S Hallahan v I Hallahan

This decision concerns an opposition by Clearview Towing Mirrors Pty Ltd to the registration of the trade mark application number 2257556, "MSA POWER FOLD," in Class 12, filed by Shane Miles. The opposition was brought under section 52 of the Trade Marks Act 1995 (Cth). The delegate of the Registrar of Trade Marks heard the matter on 14 October 2024, with the Opponent represented by Sam Hallahan of counsel and the Applicant represented by Ian Tannahill.

The Opponent initially nominated grounds of opposition under sections 58 and 62A of the Act, but did not press the ground under section 58. The sole ground pursued was under section 62A, which requires the Opponent to establish that the application was made in bad faith. The relevant date for determining the rights of the parties was 21 March 2022, the filing date of the application. The Opponent's case for bad faith was based on its prior use of the term "Powerfold" for towing mirrors since at least 2018, the parties' status as competitors, an ongoing Federal Court proceeding between them, and the timing of the application shortly after a trade show where the Opponent's products were displayed.

The delegate considered the legal principles of bad faith as established in cases such as *DC Comics v Cheqout Pty Ltd* and *Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)*, which indicate that bad faith involves conduct that falls short of acceptable commercial behaviour and is of an unscrupulous, underhand, or unconscientious character. While the Applicant acknowledged awareness of the Opponent's use of "powerfold," the Applicant contended that the term was common to the trade. The delegate found that the Applicant's evidence did not sufficiently establish that "powerfold" was a term commonly used in the automotive trade. However, the delegate also noted that the timing of the application, while potentially suspicious, was rendered less significant by the Applicant's prior knowledge of the Opponent's use of the term. Ultimately, the delegate was not satisfied that the evidence, when considered in all the circumstances, was sufficient to find that the Applicant's conduct in applying to register the trade mark was in bad faith.

As the Opponent failed to establish the ground of opposition under section 62A, the delegate decided to allow the trade mark to proceed to registration.