) 3 ALR 75.
[13] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.
18. It is well established that the test for substantial identity requires a side by side comparison of the trade marks having regard to their essential features.[14] Where a total impression of resemblance emerges from this comparison, the trade marks will be considered substantially identical. Here, only two differences exist between the trade marks. First, the Opponent’s Mark is presented in upper case letters whereas the Trade Mark is in lower case. Second, the Opponent’s Mark has a space inserted between the letters ‘PW’ and ‘ONLY’ whilst the Trade Mark does not. In my assessment, neither difference significantly alters the total overall impression of resemblance which emerges from the comparison. The variance in capitalisation is inconsequential[15] and there is ‘no material distinction to be drawn’[16] between ‘PW ONLY’ and ‘PWONLY’. Put simply, the essential feature of each trade mark remains the word elements ‘PW’ and ‘ONLY’. The Trade Mark is substantially identical to the Opponent’s Mark and the First Requirement is satisfied.
[14] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [12].
[15] Morny Ltd’s Trade Marks (1951) 68 RPC 131, 149-150.
[16] Carnival Cruise (n 11) [63].
19. With respect to the Second Requirement, the meaning of ‘same kind of thing’ was considered in Colorado Group Limited v Strandbags Group Pty Limited wherein Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes … This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods "though not identical... yet substantially the same"[17]
[17] [2007] FCAFC 184, [89] (emphasis added) (citation omitted).
20. More recently, the Full Court of the Federal Court observed that determining whether goods or services are of the same kind can be resolved by ‘asking whether the relevant goods or services are essentially the same’.[18] The EIS demonstrates that the Opponent’s Mark has been used in relation to the retail of motorcycle parts.[19] Evidently, this is the same kind of service as the Applicant’s claim for ‘retailing of motorcycle parts and accessories (by any means)’. Equally, the retail of motorcycle parts is clearly not the same kind of thing as any of the goods claimed by the Applicant. The Applicant’s remaining claim, being the ‘retailing of motorcycles (by any means)’, is unquestionably similar to the retailing of motorcycle parts given such services would be provided through the same trade channels and targeted at the same class of customers. However, it is not ‘essentially the same’ as the Opponent’s specific retail service and thus does not constitute the same kind of service. The retail of motorcycles involves selling the fully assembled motorcycle as a single unit and is not a ‘true equivalent’ of retailing individual motorcycle parts. Consequently, the Second Requirement is satisfied in respect the Applicant’s class 35 claim for ‘retailing of motorcycle parts and accessories (by any means)’.
[18] Anchorage (n 10) [64].
[19] See Confidential Annexures D and E to the DeNardis Declaration.
21. In relation to the Third Requirement, the EIS demonstrates that sales to Australian consumers of motorcycle parts under the Opponent’s Mark took place in 2007 with the earliest documented use being 20 July 2007.[20] The EIS contains additional examples of use of the Opponent’s Mark in September, November and December 2007. By its own evidence, the Applicant’s first purported use of the Trade Mark is stated as being in October 2008.[21] Given the Opponent’s demonstrated use precedes this date by more than one year, the Third Requirement is satisfied.
[20] See Confidential Annexure E to the DeNardis Declaration.
[21] Cheng 1, [13]; Cheng 2, [6].
22. The Applicant’s Submissions did not contest whether the requirements set out at [17] of this decision had been satisfied. Instead, emphasis was placed on the Applicant’s alleged honest concurrent use of the Trade Mark under s 44(3)[22] of the Act as well as the Opponent’s apparent failure to provide evidence of continued use of the Opponent’s Mark. The former allegedly operates as an exception to the s 58 ground of opposition whilst the latter is said to be indicative of the Opponent’s Mark having been abandoned. On either basis, the Applicant contended that this ground of opposition ‘must fail’.[23]
[22] The Applicant’s Submissions are premised on honest concurrent use of the Trade Mark having been ‘adequately shown’. However, the application for the Trade Mark was accepted with the following endorsement: ‘Provisions of subsection 44(4) and/or Reg 4.15A(5) applied’ and not under the provisions of subsection 44(3).
[23] Applicant’s Submissions, [46].
23. The first argument advanced by the Applicant requires s 58 to be interpreted as being subject to the honest concurrent user exception under s 44(3) of the Act. This specific issue has not been the subject of direct judicial consideration, however, the observations of Kenny J in McCormick & Company Inc v McCormick (‘McCormick’) regarding whether s 60 is subject to s 44(3) of the Act are instructive:
Parts 4 and 5 of the Act relate to separate stages in the registration process. … Within Division 2 of Part 4, s 44(1) provides for a ground for rejecting an application before acceptance by the Registrar. Subsection 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a Division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.[24]
[24] McCormick & Company Inc v McCormick [2000] FCA 1335, [93] (emphasis added) (‘McCormick’). See also Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719, [87]; Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94, [211]-[216]; Optical 88 Limited v Optical 88 Pty Limited (No 2) [2010] FCA 1380, [186]-[187].
24. The Applicant’s Submissions provided no authority in support of its position. Similar arguments have been placed before the Registrar in the past and on each occasion s 44(3) has been considered to have no application to an opposition under s 58 of the Act.[25] In my view, Kenny J’s reasoning concerning the relationship between s 44(3) and s 60 has similar force with respect to s 58 of the Act. Section 58 is not expressed as being qualified by s 44(3) and, like s 60, it is a stand-alone ground of opposition. The statutory exception in s 44(3)(a) does not apply to s 58.
[25] See, eg, Tosca TravelGoods (Aust) Pty Ltd v Samsonite IP Holdings S.a.r.l [2015] ATMO 39, [44]; Goodyear Tire & Rubber Compan v Dunlop Aircraft Tyres [2015] ATMO 14, [60]-[62] wherein the delegate considered the possibility of s 58 being subject to s 44(3)(b).
25. For completeness, I note the recent decision of Australian Institute of Management v The Australian Institute of Music Limited (‘AIM’).[26] Whilst acknowledging that s 44(3)(a) has no bearing on s 58 of the Act, the delegate in AIM found the applicant to be a co-owner of the trade mark at common law by virtue of its ‘extensive evidence’ of honest concurrent use which encompassed ‘almost 25 years at the relevant date’.[27] Relevantly, the opponent in AIM essentially relied wholly on the registration of the trade mark and failed to provide the delegate with any cogent evidence of prior use relating to the goods and services. The circumstances and evidence in the current proceeding are plainly distinguishable. Here, the concurrent use spans approximately eight years and the Opponent has adduced evidence which established that it was the first user of the Trade Mark. It is thus entitled to be considered the owner of the Trade Mark. Bearing this in mind, I am not satisfied that the Applicant is a co-owner at common law of the Trade Mark.
[26] [2021] ATMO 23, [48]-[51] (‘AIM’).
[27] Ibid [50].
26. The second argument raised by the Applicant concerned the alleged abandonment of the Opponent’s Mark. The Applicant highlighted that the EIS does not demonstrate any use of the Opponent’s Mark after 2008, which is approximately eight years before the Trade Mark’s priority date. The Applicant asserts that it is ‘reasonable to assume that any claim to ownership by the Opponent to the Opponent’s Mark in Australia is no longer applicable given the extent of the time passed’.[28] I do not accept this assertion. Abandonment is a question of fact and it should not be inferred from mere non-use of a trade mark.[29] In Riv-Oland Marble Company (Vic) Pty Ltd v Settef SpA, Bowen CJ stated:
Counsel for the Marble Co did argue that Settef had abandoned its trade mark through dis-use … However, in my opinion, to show abandonment of the mark in circumstances such as the present it would be necessary to demonstrate more than slightness of use. There would have to be some evidence indicating an intention to abandon the trade mark to result in the right to proprietorship being lost.[30]
[28] Applicant’s Submissions, [44].
[29] King Par, LLC v Brosnan Golf Pty Ltd [2014] 795, [188].
[30] [1988] FCA 344, [8]-[9] (emphasis added).
27. It is clear that mere non-use of a trade mark does not necessarily equate to abandonment. I note this same line of argument was pursued by the Applicant in the Earlier Proceeding. The delegate was not persuaded that abandonment could be inferred, noting:
there is no evidence of intention to abandon and the paucity of corroborated evidence of use of the [Opponent’s Mark] by the [Opponent] between 2008 and the priority date of the [Opponent’s Mark] might be explained by the drafter of the declaration focusing only on the need to show use earlier than that asserted by the [Applicant] in Mr Cheng’s declaration.[31]
[31] Earlier Proceeding (n 4) [26].
28. In this proceeding, the period in which the non-use of the Opponent’s Mark is alleged to have occurred encompasses an additional two months compared to the Earlier Proceeding.[32] The Applicant has not disclosed any new evidence indicating the Opponent had or was in the process of forming an intention to abandon the Opponent’s Mark. In addition to the reasons listed by the delegate in the Earlier Proceeding,[33] it is plausible that the Opponent formed the view that the evidence already filed spoke for itself given the favourable outcome in the Earlier Proceeding and filing additional evidence would thus be redundant. Equally, the fact that the Opponent defended the Earlier Proceeding and instituted the current opposition is consistent with an intention to continue use of the Opponent’s Mark. In short, the Applicant has not provided any direct evidence that the Opponent’s Mark has been abandoned and I am not satisfied that there is a cogent basis to draw this inference.
[32] The filing date of the Opponent’s Mark is 25 February 2016 which is approximately two months prior to the Trade Mark’s filing date of 22 April 2016.
[33] Earlier Proceeding (n 4) [26]-[32].
29. At the hearing, Ms Calder further claimed that the Opponent had acquiesced to the Applicant’s use of the Trade Mark such that it should be prevented from asserting ownership of same. In the Applicant’s view, the Opponent has a duty to monitor the market including the Applicant’s use of the Trade Mark. The Opponent’s acquiescence,[34] so the argument goes, is reflected in its failure to defend the present proceeding. That is, the Opponent did not provide evidence demonstrating use of the Opponent’s Mark after 2008 nor did it file written submissions or attend the hearing. This argument is not persuasive for the following reasons. First, no evidence has been led by the Applicant to indicate that the Opponent was even aware of the Trade Mark prior to the Earlier Proceeding. Second, the Opponent’s conduct in the Earlier Proceeding and steps undertaken in the current proceeding illustrate its active opposition to the Applicant’s use of the Trade Mark. Third, the Opponent’s decision to take no further part in this proceeding after the evidence stages had closed cannot, by itself, be construed as ‘standing by’ or inaction on its behalf. As noted above, the Opponent may have considered further involvement unnecessary given the favourable outcome of the Earlier Proceeding. It follows that I am not satisfied that the Opponent acquiesced to the Applicant’s use of the Trade Mark.
[34] The Applicant did not provide written submissions addressing this point. For the purpose of present discussion, ‘acquiescence indicates the contemporaneous and informed ("knowing") acceptance or standing by which is treated by equity as "assent" (i.e. consent) to what would otherwise be an infringement of rights’ as identified by Deane J in Orr v Ford [1989] HCA 4, [10].
30. Accordingly, I am satisfied that the Opponent is the owner of the Trade Mark in relation to the class 35 service for ‘retailing of motorcycle parts and accessories (by any means)’. The ground of opposition has been established with respect to the aforementioned service.
31. I now turn to consider the remaining grounds of opposition, as nominated in the SGP, in relation to the residual items specified in the Applicant’s GS (‘Residual GS’), namely:
Class 12: engines for automobiles; engines for motor land vehicles; motor land vehicle engines
Class 35: retailing of motorcycles (by any means)
Section 60
32. Section 60 of the Act relevantly provides:
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.
33. This ground of opposition was particularised in the SGP as follows:
The Opponent has been using its PW ONLY trade mark worldwide since around 2005 and in Australia since around 2006 in connection with the same or similar goods/services covered under the Applicant’s trade mark. The use of the Opponent’s PW ONLY trade mark has been extensive in relation to the same or similar goods/services covered by the Applicant’s trade mark. As a result of the extensive use of the Opponent’s PW ONLY trade mark, the Opponent has acquired a reputation in its trade mark and, because of that reputation, the use of the Applicant’s trade mark would be likely to deceive or cause confusion.
34. To establish this ground of opposition, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before 22 April 2016. The Opponent must then show that because of this reputation use of the Trade Mark would be likely to deceive or cause confusion.
The meaning of reputation was considered by Kenny J in McCormick as referring to ‘the recognition of the [trade mark] by the public generally’.[35] Her Honour quoted with approval the following statement of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd, (‘ConAgra’):
reputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ... [36]
[35] McCormick (n 24) [81].
[36] [1992] FCA 159, [118] (‘ConAgra’).
36. The reputation in the other trade mark must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[37] but this is contextualised by the nature of the relevant market. The reputation must also be established as a matter of fact by the Opponent.[38]
[37] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170; ConAgra (n 36).
[38] ConAgra (n 36) [77].
37. In my assessment, the EIS fails to establish as a matter of fact that the Opponent’s Mark had acquired a reputation in Australia before 22 April 2016. The EIS contains a modest amount of evidence demonstrating use of the Opponent’s Mark in relation to the retail of motorcycle parts. However, it has limited probative value given the evidence only covers two years and relates to use of the Opponent’s Mark approximately eight years before the priority date. It follows that I am not in a position to assess how and what trade mark(s) may have been used by the Opponent in the period spanning from 2008 to 22 April 2016.
38. Further, only a generalised figure that allegedly represents the Opponent’s ‘gross sales of PWonly branded parts’ since 2005 has been disclosed.[39] The Opponent has failed to particularise what proportion of this figure pertains to the Australian marketplace nor does it specify the number of parts sold in any region where it allegedly operates. The DeNardis Declaration is also silent as to any advertising or promotional figures relating to the services provided under the Opponent’s Mark. Similarly, no information regarding the size or extent of its Australian consumer base is provided. Without such information, it is difficult to ascertain the nature of the alleged reputation enjoyed by the Opponent’s Mark.
[39] DeNardis Declaration, [9].
39. Accordingly, I cannot be satisfied that the Opponent’s Mark had acquired a reputation in Australia as at 22 April 2016 amongst a significant or substantial number of Australian consumers. Given the first limb of s 60 has not been satisfied, consideration of the second limb is not required.
40. The s 60 ground of opposition has not been established.
Section 42
41. Section 42(b) of the Act relevantly provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
42. To succeed under this ground of opposition, the Opponent must establish that use of the Trade Mark would be contrary to law.[40] The relevant time for assessing whether the application is contrary to law is at the priority date, namely 22 April 2016. However, ‘prospective conduct after registration’ may be considered.[41]
[40] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411] (Rangiah J).
[41] Time Warner Entertainment Company, LP v Stepsam Investments Pty Limited [2003] FCA 1502, [47].
43. The relevant part of this ground of opposition was particularised in the SGP as follows:
… the use and registration of the Applicant’s trade mark, which is substantially identical, or deceptively similar to, the Opponent’s PW ONLY trade mark, is likely to result in consumer deception or confusion in breach of the Australian Consumer Law, or in passing-off at common law.
44. The SGP seemingly identifies ss 18 and 29 of Schedule 2 to the Australian Consumer Law (‘ACL’) of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as underpinning this ground of opposition. Section 18 of the ACL pertains to conduct or representations that have, or are likely, to mislead or deceive and s 29 of the ACL deals with representations that are false or misleading.
For the reasons stated at [37] to [38] of this decision, the Opponent has failed to establish the s 60 ground of opposition. The test for ‘misleading or deceptive conduct’ under s 18 of the ACL is recognised as imposing a more stringent test than that for ‘deception or confusion’ under s 60 of the Act.[42] Consequently, I am satisfied that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL. I reach the same finding with respect to the contention that use of the Trade Mark would be contrary to s 29 of the ACL.[43]
[42] See, eg, Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).
[43] [2017] ATMO 22, [58].
46. The observations of Hill J addressing the interplay between s 52 of the superseded Trade Practices Act 1974 (Cth)[44] and passing off in Re Equity Access Pty Ltd v Westpac Banking Corporation are also relevant:
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.[45]
[44] Section 52 of the superseded Trade Practices Act 1974 (Cth), which referred to a ‘corporation’, is in substance the same as s 18 of the ACL which refers to a ‘person’.
[45] [1989] FCA 506, [40].
47. With the above in mind, I am not satisfied that use of the Trade Mark would amount to passing off at common law because I do not consider s 18 of the ACL would be contravened.
48. Accordingly, I am not satisfied that use of the Trade Mark would be contrary to law. The s 42(b) ground of opposition has not been established.
Section 62A
49. Section 62A of the Act provides:
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.
50. A finding of bad faith will not be found easily given the ‘very serious’ nature of the allegation.[46] The concept of bad faith was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2), who observed:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
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.
…
The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[47]
[46] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[47] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164]–[167].
51. The relevant part of this ground of opposition was particularised in the SGP as follows:
As a result of the extensive use of the Opponent’s PW ONLY trade mark, the PW ONLY trade mark is well-known in Australia and the Applicant would have been aware of the trade mark at the time the Applicant’s trade mark was filed. The Applicant has therefore acted in bad faith by applying to register a trade mark that is substantially identical, or deceptively similar to, the Opponent’s PW ONLY trade mark.
52. The particulars disclosed in the SGP are essentially supposition. Even if I were to accept them, equating mere awareness of the Opponent’s Mark at the time of filing the application to bad faith is untenable. The Opponent has not provided any cogent evidence to support its claims. In contrast, Mr Cheng has declared that the Applicant was unaware of the Opponent’s Mark as well as the Opponent at the time of filing the application. In such circumstances, I cannot be satisfied that the application was made in bad faith.
53. The s 62A ground of opposition has not been established.
Section 44
54. Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
…
(2) 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.
…
(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.
55. To establish this ground of opposition, the Opponent must identify at least one trade mark which satisfies the following requirements:
it is in the name of a person other than the Applicant;
it has a priority date which is earlier than the Trade Mark’s priority date;
it is substantially identical with, or deceptively similar to, the Trade Mark; and
it is in respect of goods and/or services which are either similar or closely related to the Residual GS.
56. The Opponent’s Mark was particularised in the SGP as supporting this ground of opposition. I note it is registered by a person other than the Applicant and has a priority date earlier than 22 April 2016. Pursuant to the discussion under the s 58 ground of opposition, the Opponent’s Mark is substantially identical to the Trade Mark. The Opponent’s class 35 claims for, inter alia, ‘retail and online retail store services featuring motorcycle engine parts, motorcycle frame parts’ would be similar to the Residual GS’ class 35 services and closely related to the class 12 goods. With the respect to the latter, from my own knowledge it is common for motorcycle manufacturers such as Suzuki, Kawasaki and Ducati to retail original engine parts and accessories through their own dealerships. It follows that requirements (i) to (iv) set out above are satisfied.
57. Nevertheless, it remains possible for the application to be accepted under the provisions of ss 44(3) and/or 44(4) of the Act. Relevantly, s 44(4) broadly provides that the Registrar may not reject the application if the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s Mark.
58. Considered in its entirety, the EIA establishes that the Applicant had continuously used the Trade Mark in relation to the Residual GS before 25 February 2016. Specifically, the Applicant has provided at least two invoices in relation to the Residual GS which bear the Trade Mark for each year between 2009 to 2016. Supplementing this evidence are various screenshots from 2012 onwards, which are obtained from a Wayback Machine internet archive search of the Domain Name, a social media platform and an assortment of magazine advertisements featuring the Trade Mark being used in relation to the Residual GS. Additionally, the Applicant has disclosed its annual turnover and advertising expenditure figures for each financial year from 2008-09 to 2015-16. In my assessment, the aforementioned evidence is sufficient to establish continuous use of the Trade Mark in relation to the Residual GS which commenced before the priority date of the Opponent’s Mark.
59. Accordingly, the ground of opposition under s 44 is made out on the basis of the Opponent’s Mark. However, I am satisfied that the provisions of s 44(4) of the Act apply and thus the ground under s 44 has not been established.
Section 58A
60. Section 58A of the Act relevantly provides:
Opponent's earlier use of similar trade mark
(1) This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:
(a) subsection 44(4); or
…
(2) The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:
(a) first used the similar trade mark in respect of:
(i) similar goods or closely related services; or
(ii) similar services or closely related goods;
before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and
(b) has continuously used the similar trade mark in respect of those goods or services since that first use.
61. I note that the application was accepted under the provisions of s 44(4) of the Act[48] and the Opponent’s Mark was particularised in the SGP as being the ‘similar trade mark’ mentioned in s 58A(2) of the Act.
[48] See also [58]-[59] of the decision wherein the applicability of the provisions of s 44(4) are discussed.
62. For the reasons outlined at [18] to [21] of this decision, I am satisfied that the Opponent’s Mark is substantially identical to the Trade Mark and that it was used in relation to the retail of motorcycle parts before the Applicant’s first use of the Trade Mark. For present purposes, it is sufficient to state that services for the retail of motorcycle parts would be considered similar and closely related to the Residual GS. As such, the main issue to be determined is whether the Opponent has continuously used the Opponent’s Mark since its first use.
63. The Applicant contends that the Opponent’s Mark has not been continuously used because the ‘Opponent’s evidence stops at 2008’.[49] Having reviewed the EIS, this contention has considerable merit. Other than referring to the Opponent’s foreign trade mark registration, the Pham Declaration simply acts as a conduit to introduce the DeNardis Declaration. As discussed at [9] of this decision, the DeNardis Declaration was originally filed as evidence in answer in the Earlier Proceeding. It is readily apparent that the DeNardis Declaration was drafted with the purpose of defending an opposition rather than supporting the grounds of opposition currently pressed by the Opponent. This is exemplified by the fact that there is no evidence demonstrating use of the Opponent’s Mark beyond 2008. At its highest, the DeNardis Declaration simply contains bare and unsupported statements asserting that use of the Opponent’s Mark has been continuous. In these circumstances, I cannot be satisfied that the Opponent’s Mark has in fact been ‘continuously used’ as required by s 58A(2)(b) of the Act.
[49] Applicant’s Submissions, [47].
64. The s 58A ground of opposition has not been established.
Decision
65. Section 55 of the Act relevantly provides:
Decision
(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.
66. The Opponent has made out a ground of opposition under s 58 of the Act in respect of the following class 35 service: ‘retailing of motorcycle parts and accessories (by any means)’. On 1 June 2021, I informed the Applicant’s representative that it was my intention to refuse trade mark application number 1765969 unless the Applicant’s GS were amended as follows:
Class 12: engines for automobiles; engines for motor land vehicles; motor land vehicle engines
Class 35: Retailing of motorcycles
and motorcycle parts and accessories(by any means)
67. On 11 June 2021, the Applicant agreed to the amendment and the specification has been subsequently amended in the manner set out at [66] of this decision. It follows that trade mark application number 1765969 may proceed to registration one month from the date of this decision.
68. If the Registrar is 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 the disposition of the application should be in accordance with the court’s order or direction.
Costs
69. The Applicant has sought an award of costs in its favour. The general rule is that costs follow the event. However, in the present proceeding both parties have enjoyed a measure of success. As such, it is appropriate that the parties bear their own costs.
Nicholas Barbey
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
15 June 2021
Key Legal Topics
Areas of Law
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Intellectual Property
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Administrative Law
Legal Concepts
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Standing
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Statutory Construction
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Remedies
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Procedural Fairness
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