Ready Fence Franchising Pty Ltd v Bishop Devenport Pty Ltd as trustee for the Bishop Devenport Unit Trust

TRADE MARKS ACT 1995

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

Re:Opposition by Ready Fence Franchising Pty Ltd to registration of trade mark application numbers 2046971 and 2046972 – READYFENCE ADELAIDE and READYFENCE ADELAIDE with circle device – both in class 37 in the name of Bishop Devenport Pty Ltd as trustee for the Bishop Devenport Unit Trust

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Shauna Ross of Counsel instructed by LegalVision ILP Pty Ltd

Applicant: Lecia Wood and Amy Bishop of DW Fox Tucker Lawyers

Decision:

2023 ATMO 162

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 44, 58, 62A and 62(b) considered, section 58A not applicable – no ground of opposition established – registration allowed subject to limitation to the State of South Australia

Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Ready Fence Franchising Pty Ltd (‘Opponent’) to registration of the following trade marks:
Trade mark numbers:     2046971 and 2046972 (‘Applications’).
Trade marks:  READYFENCE ADELAIDE and
(‘Applicant’s Trade Marks’).
Applicant:Bishop Devenport Pty Ltd as trustee for the Bishop Devenport Unit Trust (‘Applicant’).
Filing Date:  28 October 2019 (‘Relevant Date’).
Specification:  Class 37: Hire of temporary fencing; Hire of temporary pool fencing; Hire of temporary fencing panels and associated ballast blocks; Fence erection services; Erection of security fencing (‘Applicant’s Services’).
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
The Applicant’s Trade Marks were examined and advertised as accepted for possible registration on 9 July 2021.
On 9 September 2021, the Opponent filed a Notice of Intention to Oppose the Applicant’s Trade Marks. On 11 October 2021, the Opponent filed its Statement of Grounds and Particulars (‘SGP’), which this office gave to the Applicant on 16 November 2021. The Applicant filed a Notice of Intention to Defend the opposition on 15 December 2021.
The Opponent filed Evidence in Support (‘EIS’) on 16 March 2022. The Applicant filed Evidence in Answer (‘EIA’) on 17 June 2022.
The parties were given the opportunity to be heard. An oral hearing was requested and heard by me as a delegate of the Registrar of Trade Marks on 20 July 2023 by video conference. Shauna Ross of counsel, instructed by Sahil Verma and Christopher Parker of LegalVision ILP Pty Ltd, appeared for the Opponent. Lecia Wood and Amy Bishop of DW Fox Tucker Lawyers, appeared for the Applicant. Both representatives’ oral submissions were supplemented by written submissions which were filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence of the parties, and the written and oral submissions of the parties.
For ease of reference, the table at Annexure A details the trade marks referred to in this decision.

Grounds and onus

The SGP nominates grounds of opposition under ss 42(b), 44, 58, 58A, 59, 60, 62A and 62(b). However, the Opponent’s written submissions state that the Opponent did not press ss 42(b), 59 and 60. For completeness, I find that the grounds not pressed have not been established.
The Opponent carries the burden of establishing one or more of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] The rights of the parties are assessed as at the Relevant Date, being both the filing date and the priority date of the Applications.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Evidence

The following evidence was filed:
EIS
Declaration of David Grant, prior director of Ready Co Pty Ltd (‘Ready Co’) made on 16 March 2022 with Annexures A to D (‘Grant Declaration’).
Declaration of Brendon Callaghan, director and secretary of Ready Fence Franchising Pty Ltd made on 16 March 2022 with Annexures A to I (‘Callaghan Declaration’).
EIA
Declarations of Matthew Bishop, director of the Applicant, made on 15 June 2022 with Annexures MMB 1 to MMB 37 which are identical in content (‘Bishop Declaration’).

EIS

The Grant Declaration details the history of use of the word mark READYFENCE (‘Word Mark’) and the mark (‘Composite Mark’) (collectively ‘Grant Marks’) from January 1997 by David Grant (‘Grant’) and his company Ready Co in respect of the business of fence erection, repair, sale and hire (‘ReadyFence Business’).
Grant registered the Word Mark in Australia on 4 February 1997 under trade mark number 727115 in his name in respect of:
Class 6: Fences including (but not limited to) those made from chain mesh and hoarding
Class 19: Plastic ballast blocks including those for supporting modular and temporary fencing
Class 37: Hire of temporary fencing and associated ballast blocks
This registration was not renewed beyond its initial 10 year term and was recorded as having been removed from the register for that reason on 4 February 2008.
Grant or Ready Co never registered the Composite Mark.
From 1997 to 2008, Grant claims to have continuously used or authorised the use of the Grant Marks via a licence to Ready Co who then sub-licensed the use of the Grant Marks to licensees in Queensland, New South Wales, Western Australia, the Northern Territory and, also to the Applicant in South Australia in respect of the following goods and services:
Metallic and non-metallic fences, fence materials, panels, fittings and structures, fence erection and repair services, plant hire and fence hire (‘Grant Goods and Services’).
Grant claims he promoted the Grant Goods and Services with reference to the Grant Marks via a web site since February 2001 and via online advertising.
Grant claims he initiated discussions with the Applicant concerning a licence to use the Grant Marks in early 2005. A licence was formally granted to the Applicant in June 2005. Grant is unable to locate a signed copy of this licence agreement but claims it is similar in nature to a 2002 franchise template document in Annexure D to the Grant Declaration (‘Franchise Agreement’).
The Applicant paid royalties to Ready Co from 2005 to 2012.
In 2012, Ready Co reached an exit agreement with the Applicant, allowing the Applicant to terminate the licence agreement. Grant claims it was an express term that the Applicant would cease use of the Grant Marks but could continue to trade under the brand ‘RF Adelaide’.
In March 2018, Grant declares that he sold the rights, goodwill and reputation throughout Australia in the Grant Marks to Brendon Callaghan (‘Callaghan’) through his company Ready Group Industries Pty Ltd (‘Ready Group’).
The Callaghan Declaration states that from 2004 to 2018, he was an employee of Ready Fence (NSW) Pty Ltd (‘RF NSW’), that company having been the New South Wales licensee from September 2002 to 2018 of the Grant Marks from Ready Co.
Callaghan confirms the sale in March 2018 from Ready Co to Ready Group. Annexure A to the Callaghan Declaration contains a compilation of emails and a bank statement as evidence of the purchase.
Callaghan declares that Ready Group and the Opponent are related entities, and he is sole director of both.
Callaghan then details what occurred after the purchase of the Grant Marks in 2018. He claims to have contacted various other original licensees across Australia to ensure business continued as usual and negotiated to allow those licensees to continue operating under licence arrangements. He claims the Brisbane and Gold Coast branches all complied and continue to pay royalties and that all current licensees pay royalties to Ready Group. He also claims to have contacted the Applicant to ensure the brand’s coverage extended to South Australia.
Callaghan declares that in April 2018 he applied for registration of the Word Mark and (‘Composite Registration’) (together ‘Opponent’s Registrations’). He further declares that the Composite Registration was adopted in March 2018.
Callaghan then provides details of the provision and advertising of the Grant Goods and Services under the Opponent’s Registrations including via the internet, social media, signage, sports team sponsorship and a trade show. On this evidence, Wayback Machine[4] extracts of the web site readyfence.com.au from 11 August 2018 to 5 December 2021[5] do not clearly show use of the Composite Registration. Further examples of use are either undated, do not clearly show use of the Composite Registration or show use of a different mark to the Composite Registration.[6]
[4] Callaghan Declaration Annexure B.
[6] Callaghan Declaration Annexures C–H.
Callaghan details his engagement of his law firm LegalVision on 31 January 2020 to issue a cease and desist letter to the Applicant.

EIA

Matthew Bishop (‘Bishop’) claims that on 8 June 2005, the Applicant entered into a license agreement (‘Agreement’) with Ready Co granting the Applicant a license to:
- use the word mark READYFENCE (Australian trade mark number 727115).
- use the intellectual property in a temporary fencing base the subject of Australian patent numbers 678755 and 722776.
- use, hire and market the temporary fencing base within ‘essentially all of South Australia’.
A copy of the signed Agreement is annexed as Annexure MMB 2 to the Bishop Declaration.
Bishop claims the Applicant commenced its temporary fence hire business using the trade marks READYFENCE ADELAIDE (‘Word Application’) and (‘Prior Device Mark’) and with the consent of Grant, registering the business name READYFENCE ADELAIDE. The services provided essentially fall under the category of temporary fence erection, disassembly and removal for a number of different purposes which included the hire of goods which make up a temporary fence such as fence panels, ballast blocks and/or plastic bases and hire of fence panel additions such as shade cloth, barbed wire, dog bars and pest mesh. Bishop claims that he used Ready Co’s plastic bases until around 2011.
Ready Co provided artwork to the Applicant which was used as the basis of the Prior Device Mark. Bishop claims that Ready Co knew that the Applicant added ADELAIDE and changed the font of the artwork but did not require input or direction regarding the implementation of the Prior Device Mark.
In 2007 Bishop claims that the Applicant transitioned from the Prior Device Mark to the mark (‘Device Application’).
Bishop claims that the Applicant provided monthly sales reports to Ready Co including a calculation of the licence fee payable under the Agreement.
Bishop provides evidence of use of the Applicant’s Trade Marks on various dates and through various means in South Australia between 2005 to 2019.
Bishop claims that the Applicant’s Services appeared on Ready Co’s web site at readyfence.com.au from 2005. In 2009, the Applicant established a web site at readyfenceadelaide.com.au and in 2011, all traffic to this web site was redirected to rfa.net.au. Bishop claims that Ready Co agreed to the domain names readyfenceadelaide.com.au and rfa.net.au and the web sites at these addresses but did not ask for any input regarding the layout for the web sites or give direction as to the use of the Applicant’s Trade Marks.
Bishop claims that through use of the Applicant’s Trade Marks it has an extensive reputation in South Australia. The Applicant provides hire income and advertising and promotional expenses from 1 July 2013 to 30 June 2021.
Bishop then provides the following comments on the EIS as follows:
- There was only one license agreement – the Agreement contained as Annexure MMB 2 to the Bishop Declaration.
- Ready Co did not provide any assistance or guidance to the Applicant in relation to establishing the business in South Australia and use of the Applicant’s Trade Marks
- Ready Co did not monitor the Applicant’s use of the Applicant’s Trade Marks
- Bishop became aware at some point that the READYFENCE Australian trade mark number 727115 had ceased on 4 February 2007 and Australian patent number 678755 had ceased before the date of the Agreement. On this basis, and on the basis of Ready Co failing to give the Applicant the benefit of its knowledge and experience, Bishop understood that Ready Co was sufficiently in breach of the Agreement that he could terminate the Agreement.
- In a 2012 conversation with Grant, Bishop claims he advised Grant that he always operated independently from Ready Co so he was cutting ties and considered the Agreement to be at an end. Bishop advised he would continue independent operation trading as ‘ReadyFence Adelaide’ to which he claims Grant responded with “no worries’ or similar. Bishop also claims that Grant never made reference to ‘RF Adelaide’ and did not request or contemplate any changes to the use of the Applicant’s Trade Marks.
- Ready Co acquiesced to the Applicant’s use of the Applicant’s Trade Marks, which was consistent with the consequences of termination for a breach of the Agreement by Ready Co in clause 7.2 of the Agreement, allowing the Applicant to continue to use the trading name ReadyFence Adelaide or any derivative of trade mark “ReadyFence” in South Australia without further obligation to Ready Co.
- Ready Co never approached or asked the Applicant to cease using the Applicant’s Trade Marks and took no action to require the Applicant to cease use or to change its business name. Neither Ready Co nor Callaghan asked the Applicant to assign any rights to the Opponent. Rather Callaghan approached the Applicant to “bring it back on board” indicating that the Opponent knew the Agreement had been terminated.
The first indication of any issue with the use of the Applicant’s Trade Marks was the Opponent’s letter of demand on 31 January 2020.
Bishop claims that as time passed, he believed it wise to protect the Applicant’s rights in the Applicant’s Trade Marks and he therefore filed the Applications.

Issues in dispute

The Applicant and the Opponent have each provided their own version of events. On a number of key issues, the parties are in disagreement namely:
- The question of ownership including the licence governing the arrangement between Ready Co and the Applicant. The Applicant claims there was only one licence agreement and it conducted its business and provided its services independently of Ready Co in South Australia as Ready Co did not exercise sufficient control over the Applicant. The Opponent claims there were 2 licence agreements and claims ownership of the Grant Marks through first use by Grant and its licensee Ready Co, as successor in title.
- The events following termination of the Agreement. The Applicant claims that the agreement was terminated as a result of Ready Co being in breach of the Agreement which then gave the Applicant the right to continue to use the trading name ReadyFence Adelaide or any derivative of trade mark “ReadyFence” in South Australia without further obligation to Ready Co. It also claims that Ready Co acquiesced to the Applicant’s use after termination. The Opponent claims that it was not in breach of the Agreement and that on termination of the Agreement, the Applicant was to cease using the READYFENCE name but could use RF Adelaide.

Discussion and Reasons

Section 58

Section 58 provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note: For applicant see section 6.

The term “applicant” is defined in s 6 to mean, in relation to an application, “the person in whose name the application is for the time being proceeding”.
Section 27(1) sets out who may make an application for registration of a trade mark and provides:
Application—how made
(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:
(a) the person claims to be the owner of the trade mark; and
(b) one of the following applies:
(i) the person is using or intends to use the trade mark in relation to the goods and/or services;
(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.
Note: For use see section 7.

Section 7 provides:
Use of trade mark
(1) If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note: For prescribed court see section 190.
(2) To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.
(3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.
(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5) In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
Section 8 provides:
Definitions of authorised user and authorised use
(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.
(2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.
(3) If the owner of a trade mark exercises quality control over goods or services:
(a) dealt with or provided in the course of trade by another person; and
(b) in relation to which the trade mark is used;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(4) If:
(a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
(b) the owner of the trade mark exercises financial control over the other person’s relevant trading activities;
the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
(5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

The Act provides for registration of ownership and not ownership by registration.[7] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[8] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[9] Once ownership in a trade mark is established, it becomes personal property that may be sold, transmitted or lost in accordance with the general law.[10]
[7]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[8] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
[9] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).
[10] Riv-Oland Marble Co (Vic) Pty Ltd v Settef SpA [1988] FCA 344, [8] (Bowen CJ).

The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[11] which in this case for each Application is 28 October 2019.
[11] Pham Global (n 8) [14].
The SGP claims that the Applications are substantially identical to the Opponent’s Registrations, which were first used and adopted in Australia in 1997 by Ready Co. In 2018, Ready Co transferred ownership of the Opponent’s Registrations to Ready Group. The Applicant is therefore not the owner of the Applicant’s Trade Marks.
The claim in the SGP that the Composite Registration was first used and adopted in Australia in 1997 by Ready Co Pty Ltd does not appear to be correct. Callaghan’s declaration states that this version of the [Composite Registration] logo was adopted in or around March 2018.[12] There is also no corroborating evidence to support the claim of adoption in March 2018. In addition, it is not clear from Callaghan’s Declaration when the Composite Registration was first used as a trade mark. Due to this lack of clarity, I propose to take the filing date of the Composite Registration as the date the trade mark was adopted in Australia for the purposes of s 58, being 27 April 2018.
[12] Callaghan Declaration [9].
The SGP does not claim that the Applications are substantially identical to the Composite Mark. The Opponent’s written submissions introduces the Composite Mark for consideration under s 58. I note that the Opponent has not requested an amendment to the SGP to include consideration of this mark under s 58. While the Applicant has not taken issue with the inclusion of this mark, given the lateness of its introduction, I do not propose to give consideration to the Composite Mark under s 58.
It is the Opponent who bears the evidential onus of establishing that the Applicant was not the owner of the Applicant’s Trade Marks at the Relevant Date. To achieve this, the following requirements must be satisfied:

the trade marks relied upon by the Opponent are at least substantially identical to the Applicant’s Trade Marks[13] (‘First Requirement’);
the Applicant’s Services are the ‘same kind of thing’ as the goods and services for which the trade marks relied upon by the Opponent have been used[14] (‘Second Requirement’); and
a person other than the Applicant has the earlier claim to ownership based on use of the trade marks relied upon by the Opponent prior to whichever is the earlier of: (a) the applications to register or (b) any actual use of the Applicant’s Trade Marks[15] (‘Third Requirement’).
[13] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
[14] Re Hicks’s Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).
[15] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

I propose to deal with these requirements in the order in which they appear above.
The First Requirement - whether the trade marks relied upon by the Opponent, being the Opponent’s Registrations, are at least substantially identical to the Applicant’s Trade Marks.

Substantial Identity

The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[16] where his Honour stated at 414:
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.
[16] (1963) 109 CLR 407 (‘Shell’).
Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are “substantially identical”.
In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[17] the Full Court clarified the way in which a “side by side comparison” of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:
The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where 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” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.
[17] Pham Global (n 8).
Whether there is substantial identity is a question of fact.[18] The table below shows the comparison of the marks in issue:
[18] Ibid [53].

Opponent’s Registrations

Applicant’s Trade Marks

READYFENCE

(Word Mark)

(Composite Registration)

READYFENCE ADELAIDE

(Word Application)

(Device Application)

In respect of a comparison of the Word Mark and the Word Application, I agree with the Opponent’s submissions that READYFENCE is the immediate obvious and striking similarity. The essential element and the dominant cognitive cue in each mark is the word READYFENCE. This is the entirety of the Prior Word Mark. The only difference between the 2 marks is the geographical indicator ADELAIDE and while this is not descriptive of the kind of services provided by the Applicant, as the words radiology and clinical imaging were in Pham Global,[19] it is descriptive of the geographical origin or location of the Applicant’s Services. In the context of the comparison required, I see no difference between the way an obvious and well known geographical descriptor and a descriptor of goods and/or services should be treated.
[19] Ibid.
There is a total impression of resemblance both visually and aurally and as a consequence, the Word Mark is substantially identical with the Word Registration.
I note the Applicant’s reliance in its submissions on PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd[20] but this decision does not assist the Applicant. There is a significant difference between comparing the stylised word WICKED with WICKED SISTER, particularly because the word SISTER has no descriptive function in relation to the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods in question. Further, WICKED was not considered a strongly distinguishing feature of the WICKED SISTER marks and neither word was considered a prominent or essential feature of WICKED SISTER. That is not the case here.
[20] [2021] FCAFC 128 (Jagot, Nicholas and Burley JJ).
In respect of the Composite Registration and the Device Application, the first and second unmistakable components of the Composite Registration are the distinctive word READYFENCE and the circle device. These elements are two essential and dominant cognitive cues of the Composite Registration and they are the shared elements between the Composite Registration and the Device Application. They also appear in the same order and in the same position in each of the marks. The remaining elements in the Composite Registration are an irregularly divided background (shown in yellow and blue block colour), a 1800 number and the descriptive words ‘Temporary Fence Hire & Sales’. These 3 elements, particularly the descriptive words, are of lesser significance than the circle device and the distinctive word READYFENCE. However, the background and the 1800 number are both given a prominent position in the Composite Registration. In contrast, the word ADELAIDE in the Device Application is not apt to perform a distinguishing role for the same reasons as in relation to the Word Application.
On a side by side comparison, cognisant of the essential elements of the Composite Registration, and not ignoring any elements of the marks under comparison, the Device Application does not quite convey the total impression of resemblance to the Composite Registration that would be required for me to find them substantially identical.
As the First Requirement has been satisfied in relation to the Word Application, I must now decide the Second Requirement, namely are the Applicant’s Services the ‘same kind of thing’ as the goods and services for which the Word Mark has been used.
The Full Federal Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[21] adopted the test of whether two services are ‘the same kind of thing’ as being whether they are ’true equivalents’.
[21] [2017] FCAFC 56 (Greenwood, Besanko and Katzmann JJ).
In Carnival CruiseLines Inc v Sitmar Cruises Ltd,[22] Gummow J referred to there being no differences of ’character or quality’ of the services in that case to gainsay that they were the ’same kind of thing’.
[22] (1994) FCA 936, [66].
In Colorado Group Ltd v Strandbags Group Pty Ltd, Allsop J said:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article.[23]
[23] [2007] FCAFC 184 [89].
Justice Kenny said:
In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a “same kind” inquiry from the factors for a “same description” inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as “essentially the same” may well cover a narrower field tha[n] goods “of the same description”.[24]
[24] Ibid [16].
The Grant Declaration establishes use of the Word Mark in respect of delivery, erection and removal of temporary fences including plastic bases, hand and foot rails, chain wire, panels and hoardings for temporary fences (‘Word Mark Services’).
The Applicant’s Services are:
Hire of temporary fencing; Hire of temporary pool fencing; Hire of temporary fencing panels and associated ballast blocks; Fence erection services; Erection of security fencing
In my opinion, the hire of temporary fencing and fence erection services generally be they for pools, security or otherwise are the same kind of thing as Word Mark Services.
Therefore, I am satisfied that the Second Requirement has been met in relation to the Word Application. Given this I must now decide the Third Requirement namely a person other than the Applicant has the earlier claim to ownership based on use of the trade marks relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register or (b) any actual use of the Applicant’s Trade Marks.
Justice McTiernan explained in Shell Co of Australia Ltd v Rohm and Haas Co:
The lodging of the application for the registration of [the mark] gave [the applicant] an inchoate title to that trade mark and an inchoate right to its exclusive use; the title and the right would cease if registration were refused, but if granted the title and the right would be confirmed and endure for the term of the registration. ...
For a very long time it has been a fundamental principle of the legislation providing for the registration of trade marks that the lodging of an application for registration gives to the applicant certain rights in respect of the user of the trade mark of which registration is sought.[25]
[25] (1948) 78 CLR 601 [3]–[4].
In the same case, Dixon J said that:
The basis of a claim to proprietorship in a trade mark so far unused has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the applying for registration.[26]
[26] Ibid [7].
His Honour also said: ‘authorship … involves the origination or first adoption of the word or design as and for a trade mark’.[27]
[27] Ibid [8].
Essential to a valid claim to ownership is that no other person has acquired a prior right to use the trade mark in Australia for the goods and/or services in question.
I reiterate here that I am not considering the Composite Mark under s 58 and therefore any claims to use of the Composite Mark and resulting arguments do not form part of my consideration. I need only conclude on s 58 as it applies to the Word Mark.
The Grant Declaration annexes Wayback Machine extracts showing use of the Word Mark at the web site readyfence.com.au from 4 February 2001 to 4 February 2017.[28] Many of these dated extracts indicate the states and territories where the ReadyFence Business operated at the time. The numbers of states and territories indicated were anywhere between 2 and 6 with Adelaide first appearing in 2006. These extracts are valid evidence of the date on which the pages appeared. The pages clearly show use of the Word Mark from 2001.
[28] Grant Declaration, Annexure C.
Even though both Grant and Callaghan claim that there was use of the Word Mark from 1997, there is no evidence to support this claim.
However, the filing of an application to register READYFENCE under Australian trade mark number 727115 on 4 February 1997 supports Grant’s claim to the authorship and ownership of the Word Mark in 1997 in respect of the goods and services of this registration, until the registration was removed in 2007.
Having regard to the entirety of the evidence filed, I am satisfied that Grant was the first user of the Word Mark since at least 2001 for the Word Mark Services.
I am also satisfied that the ownership of the Word Mark continued after Grant’s first use through Grant licensing the use of the Word Mark to Ready Co for these same goods and services.
The Opponent’s evidence is sufficient for me to be satisfied that Ready Co was an authorised user of the Word Mark under ss 7 and 8. The authorised use is based on the evidence which shows that in 1997 Grant was the sole director of Ready Co (until May 1998)[29] and it can be inferred that, at least in respect of that earliest of use of the Word Mark, Grant and Ready Co had a unity of purpose[30] which was to expand and promote the temporary fencing business. Grant was also the controlling force behind the trading activities of Ready Co and was the person negotiating license agreements with licencees, including the Applicant. I am satisfied that there was, what amounted to, sufficient control from Grant over Ready Co’ use the Word Mark at that time.
[29] Grant Declaration, Annexure A.
[30] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).
However, the Relevant Date for determining this opposition is 28 October 2019. There are contested claims to ownership in respect of South Australia. Did other events transpire after 2001 and before the Relevant Date which have a bearing on Grant’s ownership of the Word Mark in South Australia?
The Applicant argues that the Opponent cannot rely on the prior use and the ownership by Grant of the Word Mark because the Opponent is not a successor in title of Grant. That is, if there is a successor in title of Grant it is Ready Co, not Ready Group.
I have concluded above that Ready Co was an authorised user of the Word Mark by virtue of an informal licence arrangement from Grant to Ready Co to use the Word Mark under the control of Grant.
The Opponent has evidenced to my satisfaction that there was a sale by Grant in March 2018 of the rights, goodwill and reputation in the Word Mark to Ready Group.
The Applicant’s submissions claim that the sale to Ready Group was without the goodwill of the business and therefore as the Grant Marks were unregistered, they could not be transmitted to Ready Group. Thus, Ready Group could not be a successor in title of the Grant Marks under s 6.
Section 6 provides a definition of predecessor in title as follows:
predecessor in title, in relation to a person who claims to be the owner of a trade mark, means:
(a) if the trade mark was assigned or transmitted to one or more than one other person before it was assigned or transmitted to the first‑mentioned person—that other person or any one of those other persons; or
(b) if paragraph (a) does not apply—the person who assigned the trade mark, or from whom the trade mark was transmitted, to the first‑mentioned person.
Note: In the case of a trade mark that is neither registered nor the subject of an application for registration, the trade mark may be assigned or transmitted in Australia only in conjunction with the goodwill of a business concerned with the trade mark. If the trade mark is registered or the subject of an application for registration, section 106 provides that the trade mark may be assigned or transmitted with or without the goodwill of the business.
The Full Federal Court in Kraft Foods Group Brands LLC v Bega Cheese Ltd (No 8)[31] confirmed that rights in relation to an unregistered trade mark can only be assigned by way of an assignment of the goodwill of the underlying business. Thus, the assignment of goodwill carries with it the unregistered trade marks of the business.[32]
[31] [2020] FCAFC 65 (Foster, Moshinsky and O’Bryan JJ).
[32] Shipwright v Clements (1871) 19 WR 599.
At the time of purchase of the business by Ready Group, the Word Mark was not registered. Therefore, the sale of the unregistered trade mark could only occur with the transfer of the business.
The High Court in Commissioner of State Revenue v Placer Dome Inc[33] held that: “…it is important to recognise that goodwill has no existence independently of the conduct of that business; goodwill cannot be severed from the business which created it”.
[33] [2018] HCA 59, [142] (Kiefel CJ, Bell, Nettle and Gordon JJ).
In my opinion, the Applicant is under the mistaken impression that because the word ’business’ was not expressly mentioned in the Opponent’s evidence regarding the sale of the rights, goodwill and reputation in the Word Mark, this was not a sale of Grant’s business. It appears to me more likely than not that the Ready Co business and goodwill did indeed transfer at that time. I am therefore satisfied that the goodwill which existed in 2018 in Grant’s ReadyFence Business was transferred to Ready Group.
The Opponent’s evidence includes evidence of payment and documents required to transfer tools to operate the business namely web sites and domain names. This all reinforces the conclusion that the goodwill of the business was sold. In addition, Bishop refers to the transaction as a “purchase of a business from Ready Co”.[34]
[34] Bishop Declarations, [57].
The Applicant’s submissions claim that if there was a sale, that it was limited to Brisbane and the Gold Coast. I disagree that there was any express geographical limitation to the sale. However, given the contested claims to ownership in respect of South Australia, I must consider the extent of Ready Co’s goodwill in 2018 and in particular whether it extended to South Australia.
Ready Co does appear to have licenced use of the Grant Marks at least in New South Wales to RF NSW in 2002.[35] Ready Co also licenced the use of the Word Mark in 2005 to the Applicant for South Australia.[36] While Grant claims that Ready Co licenced the Grant Marks to licensees in Queensland, Western Australia and the Northern Territory,[37] the evidence does not indicate when these licensees first began use of one or more of the Grant Marks.
[35] Callaghan Declaration, [6].
[36] Bishop Declarations, [5].
[37] Grant Declaration, [7].

The Applicant’s submissions claim that the Applicant is the owner of the Applicant’s Trade Marks in South Australia by virtue of its use. While the Applicant’s use began under the terms of the Agreement between 2005 and 2012, as mentioned in my summary of the EIA, the Applicant claimed to have used those marks without the control of Ready Co or Grant. After termination of the Agreement in 2012, the use by the Applicant continued, which would appear on its face to be independent use.
I need to decide at this point whether the Applicant was bound by 2 separate licence agreements, the Agreement and the Franchise Agreement, as claimed by the Opponent or only one, the Agreement, as claimed by the Applicant. Given that there is only a copy of the signed Agreement in evidence, and several terms of the Franchise Agreement are at odds with the Agreement, on the balance of probabilities, I agree with the Applicant that the Agreement was the only agreement in operation regarding the use of the Word Mark in South Australia between Ready Co and the Applicant.
Under s 7, Grant will only have had the benefit of the use of the Word Application by the Applicant if the Applicant was an ’authorised user’. To reiterate, there must have been control by Grant over the use of that mark by the Applicant. Such control must be effective, and can be include financial or quality control.
On the issue of control, Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks said:
[T]he essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-user, but it is essential both that the user maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. Conversely registration of a registered user will not save the mark if there ceases to be the relevant connexion in the course of trade with the proprietor or the mark otherwise becomes deceptive.[38]
[38] (1977) 137 CLR 670, 683.
In Lodestar Anstalt v Campari America LLC (‘Lodestar’), Besanko J summarised the law as follows:
Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.[39]
[39] [2016] FCAFC 92 [63] (emphasis in original) (‘Lodestar’).

100. Lodestar was a leading decision on authorised use and a number of points appear in Besanko J’s judgment (which had the support of the majority) namely:

The trade mark must indicate a connection in the course of trade with the registered owner.[40]
‘[T]he connection may be slight, such as selection or quality control or control of the user in the sense in which a parent company controls a subsidiary.’[41]
While the connection may be slight it does not mean the relevant control leading to that connection may be slight.[42]
There must be actual control in relation to the use of the trade mark. While control involves questions of fact and degree, there must be control as a matter of substance.[43]
Unlike the current position in the United Kingdom, a bare licence is insufficient under the Australian legislation.[44]

[40] Ibid [95].

[41] Ibid.

[42] Ibid.

[43] Ibid [97]–[98].

[44] Ibid [99].

101. The use of a trade mark where there has been no control by the licensor can result in a trade mark deceiving or causing confusion to consumers, thus, destroying the ‘badge of origin’ function of the mark. In Heublein Inc v Continental Liqueurs Pty Ltd,[45] the lack of control led to the trade mark ceasing to distinguish the services of the plaintiff because of the licensing and franchising arrangements in place.

[45] (1960) 103 CLR 435.

102. Justice Nicholas in Lodestar said:

In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor.[46]
[46] Lodestar (n 39) [108].

103. In Lodestar, the following contractual provisions were held to deal only with the use of the trade marks and did not demonstrate control: Restricting the use of the trade mark to manufacture and distribution of Australian wine in Australia, restrictions on amending or abbreviating the trade mark or using it in a scandalous fashion and a provision requiring standard liability insurance were not part of the issues of control.

104. The Opponent does not claim that there was financial control over the Applicant.

105. The Opponent’s submissions state that the Applicant knew he was under the control of Ready Co because:

Grant gave his consent to the Applicant registering the business name READYFENCE ADELAIDE.
The Applicant provided monthly sales reports and paid the licence fee in accordance with the Agreement.
Ready Co provided artwork to the Applicant for the READYFENCE logo branding, which the Applicant then altered (to add ADELAIDE) with Grant’s permission. It is however unclear from both parties’ evidence whether there was express permission by Grant or whether Grant merely knew of the changes and remained silent.
Ready Co agreed to the Applicant registering the web sites readyfenceadelaide.com.au and rfa.net.au.
Advertising of the Applicant’s Services appeared on Ready Co’s web site from 2005.
The fencing bases emanated from Ready Co and were the subject of a patent which was how quality control was exerted. I note that there were 2 patents in the licence agreement, one of which had lapsed. There is no indication whether the fencing bases were those of the lapsed or the live patent. Further, the Applicant’s licence was only directed to the fence base – to use, hire and market the fence base. There is no evidence that Ready Co controlled where the Applicant obtained its other fence parts or how it provided the services of hiring of temporary fencing.

106. The Applicant’s submissions state that the Applicant was not was under the control of Ready Co because:

While Ready Co provided artwork to the Applicant for the READYFENCE logo branding which the Applicant altered (to add ADELAIDE, resulting in the Prior Device Mark), Grant did not require any input or direction regarding the implementation of the Prior Device Mark.
In 2007 the Applicant altered the Prior Device Mark to the Device Application without input from Grant or Ready Co.
Ready Co initially supplied the Applicant with Ready Co’s fence bases but the Applicant had ceased using them by 2011.
Ready Co did not request or require any input about layout or give direction as to the use of the Applicant’s Trade Marks including READYFENCE on the Applicant’s web sites.
Ready Co did not provide any assistance to the Applicant or impart any knowledge in relation to the establishment of the Applicant’s business or any guidance, knowledge or experience in relation to the Applicant’s delivery of its services.
Ready Co did not monitor Applicant’s use of the Applicant’s Trade Marks or provide guidelines about their use.
Ready Co did not monitor or oversee sourcing of materials or processes for fabrication of temporary fence panels.

107. The Applicant’s business is the hire of temporary fencing. It is not in the business of only hiring fencing bases. In my opinion, on the basis of the evidence, I am satisfied that Ready Co’s degree of control over the Applicant’s use of the Applicant’s Trade Marks during the term of the Agreement from 2005 to 2012, and, in particular, the control over the services in respect of which the Applicant’s Trade Marks were applied was, in the words of Besanko J in Lodestar, slight.

108. Grant had actual control over the fence bases that Ready Co supplied, at least until 2011 when the Applicant claims to have ceased using them, but neither Grant nor Ready Co ever sought to impose any control over the Applicant’s temporary fence hire business per se or the application of the Applicant’s Trade Marks to the Applicant’s Services.

109. I am also not satisfied that Grant had control over the Applicant’s use of the Applicant’s Trade Marks. An initial consent to the addition of Adelaide to a trade mark, providing initial artwork for a trade mark and agreeing to the registration by the Applicant of one or more domain names is not sufficient. The Opponent has not provided any evidence that they controlled or monitored in any way the actual use of the Applicant’s Trade Marks or the quality of the Applicant’s Services. I am also not satisfied that Grant had control over the content of the Applicant’s web sites or any of the advertising or promotion activities undertaken by the Applicant.

110. The consequence of not controlling the Applicant’s use during that time is that the Applicant was not an authorised user in South Australia and so the historical use of the Applicant’s Trade Marks does not inure to the benefit of the Opponent.

111. Furthermore, after the termination of the Agreement in 2012, the Applicant continued to use the Applicant’s Trade Marks in respect of the Applicant’s Services. The Opponent’s evidence does not detail any objection by Grant or Ready Co to this use. The sole objection having been made by Ready Group in 2020, some two years after it had purchased the business from Ready Co. Regardless of whether Grant told the Applicant that they could continue to trade under ReadyFence Adelaide or that the Applicant needed to change to RF Adelaide, the Applicant continued to use the Applicant’s Trade Marks unhindered by Grant, Ready Co or Ready Group.

112. Even when Callaghan reached out to the Applicant in 2018/2019,[47] there is no evidence that Callaghan asserted any rights in the Applicant’s Trade Marks or complained about the use by the Applicant.

[47] Callaghan Declaration, [25].

113. While the Opponent’s submissions assert at [95] that ‘Throughout 2019 Ready Group, or its related entity … corresponded with [the Applicant] in regards to entering into a franchise agreement in order to allow [the Applicant] to use [the READYFENCE trade marks]’, Callaghan does not refer to multiple attempts to reach out to the Applicant.[48] Further Bishop does not refer to more than one approach by Callaghan.[49] Additionally, even if there was evidence of multiple attempts, there is no evidence that Callaghan asserted any rights in the Applicant’s Trade Marks or objected to their use by the Applicant.

[48] Ibid.

[49] Bishop Declaration [57].

114. It would be unjust to ignore the inaction by Ready Co and Ready Group. Ready Co had knowledge that the Applicant continued to use the Applicant’s Trade Marks beyond the termination of the Agreement in 2012[50] and did nothing. Ready Group, when advised by the Applicant in 2018 that the Applicant was using the Applicant’s Trade Marks independently of the Agreement [51] and knowing that the Applicant continued to use the Applicant’s Trade Marks,[52] also did nothing to dissuade the Applicant that it was not entitled to use the Applicant’s Trade Marks until January 2020.

[50] Grant Declaration [17] - [18].

[51] Callaghan Declaration [25].

[52] Ibid [27].

115. The only objection taken to the Applicant’s use of the Applicant’s Trade Marks in respect of the Applicant’s Services was a letter of demand from Ready Group sent on 31 January 2020, after the Relevant Date and up to 15 years after the Applicant first started using the Applicant’s Trade Marks in South Australia.

116. So, in respect of the state of ownership in South Australia, did Ready Co own the goodwill of the business in South Australia in 2018, when the unregistered Word Mark was sold to Ready Group, so that Ready Group is the successor in title for South Australia?

117. The Word Mark was unregistered when it was sold. Therefore, it had to be sold with the goodwill of the business. In light of the lack of control of the Applicant’s use of the Applicant’s Trade Marks in South Australia, and the acquiescence[53] to the Applicant’s use of the Applicant’s Trade Marks both post and pre the sale, it is likely any proprietorship by Grant in the Word Mark never actually established in South Australia, or was subsumed by many years of the Applicant’s trading in that area. It is thus likely the Applicant that had the goodwill in the Applicant’s Trade Marks for the Applicant’s Services in South Australia rather than Grant or Ready Co. Without goodwill in the business in South Australia there will have been no rights to sell on to Ready Group.[54]

[53] Acquiescence indicates the contemporaneous and informed ("knowing") acceptance or standing by which is treated by equity as "assent" (i.e. consent) to what would otherwise be an infringement of rights’ as identified by Deane J in Orr v Ford [1989] HCA 4, [10].

[54] See, eg, Fisher v Automobile Finance Co of Australia Ltd [1928] HCA 35; (1928) 41 CLR 167, 178 (Higgins J). His honour refers to the principle in Latin ‘Nemo dat quod non habet, nemo plus juris in alium transferre potest quam ipse habet’. This translates roughly to ‘You cannot give what you do not have, what you don’t have a legal right to alienate you cannot purport to transfer’.

118. What Ready Group bought from Ready Co was the rights, intellectual property, reputation and goodwill in the ReadyFence Business which it owned and was entitled to sell. The evidence does not positively establish on the balance of probabilities that these rights, intellectual property, reputation and goodwill in the ReadyFence Business included South Australia.

119. It is for the Opponent to establish that the Applicant was not the owner of the Applicant’s Trade Marks as at the Relevant Date. The Applicant appears to have enjoyed many years of extensive and unfettered use, albeit within South Australia. This history, and the nature of the arrangements in place between the Opponent’s predecessor in title and the Applicant introduce considerable confusion over who in fact owns the Applicant’s Trade Marks. The failure of the Opponent to cut through this confusion means that this ground of opposition must fail.[55]

[55] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [66] (Keane CJ, Stone and Jagot JJ).

Section 44

120. The relevant provisions of s 44 are reproduced below:

Identical etc. trade marks
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:       For deceptively similar see section 10.
Note 2:       For similar services see subsection 14(2).
Note 3:       For priority date see section 12.
Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:       An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2:       For predecessor in title see section 6.
Note 3:       For priority date see section 12.

121. Details of the Opponent’s Registrations appear below:

Priority Date	Number	Trade Mark
27 April 2018	1922796	READYFENCE
27 April 2018	1922795

122. Importantly, the Opponent’s Registrations do not exclude South Australia.

123. As a starting point, to successfully oppose the Applications pursuant to s 44, the Opponent must establish that at least one of the Opponent’s Registrations has a priority date which is earlier than the Relevant Date (‘the first requirement’) and that:

· the Applicant’s Trade Marks are substantially identical with, or deceptively similar to the Opponent’s Registrations (‘the second requirement’); and
· the Applicant’s Services are similar services or closely related services to those claimed by the Opponent’s Registrations (‘the third requirement’).

124. The SGP relevantly provides that under s 44(2), the Applications are for marks which are deceptively similar to, or substantially identical with, the Opponent’s Registrations registered in respect of similar services or closely related goods.

125. The first requirement that the priority dates of the Opponent’s Registrations are earlier than the Relevant Date is satisfied.

126. The second requirement is whether the Applicant’s Trade Marks are substantially identical with or deceptively similar to the Opponent’s Registrations. I have discussed the issue of substantial identity in relation to the s 58 ground above, concluding that the Word Application is substantially identical to the Word Mark. Therefore, this requirement is satisfied for that mark.

127. I am also of the view that the Device Application is deceptively similar to the Composite Registration for the reasons that follow.

128. Section 10 provides a definition of deceptively similar being that “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”.

129. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[56]
[56] Shell (n 16) [13].

130. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[57] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the goods or services come from the same trade source.[58] The basis for any deception or confusion is the impression or recollection of the trade marks that is carried away and retained by the ordinary consumer, allowing for an imperfect recollection of the trade marks.[59] The impression comes from the trade marks as a whole, and involves a consideration of the look, sound, effect, meaning and ideas conveyed by the trade marks.

[57] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595; Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

[58] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

[59] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd (2004) 209 ALR 1 [74]-[75] (Moore, Sackville & Emmett JJ).

131. In estimating the effect or impression produced on the mind of potential consumers, I note the comment in Clark v Sharp in relation to the appropriate comparison:

One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing results of such matters, but by judging the effect of the respective wholes.[60]
[60] (1898) 15 RPC 141, 146 (Byrne J).

132. For a trade mark to “so nearly resemble that other trade mark that it is likely to deceive or cause confusion” there would need to be some perceived connection between the two trade marks in the mind of the purchaser.

133. Further, Jackman J in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[61] noted that, ‘it is relevant to take into account on the question of deceptive similarity whether elements of the rival marks have a descriptive character’.

[61] [2023] FCA 482, [73].

134. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[62] conveniently stated the relevant principles, which may be summarised as follows:

[62] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[63]
[63] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157; 168 IPR 42 [2022], 55 [69].
(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[64]
[64] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536, 538.
(c)the marks should not be compared side by side;[65]
[65] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
(d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[66]
[66] Ibid.
(e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[67]
[67] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658. See also The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407.
(f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[68]
[68] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at 62 [43].
(g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of the alleged infringer’s mark (as actually used);[69]
(h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[70]

the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[71]

(j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[72]
(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[73] and
(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[74]

[69] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 415.

[70] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39], quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62.

[71] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83].

[72] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594 - 595; See also Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365, 382 [50].

[73] Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 658.

[74] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc [2020] FCAFC 235; (2020) 385 ALR 514, 533 [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 657.

135. In light of the authorities, I must decide whether the Device Application so nearly resembles the Composite Registration for the Applicant’s Services that it is likely to deceive or cause confusion as to the source of those services.

136. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the Composite Registration will be the distinctive word READYFENCE and the circle device. These elements are the essential and highly distinctive components of the Composite Registration. They are the elements which serve to indicate trade source. These same elements are the shared elements with the Device Application, appearing in the same order and in the same position in each of the marks.

137. The remaining elements in the Composite Registration are a 1800 number and the descriptive words Temporary Fence Hire & Sales. These components are unlikely to be remembered at all. Like most phone numbers, the 1800 number does not need to be remembered. A consumer can easily look up a phone number online or save it in their mobile phone. The words Temporary Fence Hire & Sales inform a consumer what the service is that is being offered are likely to only be remembered as a description of the services.

138. I am satisfied that Device Application so nearly resembles the Composite Registration that it is likely to deceive or cause confusion if used in connection with the Applicant’s Services. Therefore, the Device Application is deceptively similar to the Composite Registration.

139. As I have found that the trade marks of both Applications are substantially identical and/or deceptively similar to the Opponent’s Registrations, I need to deal with the third requirement that at least some of the Applicant’s Services are similar services or services closely related to goods of the Opponent’s Registrations.

140. The table below indicates the goods and services to be compared:

Applicant’s Services

Opponent’s Goods and Services

Class 37: Hire of temporary fencing; Hire of temporary pool fencing; Hire of temporary fencing panels and associated ballast blocks; Fence erection services; Erection of security fencing

Class 6: Components of metal for modular fencing; Fence panels of metal; Fences of metal; Fittings of metal for fences; Galvanised field fencing; Metal connectors for fastening together parts of fences; Metal fencing; Metal security barriers; Modular metallic structures; Modular prefabricated steel framing; Modular wall panelling of metal; Temporary structures made of metal; Temporary structures of metal for safety purposes; Temporary walls of metal; Grills of metal for safety purposes

Class 19: Components of non-metallic materials for modular fencing; Concrete fencing components; Non-metallic fencing materials; Blocks made of concrete; Blocks made of non-metallic materials for building purposes

Class 37: Erection of security fencing; Fence erection services; Repair of fences; Plant hire

141. The Applicant’s claims for “fence erection services and erection of security fencing” are identical to the Opponent’s claims for “fence erection services and erection of security fencing”.

142. I agree with the Opponent’s submission that “hire of temporary fencing, hire of temporary pool fencing, hire of temporary fencing panels and associated ballast blocks” are caught by the Opponent’s claim to “plant hire”. My understanding is that “plant hire’ is the rental by one of tools, machinery and equipment to another. Therefore, the rental of all the above fall under the broad term “plant hire”.

143. Given I have found that all the Applicant Services fall under the ambit of the Opponent’s Class 37 claim, I need not consider whether any of the Applicant’s Services are closely related to the Opponent’s goods in Classes 6 and 19. I must now turn to consider whether, due to evidence of use or other circumstances (that is, the provisions of ss 44(3)-(4)), the s 44 ground of opposition is nevertheless not established.

Honest Concurrent Use

144. The Applicant seeks to rely on s 44(3)(a), honest concurrent use. The onus for establishing this is on the Applicant.[75] Only circumstances from before the Relevant Date are relevant to the enquiry.[76] There are several factors to be considered here, including:

·    the honesty of the concurrent use;
·    the extent of the use in terms of time, geographical area, and volume of sales;
·    the degree of confusion likely to ensue between the marks in question;
·    whether any instances of confusion have been proved; and
·    the relevant inconvenience that would ensue to the parties if registration were to be permitted.[77]
[75] Trident Seafoods Corporation v Trident Foods Pty Ltd [2019] FCAFC 100, [85] (Reeves, Jagot and Rangiah JJ).
[76] Trident Seafoods Corporation v Trident Foods Pty Limited [2018] FCA 1490, [186] (Gleeson J).
[77] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 111 [30] (Kenny J).

145. The Applicant's adoption and use of the Applicant’s Trade Marks is set out in my discussion of s 58 above. In essence, they were adopted with the full knowledge and agreement of Grant and Ready Co, under the terms of the Agreement. It is difficult to see how that could be cast as anything other than honest. The Opponent says that all of the Applicant’s use being use under the Agreement was authorised use which inures to its predecessor in title. I have already found the above that the Applicant’s use during that period was likely its own, due to a lack of any demonstrated effective control over use of those marks. The Applicant’s use nevertheless continued up to 2012 with royalty payments made to Ready Co. After 2012, its use continued without those payments.

146. The Opponent submits this use after the termination of the Agreement in 2012 was a breach of its predecessor’s rights, and therefore dishonest. The Applicant has made reference to a term of the Agreement which provides that if Ready Co breached its terms, resulting in termination of the Agreement, the Applicant ‘may continue to use…the trading name ReadyFence Adelaide or any derivative of trademark “ReadyFence” in the Territory without further obligation to [Ready Co] under this Agreement’ ('Continuing Use Term'). The Applicant points to certain conduct of Grant and Ready Co, including failure to renew the registration of the Word Mark as sufficient for that to enliven that aspect of the Agreement. It is not necessary for me to make a finding as to whether the law of contract permitted the Applicant to rely on that failure to renew as a basis for terminating the contract and continuing its own use under Continuing Use Term. It is sufficient for the present enquiry that the Applicant held the view honestly.

147. The Agreement exclusively licenses to the Applicant ‘the trademark’ within a certain territory. The Agreement also defines ‘Trademark’ as ‘registered trademark number 727115 of the word “READYFENCE”. When that trade mark number was removed for failure to renew, I think it was open to the Applicant to conclude that a rather substantial portion of the Agreement had fallen away with it. As I have said, I am not required to make a finding about whether the Applicant’s purported termination of the Agreement due to breach by Ready Co was ultimately lawful, just that its view was (on the balance of probabilities) honestly held. This seems the most likely fact, given the subsequent behavior of the parties to the Agreement.

148. I have not been shown evidence that Grant or Ready Co complained or took any action whatsoever against the Applicant’s continued use beyond 2012. Indeed, the only action I have seen is the cease and desist letter set by the Opponent’s legal representative on 31 January 2020. This took place after the Relevant Date and as such is not able to be factored into the present analysis. This factor of honesty of adoption and use tends toward a finding in favour of the Applicant.

149. The extent of use in terms of time and volume of sales is significant, with the Applicant having traded for 15 years, with significant revenue shown in its evidence covering about six years prior to the Relevant Date. Extent of use in terms of geographical area is a striking aspect of the factual matrix, with the Applicant having limited its trade to South Australia, and the Opponent (along with its predecessors in title) trading at different times in other parts of the country. This was initially likely down to the exclusive aspect of the Agreement, but since 2012 the geographical divide has continued.

150. This geographical separation if it continues is likely to significantly lessen, if not quite eliminate any possibility of confusion arising. It is noteworthy that despite all these years of parallel trading, no instances of confusion have been alleged, let alone proven, in these proceedings.

151. In terms of competing inconvenience between the parties, the imposition of a rebrand on the Applicant after 15 years of steady trade in its home state would be significant. For the Opponent, its program of offering franchises for parts of the country would be curtailed. The Applicant’s losses are tangible. The Opponent’s are merely potential. As such this factor, and all of the others, favour a finding of honest concurrent use.

152. Given my findings here, and the Applicant’s submission that a limitation may be appropriate in the circumstances, I consider it also appropriate to impose the following limitation on each of the Applicant’s Trade Marks:

Registration of this trade mark is limited to the State of South Australia

Section 58A

153. Section 58A is available where a trade mark is accepted because of s 44(4), or in the context of opposition proceedings, it would survive the s 44 ground of opposition on that basis.[78] Whilst both of the Applicant’s Trade Marks were accepted for possible registration in the basis of s 44(4), I have revisited the s 44 ground above and have decided that ground does not apply due to s 44(3)(a). Section 58A is not enlivened by s 44(3)(a), so cannot be established in the present matter. The endorsement appearing on the register of trade marks will be amended accordingly.

[78] K-Tec, Inc v Healthy Foods, LLC [2016] ATMO 4, [22] (Hearing Officer Richards).

Section 62A

154. Section 62A provides:

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.

155. Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry’) 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:[79]

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.[80]
[79] [2005] FSR 10.
[80] [2012] FCA 81. [147] (‘Fry’).

156. 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.[81]
[81] Ibid [165]-[166].

157. There is no exhaustive definition of “bad faith” or an exhaustive list of examples.[82]

[82] Marvel Characters Inc v Charles [2011] ATMO 92, [20]-[22].

158. It is clear that bad faith for the purposes of s 62A must be at the time of the application and must relate to the making of the subject of that application.[83]

[83] Fry (n 78) [145].

159. The SGP provides that:

The Applicant was aware of the [Grant] Marks, the goods and services provided under the [Grant] Marks, and the reputation in the [Grant] Marks, at the time of filing the Applications. The Applicant was previously an authorised user of the [Grant] Marks, and when such authorisation ended, the Applicant refused to cease unauthorised use of the [Grant] Marks and subsequently filed [the Applications] in bad faith. The Applicant’s conduct falls short of the standards of acceptable behavior observed by reasonable and experienced persons in the industry in which the Applicant operates.

160. The Opponent’s submissions refer to the history between the parties and in particular:

From 2005 until 2012, the Applicant was a franchisee of the former owner of the READYFENCE franchise. As I have previously found, there is no evidence of the Franchise Agreement being in existence. There is only evidence of the Agreement.
The use of the Applicant’s Trade Marks was subject to licensing arrangements with express acknowledgments that the intellectual property was under the control and/or property of the Franchisor and that no proprietary rights accrue to the Applicant. This claim is based on the terms of the alleged Franchise Agreement and not the Agreement.
The letter of demand from the solicitors for the Opponent records that “Throughout 2019 Ready Group, or its related entity … corresponded with [the Applicant] in regards to entering into a franchise agreement in order to allow [the Applicant] to use [the READYFENCE trade marks] ...”. I have previously found that there is no evidence that Ready Group or its related entity corresponded with the Applicant throughout 2019.
The Applicant’s Trade Marks were then filed in October 2019, after those approaches and in full knowledge that Ready Group owned the READYFENCE trade marks.

161. The Applicant’s submissions also refer to the history between the parties and in particular:

It was a condition of termination of the Licence that it could continue using any ‘derivative of trademark “ReadyFence” in South Australia’. The Applicant believed it was entitled to do so.
No request was made for the Applicant to cease using the Applicant’s Trade Marks until the letter of demand dated 31 January 2020, which was after the Applicant had made its Applications.
The Applicant sought registration of the Applicant’s Trade Marks in order to protect the ownership and reputation rights it honestly believed it had in the Applicant’s Trade Marks in South Australia.
The Applicant was aware of Ready Group’s Trade Marks but did not believe that these marks had a reputation at the time of filing in South Australia. The Applicant believes that it had rights in the Applicant’s Trade Marks which surpassed Ready Group’s rights.

162. I am required to decide what the Applicant knew at the time of making the Applications and then, in the light of that knowledge, whether its behaviour fell short of acceptable commercial behaviour.

163. I have previously found that the Opponent has not established that the Applicant was not the owner of the Applicant’s Trade Marks as at 28 October 2019 in South Australia. The Applicant had many years of unfettered use in South Australia as at this date.

164. The Applicant made its thoughts on its rights and independent use in South Australia known to the Opponent and Grant. Until the letter of demand from the Opponent, neither Grant, Ready Co, Ready Group or the Opponent objected to the Applicant’s use of the Applicant’s Trade Marks.

165. I am satisfied that the Applicant honestly believed that it was entitled to apply for registration of the Applicant’s Trade Marks based on the goodwill it had established in relation to its business trading under the Applicant’s Trade Marks in South Australia.

166. I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant applied for the Applicant’s Trade Marks in bad faith on 28 October 2019, in the sense that Bishop’s knowledge as at that date was such, in all the circumstances, that persons adopting proper standards would regard the decision to file the Applications as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.

167. Therefore, the ground of opposition under s 62A is not successful.

Section 62(b)

168. Section 62 (b) provides:

Application etc. defective etc.
The registration of a trade mark may be opposed on any of the following grounds:
(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.
Note: For file see section 6.

169. To succeed under this ground, the Opponent must demonstrate that the representations were false in material particulars and that there is a causal connection between those false representations and the decision to accept the application for registration.[84]

[84] Dunlop Aircraft Tyres Ltd v The Goodyear Tire and Rubber Company [2018] FCA 1014 [230] (Nicholas J).

170. ‘False’ in this context does not mean that the representations were deliberately false[85] and the representations need not be intentionally misleading.[86]

[85] Ibid [231].

[86] Ibid [230].

171. The SGP provides that the Applications were accepted by the Registrar on the basis of evidence or representations provided by the Applicant under s 44(4). As the Applicant was previously an authorised user of the Grant Marks, any such authorised use is taken to be use of the trade mark by the owner of the Grant Marks. Evidence or representations provided by the Applicant to the Registrar that use of the Applicant’s Trade Marks was attributable to the Applicant for the purposes of s 44(4) were therefore false in material particulars.

172. The Opponent submits that the use by the Applicant of the Applicant’s Trade Marks is not use that accrues to the Applicant in order to give to it any rights to the Applicant’s Trade Marks and that use by the Applicant post 2012 was in contravention of the Agreement. Therefore, no rights to the Applications accrued in those circumstances such that there was any basis for evidence or representations of prior use of the kind required to achieve a s 44(4) acceptance.

173. The Opponent further submits that the endorsement on the Applicant’s Trade Marks demonstrates that there was a causal connection between the evidence and representations of prior use and acceptance of the Applicant’s Trade Marks. The Registrar therefore accepted the Applications on the basis of representations, the ‘claim to ownership’ implicit in that application, that was ‘false in material particulars’, as were the representations as to prior use.

174. The Applicant’s submissions state that the Applicant was owner of the Applicant’s Trade Marks and therefore entitled to submit evidence of use of its marks. Therefore, there were no false representations made.

175. I have previously held under the s 58 ground that the Opponent has failed to demonstrate that it exercised control over the Applicant’s use of the Applicant’s Trade Marks. The Applicant had a clear belief that it was the owner of the Applicant’s Trade Marks and therefore the any representations that its evidence of prior use was its own has not been shown by the Opponent to have been ’false in material particulars’.

176. I am satisfied that at the time of filing the evidence of use on the Applications that the Applicant believed it was the owner of the Applicant’s Trade Marks. Therefore, the evidence filed by the Applicant was not false in material particulars. While I have decided to amend the endorsements away from s 44(4), this is only because to decide this matter I have not had to make a decision on that provision. I have instead made findings under s 44(3)(a).

177. Therefore, the ground of opposition under s 62(b) is not successful.

Decision

178. Section 55 relevantly provides:

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.

179. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application numbers 2046971 and 2046972 may proceed to registration not less than one month from the date of this decision with the geographical limitation to South Australia. If the Registrar is 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 applications should be in accordance with the Court’s order or direction.

Costs

180. The Opponent and Applicant have both sought costs, which generally follow the event. I have not been presented with any reason to make an exception in this matter. Accordingly, I award costs against the Opponent in the relevant amounts set out in Schedule 8 of the Regulations. If the Applicant applies for a certificate of costs, those costs are to be taxed in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[87]

[87] [2001] ATMO 78 (Hearing Officer Williams).

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

19 October 2023

Annexure A

Trade Mark	Individual Reference	Group Reference
READYFENCE	Word Mark	Grant Marks
Composite Mark		Grant Marks
READYFENCE	Word Mark	Opponent’s Registrations
Composite Registration		Opponent’s Registrations
READYFENCE ADELAIDE	Word Application	Applicant’s Trade Marks
Device Application
Prior Device Mark

[2023] ATMO 162

19 October 2023

Key Legal Topics

Areas of Law

Commercial Law

Intellectual Property

Statutory Interpretation

Legal Concepts

Statutory Construction

Remedies

Jurisdiction