RP Data Pty Ltd v Valocity Holdings Limited

[2022] ATMO 149

TRADE MARKS ACT 1995

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

Re:Opposition by RP Data Pty Ltd to registration of trade mark application number 2082226 (classes 9, 35, 36 and 42) – VALOCITY CONNECT - in the name of Valocity Holdings Limited.

Delegate:

Timothy Brown

Representation:

Opponent: Scott Coulthart of Mills Oakley

Applicant: AJ Park

Decision:

2022 ATMO 149

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 44, 58A, 60, 43, 42(b) and 62A – no grounds established – trade mark to proceed to registration.

Background

1. This decision concerns an opposition by RP Data Pty Ltd (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark:

   Trade Mark Number:     2082226

Trade Mark:  VALOCITY CONNECT      (‘Trade Mark’)

Applicant:   Valocity Holdings Limited             (‘Applicant’)

Priority Date:       18 March 2020

Specification:  Class 9: Computer and application software for on-line property, financial and valuation services; mobile applications for on-line property, financial and valuation services; downloadable software for on-line property, financial and valuation services; computer software for processing property, financial and market information; software for processing on-line property, financial and valuation information; computer programs for financial reporting; computer programs for use in insurance

Class 35: Business data analysis; data management; business consulting services; advisory services relating to business risk management; business risk management consultancy; data verification; writing of business reports; preparation of commercial, economic and business reports; pricing analysis; cost analysis; price analysis services; market survey analysis; market research

Class 36: Financial valuation services; conducting valuations; rating valuation services; real estate valuations; valuations of assets; valuation of property; advisory services relating to real estate valuations; financial valuations; fiscal valuations; business appraisals for financial valuations; financial risk management; financial information; financial consultancy; fiscal assessments; advisory services relating to (financial) risk management; insurance risk management; insurance; insurance services; information, advisory and consultancy services relating to insurance; estimates for insurance purposes; insurance risk management; insurance underwriting; insurance studies; mortgage insurance; processing of insurance claims; preparation and analysis of financial and credit reports; management of property; financial analysis

Class 42: Software as a service for property management and valuation services

(‘Applicant’s Goods and Services’)

1. The Trade Mark was examined, accepted for registration and then subsequently advertised for opposition on 19 August 2020.

2. The Opponent filed a Notice of Intention to Oppose on 16 October 2020 followed by a Statement of Grounds and Particulars (‘SGP’) on 16 November 2020. The Applicant filed a Notice of Intention to Defend on 18 December 2020.

3. On 18 March 2021, the Opponent filed Evidence in Support of its opposition. No Evidence in Answer was filed by the Applicant.

4. Following the conclusion of the evidence stage of proceedings, the parties were given the opportunity to request a hearing. On 2 August 2021, the Opponent requested to be heard and the matter was heard before me, a delegate of the Registrar of Trade Marks, on 2 June 2022. At the hearing, the Opponent was represented by Scott Coulthart of Mills Oakley. The Applicant did not attend the hearing or file any written submissions.

Evidence

Opponent

1. The Opponent’s evidence consists of a declaration made by Carl Pinto, a Senior Professional in the Valuations Solutions team of the Opponent, on 18 March 2021 (‘Pinto Declaration’).

2. Mr Pinto declares that the Opponent is the largest provider of property information, analytics and risk management services in Australia and New Zealand. The Opponent commenced trading on 3 September 1990 as RPD TSV Pty Ltd. On 27 May 1999, the Opponent transferred its operations to its current trading entity.

3. Access to the Opponent’s products and services is generally provided by way of subscription, or for a one-off payment. The Opponent’s subscription clients include real estate agents, valuers, property developers, financial institutions, and government departments.

4. In 2018, the Opponent launched the product known as ‘ValConnect’. Mr Pinto explains that ValConnect is a valuation fulfilment platform that combines property data and imagery with a suite of data capture and management solutions designed to assist users with valuations. The ValConnect platform is provided to consumers via the Opponent’s website, (‘Opponent’s Website’), or through direct contact with a representative of the Opponent.

5. The Opponent owns the following trade mark registrations in Australia (‘Opponent’s Marks’):

Trade Mark No.	Trade Mark	Priority date	Goods and Services
1912389	VALCONNECT	9 March 2018	Class 36:  Conducting valuations; property valuation; rating valuation services; real estate valuations; appraisal and assessment of real estate and property; advisory and consultancy services relating to real estate and property valuations; provision of information in relation to real estate; research services relating to real estate; agency services for arranging real estate and property valuations; providing information, including by electronic means and via a global computer network, about all of the aforesaid services
1912388	VALCONNECT	9 March 2018	Class 9:  Application software; computer software; data processing software; application and computer software for use in real estate valuation and property valuation services; computer databases; database programs
1912390	VALCONNECT	9 March 2018	Class 38: Providing access to databases; providing access to databases for use in real estate and property valuation
1912391	VALCONNECT	9 March 2018	Class 42: Design and development of software; design and development of real estate and property valuation software; online provision of web-based software; software as a service (SaaS); database design; hosting of databases; online provision of web-based software for use in real estate and property valuation; hosting of databases for use in real estate and property valuation

1. In addition to its Australian trade mark registrations, the Opponent has also registered VALCONNECT in New Zealand.

2. Mr Pinto declares that the Opponent’s Marks were first used in Australia on 21 March 2018, and that the Opponent’s Marks have been used and promoted continuously in Australia since that date. Exhibited in the Pinto Declaration are screenshots showing use of the Opponent’s Marks on its desktop application, in reports generated through use of the Opponent’s platform, and in a video presentation published by the Opponent.

3. The Pinto Declaration also demonstrates the following use of the Opponent’s Marks:

• User manuals bearing the Opponent’s Marks. Exhibited in the Pinto Declaration are examples, including ‘ValConnect Testing Guide and Change Summary’ dated 2019, ‘ValConnect User Guide’ dated February 2019, and ‘ValConnect Upload Portal – User Guide’ dated April 2020.

• A letter from an unidentified client confirming its use of the Opponent’s ValConnect product.

• Screenshots taken from an Internet archive showing use of the Opponent’s Marks on the Opponent’s Website since 2019.

• A report from Google Analytics showing page views of the Opponent’s Website during the period of 1 July 2019 to 14 March 2021.

1. Also exhibited in the Pinto Declaration are a series of emails discussing the rebranding of the Opponent’s products to ValConnect and the associated rollout marketing activities over the period of 21 March 2018 to 23 September 2020.

2. Mr Pinto declares that the Opponent’s Marks are regularly advertised through various news releases, articles and social media platforms. Exhibited in the Pinto Declaration are a series of media release, articles and flyers published by the Opponent featuring use of the Opponent’s Marks from 3 October 2019 to 9 April 2020, and screenshots from the Opponent’s Facebook page of media releases and advertisements featuring the Opponent’s Marks.

3. Also exhibited in the Pinto Declaration are the following third-party articles referencing the Opponent Marks:

• An article published by The Real Estate Conversation, entitled ‘CoreLogic expands valuation service to rural areas’, dated 20 September 2019.

• An article published by AdviserVoice, entitled ‘CoreLogic expands valuation service to rural areas’, dated 4 October 2019.

• An article published by Property Central, entitled ‘CoreLogic launches the new ValConnect Upload Portal enabling digital property inspections for home lending’, dated 6 April 2020.

• An article published by Your Investment Property, entitled ‘New Tool Allows Remote Valuations’, dated 7 April 2020.

• An article published by Australian Banking and Finance, entitled ‘CoreLogic pivots in the new normal with new digital property inspection service’, dated April 2020.

1. I note that the exact figures of the Opponent’s subscribers, customers, website visitors and revenue are redacted from the Pinto Declaration.

Grounds of Opposition, Onus and Relevant Date

1. The grounds of opposition nominated in the SGP were sections 44, 60, 42(b), 43, 62A, 58 and 58A of the Act. At the hearing, the Opponent pressed only sections 44, 58A, 60, 42(b), 43 and 62A. For completeness I find that section 58 is not established.

2. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 18 March 2020 (‘Relevant Date’).

Discussion and Reasons

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).

[2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

Section 44

1. Section 44 relevantly provides:

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

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

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

(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

(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.

1. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Applicant, in respect of goods or services that are similar to the Applicant’s Goods or Services, or goods and services that are closely related to the Applicant’s Goods or Services.

2. The Opponent relies on the Opponent’s Marks as the basis for this ground of opposition.

3. Each of the Opponent’s Marks has a priority date that is earlier than the Relevant Date of the Trade Mark and is held in the name of another party.

Comparison of Trade Marks

1. For clarity, I note that each of the Opponent’s Marks is identical, being comprised solely of the word VALCONNECT.

2. The Opponent declined to make any submissions in regard to whether the trade marks were substantially identical. For completeness, I note that I am satisfied that the Trade Mark is not substantially identical to any of the Opponent’s Marks. While the trade marks share the word CONNECT as an essential feature, the trade marks contain other distinct elements, namely, the prefix VAL in the Opponent’s Marks and the word VALOCITY in the Trade Mark. As such, a total impression of resemblance does not emerge from the comparison.

3. Section 10 of the Act defines ‘deceptively similar’ as:

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

1. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd:

   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].[3]

   [3] [1963] HCA 66, [13].

2. 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.[4] Accordingly, an allowance is made for imperfect recollection of the trade marks.[5] The impression comes from the trade marks in their entirety,[6] and is informed by the look, sound and ideas conveyed by the trade marks.[7]

   [4] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [5] Crazy Ron's Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [77] (Moore, Sackville, and Emmett JJ).

   [6] Clarke v Sharp (1898) 15 RPC 141, 146 (Byrne J).

   [7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

3. For trade marks to be considered deceptively similar there must be a real and tangible danger of deception or confusion occurring.[8] This will be the case where there is a real likelihood that an ordinary person would be caused to wonder whether the services come from the same trade source.[9]

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

   [9] Ibid.

4. The Opponent submits that the there is a strong likelihood that consumers who are familiar with, or have an imperfect recollection of the Opponent’s Marks, upon encountering the Trade Mark, will be confused or deceived into believing that the Applicant’s Goods and Services are those of the Opponent.

5. Visually, I note that the trade marks share a degree of similarity. The Trade Mark and the Opponent’s Marks commence with the prefix ‘Val-’ and end with the word ‘CONNECT’. The Opponent submits that the suffix ‘-OCITY’ in the Trade Mark is not sufficient to differentiate the Trade Mark from the Opponent’s Trade Marks.  However, I consider the word VALOCITY to be noticeably distinct from the element VAL, and as the first word of the Trade Mark, it creates a clear point of visual distinction from the Opponent’s Marks.

6. Aurally, I consider ‘VALOCITY CONNECT’ and ‘VALCONNECT’ to be markedly different. The word ‘VALOCITY’ is likely to be pronounced as ‘VAL-O-CITY’ with the ‘O-CITY’ aspect of the term being appreciably different from the prefix ‘VAL’. It unlikely that a consumer would pronounce ‘VALOCITY CONNECT’ in a similar manner to ‘VALCONNECT’.

7. Conceptually, ‘VALOCITY’ and VALCONNECT are invented terms. The word ‘VALOCTIY’ could also be mistaken both aurally and visually for the term ‘velocity’. Despite the shared element, ‘CONNECT’, in my view the trade marks as a whole are not conceptually similar.

8. While I am conscious of the possibility that consumers may not recall the specific details of the respective trade marks, on balance, I am satisfied that a consumer viewing ‘VALOCITY CONNECT’ and ‘VALCONNECT’ would not be caused to wonder whether the relevant goods or service derive from the same trade source. Accordingly, I do not consider the Trade Mark to be deceptively similar to any of the Opponent’s Marks. The section 44 ground of opposition is not established.

Section 58A

1. Section 44(4) and reg 4.15A(5) allow a trade mark to be accepted because it has been continuously used since before the priority date of the trade mark with which it is substantially identical or deceptively similar.

2. For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4) or reg 4.15A(5), or a hearing officer finds during an opposition that it is appropriate to apply those provisions.

3. In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4) or reg 4.15A(5). Furthermore, given my finding that the Trade Mark is not substantially identical with, or deceptively similar to any of the Opponent’s Marks, the provisions of s 44(4) or reg 4.15A(5) are not available to be applied in this opposition proceeding.

4. The ground of opposition under s 58A of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish this ground of opposition, the Opponent must establish:

• A reputation existing in another trade mark in Australia before the Relevant Date; and

• That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[10] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[11]

   [10] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [11] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

2. There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[12] or providing evidence of high volume of sales,[13] advertising expenditure or other promotion of goods or services to which the trade mark applies.[14] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[15]

   [12] Ibid [118].

   [13] McCormick (n 10) [86].

   [14] Ibid.

   [15] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

3. Generally, the reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[16] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[17]

   [16] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

   [17] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

1. The Opponent relies on the reputation it claims in the Opponent’s Marks. The Opponent’s evidence indicates that it has used VALCONNECT since 21 March 2018. The numerous screenshots of the Opponent’s Website, as well as the articles and media releases published both by the Opponent and third parties demonstrate use of the Opponent’s Marks in relation to a platform and software application used for property information and valuation services. It is also apparent from those media releases that the Opponent’s launch of its ‘ValConnect’ platform was advertised and communicated to the Opponent’s customers. However, whilst the Opponent describes the use of the Opponent’s Marks as extensive, the exact figures pertaining to the Opponent’s sales revenue and advertising expenditure have been redacted from the Opponent’s evidence. Additionally, information relating to the views and analytics of the Opponent’s Website have also been redacted. This information is not necessarily determinative to the question of reputation, but the absence of these metrics makes is difficult to determine the extent of any reputation that may have developed from the use of the Opponent’s Marks.

2. I can infer from the information that has been provided that the Opponent is a leading provider of property data and information services in the Australian marketplace, and that use of the Opponent’s Marks has generated a level of recognition amongst the Opponent’s customers. However, due to the limited information provided by the Opponent regarding the quantitative aspects of its use of the Opponent’s Marks in Australia, I am not satisfied that the any of the Opponent’s Marks have established a reputation amongst a significant or substantial number of people in the relevant market.

3. As the evidence is not sufficient to establish that the Opponent had a reputation in a trade mark in Australia, the ground of opposition under section 60 is not established.

Section 42(b)

1. Section 42(b) provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

2. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

3. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene sections 18 or 29 of the ACL or constitute passing off. [18]

[18] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

Australian Consumer Law

1. Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods and Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. There is no material difference between the expression ‘mislead or deceive’ in section 18 of the ACL and ‘false or misleading’ in section 29 of the ACL.[19] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[20]

   [19] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).

   [20] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

2. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant goods or services into believing that the Trade Mark and any of the Opponent’s Marks are related.

Passing Off

1. Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[21] Justice Hill  noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 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: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[22]

   [21] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

   [22] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).

1. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

2. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

Section 43

1. Section 43 provides:

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

2. Section 43 requires the Opponent to demonstrate that there is a connotation in the Trade Mark, or a part of it, and that because of the connotation use of the Trade Mark would be likely to deceive or cause confusion.

3. A ‘connotation’, in the context of section 43, is a secondary meaning implied by the trade mark.[23]

   [23] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J).

4. The Opponent submits that given the reputation of the Opponent’s Marks, and the similarity between the Opponent’s Marks and the Trade Mark, use of the Trade Mark by the Opponent would suggest an affiliation or sponsorship with or by the Opponent.

5. Generally, the question of the reputation of the Opponent’s Marks and any confusion that might result from the Trade Mark’s similarity to the Opponent’s Marks is more appropriately dealt with under section 60 of the Act. Section 43 of the Act is concerned with connotations that arise from the subject trade mark itself rather than any deception or confusion that could arise from a comparison with another trade mark.[24] As the Opponent’s argument does not rely on a connotation in the Trade Mark, but upon the Trade Mark’s similarity to the Opponent’s Marks and the alleged reputation of the Opponent’s Marks, I am not satisfied that the Trade Mark is likely to deceive or cause confusion. The ground of opposition under section 43 of the Act is not established.

   [24] Ibid [53]; Winton Shire Council v Lomas [2002] FCA 288, [19] (Spender J).

Section 62A

1. Section 62A provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. ‘Bad faith’ is not defined in the Act. The meaning of ‘bad faith’ was considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:

   For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[25]

   [25] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).

3. Whether the application to register the Trade Mark was made in bad faith requires me to first consider the Applicant’s state of knowledge at the time of making the application and then decide whether the Applicant’s behaviour fell short of acceptable commercial standards.[26]

   [26] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164]-[167] (Dodds-Streeton J).

4. The Opponent submits that in the context of the reputation of the Opponent’s Marks, it is likely that the Applicant would, or ought reasonably to, have been aware that it was not entitled to apply for registration of the Trade Mark, or, alternatively, that the Applicant is attempting to trade off the reputation of the Opponent’s Marks. 

5. I have previously addressed the alleged reputation of the Opponent’s Marks in relation to the section 60 ground of opposition. Unlike section 60, the question of whether the use of the trade mark would cause deception or confusion is not determinative when addressing bad faith.[27] The alleged reputation of the Opponent’s Marks, both in Australia and New Zealand, can provide context for the Applicant’s decision to apply for registration of the Trade Mark, but ultimately it is a question of whether the Applicant’s conduct falls short of acceptable commercial standards.

   [27] Dc Comics v Cheqout Pty Ltd [2013] FCA 478, [76] (Bennett J).

6. Given my conclusion regarding the alleged reputation of the Opponent’s Marks discussed in relation to the section 60 ground of opposition, I do not consider it conclusive that the Applicant knew or was aware of the reputation of the Opponent’s Marks. Further, even if the Applicant was aware of the Opponent’s Marks, mere awareness of another trade mark, or the filing of a trade mark that includes elements that are the same or similar to a well-known trade mark, does not necessarily constitute bad faith.

7. As there are no other aspects of the Opponent’s evidence that point to any activity or actions taken by the Applicant that might be indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character, I am not satisfied that the application for the Trade Mark was made in bad faith.

Decision

1. Section 55(1) of the Act relevantly provides:

   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.

2. The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark 2082226 may proceed to registration one month from the date of this decision.

3. Should the Registrar be served with a notice of appeal before the registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

Costs

1. Both parties sought an award of costs. As the Opponent was not successful in the opposition, I award costs against the Opponent under section 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

31 August 2022