Re Oppositions by Steven Scott Y W Penson to registration of trade mark applications 1808439 (45) Aquarian Party and 1810474 (45) Aquarian Movement and 1841225 (45) Aquarian and 1841230 (45) Aquarians - all in the..

[2019] ATMO 175

TRADE MARKS ACT 1995

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

Re       Oppositions by Steven Scott Y W Penson to registration of trade mark applications 1808439 (45) Aquarian Party and 1810474 (45) Aquarian Movement and 1841225 (45) AQUARIAN and 1841230 (45) AQUARIANS – all in the name of John Clifford Smyth

Delegate:      Robert Wilson

Representation:        Opponent: Aquarian Australia

Applicant: W3IP Law Pty Ltd

Decision:      2019 ATMO 175

Trade Marks Act 1995 (Cth) - Section 52 opposition: Applicant died before opposition decided – ss 41, 42, 43, 44, 58, 58A, 59, 60 and 62A considered – none established – applications may proceed to registration

Background

This decision concerns oppositions brought by Steven Scott Y W Penson (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade marks the subjects of the applications detailed below. All applications are in the name of John Clifford Smyth (‘the Applicant’):

Application no.

Filing date

Trade Mark

1808439

10 November 2016

Aquarian Party

1810474

21 November 2016

Aquarian Movement

1841225

28 April 2017

AQUARIAN

1841230

28 April 2017

AQUARIANS

All applications were made for the following services:

Class 45: Providing information regarding political issues (‘the Applicant’s Services’)

The trade marks applied for will be referred to collectively as ‘the Applicant’s Trade Marks’ and the applications as ‘the Applications’.

The Applications’ acceptances for possible registration were advertised on the dates provided in the table below. The Opponent filed Notices of Intention to Oppose (‘NIOs’) the registrations and Statements of Grounds and Particulars (‘SGPs’) on the dates shown. The dates the Notices of Intention to Defend (‘NIDs’) were filed are also shown in the table.

Application no.

Acceptance advertised

NIO filed

SGP filed

NID filed

1808439

30/3/17

29/5/17

17/6/17

15/8/17

1810474

13/4/17

12/6/17

17/6/17

15/8/17

1841225

21/9/17

21/11/17

11/12/17

16/1/18

1841230

21/9/17

21/11/17

11/12/17

16/1/18

The SGPs particularised the same grounds of opposition in respect of each application, being the grounds of opposition pursuant to: ss 41, 42, 43, 44, 58, 58A, 59, 60 and 62A of the Act.

Evidence

The evidence filed in the present matters is not the same for each case. The Opponent filed the following evidence:

Evidence in support – 1808439 and 1810474

•         Declaration made on 19 November 2017 by the Opponent with Exhibits SSP1 to SSP21 (‘Penson 1’).

Evidence in reply – 1808439 and 1810474

•         Declaration made on 28 May 2018 by the Opponent with Exhibits A to N (‘Penson 2’).

Evidence in support – 1841225 and 1841230

•         Declaration made on 18 April 2018 by the Opponent with Exbibits AA-1 to AA‑15 (‘Penson 3’).

Evidence in reply – 1841228 and 1841230

•         The Opponent filed a declaration made on 11 December 2018 by the Opponent. The declaration was intended to be evidence in reply in respect of 1841225 and 1840474; however, the declaration was filed late and an application for an extension of time to file the declaration was refused by the Registrar.

The Applicant filed the following evidence:

Evidence in answer – 1808439

•         Declaration made on 24 February 2018 by the Applicant with Exhibits A to D (‘Smyth 1’).

Evidence in answer – 1810474

•         Declaration made (day not indicated) February 2018 by the Applicant with Exhibits A to D (‘Smyth 2’).

Evidence in answer – 1841225 and 1841230

•         Declarations prepared for the Applicant by his legal representative were filed as evidence in answer. Both declarations are unsigned due to the death of the Applicant; nevertheless, the documents were accepted as filed. That they are unsigned will be taken into account in this decision and the declarations will be given appropriate weight. The declarations will be referred to as ‘Smyth 3’ and ‘Smyth 4’ respectively.

•         Declaration made 7 August 2018 by Kim Walters, a lawyer at W3IP Law Pty Ltd, with Confidential Exhibit 1 (‘the Walters declaration’).

The Walters declaration included the information that the Applicant had died on 6 July 2018. The declaration further stated:

I regard the information which is disclosed in this Declaration, particularly insofar as it relates to the passing away of the Applicant, to be strictly confidential within the meaning of the Freedom of Information Act 1982 (Cth).

The death of the Applicant appears to be in the public domain, including being the subject of a death notice which was published in the New Zealand Herald on 10 July 2018. The Applicant’s death is also the subject of submissions by the Opponent in this matter and it is therefore necessary that it be referred to in this decision. 

Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Neither party requested to be heard. In response to this correspondence the Opponent provided written submissions. Once it was clear neither party had requested to be heard, the parties were given a further opportunity to provide written submissions. Only the Opponent provided written submissions, being:

In respect of 1808439 and 1810474:

•         Submissions filed 27 August 2018; and

•         Submissions filed 21 January 2019.

In respect of 1841225 and 1841230:

•         None.

In respect of all oppositions:

•         Submissions filed 28 October 2019.

I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by section 55 of the Act which provides that, unless the proceedings are discontinued, dismissed or the application lapses, 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. The matter was decided on the material mentioned in the preceding paragraph.

The Opponent

According to Penson 1:

I hold a degree in Bachelor of Industrial Design and have held positions in a number of businesses and trade services involving various facets of product design and development, marketing and promotion of a range of consumer goods and services.

I am also a second-generation owner of a family business in the bottled water industry.

I have owned and used the trade mark AQUARIAN applied to my goods or services from as early as 2010. I specifically chose the mark AQUARIAN for beverage vending/dispensing machine created by me, in dedication to my parents, who are both Aquarians (i.e. persons born under the zodiac sign of aquarius). Over the years, I have continued to use and build on the same AQUARIAN trade mark for other goods and services, including bottled water (in class 32), and advertising and selling by any means (in class 35).

The Opponent is the owner of a number of registrations of the trade mark AQUARIAN. The registrations are detailed in the table below (‘the Opponent’s registered trade marks’).

Trade mark number

Priority date

Goods and services

1391575

31/10/10

Class 3: Waters and water sprays for cosmetic purposes; toiletries and cosmetics

Class 9: Automatic vending machines integrated with a packaging control for the dispensing of water and beverages

1472489

31/10/10

(Divisional)

Class 7: Dispensing machines for water and beverages; machines for dispensing drinks; machines for dispensing beverages

1574948

31/10/10

(Divisional)

Class 11: Refrigerated beverage dispensing units; apparatus for filtering water; apparatus for purifying water; regulating apparatus for water installations; apparatus for disinfecting water; apparatus for use in the drink industry, namely, ice making machines, and apparatus for cooling, refrigerating and dispensing water and other beverages, for example, beverage cooling and ice dispensing machines, water coolers

1680062

31/10/10

(Divisional)

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages

1817930

23/12/16

Class 35: Distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); Advertising; Business management; Business administration; Direct marketing; Stock and station agencies (buying and selling of goods); Discount services (retail, wholesale, or sales promotion services); Import-export agency services; Marketing consultancy; Retailing of goods (by any means)

None of the Opponent’s registrations was raised as a citation during examination of the Applications.

The Applicant

According to Smyth 1:

My early background was in the Film and Video production industry and later I became well established as a studio designer and builder in the Sydney region. My business was very active in the rollout of pay and high definition television such that I was asked to perform an address on Broadcast Systems Integration at the 2006 Convention of Society of Motion Picture and Television Engineers (SMPTE).

In February 2011, my wife was diagnosed with Alzheimer’s Disease. Over the next 4 years I reduced the capacity of the business so that by June 2015 I was working from home part time to be a full-time carer for my wife. Some of the remnants of my business were moved into [a storage facility].

In September 2015, my wife and I joined the NXT (Nick Xenophon Team) political party and became involved in campaigning and logistics. By February 2016, I became the Electoral Captain for the seat of Bennelong and co-ordinated activities for that electorate through to the July election.

In September 2016, I decide that NXT did not align with my own political opinions as to where change will occur, and concluding that there were no such organisations in existence, I decided to form my own organisation and supply information on certain political issues.

Over the final months of 2016, I proceeded to register domain names, business names and apply for trade marks using the name AQUARIAN. …

The word ‘Aquarian’ to brand the supply of ‘information regarding political issues’ was inspired in part by the fact that all three of my children were born under the astrological sign of Aquarius and also in part because I believe that there will be a generation of Millennials living in the new Age of Aquarius which is an astrological age.

Grounds of Opposition, Onus and Standard of Proof

As indicated above, in the SGPs the Opponent nominated grounds of opposition under ss 41, 42, 43, 44, 58, 58A, 59, 60 and 62A of the Act. All grounds are discussed below. The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined for each opposition is the filing date of the respective application. Those dates are also the priority dates for the purposes of ss 44 and 60.

The Death of the Applicant

As indicated above, the Applicant died on 6 July 2018. Section 217 of the Act states, inter alia:

Section 217 – Death of applicant etc.

(1)       If an applicant for the registration of a trade mark dies before registration is granted on the application, his or her legal representative may proceed with the application.

Note: For applicant see section 6. …

Before writing this decision I made a number of enquiries over a number of months to W3IP Law Pty Ltd (‘W3IP’) asking whether it was their intention to proceed with the application following the death of the Applicant as is permitted by s 217 or whether the Applications were to be withdrawn. W3IP sought instructions from Daniel Smyth, the Applicant’s son, but was unable to obtain them.

During this time I was contacted by the Opponent, who sought a resolution of the matters. In respect of the death of the Applicant the Opponent submitted:

I … understand that despite the fact that [the Applicant] died well over a year ago, no legal persons have come forward to take over the ownership of [the Applications]. In the circumstance, I request to make submissions that it is my humble opinion [the Applications] cannot stand as they are and should be nullified or lapsed and be taken off the trade mark register upon ruling the opposition[s] in favour of the Opponent.

The Opponent drew my attention to s 17 of the Act which states that:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. (Opponent’s emphases)

The Opponent also pointed to s 27(2)(c) of the Act which states, inter alia, that an application to register a trade mark must be made by ‘a person or persons having legal personality’. The Opponent submitted:

Since [the Applicant] was stated to have died … there has not been a single legal document submitted or a ‘legal personality’ standing up to claim ownership of the abovementioned trademarks. Such that it is my view, in accordance with Section 27 of [the Act], that the above trade mark applications should not be continued because there is no ‘legal personality’ claiming to be the owner of the trade marks, is using the trade marks, has used the trade marks or intends to use the trade marks. … (Opponent’s emphasis)

The Act makes no provision for the circumstance where a deceased applicant’s legal representative does not indicate that it is proceeding with the application. As a Delegate of the Registrar I can do only that which I have the power to do. Despite what appears to be a largely reasonable request on the part of the Opponent, the Act does not grant me the power to consider the Applications discontinued in the circumstances described. It is necessary; therefore, that I decide the oppositions on their merits.

Discussion of grounds of opposition

General observations

A number of grounds of opposition and grounds for rejecting trade mark applications have as a key consideration the avoidance of deception or confusion amongst consumers of the respective goods and services. A common problem for applicants is attempting to register a trade mark which is similar to a trade mark which is either: registered for similar goods and/or services for which they are applying; or, is being used (but not necessarily registered) in connection with similar goods and/or services. On the other hand, the Act usually permits the registration of similar trade marks by different owners where the spheres of commercial interest are dissimilar enough that the use of those trade marks on the disparate goods/services is unlikely to give rise to deception or confusion amongst consumers.

It is apparent that the commercial sphere in which the Opponent operates is principally the provision of beverages and associated equipment. The Applications are for a very narrow range of services, being:

Providing information regarding political issues

Those two spheres are very different and it is to be expected that, in most cases, very similar, if not identical, trade marks could be registered by different owners in those two areas of trade.

The Opponent has made a number of assertions that there is no evidence that any of the Applicant’s Trade Marks had been used in Australia at the time various evidence and submissions were filed. Such a circumstance does not normally assist an opponent because the grounds of opposition are to be considered at the time the applications are filed. What has occurred subsequent to filing is rarely of assistance to an opponent.

Section 41

The SGPs particularise this ground as follows:

For 1808439 and 1810474:

The applied for trade marks (‘Aquarian Party’ and ‘Aquarian Movement’) are incapable of distinguishing the goods and services claimed in the applications. There are no political parties, political movements or trade known as ‘Aquarian Party’ or ‘Aquarian Movement’ in Australia. There is, however, the opponent's earlier trade mark (AQUARIAN). Furthermore, the words ‘Party’ and ‘Movement’' are descriptive, not capable of distinguishing the goods services claimed by the applicant and may be used by other traders in the ordinary course of trade such as, for example, John's Party and Smith's Movement, or indeed used by the opponent as in, for example, AQUARIAN Party or AQUARIAN Movement.

For 1841225 and 1841230:

The Applicant is not known to have a trade or goods and/or services identified by the applied for trade marks ‘Aquarian’ or ‘Aquarians’. The Applicant is not named aquarian or aquarians as a person or a trader. The applied for trade marks, ‘Aquarian’ and ‘Aquarians’, are not capable of distinguishing the Applicant's goods and/or services, namely, ‘providing information regarding political issues’. There is, however, the applicant's other known trade of selling domain names and sound equipment and the opponent's earlier trade marks in use in Australia and overseas called 'AQUARIAN', which is a popular keyword or meta tag for generation of internet traffic and online promotion/selling of goods and services.

Section 41 of the Act provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)        An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:      For goods of a person and services of a person see section 6.

(2)        A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)        This subsection applies to a trade mark if:

(a)     the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)        This subsection applies to a trade mark if:

(a)     the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)     the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)        the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)       the use, or intended use, of the trade mark by the applicant;

(iii)      any other circumstances.

Note 1:   Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b) the time of production of goods or of the rendering of services.

Note 2: For goods of a person and services of a person see section 6.

Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)        For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd (‘Du Cros’), Lord Parker of Waddington said:

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.

In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:

[W]hether a mark is adapted to distinguish [will] be tested by reference to  the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

As indicated above, the Opponent has filed no submissions in its oppositions of 1841225 and 1841230. The Opponent’s evidence in those oppositions do contain what amount to submissions but none directly address s 41. In its submissions filed in respect of 1808439 and 1810474 the Opponent has submitted:

Opponent especially relies on its submitted Evidence and adduced evidence (Evidence in Reply in paragraphs 12 to 21) that the Opposed Marks are indeed not capable of distinguishing the Applicant’s specified services from the services of other users and the Applicant’s goods and services. It would be a simple and detrimentally important step to adduce such evidence, which Applicant elected to not do and this, I am convinced, is due to the fact that no such evidence exists. Such lack of actual use not only adds to the risks I have taken to the other opposition grounds, it also accentuates and adds to the incapability of distinguishing the Applicant's trade marks, in that, there is no fact or history of use to go by in distinguishing the Applicant's services from other users. I consider that this ground has been established.

There are what amounts to submissions at paragraphs 12 to 21 of Penson 2. They are almost entirely irrelevant to the consideration of inherent adaptation to distinguish of the Applicant’s Trade Marks. A dictionary definition of ‘aquarian’ is provided, being: ‘a person born under the zodiac of Aquarius’. The surrounding submissions evince a general lack of understanding of the key s 41 concept of ‘inherent adaptation to distinguish’ and do not satisfy me that ‘Aquarian Party’ or ‘Aquarian Movement’ are signs that other traders are likely, without improper motive, to desire to use in respect of the Applicant’s Services. Neither is there anything before me that satisfies me that ‘AQUARIAN’ or ‘AQUARIANS’ are signs that lack inherent adaptation to distinguish the Applicant’s Services from those of other traders. The Opponent has, therefore, failed to establish this ground of opposition.

Section 44

Relevant provisions of the Act with respect to the s 44 ground are reproduced below:

Section 44 - Identical etc. trade marks

(1)       …

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

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

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

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

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

Note 1: For deceptively similar see section 10.

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

Note 3: For priority date see section 12.

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

(3)       …

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

In the SGPs the Opponent nominated the Opponent’s registered trade marks in support of this ground of opposition in respect of all of the Applications.

To successfully oppose the applications pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(2), i.e. that at least one of the Opponent’s registered trade marks:

•    is registered by a person other than the Applicant (‘the first requirement’); and

•    has a priority date which is earlier than the Relevant Date (‘the second requirement’); and

•    is in respect of at least some goods/services which are similar/closely related to the Applicant’s Services (‘the third requirement’); and

•    is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the fourth requirement’).

It is necessary that all of the requirements discussed above be satisfied. It is not sufficient that one of the Opponent’s registered trade marks might satisfy, say, three of the four requirements. In the present matter, to dispense efficiently with this ground of opposition I need consider only the third requirement. There is nothing before me that satisfies me that that any of the Opponent’s registered trade marks are registered for any goods which are closely related to, or services which are similar to, the Applicant’s Services. The Opponent has, therefore, failed to establish this ground of opposition.

Section 43

Section 43 provides:

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

This ground of opposition was particularised in the SGPs as follows:

For 1808439 and 1810474:

‘Party’ and ‘Movement’ are descriptive, and the connotation arising from the applicant's trade marks (‘Aquarian Party’ and ‘Aquarian Movement’) would be predominantly drawn from the leading sign ‘Aquarian’, which is wholly identical to the opponent's trade mark (AQUARIAN) both phonetically and by spelling/appearance. There is a distinct likelihood that the applicant's trade mark is likely to deceive or at the very least cause confusion for the consuming public that the applicant's goods services are emanated from the same source of origin of the opponent.

For 1841225 and 1841230:

As the applied for trade marks (‘Aquarian’ and ‘Aquarians’) are not capable of distinguishing the applicant's goods or services and are wholly identical or substantially identical in appearance (in spelling), sound (in pronunciation) and connotation that would be perceived by average intelligence consuming public to be same similar to the Opponent's earlier trade mark 'AQUARIAN', there is a distinct likelihood that the applied for trade mark would deceive or at the very least, cause confusion that the Applicant's goods or services are emanated from the same source of origin as the Opponent's goods and services.

Spender J in Winton Shire Council v Lomas stated that:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.

In McCorquodale v Masterson the court found:

In an opposition to registration, s 43 of the Act requires an opponent to show that: (1) there is a connotation in the proposed trade mark or in a part of it; and (2) because of this connotation, the use of the proposed mark would be likely to deceive or cause confusion. The connotation must be contained within the mark itself.

Similarly in Pfizer Products Inc v Karam Gyles J said:

‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks … Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients.

The Opponent’s submissions which were filed in respect of 1808439 and 1810474 do not address this ground of opposition. There were no submissions filed in respect of the remaining oppositions. Penson 2 includes a number of paragraphs which contain what are submissions, rather than evidence, directed to s 43. The submissions include the following:

Since the Applicant has concede that the predominating or memorable feature of his trade mark(s) is ‘Aquarian’ … without any differences to be drawn from the physical appearance other than an extra ‘Party’ or ‘Movement’, both of which could have a secondary meaning of ‘a social gathering’ (for Party) or ‘a particular manner of moving’ (for the word Movement) … the Opposed Marks(s) would give a misleading deception or at the very least, confusion, that the series carry those marks are affiliated with and/or emanate from the same source of the Opponent.

The Opponent has addressed what is asserted to be a secondary meaning within the 1808439 and 1810474 trade marks; however, I am not satisfied that the trade marks connote a secondary meaning which is likely to deceive or confuse the public as to the nature of the services for which the Applicant has applied. The Opponent appears to be relying on deception or confusion arising out the similarity of the trade marks to his own trade marks. As is clear from the case law, this is not the source of deception or confusion with which s 43 is concerned. Neither am I satisfied that either the 1841225 or 1841230 trade mark has a connotation which is likely to deceive or cause confusion. The Opponent has, therefore, failed to establish this ground of opposition.

Section 58

Section 58 of the Act is reproduced below:

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.

The ground based on s 58 of the Act was particularised in the SGPs as follows:

For 1808439 and 1810474:

The priority of the applicant's trade marks (‘Aquarian Party’ and ‘Aquarian Movement) dated November 2016 are some 7 years later than the opponent's first use of the trade mark (AQUARIAN) in as early as 2010. The applicant is not by name or by birth an aquarian (a person born under the zodiac sign of aquarius). The applicant appears to be owner of certain other Australian trade marks, however, none of those trade marks have any remote similarity to the applications or the goods services claimed in the applications.

For 1841225 and 1841230:

Opponent's earlier trade marks (sic) ‘AQUARIAN’ has first use in at least as early as October 2010 is approx. 7 years earlier than the priority date of the opposed applications. In addition, the Applicant is not by name or by birth an aquarian, that is, a person born under the sign of Aquarius, and the Applicant has no known trade or goods and/or services identified by or related to aquarian or aquarians. The Applicant, however, does on official records own a number of Australian registered trade marks and associated businesses, which appear totally unrelated to the applied for trade marks or the goods or services for which protection is sought.

The owner of a trade mark for particular good/services 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 that in order to succeed under this ground of opposition the Opponent must establish three requirements. These are:

•    that the Applicant’s trade mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first requirement’);

•    that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second requirement’); and

•    that a person other than the Applicant has the earlier claim to ownership of the Applicant’s trade mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Applicant’s trade mark by the Applicant (‘the third requirement’).

It is necessary that all three requirements are satisfied for this ground of opposition to succeed: two out of the three is not sufficient. I will address the second requirement. The particulars in the SGPs make no reference to what goods or services the Opponent’s trade mark was used in connection with; however, Penson 3 makes submissions which address s 43 and include the following;

I have submitted, in details, Evidence In Support Exhibits SS15 to SS19 and further Evidence In Reply paragraph 32-33 and Exhibit ‘J’. In respect of the latter mentioned Evidence, it does relate to ‘the same kind of thing’ and services as that purported to have been used by the Applicant. Should it be challenged that the adduced evidence does not constitute the Opponent's operation a legal services (class 45), a security services ( class 45) or services "providing information regarding political issues (the Applicant's purported use in class 45) or that I have not officially registered class 45 as a trade mark, I would rely on my common law right for the simple reason that I consider the act of my giving information regarding political issues, in reality, occurred during my normal course of trade under the use of my registered trade mark AQUARIAN at a time earlier than the Relevant Dates in services related to and are considered necessary in promoting my trade mark and my goods and services, such that it did constitute Use of my trade mark in promoting my goods and services, which incorporated the services of providing information regarding political issues irrespective of whether or not I have registered Class 45 as my trade mark.

The Opponent has submitted that certain exhibits of Penson 1 and certain paragraphs of Penson 3 along with Exhibit J of that declaration demonstrate that the Opponent demonstrate that the Opponent has used ‘AQUARIAN’ in connection with services which are the same kind of things as the Applicant’s Services. The submission quoted above refers to Exhibits SS15 to SS19, I assume this is an error and the intention was a reference to Exhibits SSP15 to SSP19 of Penson 1. Exhibits SSP15 to SSP19 are declared to be confidential so I am limited in the extent to which I can discuss them; however; Exhibit SSP15 is declared to be ‘details of the opponent’s trade mark registrations in Australia, and the first use of the “AQUARIAN” trade mark is on at least as early as 2010’. The exhibit contains only details of the registrations and no evidence showing use of any trade marks.

Exhibit SSP16 is declared to be ‘a photograph of the first “AQUARIAN” brand beverage vending/dispensing machine, taken in 2010’. The single page exhibit shows a photograph of what appears to be a vending machine. There is nothing in the photograph which supports a view that AQUARIAN was used in connection with services which are the same kind of thing as the Applicant’s Services.

Exhibit SSP17 is declared to be ‘a computer screenshot showing the “AQUARIAN” brand products of bottled water sold via an online store of associated entity’. The three page exhibit appears to be as described. There is nothing in the exhibit which supports a view that AQUARIAN was used in connection with services which are the same kind of thing as the Applicant’s Services.

Exhibit SSP18 is declared to be ‘a sample collection’ of the online sales mentioned in the previous paragraph of this decision. The exhibit contains some six invoices. None of the items in the invoice are for services which are the same kind of thing as the Applicant’s Services.

It is stated in Penson 1 that, ‘The opponent has promoted the ‘AQUARIAN’ branded goods and services via online presence and direct marketing for sales in Australia and selective export markets’. Exhibit SSP19 is declared to be ‘a sample list of the domain names and business names registered by the opponent and/or predecessor in title’. The exhibit is as described. There is nothing in the exhibit which supports a view that AQUARIAN was used in connection with services which are the same kind of thing as the Applicant’s Services.

Paragraphs 32-35 of Penson 3 state:

The Opponent’s exhibited uses of its registered trade marks in [SSP15 to SSP19] from as early as October 2010.

I rebut the Applicant's implied contention that the Opponent does not have the relevant use to prove that the Applicant is not the Owner of the trade mark. In this respect, exhibited hereto marked 'J' is a document forwarded by myself to a third party in August 2016, with certain third party data redacted for protection of privacy. In this document, I advised the party concerned about the licensing of my AQUARIAN trade marks and in so doing, provided advice concerning the presiding Australian government, the general running of the Australian politics and the prevailing political environments in respect of the Opponent's registered trade mark ‘AQUARIAN’ and extension trade marks, including ‘AQUARIAN Club’, ‘AQUARIAN Move’ (sic), ‘AQUARIAN Association’ and ‘AQUARIAN Party’.

The aforesaid document was generated in the Opponent's ordinary course of trade of promoting the registered trade mark "AQUARIAN" and related services within the context of marketing and consultancy agency representative services by any means, etc. within the identifications of class 35. To my knowledge and understanding, consultancy is a form of advisory service within the broad coverage of the services under class 35, and is directed not only to the Opponent's goods and services but also goods and services of others.

Based on the aforesaid document and the fact that the information contained therein was given within the capacity of advising on the various aspects of the registered trade mark AQUARIAN, took place at a time pre-dating the priority of the Opposed Mark, I believe I conducted the said business affair not only as the owner of the registered trade mark ‘AQUARIAN’ but also entitled to the common law right in having the first use of the associating extension marks ‘AQUARIAN Club’, ‘AQUARIAN Move’ ‘AQUARIAN Association" and ‘AQUARIAN Party’ within the broad coverage of class 35 and overlapping the Applicant's claim of fundraising activities and the sought protection of "providing information regarding political issue" in the Opposed Mark

Exhibit J is a single page document which appears to be a letter. The body of the text is reproduced below:

With reference to your recent enquiry concerning the licensing arrangements for my Australian Trade Mark ‘AQUARIAN’ and the extension marks: ‘AQUARIAN Move’, ‘AQUARIAN Association’, ‘AQUARIAN Club’ and ‘AQUARIAN Party’ for relating goods and services including consultancy and advisory, I may reply as follows.

I own the ‘AQUARIAN’ trade marks registered in Australia from 2010 to the present. I am also the owner of the ‘AQUARIAN’ trade marks for the related services, including consultancy and distribution etc. In principle, I would look upon your proposal favourably subject to finalisation of details and terms.

With respect to your question regarding the stability of the political environments in Australia and as to whether any governmental changes may affect the legal rights of intellectual properties owned and licensed in Australia, I may advise generally and recommend to seek legal advice should it become necessary.

In general, I can advise that the present controlling government is the ‘Liberal Party of Australia’, been in government since this year and is expected to run its full term at least until mid 2019; there is currently no anticipated legislation changes in the area of intellectual properties and in any event, any such changes would require bills to be passed at various levels before the Parliament, which is a complex process and is, in my opinion, not a likely event during the term of the present government.

The comments regarding the political situation in Australia are given in the context of enquiries regarding licensing arrangements and are incidental to those enquiries. There is no suggestion that the information formed part of any transaction. This single, brief example of mention of political affairs in response to a query regarding licensing of trade marks is not sufficient to satisfy me that the Opponent used AQUARIAN as a trade mark in connection with the service of providing information on political issues.

The Opponent’s evidence does not satisfy me that he used AQUARIAN in connection with services which are the same kind of thing as the Applicant’s Services. The Opponent has therefore failed to establish the second requirement of s 58 and has, therefore, failed to establish this ground of opposition.

Section 58A

Section 58A is reproduced below:

Section 58A – 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

(b)       a similar provision of the regulations made for the purposes of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

(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.

Note:  For predecessor in title see section 6.

None of the Applicant’s Trade Marks were accepted because of s 44(4) or a similar provision of the regulations made for the purposes of Part 17A; consequently, this ground of opposition is not available to the Opponent.

Section 59

Section 59 of the Act is reproduced below:

59 - Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a)     to use, or authorise the use of, the trade mark in Australia, or

(b)     to assign the trade mark to a body corporate for use by the body Corporate in Australia;

in relation to the goods and/or services specified in the application.

Note: For applicant see section 6.

The ground based on s 59 of the Act was particularised in the SGPs as follows:

For 1808439 and 1810474:

The applicant set up the applied for trade marks in 1-page static websites ( which are linked to a third-party fundraising portal and several social media platforms via the internet, however, since the setting up of those internet platforms some 7 months ago, zero dollars are (said to have been) raised and little or no activity by either the applicant or visitors is evident.

For 1841225 and 1841230:

The priority date of the applications is approaching one year, however, with exception of appearing in domain name and user name in third party social media platforms, and/or meta tag for purpose of search engine optimisation (SEO) in relation to a made believed organisation of a sort, no use of the applied for trade marks can be found to warrant the protection sought in the opposed applications.

The Opponent submitted in respect of 1808439 and 1810474:

I submit that Applicant did not and has not any requisite or bona fide intention to use the trade marks, not before the Relevant Dates or after the Relevant Dates, despite Applicant's claim that ‘the act of my filing the Trade Mark demonstrates this’ (Smyth Declaration paragraph 42).

For example, I refer to Applicant's ‘first generation’ websites (Evidence In Support Exhibit SSP10) posted under the said ‘international’ domain names <aquarianparty.org> and <aquarianmovement.org> displays a language and presence apparently targetting to promote to the international audience at a time earlier than the Relevant Dates, such use was held not in Australia, or for the use of the Australian trade marks at issue.

In the Applicant's ‘second generation’ websites of the same international domain names, evidenced at a later date, (Evidence In Reply Exhibits 'M' in pages 81 and 87) this display a later version websites containing additional text, including display of hyperlinks to Australian domain which is in fact registered from 10th August 2017 onward only. Here also, should this be claimed as Applicant's Use of the Opposed Marks, which Opponent contends is not, it is most certainly not Use on/before the Relevant Dates, being the 10th and 21st of Nov 2016, and in any event, it is arguable if digital promotion can be considered use of trade mark in Australia.

Then, in the Applicant's latest generated website posted under the Australian domain name (Evidence In reply Exhibit 'M' pages 73 to 75) this would have come into place at the very earliest on the domain creation date 10th August 2017 only, this is some 12 months later than the Relevant Dates, and such that it cannot be considered Use for the Trade Marks at issue. Furthermore, this website is obviously promoting to the international audience … such that I do not consider this can be considered use of a trade mark in Australia, or a show of bona fide intention to use such trade marks in Australia.

The relevant date for assessing the Applicant’s intention is the date on which the Applications were filed. To establish this ground of opposition it is necessary that the Opponent establish that on those dates the Applicant lacked the necessary intention to use the trade marks. It does not, for example, assist the Opponent to establish that at some date after the filing date the Applicant did not have the requisite intention: the Applicant may merely have changed his mind.

The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:

In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.

There is a presumption that where an application has been filed the Applicant has the requisite intention. However:

there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.

The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.

In view of the above authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until he has established a prima facie case that that the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Holder for rebuttal.

In Smyth 2 the Applicant affirmed his intention by stating, ‘My intention at the time of filing my Trade Mark was and still is to use the Trade Mark’.

The Opponent appears to be basing his opposition almost entirely on his view that the activities of the Applicant after the filing dates do not constitute use of the Applicant’s Trade Marks in Australia. I note that even were the Applicant’s websites targeted at an international audience this does not mean that any trade mark use on those websites is not use in Australia. Indeed, s 228 of the Act explicitly states that, if a trade mark is applied in Australia in relation to services that are to be exported from Australia the application of the trade mark is taken to constitute use of the trade mark in relation to those services. Section 228 also states that, if any other act is done in Australia to export services which, if done in relation to services to be dealt with or provided in the course of trade in Australia, would constitute a use of the trade mark in Australia, the other act is take to constitute use of the trade mark in relation to those services.

The Opponent has failed to satisfy me that the Applicant lacked the requisite intention at the times he filed the Applications. Consequently, this ground of opposition is not established for any of the Applications.

Section 60

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.

The ground based on s 60 of the Act was particularised in the SGPs as follows:

For 1808439 and 1810474:

The opponent's trade mark (AQUARIAN) has first use in at least as early as 2010 for a range of goods and services relating but not limiting (sic) to water, such first use is some 7 years earlier than the priority of the applications, which are dated 7 months ago. Over the years, the opponent and their predecessors have used and built the trade mark (AQUARIAN) both as a brand and badge of origin, and have acquired a reputation in Australia and overseas markets as a reliable brand and source of supply of goods and services from Australia. Use of the applicant's trade mark is likely to deceive or cause confusion for consumers.

For 1841225 and 1841230:

Opponent's trade marks 'AQUARIAN' first used in as early as October 2010 for a range of goods services relating but not limiting to water. Over a period of approx.7 years, the Opponent has continuously used and promoted the 'AQUARIAN' trademarks as its brand name and badge of origin and has acquired a reputation in Australia and overseas markets as a trusted brand and source of supply of good and services in and from Australia. Use of the Applicant's trade mark would confuse the marketplace in Australia and overseas that the applied for trade marks are emanated from the same source of origin as the Opponent's goods services.

To establish a ground of opposition under s 60 an opponent must demonstrate that at the priority date of an application there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the applied for trade mark would be likely to deceive or cause confusion. The Opponent has stated that its trade mark, AQUARIAN, has such a reputation.

In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’. Her Honour quoted with approval the following words of Lockhart J from 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 …

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.

Penson 3 contains the following statements regarding reputation:

My overall sales volume may be considered modest, it is a factor governed by the nature of some of my goods, e.g. botted water, being a low cost but high volume item, and I believe the high volume also equates to a higher reach of the consuming public and market exposure, which goes toward the reputation and goodwill and my AQUARIAN branded goods and services.

In terms of reputation, I have not tried to project a fantastically high image or the fame of a multi-national conglomerate, nor have I claimed reputation based on high volume of sales or substantial advertising spend. I do however maintain that I have built a steadily growing business in Australia over the past 7 years and as such, have acquired a reputation in Australia … for the Opponent’s mark as a brand name and badge of origin in Australia and from Australia.

Viewing the Opponent’s evidence in the best possible light I am prepared to accept that the Opponent’s use of AQUARIAN has caused that trade mark to acquire a modest reputation in Australia in connection with the supply of beverages and the beverages themselves. It is not sufficient, however, that the Opponent merely establish that its trade mark has acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Marks 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.

The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:

‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

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.

With respect to the likelihood of deception or confusion the Opponent has submitted:

I believe that the concern of deception or confusion here is based on my reputation, which maybe considered moderate but a reputation nonetheless, and when put side by side with the claimed service of the Applicant, I believe a good portion of the public would find the fact that both marks share a commonality of the predominating and memorable feature i.e. the AQUARIAN name, which is in itself unusual would have cause to wonder and at the at least (sic) come to a reasonable doubt there is some form of connection between the two marks. And given also the commonality of surrounding elements i.e. same trade channel (digital media) and same method of sale (direct online marking), the deception or confusion does not only exist there is a real and tangible danger of likelihood of confusion and mistaken belief that the two marks and related goods and services are originated from or connected to the same family of the registered mark ‘AQUARIAN’.

I am not persuaded by the Opponent’s submissions. The Applicant’s Services are in such a disparate commercial sphere it is unlikely that a consumer who was aware of the Opponent’s trade mark and its beverage operation would be caused to wonder whether the Applicant’s Services originated from the same trade source. Also militating against deception or confusion are other factors: that the acquired reputation is modest; and the character of the word ‘Aquarian’. ‘Aquarian’ is not an invented term but one which would be readily recognised as a derivation of ‘Aquarius’: a word which is in regular use and familiar to, I suspect, most if not all, fluent speakers of the English language in Australia.

The Opponent has failed to establish this ground of opposition.

Section 42

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.

The SGPs particularise this ground as follows:

For 1808439 and 1810474:

Based on the information available from the authorities and public domains, the applicant's known trade and business background is of no relation of whatsoever kind to the goods services claimed in the applications. And the applicant's claimed services of providing information regarding political issues allegedly in the form of a non-profit organisation is believed part of a smokescreen fabrication for obtaining domain names,business names & trademarks,all of which incorporated the earlier trademark (AQUARIAN) for the purpose of registering primarily the earlier trade mark (AQUARIAN). Applicant's trade marks is scandalous & contrary to law

Those particulars were assessed as inadequate and rectified with the following further information:

With respect to the Ground based on Section 42(b) Contrary to law, the opposition is based on the Australian Consumer Law (ACL) Sections 18, 29 & 34 and/or Trade Practices Act Sections 52 and 53.

For 1841225 and 1841230:

The Applicant seemingly does not have an established trade or relationship of whatsoever kind with the applied for trade mark 'Aquarian' or 'Aquarians'. By applying for and using a mark that is and/or incorporates the entirety of the Opponent's trade marks 'AQUARIAN' (TM 1817930,1680062,1574948,1472489, 1391575) is deceptive or at the very least, misleading the consuming public that the goods services of the Applicant and the Opponent are associated and/or emanated from the same source. Such misleading or deceptive conduct is contrary to law, Australia Consumer Law Sect.18,29,34 and/or Trade Practices Act Sect.52,53.

Section 42 contains two distinct grounds of opposition: one in each of the sub-sections. With respect to sub-s (a), beyond the statement ‘Applicant’s trade marks (sic) is scandalous …’, found in the SGP for 1808439 and 1810474, there is nothing in the particulars, submissions or evidence which addresses what might be scandalous about any of the Applicant’s Trade Marks. In Penson 3 the Opponent stated, ‘In the interest of expediency, I limit the ground under this Section of the Act to Section 42(b). I have no hesitation in finding this ground of opposition is not established.

In respect of sub-s (b), the onus is on the Opponent to establish that use of the Applicant’s Trade Marks would be, rather than could be, contrary to law on the balance of probabilities. In the present matter the Opponent has failed to establish a ground of opposition under s 60 of the Act. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60, I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Marks would be contrary to s 18 of the ACL.

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, nor the tort of passing off. 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)’. Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) 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.

For these reasons I am not satisfied that use of the Applicant’s Trade Marks would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.

Section 62A

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.

The SGPs particularise this ground as follows:

For 1808439 and 1810474:

Based on information from the authorities and public domains, the applicant appears to own and is associated with audio/video goods services & domain registration business. In the latter-mentioned, the applicant as a domain registrar would have been keenly aware to conduct searches prior to registering his own domain names, business names and trade mark applications and would have inevitably encountered the opponent's business name and trade mark (AQUARIAN), yet the applicant is content to proceed and continue with the trademark applications, to the extent of filing two more such applications (TM1831225 & 1841230) very recently.

For 1841225 and 1841230:

Applicant e-filed the applications at a time when he had been made fully aware of the Opponent's earlier trade marks ‘AQUARIAN’. Despite forewarning, the applications did not hesitate in promptly filing the applications with the knowledge that his earlier applications for the same similar trade marks (namely, applications 1808439 and 1810474 for trade marks ‘Aquarian Party’ and ‘Aquarian Movement’) were facing challenge and opposition by the Opponent and would be reasonable to assume that any further applications for the same similar trade marks if filed would also more than likely be opposed, this clearly indicates the applicant's wilful disregard of the Opponent's earlier trade marks even after they had been brought to his specific intention, furthermore, the Applicant has apparently no such trade or goods services, for which protection has been sought in the applicant's earlier applications as well as the further filed applications for the same similar trade marks and the same goods services would also add to support that the applications are made in bad faith and for the applicant's own reasons and purposes other than those declared.

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.

The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

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.

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.

The Opponent’s submissions in respect of this ground are lengthy, but the main thrust of them is that the Applicant, being aware of the Opponent’s earlier trade marks acted in bad faith by filing the Applications. An additional aspect of the surrounding circumstances which the Opponent submits indicate that the Applications were made in bad faith is contained the following:

[T]he Applicant here knowingly and intentionally sized up the international arena for domain names in association with the brand name AQUARIAN and registered well in advance those international domains names, followed by registrations of the same names, in Australia, in domain names and business names, the bad faith then manifestated throughout the process of claiming bogus eligibility to qualify for the registrations of ‘.ORG.AU’ domains names (Exhibit ‘H’ and ‘I’ page #38 to 45) and business names which are falsely and conflictingly declaring the Applicant's business both an ‘INCOPORATED’ organisation and ‘UN-INCORPORATED’ organisation.

Merely being aware of earlier trade marks and filing applications for similar trade marks does not, of itself, constitute bad faith. An applicant might be of the opinion, for example, that the respective trade marks could co-exist on the Register and that deception or confusion are unlikely. Neither does the filing of trade mark applications in the face of oppositions to other similar applications, of itself, constitute bad faith. An applicant may be of the view that the oppositions are not well founded and are unlikely to succeed. In the present matter, the Opponent having had such views at the time of filing the Applications would be entirely reasonable.

The registration of domain names, while perhaps evincing a pattern of behaviour is not a matter of concern of the Registrar of Trade Marks. Further, behaviour that is likely to be generally seen simply as sharp business practice by persons adopting the proper standards might be viewed as bad faith to certain individuals, especially where those individuals are adversely affected by that behaviour. However, it is the majority view that prevails.

There is nothing in the evidence or submissions in this matter which satisfies me that any of the Applications were made in bad faith. The Opponent has, therefore, failed to establish this ground of opposition.

Decision

The Opponent has failed to establish any of the grounds of opposition it nominated in the SGPs. Accordingly, the Applications may proceed to registration after 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 a court so orders.

Costs

Awards of costs in matters before the Registrar usually follow events and it would be normal here to award costs against the Opponent. However, an award of costs is discretionary, and the Registrar may take into account the conduct of a party to proceedings. There is no suggestion that the Applicant’s estate intends to use the Applicant’s Trade Marks for the services which the Applicant intended to use them. Mindful of the unfortunate circumstances, I nevertheless find the failure of the Applicant’s representative, some 16 months after the death of the Applicant, to either indicate their intention to proceed with the Applications or to withdraw the Applications as uncooperative. This also caused undue delays for the Opponent. Due to the Applicant’s conduct, I decline to make an award of costs in these matters.

Robert Wilson

Hearing Officer

Trade Mark Oppositions and Hearings

11 December 2019