Resene Paints Limited v DuluxGroup (Australia) Pty Ltd

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Resene Paints Limited to registration of trade mark application numbers 2356915 (Classes 2, 16, 35 and 37) – Colour Your Club– and 2356918 (Classes 2, 16, 35 and 37) -DULUX Colour Your Club- in the name of DuluxGroup (Australia) Pty Ltd.

Delegate: Bianca Irgang

Representation:
Opponent: Blake Carey of AJ Park

Applicant: Ben Fitzpatrick of counsel instructed by Davies Collison Cave Pty Ltd

Decision: 2025 ATMO 126
Trade Marks Act 1995 (Cth) - Section 52 oppositions –
2356915: ss 42, 58, 60 and 62A grounds of opposition pursued –no ground of opposition established.
2356918: ss 42, 60 and 62A ground of opposition pursued – no ground of opposition established. Trade marks to proceed to registration.
Background

DuluxGroup (Australia) Pty Ltd. (‘the Applicant’), filed trade mark application numbers 2356915 and 2356918 on 16 May 2023 in classes 2, 16, 35 and 37 of the International Classification of Goods and Services. The current details of the applications are set out below.
Trade mark:  COLOUR YOUR CLUB (‘Trade Mark’)
Trade mark application no: 2356915
Filing Date:  16 May 2023
Specification:  Class 2: Coating materials, including for application to building exterior or interior surfaces, fences, gates, rooves, outdoor surfaces; paints; varnishes; clear varnishes; lacquers; enamels; powder coatings; thinners; thickeners; binding preparations for paints; pigments; wood stains; preservatives against rust and deterioration of wood; colourants; tinters; mordants; dyestuffs; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; paint sealing preparations, sealing preparations for floors, floor sealing compounds, sealing liquids
Class 16: Printed matter; publications; stationery; adhesives for stationery or household purposes; Painting apparatus; paint brushes, paint rollers, painting accessories as are included in this class; dust bags of paper or plastic for cleaning apparatus; paper for cleaning purposes (other than those impregnated with cleaning preparations), paper tissues for cleaning (other than those impregnated with cleaning preparations); colour cards, colour charts, colour albums, swatches, fan decks, formulation guides
Class 35: Retail and wholesale services in relation to the sale of coating materials, paints, varnishes, clear varnishes, lacquers, enamels, powder coatings, thinners, thickeners, binding preparations for paints, pigments, wood stains, preservatives against rust and deterioration of wood, colourants, tinters, mordants, dyestuffs, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists, printed publications and printed matter including promotional and packaging materials and displays, instructional material, gift vouchers, and credit cards, magazines, newsletters, stationery, brochures, signage, leaflets, posters, members' cards, instructional and teaching materials, colour cards, colour charts, colour albums, swatches, fan decks, formulation guides, painting equipment and accessories for painting, including paint brushes, rollers, covers for paint rollers, paint trays of metal or plastic, paint protection covers and drop sheets of plastic for use in painting, cleaning products (including for application to building services and also to clean skin, hair), hand tools and implements including paint edgers, paint scrapers, window scrapers, trimming knives and blades, wallpaper scourers, wallpaper scissors and shears, sanding blocks, paint stirrers, adhesive spreaders, painting knives, palette knives, caulking guns, filling blades, hobby knives, window washers; marketing and promotional services; management assistance and advice; marketing services, promotional services, database management services; advisory and consultancy in relation to the foregoing; provision of information in relation to the foregoing; all of the foregoing including those provided for charitable purposes
Class 37: Construction, building, repair, maintenance, installation services; painting services including painting of building interiors and exteriors; Interior decorating; interior refurbishment of buildings; advisory and consulting services in relation to the foregoing; provision of information in relation to the foregoing, and all of the aforementioned services including those provided online or via mobile phone, computer or other electronic communication; all of the foregoing including those provided for charitable purpose
Trade mark:  DULUX COLOUR YOUR CLUB (‘DULUX Trade Mark’)
Trade mark application no: 2356918
Filing Date:  16 May 2023 (the ‘Priority Date’)[1]
[1] The ‘Priority Date’ refers to the priority date of both trade mark application number 2356915 and trade mark application number 2356918.
Specification:  Class 2: Coating materials, including for application to building exterior or interior surfaces, fences, gates, rooves, outdoor surfaces; paints; varnishes; clear varnishes; lacquers; enamels; powder coatings; thinners; thickeners; binding preparations for paints; pigments; wood stains; preservatives against rust and deterioration of wood; colourants; tinters; mordants; dyestuffs; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; paint sealing preparations, sealing preparations for floors, floor sealing compounds, sealing liquids
Class 16: Printed matter; publications; stationery; adhesives for stationery or household purposes; Painting apparatus; paint brushes, paint rollers, painting accessories as are included in this class; dust bags of paper or plastic for cleaning apparatus; paper for cleaning purposes (other than those impregnated with cleaning preparations), paper tissues for cleaning (other than those impregnated with cleaning preparations); colour cards, colour charts, colour albums, swatches, fan decks, formulation guides
Class 35: Retail and wholesale services in relation to the sale of coating materials, paints, varnishes, clear varnishes, lacquers, enamels, powder coatings, thinners, thickeners, binding preparations for paints, pigments, wood stains, preservatives against rust and deterioration of wood, colourants, tinters, mordants, dyestuffs, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists, printed publications and printed matter including promotional and packaging materials and displays, instructional material, gift vouchers, and credit cards, magazines, newsletters, stationery, brochures, signage, leaflets, posters, members' cards, instructional and teaching materials, colour cards, colour charts, colour albums, swatches, fan decks, formulation guides, painting equipment and accessories for painting, including paint brushes, rollers, covers for paint rollers, paint trays of metal or plastic, paint protection covers and drop sheets of plastic for use in painting, cleaning products (including for application to building services and also to clean skin, hair), hand tools and implements including paint edgers, paint scrapers, window scrapers, trimming knives and blades, wallpaper scourers, wallpaper scissors and shears, sanding blocks, paint stirrers, adhesive spreaders, painting knives, palette knives, caulking guns, filling blades, hobby knives, window washers; marketing and promotional services; management assistance and advice; marketing services, promotional services, database management services; advisory and consultancy in relation to the foregoing; provision of information in relation to the foregoing; all of the foregoing including those provided for charitable purposes
Class 37: Construction, building, repair, maintenance, installation services; painting services including painting of building interiors and exteriors; Interior decorating; interior refurbishment of buildings; advisory and consulting services in relation to the foregoing; provision of information in relation to the foregoing, and all of the aforementioned services including those provided online or via mobile phone, computer or other electronic communication; all of the foregoing including those provided for charitable purposes (‘Applicant’s Goods and Services’[2])
[2] The ‘Applicant’s Goods and Services’ refers to the combined goods and services of both trade mark application number 2356915 and trade mark application number 2356918.
Acceptance of the applications for possible registration was advertised on 17 October 2023. Subsequently Resene Paints Limited (‘the Opponent’) filed its Notices of Intention to Oppose the registrations followed by its Statements of Grounds and Particulars (‘SGP’).
The Applicant then filed its Notices of Intention to Defend. Thereafter, the Opponent and the Applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).
The oppositions were heard by teleconference by a delegate of the Registrar of Trade Marks on 18 February 2025. As the original delegate was not available to write the decision, I was delegated the matters for a decision on 11 June 2025. The Opponent was represented by Blake Carey of AJ Park. The Applicant was represented by Ben Fitzpatrick of counsel instructed by Davies Collison Cave Pty Ltd.
Grounds of Opposition
The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and s 42(b), 58, 60 and 62A were pursued at the hearing in regards to the Trade Mark. Those grounds under s 42(b), 60 and 62A were pursued at the hearing for the DULUX Trade Mark. The Opponent bears the onus of establishing at least one of the grounds of opposition.[3] The standard of proof is the ordinary civil standard of the balance of probabilities.[4]
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
Evidence
The evidence filed in these matters consists of the following declarations being:
Evidence in Support
·Declaration of Marama Lynne Puke, Litigation assistant of AJ Park, the legal representatives for the Opponent, made on 22 May 2024, and its exhibits MP-1 to MP-13 (‘Puke’).
Evidence in Answer
·Declaration of Sophie Brereton, Community and Partnerships Manager of the Applicant, made on 2 September 2024, and its exhibits SB-1 to SB-61 (‘Brereton’).
Evidence in Reply
·Declaration of Karen Warman, Marketing Manager of the Opponent, made on 8 November 2024, accompanied by exhibits KW-01 to KW-21 (‘Warman’).
Discussion
Section 58 - Ownership
Section 58 of the Act provides:
Applicant not the owner of the 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.
The Opponent has pressed the ground of opposition under s 58 only in regards to the Trade Mark and I proceed on that basis.
Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[5] in relation to particular goods or services[6], or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing. The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount[7].
[5] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 [413].
[6] ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 [639-40].
[7] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).
The trade mark for which an opponent claims prior use must be at least substantially identical to the Trade Mark[8]. According to the side-by-side test where the trade marks:
compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.”[9]
[8] Carnival Cruise Lines v Sitmar Cruises Ltd [1994] FCA 68 (Gummow J).
[9] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407 [414] (Windeyer J)
The Opponent has focused on the words ‘COLOUR YOUR CLUB’ for the basis of a finding that the respective trade marks are substantially identical but the only time I am able to potentially find COLOUR YOUR CLUB solus in the Opponent’s evidence are as forming part of the webpage address: I do not consider this to be evidence of use of COLOUR YOUR CLUB solus. However, I have identified two trade marks in the Opponent’s evidence which are clearly being used by the Opponent as trade marks.
[10] Exhibit MP-04 accompanying Puke.
Therefore, the respective trade marks to be compared are as follows:

Trade Mark

Opponent’s Trade Marks

COLOUR YOUR CLUB

Colour your Club with Resene

(‘Opponent’s Trade Marks’)

A comparison of the Opponent’s Trade Marks with the Trade Mark reveals a number of differences that are striking. In coming to this decision it is important that the trade marks are considered in their entirety – ‘it is the whole of the mark as used which is the subject of the comparison with the registered mark.’[11] Namely, the graphic devices and the addition of the Opponent’s name ‘RESENE’ are both very distinctive and memorable and cannot be discounted from the whole of the trade marks. While the respective trade marks all contain the expression ‘COLOUR YOUR CLUB’, the addition of the other elements in the Opponent’s Trade Marks precludes the possibility of a finding of substantial identity with the Trade Mark. Accordingly, the Opponent has failed to establish the first requirement for s 58.
[11] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).
As such, the Opponent has not established the ground of opposition under s 58 in relation to the Trade Mark.
Section 60 - Reputation in Australia
Section 60 of the Act provides:
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.
To establish the ground of opposition under s 60 the Opponent relies on its use of and the acquired reputation in the Opponent’s Trade Marks.
Section 60 does not require that the services upon which the Opponent uses its trade mark be of a specified standard of similarity with the goods or services of interest to the Applicant, nor is there a requirement that the Opponent’s Trade Marks be substantially identical or deceptively similar to the Trade Mark or the DULUX Trade Mark.
It is for me to determine whether the Opponent has established that before 16 May 2023 either of the Opponent’s Trade Marks were recognised by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the Applicant of its trade marks would be likely to cause the public confusion. This is more than the Opponent merely indicating prior use, the Opponent’s Trade Marks need to be ‘associated in the minds of the Australian public’[12] to such a degree that confusion is likely.
[12] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).
In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[13]:
[i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343 Lockhart J said:
[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.
Justice Kenny continues:
[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …
[13] (2000) 51 IPR 102, 128-129.
In considering whether the Opponent’s Trade Marks have acquired a reputation in Australia, I turn to Puke and the assertions that the Opponent was established in New Zealand in 1946 and began producing its first waterborne paint product for the Australasian market in 1951 with the Opponent currently operating in Australia and New Zealand.
Puke asserts that the Opponent first used the Opponent’s Trade Marks in Australian in 2020 and this is corroborated in Warman[14]. Exhibits KW-02 to Warman contains a copy of an advertisement bearing the Opponent’s graphic device Trade Mark and stating that entrants can enter the competition with entries closing on 31 August 2020. Exhibit KW-17 to Warman contains a letter sent to the Applicant by the Opponent’s representative. Schedule 1 accompanying the letter contains a print-out from the Opponent’s Australian website with a publication date of June 2020 being the Opponent’s entry page for its promotion under the Opponent’s Trade Marks.
[14] Exhibits KW-02 to KW-09 accompanying Warman.
According to Puke, the Opponent’s Trade Marks are used on an annual promotional program where individuals can nominate a sports, hobby or community club to win various prizes including three $1,500 prizes of the Opponent’s paints, primers/seals, wood stains and accessories as well as other spot prizes. According to Puke, there have been annual promotions bearing the Opponent’s Trade Marks since 2020 and its evidence appears to support this assertion. Exhibit KW-04 to Warman shows the same advertisement with a closing date of 31 August 2021. So, it is clear the competition is run annually at the same time each year.
Additionally, Puke and Warman assert that there are numerous traders in Australia which sell the Opponent’s paint products[15]. Warman asserts that the Opponent’s Trade Marks are advertised through these stores and through its Australia website. Exhibit KW-17 to Warman supports the Opponent’s claims that the Australian website, and thus, Australian consumers are targeted by the Opponent’s promotional offer. I also note that the Killcare Surf Life Saving Club in Australia was a winner of a spot prize under the promotion bearing the Opponent’s Trade Marks in 2022. Warman and Puke both assert that 10% of the entrants of the Opponent’s annual promotion are Australian Clubs. However, the Applicant is correct in pointing out that the Opponent has provided no actual numbers to determine how many participants enter the Opponent’s competition or indeed, any figures that may determine the reach and size of any reputation the Opponent has used any of the Opponent’s Trade Marks in Australia.
[15] Exhibit KW-05 accompanying Warman.
While I am satisfied that the Opponent did use the Opponent’s Trade Marks in Australia before the Priority Date of the Trade Mark and the DULUX Trade Mark, I am not satisfied that the Opponent has demonstrated it has established a reputation in the Opponent’s Trade Marks at the Priority Date which is sufficient to trigger s 60.
As already discussed, the Opponent’s Trade Marks are used on an annual promotion whereby an individual can nominate their club for a prize. This appears to be the only service that the Opponent’s Trade Marks are actually used on. It may be best defined as an annual promotional service or competition with charitable overtones. I note that the Opponent’s business is the manufacture and sale of paints, primers/seals, wood stains and accessories. However, the Opponent’s Trade Marks are not used on these goods or services, just on the annual promotion that it runs to provide paint/stain prizes to various sport clubs that are nominated through the competition. There is insufficient evidence before me to establish that the Opponent has acquired a reputation in Australia for the Opponent’s Trade Marks such that the use of the Trade Mark or DULUX Trade Mark would be likely to deceive or cause confusion.

I am not satisfied that use of the Trade Mark or the DULUX Trade Mark will lead a significant number of consumers to experience a reasonable doubt[16] as to the existence of some sort of connection between the Opponent’s Trade Marks and the Trade Mark and DULUX Trade Mark. Nor am I satisfied there would be a real and tangible danger of confusion arising[17] between the respective trade marks.
[16] Southern CrossRefrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 594-5 (Kitto J).
[17] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).
The Opponent has accordingly not established its ground of opposition under s 60.
Section 42(b) – Contrary to Law
Section 42 of the Act provides:
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.
Section 42(b) prevents registration of a trade mark that would be contrary to law.
The Opponent claims that use of the Trade Mark will breach s18 and/or s 29 of the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth), as well as constitute passing off.
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[18]
[18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Hasbro Inc v Imagination Holdings Pty Ltd [2005] ATMO 43 (Hearing Officer Thompson).
As already established in respect of s 60, I am not satisfied that use of the Trade Mark and DULUX Trade Mark in respect of the Applicant’s Goods and Services is likely to deceive or cause confusion. It therefore follows that under the stricter test requirements of the ACL, I am not satisfied that use of the Trade Mark and DULUX Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.
Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[19] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation[20] 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.[21]
[19] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer R.Wilson).
[20] [1989] FCA 771.
[21] Ibid, [40].
Sections 52 and 53 of the Trade Practice Act 1974 (Cth)were the antecedents of ss 18 and 29 of the ACL. Given my findings in relation to ss 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark and DULUX Trade Mark would not constitute passing off.
For the above reasons, the ground of opposition under section 42(b) has not been established.
Section 62A – Application made in bad faith
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Justice Bennett in DC Comics v Cheqout Pty Ltd[22] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [23], wherein her Honour commented:
Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in the 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’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].
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 question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
[22] [2013] FCA 478.
[23] [2012] FCA 81 [164].
The Opponent has based its bad faith ground of opposition on the basis that given the Opponent’s history of use of, and reputation in the Opponent’s Trade Marks it is clear that the Trade Mark and DULUX Trade Mark are likely to be recognised in Australia as a trade mark related to the Opponent. The Opponent has additionally argued that:
·the Applicant would have been aware of the Opponent’s annual promotion given the Opponent’s presence in the Australian marketplace and because they are direct competitors; and
·according to Brereton, the Applicant had a number of choices when it came to naming its promotion and chose the Trade Mark and DULUX Trade Mark without providing an explanation and why it continued with these trade marks after being informed of the Opponent’s concerns on 12 December 2023; and
·the Applicant and Opponent are regularly involved in formal dispute resolution. In 2006 the Opponent was directly involved in a dispute with the Applicant, at the New Zealand Advertising Standards Complaints Board (now known as the Advertising Standards Authority / ASA). The complaint related to Dulux’s inappropriate comparative advertising practices in relation to Opponent and the Opponent’s complaint was successful[24].
[24] KW-13 accompanying Warman.
The Opponent argues:
Resene says that Dulux must have been aware of Resene’s Trade Mark at the time of applying for the Opposed Mark, given that:
(a) Resene’s Trade Mark has strong reputation in Australia (discussed in more depth below, under the section 60 heading);
(b) Resene and Dulux are direct competitors, have competed in Australia for many decades and are regularly involved in formal dispute resolution;
(c) Each companies’ employees require similar skills and knowledge. The result is that, over the years, many employees have moved from Resene to Dulux, and many Dulux employees have moved to Resene;
(d) Dulux follows the official Resene Facebook page (unsurprising given that the parties are direct competitors);
(e) At least one current employee in Dulux’s marketing and communication team is signed up to receive the Resene newsletter, having been signed up since 2022 (Resene’s Trade Mark was mentioned in Resene newsletters prior to the 1 May 2023). Importantly, Dulux was given opportunity to challenge this evidence, but chose not to do so;
(f) Internet searches performed in Australia for “COLOUR YOUR CLUB” at any time prior to the Relevant Date would have immediately revealed that RESENE was already using COLOUR YOUR CLUB in Australia; and
(g) The personal knowledge of Ms. Brereton who, at the Relevant Date, had only been employed by Dulux for less than a year, does not reveal anything about whether Dulux knew, or would be reasonable expected to know, of Resene’s prior rights. Simply put, there is no principled basis for the Registrar to reach any conclusions about a company’s knowledge of Resene’s rights, based on the words in a single declaration of a brand new employee.
Dulux’s evidence does not contain any definitive statement that Dulux was not aware of Resene’s use of COLOUR YOUR CLUB prior to the Relevant Date.
The Applicant has counter-argued:
…the Opponent recites, without reference to any authority, the proposition that “A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.”
At OS[25] [6.3 (f)] the Opponent further recites, without reference to any authority, the proposition that “Circumstances where, following prolonged competition between the parties, there is a subsequent application to register a series of nearly identical trade marks can amount to conduct such that a reasonable person standing in the shoes of the applicant would have been aware that it ought not apply for trade mark registration.”
[25] Opponent’s submissions.
To the extent that this submission suggests that mere knowledge of an opponent, or a prior business connection with the Opponent, is sufficient to establish bad faith, it must be rejected as it is inconsistent with authority. In Uber Technologies, Inc v Uberdoc Pty Ltd [2021] ATMO 158 (16 December 2021) at [60] the Delegate noted that “Mere awareness of the UBER Trade Marks is not a basis for bad faith”. Consistent with this, the act of filing an application having received a cease and desist letter has been found to not, in itself, constitute bad faith.[26]
[26]Ceravolo Premium Wines Pty Ltd v MA Kirkby (TRPL) Pty Ltd [2018] [33] (Hearing Officer Walters).
At OS [6.4] the Opponent asserts that “In Everwell Healthcare Pty Ltd v Northern Beaches Health Pty Ltd,34 the Registrar’s Delegate found bad faith to be established, and noted that “whilst the Applicant attests that it undertook a trade mark search prior to filing the Application, a simple Google search would have revealed the opponent’s use of the Trade Mark.”
Again, the Opponent appears to be asserting that a mere failure to conduct searches is sufficient to establish bad faith. Everwell does not support such a broad proposition. The facts and circumstances of Everwell are quite different to the circumstances of this case. The Opponent’s proposition is inconsistent with the Court’s observations in Fry Consulting …
…
There is simply no proper evidentiary basis for an assertion that the Applicant, in applying for the Opposed Trade Marks, was acting dishonestly or falling short of any standard of acceptable commercial behaviour.
The Opponent’s submissions consist of a series of assertions that are either irrelevant and/or unsupported by any cogent evidence. In particular, many of the Opponent’s assertions are based on the erroneous proposition that knowledge of the Opponent’s mark is sufficient to establish bad faith. As noted above, that proposition is inconsistent with authority.
Furthermore, the Opponent’s case relies on the proposition that knowledge of any person within the Applicant is sufficient to find bad faith. Not only is that proposition wrong as a matter of law, the Opponent has adduced no probative evidence to support the assertion.
The Opponent’s assertion at OS [6.6] that the Applicant must have been aware of the Opponent’s mark is misconceived.
First, it is not supported by any cogent evidence. In fact, the uncontroverted evidence is that the Applicant’s adoption of ‘Colour Your Club’ arose out of and following discussions it had in an online workshop with the Geelong football club in early 2023. In particular, the term was used in a PowerPoint presentation called "Dulux & Geelong Cats – Partnership Announcement" created 1 May 2023, which captured outcomes of the workshop discussion. This presentation outlined the general plan for announcing the partnership on 17 May 2023…
…The assertion that a single (unidentified) employee of the Opponent subscribed to the Opponent’s newsletter cannot possibly provide as proper basis for finding bad faith.
It is apparent from the evidence that the Applicant is a very large enterprise with numerous employees. DuluxGroup currently employs more than 4,000 people across Australia and New Zealand. DuluxGroup is headquartered at Clayton in Victoria, operates 22 manufacturing sites (of which 16 are in Australia), more than a dozen distribution centres, more than 100 company-owned trade stores in Australia and more than 300 company-owned trade stores outside of Australia (According to Brereton).
Furthermore, there is no evidence that this unidentified person had any involvement in the collaboration with the marketing team developing the Colour Your Club program with the Geelong Football Club.
For the same reasons, the assertion at OS [6.6 (a)] that there are employees who have transferred from the Applicant to the Opponent and vice versa is also entirely irrelevant and not a proper basis to find that either of the applications were filed in bad faith.
I am in agreement with the Applicant. I am not persuaded that the Opponent has discharged the onus of establishing that the Applicant, as at the Priority Date, applied for the Trade Mark and DULUX Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.
Much of the Opponent’s submissions on the behaviour of the Applicant are assertions that are unsupported by its evidence. While the Applicant and the Opponent are direct competitors and staff have moved between the two parties for employment, this is not sufficient to establish that the Applicant engaged in conduct falling short of acceptable commercial behaviour. There is no evidence that staff members that have moved between the parties have been directly responsible for any marketing or branding decisions which led to the Applicant applying for the Trade Mark and DULUX Trade Mark. The past legal disputes between the parties brought to my attention by the Opponent are unrelated to the current dispute before me. The Opponent wants me to draw inferences from these various facts which would support its assertions that the Applicant has acted in bad faith in this instance. I am not persuaded to do this.
The Opponent has argued that Brereton contains passive language without identifying who made the decision to adopt the Trade Mark and DULUX Trade Mark over the other options that were also being considered for the branding of the Applicant’s competition. Additionally, the Opponent has argued that because the parties are competitors in the marketplace that the Applicant would have known of the Opponent’s Trade Marks and that the Applicant would have located the Opponent’s Trade Marks if it had conducted appropriate internet searches. I am not persuaded by this argument. The Applicant’s evidence provides details of the adoption of the Trade Mark and DULUX Trade Mark and given the relatively low distinctiveness of the expression COLOUR YOUR CLUB, the Applicant’s reasons for adopting the Trade Mark and DULUX Trade Mark and the process it went through sounds reasonable.
Indeed, the evidence before me does not establish the Opponent’s assertions that the Applicant applied for the Trade Mark in bad faith and at any rate, ‘mere knowledge before the relevant date of another person’s trade marks, without more, does not in itself constitute the basis for a finding of bad faith’.[27]
[27] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).
As such, I am not persuaded that the Applicant applied for the Trade Mark and DULUX Trade Mark in bad faith. Therefore, the Opponent has not established the ground of opposition under s 62A.
Decision
Section 55 of the Act provides:
55 Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has not established any grounds of opposition. The trade mark applications may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Marks shall not occur until the appeal has been decided or discontinued.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 June 2025

[2025] ATMO 126

26 June 2025