S Hallahan v I Hallahan

[2025] ATMO 8

TRADE MARKS ACT 1995

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

Re:Opposition by Clearview Towing Mirrors Pty Ltd to registration of trade mark application number 2257556 (class 12) – MSA POWER FOLD - in the name of Shane Miles

Delegate:

Jonathon Galloway

Representation:

Opponent: Sam Hallahan of counsel instructed by Foundry Intellectual Property Pty Ltd

Applicant: Ian Tannahill of Ahearn Fox

Decision:

2025 ATMO 8

Trade Marks Act 1995 (Cth) – opposition under s 52 – s 62A considered – not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition by Clearview Towing Mirrors Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark in the name of Shane Miles (‘Applicant’):

   Trade mark number: 2257556

   Trade mark: MSA POWER FOLD (‘Trade Mark’)

   Filing date: 21 March 2022

   Specification: Class 12: Motor vehicle parts and accessories; vehicle mirrors, including mirrors adapted for use on motor vehicles; rearview mirrors, including rearview mirrors for exterior fitting and rearview mirrors for interior fitting; driving mirrors; towing mirrors

   [1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations1995 (Cth) (‘Regulations’), respectively.

2. The Trade Mark was examined as required by s 31 and advertised for possible registration on 22 August 2022.

3. On 21 October 2022 the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 21 November 2022 the Opponent filed its Statement of Grounds and Particulars (‘SGP’), later rectified on 11 January 2023. The Applicant filed a Notice of Intention to Defend the opposition on 18 January 2023.

4. The Opponent filed the following Evidence in Support (‘EIS’) on 24 April 2023:

   ·Declaration by Michael Cowan, CEO and co-founder of the Opponent dated 24 April 2023, with exhibits MC-1 to MC-9 (‘Cowan’).

5. The Applicant filed the following Evidence in Answer (‘EIA’) on 28 July 2023:

   ·Declaration by Ian Robert Tannahill, Registered Patent and Trade Mark Attorney at Ahearn Fox, dated 28 July 2023, with exhibits IRT-1 to IRT-37 (‘Tannahill 1’);

   ·Declaration by Ian Robert Tannahill dated 2 May 2023, with exhibits IRT -1 to IRT-15 (‘Tannahill 2’); and

   ·Declaration by Ian Robert Tannahill dated 28 July 2023, with exhibits IRT-16 to IRT-42 (‘Tannahill 3’).

6. The Opponent filed the following Evidence in Reply (‘EIR’) on 6 October 2023:

   ·Declaration by Andrew Richard Jones dated 6 October 2023, Principal at Foundry Intellectual Property Pty Ltd, with exhibit AJ-1 (‘Jones’).

7. Once the time for filing evidence had ended, both parties requested to be heard by way of video conference. As a delegate of the Registrar of Trade Marks I heard the matter on 14 October 2024. The Opponent was represented by Sam Hallahan of counsel, instructed by Andrew Jones of Foundry Intellectual Property Pty Ltd. The Applicant was represented by Ian Tannahill of Ahearn Fox. The parties’ oral submissions were supplemented by written submissions filed prior to the hearing.

Grounds of Opposition and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 58 and 62A. The Opponent did not press the ground of opposition under s 58. As such, I find that the Opponent has not satisfied me that s 58 is established to any extent.

2. The Opponent bears the onus of establishing the ground of opposition under s 62A. The date at which the rights of the parties are to be determined is the date the application was filed.[2] In the current matter that date is 21 March 2022 (‘Relevant Date’).

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).

EIS

10. Cowan declares that the Opponent was founded in 2006 and provides accessories for four-wheel drive enthusiasts. Among the first products offered by the Opponent was rearview towing mirrors. The Opponent’s Powerfold towing mirrors were officially launched in October 2018, but the Opponent states that the first recorded sale of a ‘Clearview Powerfold Mirror’ was in September 2018.

11. The Opponent currently sells approximately 2000 to 2500 rearview mirrors per month and sales of its ‘Clearview Powerfold towing mirrors’ comprises about 60% of this figure. The Opponent’s ‘Powerfold mirrors’ are available for many vehicles including Toyota Fortuner, Ford Ranger, Holden Colorado and Nissan Y62. The Opponent also builds ‘Powerfold mirrors’ for Isuzu Utes Australia as a fully licensed accessory.[3]

[3] Cowan [9].

12. The exhibits attached to Cowan evidencing the Opponent’s use of ‘POWERFOLD’ include exhibit MC-4 which is an article in a publication called ‘Caravancampingsales’. The article is titled ‘New gear: Clearview Powerfold Mirrors’ and is dated 4 December 2018. Exhibit MC-5 is a screenshot of the Opponent’s YouTube channel, some of the videos listed refer to use and installation of Powerfold or Power Fold towing mirrors. Exhibit MC-6 is an undated image of the packaging that the Opponent supplied its range of folding towing mirrors in. The packaging includes the phrase ‘NOW WITH POWERFOLD’. Cowan declares that phrase was on the packaging of the Opponent’s towing mirrors from 2018.

13. Cowan declares that both parties had display stalls at the National 4x4 Outdoors Show in Brisbane (‘Show’) which took place between 18 March 2022 and 20 March 2022. In particular, the Opponent was displaying its ‘NextGen’ and ‘Compact Powerfold Towing Mirrors’.[4]

[4] Ibid [10].

14.  Cowan notes that following the Show, as well as the present application, the Applicant filed the following Australian trade mark applications:

Trade mark number	Trade mark	Goods	Priority date
2257454	MSA POWER SLIDE	Class 12: Parts and accessories in this class for motor vehicles; trays adapted for motor vehicles; storage apparatus adapted for use in motor vehicles, including storage apparatus having drawers; screens and barriers for dividing storage space in motor vehicles into discrete compartments, including screens adapted to enclose refrigerators and cooking equipment; storage apparatus for motor vehicles for storing refrigerators; storage apparatus for motor vehicles for storing cooking equipment	21 March 2022
2259064	POWER SLIDE	Class 12: Parts and accessories in this class for motor vehicles; trays adapted for motor vehicles; storage apparatus adapted for use in motor vehicles, including storage apparatus having drawers; screens and barriers for dividing storage space in motor vehicles into discrete compartments, including screens adapted to enclose refrigerators and cooking equipment; storage apparatus for motor vehicles for storing refrigerators; storage apparatus for motor vehicles for storing cooking equipment	28 March 2022
2286582	Class 12: Storage systems adapted for use in motor vehicles; Luggage carriers for vehicles	22 July 2022

15.  Cowan states that the above trade marks were filed in bad faith because of an ongoing matter in the Federal Court between the Opponent and MSA 4X4 Accessories Pty Ltd (‘MSA’), a company of which the Applicant is the sole director.[5]

[5] MSA 4x4 Accessories Pty Ltd v Clearview Towing Mirrors Pty Ltd [2024] FCA 24 (Downes J).

16. Cowan summarises the Federal Court matter as follows:

The sole director of MSA is Shane Miles, who commenced legal proceedings in the Federal Court against Clearview in February 2021 for alleged patent infringement. Clearview denies the alleged infringement and has counter-claimed that the relevant patent is, in fact, invalid and that Miles/MSA have engaged in misleading and deceptive conduct in contravention of section 18 of the Australian Consumer Law. The matter is set to be heard in the Brisbane Federal Court in May 2023.[6]

[6] Cowan [11].

EIA

17. Tannahill 1 attaches Wikipedia pages for terms such as ‘Power tool’, ‘Drill’, ‘Power side-view mirror’, ‘Power seat’, ‘Power window’.[7] The Applicant submits that these demonstrate that ‘power’ is used to indicate that particular items function by electronic means as opposed to a manual process.

[7] Tannahill 1 Exhibit IRT-19; Exhibit IRT-20; Exhibit IRT-21; Exhibit IRT-26; Exhibit IRT-27.

18. Tannahill 2 is directed towards the Applicant’s assertion that ‘POWER FOLD’ is a term that is common to the trade. Tannahill 2 attaches operating manuals for numerous vehicles which refer to terms such ‘Power Door Mirrors’ in reference to a 2015 Honda Jazz.[8] Exhibit IRT-3 of Tannahill 2 is operating information for a Chrysler 300 which refers to ‘Power Windows’ and ‘Power Folding Outside Mirrors’.

[8] Tannahill 2 Exhibit IRT-2.

19. Exhibits IRT-7 to IRT-10 of Tannahill 2 are screenshots of online forums in relation to particular vehicle models which show posts discussing whether ‘power folding mirrors’ or ‘power fold mirrors’ are standard among particular vehicles offered in Australia.

20. Exhibit IRT-14 of Tannahill 2 is an undated screenshot of an online retailer OCAM 4x4 Accessories. The screenshot displays a product called ‘OCAM Powerfold Extendable Towing Mirrors’.

21. Exhibit IRT-4 of Tannahill 2 is a copy of Australian patent application number 46122/96 with a priority date of 17 January 1995, entitled ‘Exterior Mirror with Single Pivot Power Fold’. Exhibit IRT-5 of Tannahill 2 is a copy of a patent application in the name of a third party. The patent has a priority date of 27 April 2001 and is titled ‘Power Fold Mechanism For Double Arm Mirrors’. Exhibit IRT-6 of Tannahill 2 is an Australian Patent application entitled ‘Vehicle mirror power fold mechanism’ with a filing date of 5 August 2008.

22. Tannahill 3 is directed towards establishing the Applicant’s presence in the market for 4x4 accessories. The Applicant and its predecessor have been involved in the sale of automotive parts and accessories for approximately 23 years.[9] Exhibit IRT-35 of Tannahill 3 is a summary of sixty-nine patent applications that the Applicant has filed in Australia in relation to 4x4 accessories. Exhibit IRT-36 of Tannahill 3 is a copy of an Australian patent application in the name of the Applicant titled ‘Vehicle Mirrors’ which relates to a towing mirror. The application was filed on 30 November 2017 and claims priority from a provisional application which was filed on 1 December 2016.

[9] Tannahill 3 [4].

23. The Applicant has primarily offered automotive parts and accessories under the trade marks, reproduced at Annexure A of this decision.

EIR

24. Jones addresses perceived deficiencies in the EIA. In particular, Jones notes that the Applicant did not address the statement in the EIS, which directly asserted the Applicant filed the trade mark applications mentioned in the table above after the Show because of the Federal Court matter.

25. Jones declares that the EIA does not explain the Applicant’s decision to file the four trade mark applications following the end of the Show despite the clear assertion in Cowan that these were filed in bad faith.

Section 62A

26. Section 62A provides:

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

1. In DC Comics v Cheqout Pty Ltd,[10] Bennett J considered the concept of bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’),[11] wherein her Honour commented:

   Bad faith, in the context of s 62A, 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].

   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.[12]

   [10] [2013] FCA 478.

   [11] Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81 (Dodds-Streeton J) (‘Fry Consulting’).

   [12] Ibid [164]-[167].

28. The subjective element and objective elements of the test for bad faith involve considering whether the knowledge of the Applicant, at the time he filed the trade mark application, was such that the decision to register the Trade Mark would be regarded as in bad faith by persons adopting the proper standards.[13]

[13] Ibid [147].

29. While mere awareness of another trade mark before an application for registration is made will not in itself constitute bad faith, such an awareness will form part of the context in which an assessment is made as to whether the Applicant’s conduct in seeking registration of the mark should be regarded as in bad faith when judged against proper commercial standards.[14]

¹⁴ Ibid [167].

30. There is no exhaustive definition of ‘bad faith’, or list of conduct that may constitute bad faith.[15] The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[16]

[15] Marvel Characters Inc v Charles [2011] ATMO 92, [20] (Hearing Officer Windsor).

[16] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

Discussion

31. The Opponent’s belief that the Trade Mark was filed in bad faith is particularised in the SGP which provides:

The opponent and the trade mark applicant are competitors in the marketplace and are currently involved in Federal Court proceedings for alleged patent infringement. The opponent has been using POWER FOLD in respect of its towing mirrors since at least 2018, and they are well-known in the marketplace. The opponent and the applicant had stalls close to each other at the National 4x4 Outdoors Show in Brisbane between 18-20 March 2022, when a number of the opponent’s products, including its POWER FOLD towing mirrors were on display. Immediately after this show, the applicant filed its trade mark application for MSA POWER FOLD and, at around the same time, filed a number of other trade mark applications (application nos. 2257454, 2259064 and 2286582) for brands the opponent was already using. The opponent believes that these filings were made in bad faith.

32. The Opponent has based its bad faith ground of opposition on a number of factors. Firstly, the Opponent points to its historical use of the words ‘Powerfold’,[17] since at least 2018. As competitors, the Opponent contends that the Applicant would have been aware of its use of ‘Powerfold’. Secondly, the Opponent notes that the parties are involved in an existing legal dispute and it displayed goods bearing the Trade Mark at the Show, shortly after which the Applicant filed four trade mark applications in quick succession (‘Timing Issue’). The third factor is that the Applicant and Opponent are involved in other disputes, concerning the opposition to registration of trade marks[18] and both parties acknowledge the hostile relationship that exists. The Opponent alleges that the hostility and ongoing legal matters at the Relevant Date, provides a basis to infer that the Applicant’s decision to file the trade mark application to register the Trade Mark was in bad faith.

[17] The SGP refers to the Opponent’s use of ‘POWER FOLD’, however the Opponent’s evidence demonstrates use of ‘Powerfold’.

[18] In addition to the current matter, the parties are also involved in opposition proceedings concerning trade mark application number 2135020 and trade mark application number 2286582.

33. The Applicant’s written submissions state:

[w]e don’t deny that the Applicant was aware the Opponent was using the word “powerfold” to describe their electrically powered folding mirrors. As far as the Applicant was concerned, the word “powerfold” was a word commonly used in the trade and a word that other traders do use to describe electrically powered folding mirrors.[19]

[19] Applicant’s submissions 15.

34. The Applicant acknowledges he was aware of the Opponent and its use of ‘powerfold’, however he claims that his decision to apply for the Trade Mark was based on his understanding that ‘powerfold’ was common to the trade. To the extent that it is relevant, the Applicant’s evidence does not show sufficient use of ‘powerfold’ before the Relevant Date to satisfy me that it is a word commonly used in the automotive trade. The various patent applications, which incorporate ‘Power Fold’ (or similar words) in their titles do not strictly demonstrate use in the course of trade, though they are suggestive of the notion that this term may be descriptive of some of the functions described therein. Other material, such as online forums showing use of terms such as ‘power folding mirrors’, do not show use of ‘power fold’ solus. In addition, the Wikipedia entries of terms such as ‘Power drill’ and ‘Power window’ are not clearly analogous to ‘powerfold’ such that I could be satisfied consumers would infer ‘powerfold’ describes an aspect of the goods. The EIA indicates that ‘powerfold’ has some descriptive appeal which adds plausibility to the Applicant’s assertion that ‘powerfold’ is a generic term in relation to these types of goods. But, ultimately, I am unable to positively conclude, based on the EIA, that ‘powerfold’ is a descriptive term. For reasons that follow, it is not necessary that I make that finding.

35. As to the Timing Issue, the filing of the application to register the Trade Mark shortly after the Show is a factor that could go some way to establishing this ground of opposition. However, in the specific circumstances of this case, the Timing Issue, in fact, appears to be a non-issue. This is because the Applicant has acknowledged that he knew the Opponent had been using the term ‘powerfold’ in relation to towing mirrors, and this knowledge appears to extend from some time before the Show. If the Applicant knew of the Opponent’s selling goods by that name well in advance of the Show, the timing of the present filing shortly after the Show appears to be an insignificant coincidence.

36. Both parties acknowledge the acrimonious nature of their relationship. The hostility between the parties seems to be exacerbated by the fact that they were recently engaged in a Federal Court matter concerning alleged patent infringement and before this office in relation to multiple trade mark opposition matters. The Opponent asserts that the Applicant filed the four trade mark applications, which includes the present application under consideration, in order to frustrate the Opponent.

37. While, as discussed above, the evidence of the Applicant does not positively establish ‘Power Fold’ is a term that is common to the trade, both parties evidence indicates to me that the term has some descriptive appeal. I note the parties’ existing relationship raises some potential questions regarding the Applicant’s conduct, however, this is offset by the Applicant’s counter arguments that ‘powerfold’ has some descriptive appeal, and the Applicant’s claim that he wants ‘to use the words “powerfold” to describe a commercialised version of his electrically powered folding mirror 410’.[20]

[20] Applicant’s submissions 18.

1. I am not satisfied that, in all of the circumstances, the evidence is sufficient to find that the Applicant’s conduct in applying to register the Trade Mark would be considered to have been in bad faith.

39. The Opponent has not established the ground of opposition under s 62A.

Decision

40. 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.

41. The Opponent has not established the ground of opposition under s 62A. Accordingly, trade mark application 2257556 may proceed to registration one month from the date of this decision.

42. Should the Registrar be served with a notice of appeal before 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

43. Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Opponent.

Jonathon Galloway

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

13 January 2025

Annexure A

Trade mark number	Trade mark	Goods and services	Priority date
1285350	Class 12: Car seat covers (shaped or fitted); loose seat covers (shaped) for vehicle seats; seat covers (shaped) for use in automobiles; seat covers for vehicles; shaped seat covers made of textile for use in vehicles; vehicle seat covers (fitted); vehicle seat covers (shaped) Class 39: Vehicle storage 1.	17 February 2009
1835341	MSA	Class 12: Parts and accessories in this class for motor vehicles; vehicle seats; vehicle seat covers (shaped or fitted); loose seat covers (shaped) for vehicle seats; back rests for vehicle seats; cushions adapted for use with vehicle seats, including air lumbar support systems; child carrying seats for use in vehicles; child booster cushions for use with vehicle seats; car seat tidies and organizers; trays adapted for motor vehicles; storage systems adapted for use in motor vehicles, including storage systems having drawers; storage containers adapted for use in vehicles; storage boxes and containers adapted for permanent attachment to vehicles; interior panels for motor vehicles; screens and barriers for dividing storage space in vehicles into discrete compartments, including screens adapted to enclose vehicle refrigerators; storage systems for motor vehicles for storing refrigerators, including refrigerator drop slides and refrigerator straight slides; vehicle covers, including both fitted and shaped covers; roof racks for vehicles; luggage racks for vehicles; bicycle racks (carriers); gun racks adapted for attachment to motor vehicles; water bra; apparatus for towing vehicles, including tow balls, tow bars, tow hitches and tow hooks; vehicle mirrors, including side view mirrors and rearview mirrors	30 March 2017