Re: Opposition by Zillow, Inc. to registration of trade mark application 1872671 (20, 42) - Zillo + Hutch (Figurative) - in the name of Zillo & Co Pty Ltd

[2020] ATMO 106

TRADE MARKS ACT 1995

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

Re:Opposition by Zillow, Inc. to registration of trade mark application 1872671 (20, 42) – Zillo + Hutch (Figurative) – in the name of Zillo & Co Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Griffith Hack Lawyers Applicant: COUNSELCORP PTY LTD
Decision:	2020 ATMO 106 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Zillow, Inc. (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Zillo & Co Pty Ltd (‘Applicant’): 

Application Number:

1872671

Filing Date:

15 September 2017

Goods and Services:

Class 20: Furniture

Class 42: Interior design

(‘Applicant’s Goods and Services’)

Trade Mark:

(‘Trade Mark’)

2. Following the advertisement on 8 February 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 29 March 2018.  The Opponent then filed a Statement of Grounds and Particulars on 26 April 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 31 May 2018.

Evidence

1. The Opponent filed the following Evidence in Support (‘EIS’) of its opposition:

   ·Declaration made on 4 September 2018 by Michelle Wynne Otter, the Assistant General Counsel of the Opponent, with Annexures 1 to 9 (‘Otter Declaration’).

   4. The Applicant did not file any evidence in answer.

   5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 30 April 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions upon which they wished to rely.  The Opponent filed written submissions on 28 June 2019 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

   6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is a United States company that operates an online platform for real estate (including both sale and rental) under the ZILLOW trade mark (‘Zillow Mark’).  The Opponent has registered the Zillow Mark in Australia for a number of categories of goods and services[1].    

   [1] Australian trade mark registration number 1486412 for the word ‘ZILLOW’ which is registered in respect of classes 9, 35, 36, 37, 39 and 42.

   8. The relevant claims/statements in the Otter Declaration can be summarised as follows:

   ·     The Zillow online real estate and rental platform hosts a database of more than 110 million US homes.  The Opponent has offered its services under the Zillow Mark for over 12 years, either as a plain word mark or with a stylised ‘Z’ design element.  It has used the Zillow Mark in connection with its real estate services and related services.

   ·     The Opponent is partially owned by Australian investors and has been the subject of significant media coverage in Australia.

   ·     From 2013-2018 part of the Opponent’s Zillow website focused on home improvement ideas and planning.

   ·     Zillow has invested US$10 million in a US start-up interior design company, Hutch, which offers an application that allows users to engage in their own interior design.  The Hutch App has over 40,000 users.   

   ·     The Opponent’s Zillow website has been accessed by a significant number of Australian Internet users between 2013 and 15 September 2017 and a significant number of Australian users have installed the Zillow App.

   9. The Annexes to the Otter Declaration display various examples of the use of the Zillow Mark.  I note from the evidence that the Opponent’s Hutch start up has used its name since approximately January 2017 and there is no evidence of how many users of its service were located in Australia.

   The Applicant

3. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register of Trade Marks. 

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds.

   12.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 15 September 2017 (‘relevant date’), being the priority date of the application in Australia.[4]

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595. See also Trade Marks Act 1995 (Cth) s 29(1).

   Discussion

   Section 58 – Applicant not owner of trade mark

5. Section 58 of the Act is reproduced below:[5]

   [5] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

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

   Note:For applicant see section 6.

   14.     The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   · that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

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

   15. The ground based on s 58 of the Act was particularised in the SGP as follows:

   The trade mark ZILLOW was first used in Australia by the Opponent prior to the date of application of the Opposed application and prior to the date of any first use of the Opposed application in Australia.

6. I will now consider whether the Trade Mark is substantially identical to the Zillow Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   In considering whether marks are substantially identical they 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.[9]

   17.     The Trade Mark and the Zillow Mark are set out below:

   ZILLOW

   18.     On a side by side comparison there are clear differences between the respective trade marks, including the addition of the ‘W’ in the Zillow Mark, and the addition of the ‘+ HUTCH’ in the Trade Mark.  .  The typography has significant differences including font and font weight.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical. 

   19. As the Opponent has failed to established the first factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

   Section 60

   [9] (1963) 109 CLR 407, 414.

7. Section 60 of the Act is reproduced below:

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

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

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

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

8. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[10]

   [10] The present paragraph and the following paragraphs summarising the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

9. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[11]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation 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 …[12]

   [11] [2000] FCA 1335, [81].

   [12] (1992) 33 FCR 302, 343.

10. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s Delegate observed:

    [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

    As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

    It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[13]

    [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

11. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[14] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[15]

    [14] (2000) 50 IPR 1.

    [15] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

12. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[16]

    [16] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

13. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The trade mark ZILLOW has been used before the priority date of the application and has acquired a reputation in respect of a wide range of goods and services including:

    Class 9: Computer software, namely, consumer data storage software in the area of real estate, apartment and residential rentals, consumer goods and consumer services; computer database software featuring information in the field of real estate, apartment and residential rentals, consumer goods and consumer services; mobile device software, namely, software for advertising, accessing and presenting information in the area of real estate, apartment and residential rentals, consumer goods and consumer services; computer software, namely, application programming interface (API) for accessing and presenting information in the field of real estate, consumer goods and consumer services; computer software for sharing data about real estate, apartments, and residential rentals on social networking sites; computer software for providing mortgage information, analysis, and advice in the fields of mortgage lending and home equity lending; computer software for providing mortgage quotes, for confirming lender availability and interest, and for reviewing and rating lenders and mortgage professionals; computer software, namely, widgets in the fields of real estate, apartment and residential rentals, and mortgages; computer software, namely, software plug-ins for use in social media sites in the fields of real estate, apartment and residential rentals, and mortgages

    Class 35: Promoting the goods and services of others by means of linking the web site to other web sites featuring real estate, consumer goods and consumer services; advertising and marketing services in the fields of real estate, apartments, residential rentals, retail services, financial services, mortgage services, home equity services, insurance services, escrow services, real estate appraisal services, legal services, title services, notary services, real estate agency services, property management services, moving and relocation services, home inspection services, architectural services, landscaping services, interior design services, building contractors, home building and repair services, home improvement services, painting services, plumbing services, interior design services, staging services, and home furnishings; real estate marketing services, namely, on-line services featuring tours of real estate; providing an on-line showroom for the promotion of the goods of others in the field of real estate, apartments, and residential rentals; operating on-line marketplaces for sellers of goods and services in the field of real estate, apartments, and residential rentals; providing an on-line commercial goods and services information directory on the Internet; providing on-line directory information service featuring information regarding a wide variety of business organizations and service providers; providing information about directories of goods and services on-line; providing advertising in the form of online hyperlinks to other web sites; making business referrals in the fields of retail services, financial services, mortgage services, home equity services, insurance services, escrow services, appraisal services, legal services, title services, notary services, real estate agency services, property management services, moving services, home inspection services, architectural services, landscaping services, interior design services, building contractors, home building and repair services, home improvement services, carpentry services, engineering services, painting services, plumbing services, interior design services, staging services, and home furnishings; business services, namely, organizing third-party vendors, suppliers, and contractors, and documentation and information on behalf of others; matching borrowers with potential lenders in the field of mortgage lending being business referral services; matching customers with real estate professionals in the field of real estate services via computer network being business referral services; providing business information in the field of home improvement comparisons; providing an on-line service where users can compare and rate homes and home improvements; promoting the goods and services of others by means of linking the web site to other web sites featuring apartment and residential rental listings; statistical analysis and reporting, namely, providing demographic data; business statistical analysis and reporting, namely, providing commuting and transit information; business statistical analysis and reporting, namely, providing information about neighbourhoods and neighbourhood amenities; providing on-line information in the field of retail services through a website where users can post ratings, reviews, and recommendations; providing on-line business information in the fields of moving and relocation services through a website where users can post ratings, reviews, and recommendations; on-line advertising and marketing services; operating marketplaces for sellers of goods and services in the fields of apartments and residential rentals

    Class 36: Real estate valuation services, financial valuation of real estate; providing information in the field of real estate; financial services, namely, mortgage and home equity loan planning; providing mortgage and home equity loan quotations to others and providing anonymous mortgage and home equity loan quotations to others; providing information, analysis, and advice in the fields of mortgage lending and home equity lending; credit score estimate services; providing credit rating services through an on-line computer database; providing credit rating services through an on-line interactive consumer credit score simulator which permits an individual to simulate his or her credit score by selecting data variables to show the effect of the different variables upon the individual's credit score; apartment and residential rental valuation services; financial valuation of apartments and residential rentals; providing information in the fields of real estate, apartments, residential rentals, financial services, mortgage services, home equity services, insurance services, escrow services, appraisal services, real estate title services, real estate agency services, and real property management services, through a web site where users can post ratings, reviews, and recommendations; classified real estate listings of apartment rentals and housing rentals; providing real estate listings and real estate information via the Internet; real estate listing services for housing rentals and apartment rentals; real estate sales management; providing statistical information and indexes of mortgages, interests and prices for others

    Class 37: Providing information in the field of home improvement construction, building contractors, carpentry services, painting, and plumbing services through a website where users can post ratings, reviews and recommendations

    Class 39: Physical storage of electronically-stored consumer data

    Class 42: Providing temporary access to online non-downloadable software that allows others to design and create websites; hosting websites and digital content for others on the Internet; web site design; web site development for others; providing temporary use of non-downloadable computer software in the fields of real estate, apartments, residential rentals, mortgages, and consumer goods and consumer services; providing temporary use of non-downloadable computer database software featuring information and advertising in the fields of real estate, apartments and residential rentals, mortgages, consumer goods, and  consumer services; computer services, namely, search engine optimization; computer network configuration services using software being URL redirection services which reroute computer connections from one uniform resource locators or network address to another; hosting websites where users can post ratings, reviews and recommendations in the field of home inspection services, home building and repair services, home improvement services, engineering services, interior design services and interior decorating services, staging services, and home furnishings; design of advertising materials for others; design of internet advertising

1. I note in passing that the manner in which the s 60 ground is particularised is unhelpful, especially given the nature of the EIS. Simply listing all goods and services for which a trade mark is registered for (regardless of level and extent of use) and asserting that the Opponent has a reputation for all of them does not assist the Applicant in understanding the case it has to meet nor does it assist the Registrar in attempting to understand the nature and extent of the Opponent’s reputation in the Zillow Mark. This is particularly the case when the SGP seeks to claim reputation in services that, based on the EIS, the Opponent has never supplied in Australia, such as ‘web site design’ and ‘physical storage of electronically-stored consumer data’.

2. The Opponent is a United States based entity that primarily operates a real estate website, functioning similarly to Domain or Realestate.com.au, apparently focused exclusively on real estate in the United States. It appears from the Otter Declaration that it has a significant, indeed even dominant position in the United States market and has acquired a significant spill-over reputation in Australia, as indicated by the number of Australians accessing the Opponent’s website and downloading the Opponent’s app. I have no hesitation in finding that the Opponent has acquired a reputation in Australia for the Zillow Mark for real estate services in the United States, sufficient for the requirements under s 60(a) of the Act. By this I mean that there is a market of Australian residents interested in purchasing (for investment or otherwise) or renting property in the United States and the Zillow Mark has a reputation in that market.

3. As the Opponent’s website has never advertised property for sale in Australia, I am not satisfied that the reputation of the Zillow Mark extends to real estate services in Australia (i.e. services advertising property for sale or rent in Australia).  While the Opponent’s website does contain articles relating to home design and other real estate related services, this appears very much an adjunct to its primary purpose.  As it has never offered those home design or related services under the Zillow Mark in Australia I am not satisfied that the Zillow Mark’s reputation extends beyond real estate services (in the United States).  Finally, with respect of Opponent’s connection to interior design company Hutch, I note that this entity had been trading under that name for 9 months in the United States before the relevant date and there is no indication how many, if any, members of the Australian consuming public had been exposed to that company or acquired its services.  While not strictly necessary to consider, since the matter had not been particularised in the SGP, I am not satisfied that at the relevant date there was any reputation in the word ‘Hutch’ in Australia.

4. It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[17]

   [17] (1937) 58 CLR 641, 658.

5. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

   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.

   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.[18]

   [18] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

6. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

   The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[19]

   [19] [2012] ATMO 124, [40].

7. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[20]

   [20] [2016] FCA 729, [142].

8. In the present case the Applicant’s Goods and Services, be it furniture or interior design, are at best tangentially related to the Opponent’s services in advertising real estate.  Furthermore, to the extent that the Opponent has a reputation in Australia, it is in relation to real estate services in the United States of America.  This, combined with the significant differences between the Zillow Mark and the Trade Mark, makes it highly unlikely any confusion would arise between the Trade Mark and the Zillow Mark.  It is implausible that a consumer would see use of the Trade Mark in respect of interior design services in Australia and be caused to wonder that the Opponent had expanded its business (albeit under a different trade mark) from offering real estate services in the United States to offering interior design services (and furniture) in Australia.

9. I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.

   Section 42

10. Section 42 of the Act is reproduced below:

    42 - Trade mark scandalous or its use contrary to law

    An application for the registration of a trade mark must be rejected if:
    (a) the trade mark contains or consists of scandalous matter; or
    (b) its use would be contrary to law.

11. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[21]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[22]

    [21] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [22] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.

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

    The use of the trade mark Zillo + Hutch would be passing off and would breach ss. 18 and 29 of the Australian Consumer Law and is therefore contrary to law.

13. As previously stated the Opponent has failed to establish a ground of opposition under s 60 of the Act. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[23] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

    [23] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198.

14. Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[24] where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[25] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

    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.[26]

    [24] [2014] ATMO 65, [50].

    [25] [2003] FCA 104, [107].

    [26] [1989] FCA 506, [40] (citations omitted).

15. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

    Section 62A

16. 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.

17. 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.

18. 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[27]:

    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.[28]

    [27] [2004] EWCA Civ 1028; [2005] FSR 10.

    [28] [2012] FCA 81, [147].

19. 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.[29]

    [29] Ibid [165]-[166].

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

    The trade mark ZILLOW is a well known trade mark owned by the Opponent and as a consequence the application has clearly been filed in bad faith to gain the benefit of the Opponent’s reputation.

21. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[30]  The Opponent’s Submissions on this ground (following a summary of the relevant case law), are as follows:

    ‘It is likely that the Applicant was aware of the Opponent and its Zillow trade mark’.

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

22. Given the serious nature of the allegation a mere assertion of awareness is an insufficient basis to find bad faith. Based on the evidence before me I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    Decision

23. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1872671 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

    Costs

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

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    18 June 2020