Re: Opposition by Hot Air Pty Ltd to registration of trade mark application number 1866938 (39) - Cairns Hot-Air Balloon Co. with hot air balloon device - in the name of Skydive Holdings Pty Ltd

[2019] ATMO 185

TRADE MARKS ACT 1995

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

Re:   Opposition by Hot Air Pty Ltd to registration of trade mark application number 1866938 (39)

– CAIRNS HOT-AIR BALLOON CO. with hot air balloon device - in the name of Skydive Holdings Pty Ltd

DELEGATE:

Nicholas Barbey

REPRESENTATION:

Opponent: Ben Gardiner of counsel instructed by HopgoodGanim

Applicant: Siobhán Ryan of counsel instructed by O'Reilly Stevens Lawyers

DECISION:

2019 ATMO 185

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 58 ground of opposition established for all services – registration refused

Background

This decision concerns an opposition brought by Hot Air Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to registration of the following trade mark:

Trade Mark: (‘the Trade Mark’)

Application Number:          1866938

Applicant:    Skydive Holdings Pty Ltd (‘Applicant’)

Filing Date:  18 August 2017

Services:     Class 39: Air travel services; Hot air ballooning services being sightseeing tours; Provision of sightseeing tours via hot air balloon; Arranging of sightseeing tours; Conducting sightseeing tours; Operating of tours (‘Applicant’s Services’)

The application to register the Trade Mark was examined as required by s 31 of the Act and its acceptance was advertised in the Australian Official Journal of Trade Marks on 4 January 2018.

The Opponent filed its Notice of Intention to Oppose registration on 23 January 2018 and a Statement of Grounds and Particulars (‘SGP’) on 8 February 2018.

The Applicant filed its Notice of Intention to Defend the Trade Mark on 27 February 2018.

The Opponent filed its Evidence in Support (‘EIS’) and this was followed by the Applicant filing its Evidence in Answer (‘EIA’). In turn, the Opponent filed Evidence in Reply (‘EIR’).

At the conclusion of the evidence filing period, both parties were advised of their right to request a hearing or to make written submissions. The Opponent requested an oral hearing and filed written submissions (‘Opponent’s Submissions’) on 11 June 2019. The Applicant filed written submissions on 17 June 2019.

As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 25 June 2019. Ben Gardiner of counsel appeared on behalf of the Opponent and Siobhán Ryan of counsel represented the Applicant.

During the hearing, reference was made to two recent decisions – namely, the Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd (‘Trident’)¹ and the Federal Court decision of Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney Jane’).² As both these decisions were potentially relevant and were issued after written submissions had been filed by both parties, I invited the parties to file supplementary submissions addressing these decisions. Both parties availed themselves of this opportunity with the Opponent filing submissions on 3 July 2019 followed by the Applicant filing submissions (‘Applicant’s Supplementary Submissions’) on 10 July 2019.

Grounds of opposition, onus and standard of proof

In the SGP, the Opponent nominated grounds of opposition under ss 58, 59 and 60 of the Act. However, the s 59 ground of opposition was not pressed in the Opponent’s Submissions or at the hearing. To be successful in this opposition, the Opponent needs to establish at least one of the pursued grounds of opposition.

1 [2019] FCAFC 100 (‘Trident’).

2 [2019] FCA 923 (‘Rodney Jane’).

The Opponent bears the onus of establishing the ground of opposition.³ The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.⁴ The date at which the rights of the parties are to be determined is 18 August 2017, being the filing date of the application⁵ which here is the same as the ‘priority date’ stipulated in s 60.

Evidence

The following declarations were filed as evidence in this proceeding:

EIS

Statutory Declaration of Briar Auriel Francis dated 6 June 2018 with Exhibits 1 to 8 (‘Francis 1’);

Statutory Declaration of Clayton Dene Priddle dated 6 June 2018 with Exhibits 1 to 21 (‘Priddle Declaration’).

EIA

Statutory Declaration of Anthony Penn Boucaut undated with Exhibits 1 to 6 (‘Undated Declaration’);

Statutory Declaration of Anthony Penn Boucaut dated 10 September 2018 with Exhibit 1. Exhibit 1 to this declaration contains a dated and true copy of the Undated Declaration (‘Boucaut Declaration’).

EIR

Statutory Declaration of Briar Auriel Francis dated 15 November 2018 with Exhibits 1 to 6 (‘Francis 2’).

Preliminary matter

The Applicant’s Supplementary Submissions objected to certain arguments advanced under the s 58 ground of opposition.⁶ Specifically, the proposition that Raging Thunder Balloon Adventures Pty Ltd (‘RTBA’) was the first user of the Trade Mark was not detailed in the SGP. The Applicant submitted the omission of this argument in the SGP meant the s 58 ground of opposition was deficient and it should be dismissed.

3 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

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

5 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4].

6 Applicant’s Supplementary Submissions, [10]–[12].

It is true that RTBA’s use of the Trade Mark was not particularised in the SGP. However, it is equally true that the Applicant had ample notice of the Opponent’s reliance on this line of argument under the s 58 ground of opposition. It is apparent from the evidence and written submissions filed by both parties that RTBA’s use was at issue. Indeed, RTBA’s use was the subject of debate at the hearing. In these circumstances, I do not consider the Applicant to have been taken by surprise or prejudiced by the Opponent’s failure to particularise this specific argument in the SGP. Accordingly, I will consider this issue of RTBA’s use of the Trade Mark in addition to those specified in the SGP.

The Opponent’s evidence

Francis 1 outlines the declarant’s investigations surrounding the ownership of the Trade Mark. Exhibits 1 to 3 to Francis 1 contain archived and current pages of the website ‘ (‘Website’). The declarant points out that the copyright notice on the archived pages of the Website refer to ‘Raging Thunder Balloon Adventures Pty Ltd trading as Cairns Hot Air Balloon Co’⁷ and an identical notice also appears on current pages of the Website.⁸ Meanwhile, the terms and conditions of the Website are specified as being between the consumer and a company named ‘Raging Thunder Pty Ltd’ (‘RT’).⁹ The declarant’s investigation also uncovered the domain name registrant of the Website as being RTBA.¹⁰

According to Francis 1, commercial operators of hot air balloon flights in Australia are required to hold an Air Operator’s Certificate (‘AOC’) issued by the Civil Aviation Safety Authority.¹¹ The declarant outlines that searches undertaken of the AOC register indicate that RTBA holds an AOC but the Applicant does not.¹² The declarant states that an AOC is not transferable between

7 Francis 1, [5].

8 Ibid [10].

9 Ibid [6].

10 Ibid [11].

11 Civil Aviation Act 1988 (Cth) s 27.

12 Francis 1, [8].

entities¹³ and concludes that the Applicant is not the owner of the Trade Mark based on the results returned.

The Priddle Declaration states that the Opponent has used the trade mark ‘HOT AIR CAIRNS’ since at least 1997.¹⁴ Exhibits 1 to 4 to the Priddle Declaration contain brochures, a conference slideshow and archived screenshots of the Opponent’s website demonstrating use of various trade marks incorporating the words ‘HOT AIR’. Examples of the trade marks used include:

HOT AIR

Hot Air Cairns

According to the Priddle Declaration, the Opponent has also used ‘HOT AIR BALLOON CAIRNS’ as well as ‘HOT AIR’ as trade marks prior to March 2017.¹⁵ Exhibits 5 to 13 to the Priddle Declaration contain screenshots of the Opponent’s social media platforms, website and reviews from third party websites which demonstrate use of these trade marks or iterations thereof. The declarant also discusses three instances of alleged consumer confusion between one of the Opponent’s many trade marks and the Trade Mark.

Francis 2 provides historical data pertaining to the Website’s registration details. Exhibit 1 to Francis 2 reveals that RTBA has been the Website’s sole registrant since its creation. Company extracts of Experience Co Limited (‘XCO’), the Applicant, RT and RTBA from the records of the Australian Security & Investments Commission (‘ASIC’) are provided in Exhibit 2 to Francis 2.

13 Civil Aviation Act 1988 (Cth) s 27(8).

14 Priddle Declaration, [11].

15 Ibid [17], [31].

According to the extracts, the corporate group to which the Applicant belongs can be summarised as follows:

The Applicant’s evidence

The Boucaut Declaration explains that the Applicant is a wholly owned subsidiary of XCO. In October 2016, XCO acquired all the issued shares in the capital of RT and, by extension, acquired RTBA given this entity was a wholly owned subsidiary of RT.¹⁶ Mr Boucaut states that he is the chief executive officer of XCO. Anthony Graeme Ritter (‘Mr Ritter’) and Mr Boucaut are the executive directors of XCO and are the directors of the Applicant. After XCO’s acquisition of RT, both Mr Ritter and Mr Boucaut were appointed as directors of RT and RTBA.

16 Boucaut Declaration, [2]–[3].

According to the Boucaut Declaration, the Applicant is the owner of all the trade marks used by XCO and its subsidiaries. Mr Boucaut states the Applicant’s directors resolved in November 2016 that the Applicant should adopt the phrase ‘CAIRNS HOT AIR BALLOON CO’ for use by RTBA via licence. Exhibit 3 to the Boucaut Declaration contains an ASIC extract demonstrating the phrase was registered as a business name on 29 November 2016. Mr Boucaut explains that a third party was engaged by the Applicant to create the Trade Mark because the Applicant’s directors believed this would improve their prospects of achieving registration under the Act. The resultant copyright subsisting in the Trade Mark was assigned from the third party to the Applicant.

Mr Boucaut states that RTBA commenced use of the Trade Mark on 13 March 2017 with the licence and authorisation of the Applicant.¹⁷ Exhibit 4 to the Boucaut Declaration contains a copy of a trade mark licence agreement made on 20 March 2017 between the Applicant and RTBA (‘Licence Agreement’). Mr Boucaut responds to the observations made in Francis 1 regarding the copyright notice appearing on the Website. The wording of the copyright notice can be explained on the basis that, aside from the Trade Mark, RTBA is the copyright owner of the literary and artistic works which appear on the Website.¹⁸

Finally, Mr Boucaut acknowledges that he is aware of the Opponent’s hot air balloon business operating in Cairns. However, Mr Boucaut is not aware of any confusion in the market place between the Applicant’s business and the Opponent’s business.

Discussion Section 58

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.

17 Ibid [9].

18 Ibid [10].

In order to succeed under this ground of opposition, the following requirements must be established:

the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;¹⁹

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;²⁰ and

a person other than the Applicant has the earlier claim to ownership of the Trade Mark 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.²¹

The Opponent’s position that the Applicant is not the owner of the Trade Mark rests on three bases. Its primary position is that the Opponent was the first user of a substantially identical trade mark to the Trade Mark in Australia. Alternatively, the Opponent argues that RTBA, not the Applicant, was the first user of the Trade Mark in Australia. The Opponent contends that RTBA’s use in August 2015 of the Website’s domain name constituted use of a substantially identically mark to the Trade Mark.²² Otherwise, the Opponent asserts RTBA’s use of the Trade Mark in March 2017²³ established that the Applicant was not the first user of the Trade Mark.

For reasons that will become clear, I will first consider the Opponent’s submission that RBTA’s was the first user of the Trade Mark and that such use was not authorised use within the meaning of the Act.

Was RTBA’s use of the Trade Mark authorised by the Applicant?

19 Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936.

20 Re Hicks’s Trade Mark (1897) 3 ALR 75.

21 Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

22 See, eg, Exhibit 2 to Francis 2, 23.

23 See, Exhibits 2 to 3 to Francis 1.

The Opponent alleges that the use of the Trade Mark in relation to the Applicant’s Services since 13 March 2017 was by RTBA and that RTBA’s use did not constitute authorised use within the meaning of the Act.

For its part, the Applicant acknowledged that RTBA has always been the user of the Trade Mark. As such, requirements (i) and (ii) as set out at [24] of this decision are satisfied given the trade mark relied on is the Trade Mark and the services in question are clearly the same kind of thing. In relation to requirement (iii), the Applicant has never used the Trade Mark and RTBA’s use of the Trade Mark commenced prior to the Applicant’s application to register same. However, the Applicant submits that RTBA was an authorised user and thus RTBA’s use of the Trade Mark inured to the Applicant. According to the Applicant, the authorised nature of RTBA’s use is evidenced by the corporate structure of XCO to which both the Applicant and RTBA belong and is consolidated by the Licence Agreement between the entities.

Section 7 of the Act relevantly provides:

Use of a trade mark

(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

Section 8 of the Act relevantly provides:

Definitions of authorised user and authorised use

A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

If the owner of a trade mark exercises quality control over goods or services:

dealt with or provided in the course of trade by another person; and

in relation to which the trade mark is used;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

If:

a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and

the owner of the trade mark exercises financial control over the other person's relevant trading activities;

the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

The wording of s 8 makes it clear that ‘control’ forms a pivotal aspect of establishing authorised use. To this end, the examples of ‘quality control’ and ‘financial control’ encompassed within the provision form a non-exhaustive list of the types of control required to establish authorised use.²⁴

The level of control required to satisfy s 8 of the Act was considered by the Full Court of the Federal Court of Australia in Lodestar Anstalt v Campari America LLC (‘Lodestar’).²⁵ The leading judgement of Besanko J observed:

[C]ontrol in s 8 means actual control in relation to the use of the trade mark and it means actual control in relation to the trade mark from time to time. … Control involves questions of fact and degree as does the notion of a sufficient connection. There must be control as a matter of substance. For example, I do not think that it could be suggested that the mere fact that the registered owner granted a licence or revocable authority to use the trade mark would be sufficient without more established control within s 8.²⁶

In Lodestar, the licence agreement made between two unrelated entities empowered the trade mark owner with the right to exert control over the licensee’s use of the trade mark. In practice, however, the owner did not monitor the licensee’s use and the licence itself did not alter the way the licensee conducted their business.²⁷ Accordingly, the owner’s failure to exercise actual control over the licensee’s use meant that the latter’s use was determined not to be authorised use within the meaning of the Act.²⁸

The degree of control required to establish authorised use was subject to further consideration by the Full Court of the Federal Court of Australia in the recent decision of Trident. In Trident,

24 The Act s 8(5).

25 [2016] FCAFC 92 (‘Lodestar’).

26 Lodestar (n 25) [97] (Besanko J) (emphasis added).

27 Ibid [103].

28 Ibid [108].

the company which owned the trade mark was a wholly owned subsidiary of the company that used the trade mark. Both entities had a commonality of directors and a written licence which acknowledged the prior use of the trade mark between the entities was subsequently executed. At first instance, the primary judge was not satisfied that the parent company’s use of the trade mark was under the control of the subsidiary company. Primarily, this was due to the subsidiary company’s lack of evidence demonstrating actual control in combination with the corporate relationship existing between the companies.²⁹ The latter ostensibly positioned the company using the trade mark in control by virtue of its status as the parent company. Accordingly, the parent company’s use of the trade mark was determined not to be authorised use within the meaning of the Act.

On appeal, the Full Court in Trident clarified:

The issue is not whether one company controlled the other but rather whether [the trade mark owner], even though a wholly owned subsidiary of [the trade mark user], had control over [the trade mark user’s] use of the trade marks. In that sense it is significant that at all relevant times the two companies had the same directors. It must be inferred from the evidence that the two companies operated with a unity of purpose.³⁰

The Full Court explained what amounts to actual control may be conceptualised along a spectrum that varies depending on the specific circumstances of the purported use. The situation in Lodestar fell at one end of the spectrum because no relationship existed between the respective entities aside from the licence.³¹ Examples of actual control were therefore required to establish authorised use. Conversely, the circumstances in Trident were distinguished and considered to belong at the opposite end of the spectrum. This is because the evidence before the Full Court rendered the need for examples of actual control unnecessary given the corporate relationship, common directors and shared processes between the entities.³² It was this ‘unity of purpose’, inferred from the evidence, which indicated the existence of actual control in Trident. As such, Trident did not displace the

29 Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490 [100].

30 Trident (n 1) [45] (emphasis added).

31 Ibid.

32 Ibid [46].

requirement to demonstrate actual control to establish authorised use. Rather, it enlarged the means by which the existence of the requisite control can be deduced.

Turning to the matter at hand, the pertinent issue for determination is whether the Applicant had control over RTBA’s use of the Trade Mark. Post Trident, it is clear that the absence of a direct corporate relationship between the entities does not automatically mean that the Applicant could not have controlled RTBA’s use. Equally, merely belonging to the same corporate group will not necessarily give rise to the assumption that the Applicant and RTBA operated with a ‘unity of purpose’. As expressed in Lodestar, discerning control involves questions of fact and degree.³³ Thus, it is the quality and nature of the evidence filed that is crucial because this forms the foundation upon which actual control over the use of the Trade Mark can either be demonstrated or inferred.

The evidence before me is largely silent with respect to the actions undertaken by the Applicant to exercise control over RTBA’s use of the Trade Mark. While examples of actual control are no longer a prerequisite to establishing authorised use, the evidence must nevertheless provide a basis upon which it can be inferred to exist. The Boucaut Declaration contains no statements concerning the interactions between the Applicant and RTBA other than Mr Boucaut’s assertion that the Applicant’s directors caused RTBA to commence use of the Trade Mark with the licence and authority of the Applicant.³⁴ It is unclear whether Mr Ritter or Mr Boucaut considered issuing directions between the Applicant and RTBA to be necessary in this context. No evidence was led regarding whether Mr Boucaut distinguished between his roles as a director for the Applicant and RTBA. Nor did Mr Boucaut provide any insight regarding any quality standards or expectations he may have carried over from his role as director of the Applicant to his role as a director of RTBA. This directly contrasts with Trident wherein one of the directors gave evidence to the effect that they a) did not differentiate between their roles as a director of the respective entities, b) believed they were empowered to control the quality of the goods irrespective of their role and c) considered it unnecessary to issue directions between the entities.

Furthermore, the evidence does not disclose any corporate group guidelines or shared processes that substantiate the unity of purpose with which the Applicant and RTBA are alleged to have

33 Lodestar (n 25) [97].

34 Boucaut Declaration, [9].

acted. In contrast to Trident, the Applicant and RTBA do not operate from a common principal place of business. Instead, they operate from geographically distinct locations – the Applicant’s principal place of business is in New South Wales and RTBA’s is in Queensland. As the Opponent emphasises, the Boucaut Declaration fails to provide any information, beyond the rudimentary title of director, regarding the responsibilities associated with the role that either Mr Ritter and/or Mr Boucaut had in controlling RTBA’s use of the Trade Mark. Indeed, the evidence does not indicate whether Mr Ritter or Mr Boucaut, who both reside in New South Wales, personally monitored the standard of the services provided under the Trade Mark by RTBA. Whilst it is acknowledged that the duties of a director and manager have a tendency to blur, particularly in smaller companies, the fact remains that Mr Boucaut has not communicated any information by which to infer either he or Mr Ritter oversaw RTBA’s use of the Trade Mark. Further, there is no evidence of any form of overarching guidelines specific to the Applicant and RTBA upon which the Applicant’s directors could rely to illustrate that these entities operated with a common purpose.

The Applicant’s Supplementary Submissions reiterate that illustrations of actual control are not strictly required. Reference is made to the titles and commonality of directors between RTBA and the Applicant as well as the fact that both entities are ultimately owned by the same parent company, namely XCO. The Applicant submits that like Trident, a unity of purpose can be inferred. I am not persuaded by this because the present circumstances are distinguishable from Trident insofar as the owner and user of the Trade Mark do not have a direct corporate relationship such as, for example, that which exists between RT and RTBA. Rather, the Applicant and RTBA are related subsidiaries which do not share a common principal place of business. While the Applicant and RTBA share the same directors, XCO’s board is composed of 5 directors in which Mr Ritter and Mr Boucaut do not form a majority. Particulars have not been provided in relation to XCO’s constitution and whether, for example, Mr Ritter or Mr Boucaut retain the casting vote. As such, a unity of purpose between RTBA and the Applicant cannot be as readily inferred given each entity would be independently subject to the collective directing mind of XCO and the relationship between RTBA and the Applicant has not been fully elaborated.

The Applicant submits that the Licence Agreement reinforces the authorised nature of RTBA’s use of the Trade Mark. Specifically, the inference of control is reflected by the quality control

clause within the Licence Agreement together with the unwritten licence created by virtue of the Applicant’s active consent to RTBA’s prior use of the Trade Mark.³⁵ The Licence Agreement contains a quality control clause, but it is drafted in a generic manner and, as the Opponent highlights, it does not particularise any mechanism by which the Applicant can exercise control over RTBA’s use of the Trade Mark. Similarly, the Licence Agreement contains no reference to the earlier arrangement between RTBA. This contrasts with the situation in Trident, wherein the licence agreement expressly acknowledged an unwritten licence had existed between the entities prior to the formal licence being executed. The Applicant countered this omission within the Licence Agreement by referring to Rodney Jane wherein it was determined that a licence agreement established after use of the trade mark had commenced corroborated the earlier conduct of the common director of the trade mark user and owner entities as being acts of control by the owner entity.³⁶ However, the Opponent points out that the conclusion was reached based on the evidence given by the director and information before the court. In this instance, there is no comparable evidence by Mr Boucaut from which to draw such a conclusion. Additionally, the Applicant was not identified as the owner of the Trade Mark in any of the material promoting the Applicant’s Services that was filed in evidence. While this lack of attribution is not fatal to the Applicant’s position that RTBA’s use was authorised use, it further supports the inference that such use was not under the Applicant’s control.³⁷

A critical consideration in Trident was that it could be inferred from the evidence that the trade mark owner and user operated with a unity of purpose. The fact that the two entities in Trident shared the same directors was a significant factor in making this inference. However, it was not the sole determinative factor. To this end, it is important to keep in mind that determining control is a matter of fact and degree. As canvassed above, the circumstances and evidence in this matter are not on all fours with Trident and for these reasons it does not fall at the same end of the spectrum. The unity of purpose argument propounded by the Applicant is compromised by the minimal nature of the evidence and information provided. This results in the present matter falling on the spectrum in between Lodestar and Trident. That is, the

35 Trident (n 1) [51].

36 Rodney Jane (n 2) [70].

37 Cf Trident (n 1) [49] in which the fact that the goods sold by the trade mark user identified the trade mark owner as being the registered trade mark owner was considered to support the inference of control by the trade mark owner.

Applicant and RTBA are related entities who share common directors, and this provides the foundation for considering whether these entities in fact operate with a unity of purpose in order to infer control by the Applicant. However, the evidence must be such that this unity of purpose is borne out. In this instance, the titles bestowed on Mr Ritter and Mr Boucaut are not, in and of themselves, necessarily reflective of the commercial realities as to how each director operated. In contrast to Trident, there is no evidence that either of the directors perceived the Applicant and RTBA’s interest to be aligned or believed there was a common purpose between the entities. I am not satisfied that the evidence provides a basis for inferring that the Applicant and RTBA operated with a unity of purpose. As such, I do not consider RTBA to be an authorised user of the Trade Mark and consequently its use of the Trade Mark does not inure to the Applicant.

In light of the above, I am satisfied that RTBA has the earlier claim to ownership of the Trade Mark based on its use before the filing date of the Trade Mark. Requirement (iii) as set out at

[24] of this decision is thus satisfied. Accordingly, the ground of opposition under s 58 has been established.

As the Opponent has established one ground of opposition in relation to all of the Applicant’s Services, it is unnecessary for me to consider the remaining ground of opposition pursued in the SGP.

Decision

Section 55 of the Act relevantly provides:

Decision

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

to refuse to register the trade mark; or

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.

The Opponent has established the s 58 ground of opposition. As such, I refuse to register trade mark application number 1866938.

Costs

The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. Accordingly, I award costs against the Applicant as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Barbey Hearing Officer

Oppositions and Hearings Trade Marks and Designs 24 December 2019