Samoa Fune v HP Boyz Enterprise Pty Ltd

[2023] ATMO 219

TRADE MARKS ACT 1995

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

Re:Opposition by Samoa Fune to registration of trade mark application number 2258907 (class 41) – HP Boyz - in the name of HP Boyz Enterprise Pty Ltd

Delegate:

Sheona Robertson

Representation:

Opponent: Media Arts Lawyers

Applicant: Marsdens Law Group

Decision:

2023 ATMO 219

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

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Samoa Fune (‘Opponent’) to registration of the following trade mark:

Application Number:

2258907

Trade Mark:

HP Boyz (‘Trade Mark’)

Applicant:

HP Boyz Enterprise Pty Ltd (‘Applicant’)

Filing Date:

4 April 2022

Services:

Class 41: Live band performances; Live music services; Music publishing services; Providing digital music (not downloadable) from the Internet; Music concert services; Concert services; Recording of music; Musical performances

(‘Applicant’s Services’)

1. The application for the Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 5 September 2022.

2. The Opponent filed a Notice of Intention to Oppose, followed by a Statement of Grounds and Particulars (‘SGP’) on 10 November 2022. The Applicant filed a Notice of Intention to Defend on 20 January 2023.

3. The Opponent did not file any evidence in support of its opposition.

4. The Applicant filed as evidence a declaration made on 3 August 2023 by Augustino Michael Ross Taito (‘Mr Taito’), Director of the Applicant, and Exhibits 1 and 2.

5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing. The Applicant requested a decision without a hearing.

6. The matter was allocated to me as a delegate of the Registrar of Trade Marks for a decision based on the written record.

Grounds of opposition, onus and relevant date

1. The SGP nominated grounds of opposition under ss 42(b), 43, 58, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition[1] on the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are assessed is 4 April 2022 (‘Relevant Date’), being both the priority date and the filing date of the Trade Mark.

Discussion

Section 58

1. Section 58 of the Act relevantly provides:

   The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

2. It is asserted in the SGP that the Applicant is not the owner of the Trade Mark because the Opponent was in a partnership with Mr Taito and Savelio Junior (‘Partnership’), and that the Partnership used an identical trade mark in relation to the Applicant’s Services before the Relevant Date.

3. The Opponent did not file any evidence in this matter. As such, the Opponent has not provided any documentary evidence to substantiate the assertion that the Applicant is not the owner of the Trade Mark.

4. On the other hand, the Applicant did file evidence in this matter including the following information about the history of the Trade Mark:

• Mr Taito created the name ‘HP Boyz’, and this unregistered trade mark was used by the Partnership under licence from Mr Taito until 14 October 2020.

• Mr Taito transferred the ownership of the unregistered trade mark to HP Boyz Pty Ltd when it was incorporated on 14 October 2020.

• HP Boyz Pty Ltd transferred the ownership of the unregistered trade mark to the Applicant when it was incorporated on 14 March 2022.

1. Bearing in mind that the onus is on the Opponent to establish the ground of opposition, on the material before me, I cannot be satisfied that the Applicant is not the owner of the Trade Mark.

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

Section 60

1. Section 60 of the Act relevantly 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 a ground of opposition under s 60 of the Act, the Opponent must demonstrate that, as at the Relevant Date, there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons. The Opponent must then establish that because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. It is asserted in the SGP that before the Relevant Date the Partnership had acquired a reputation in respect of ‘HP Boyz’ for the Applicant’s Services.

4. Reputation cannot be assumed; it must be established by the Opponent as a matter of fact.[3]

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

5. The Opponent has not provided any documentary evidence to substantiate that the Partnership had a reputation in  ‘HP Boyz’ as at the Relevant Date.

6. Consequently, the ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. 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.

2. It is clear from the SGP that this ground is being made under s 42(b) of the Act. The Opponent asserts that use of the Trade Mark by the Applicant would be contrary to law, being misleading or deceptive conduct in breach of ss 18(1) and 29(1) of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth).

3. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would (rather than could) be contrary to law on the balance of probabilities.[4]  

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

4. Section 18 of the ACL concerns conduct or representations that are ‘misleading or deceptive’ or are likely to ‘mislead or deceive’. Section 29 of the ACL concerns representations that are ‘false or misleading’. There is no meaningful difference between the expressions ‘mislead or deceive’ and ‘false or misleading’.[5]

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

5. It is stated in the SGP that owing to the Partnership’s reputation in ‘HP Boyz’ as at the Relevant Date, use of the Trade Mark by the Applicant in relation to the Applicant’s Services would make a false or misleading representation that the Applicant has obtained the license, sponsorship or approval of the Partnership, or that the Applicant is affiliated with the Partnership.

6. As already stated in relation to the s 60 ground of opposition, the Opponent has not provided documentary evidence to support its claim that the Partnership had a reputation in ‘HP Boyz’. The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,[6] which requires only that consumers would be likely to be deceived or confused. Given I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL.

   [6] 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).

7. The ground of opposition under s 42(b) of the Act is not established.

Section 43

1. Section 43 of the Act 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. To succeed under this ground of opposition, the Opponent must establish that there is a connotation within the Trade Mark and, because of that connotation, the use of the Trade Mark would be likely to deceive or cause confusion.

3. It is asserted in the SGP that because the Trade Mark is identical to the ‘HP Boyz’ trade mark used by the Partnership before the Relevant Date, which has developed a reputation in respect of the Applicant’s Services, the use of the Trade Mark by the Applicant would likely deceive or cause confusion as to a “connotation or an association with the Opponent, which it does not have”.[7]  

   [7] SGP, 4.

4. The ‘connotation’ referred to in s 43 of the Act concerns a secondary meaning implied by the Trade Mark itself. The likelihood of deception or confusion must arise from this secondary meaning within the Trade Mark, and not from similarity between the Trade Mark and another trade mark.[8] Any deception or confusion resulting from similarity with the Partnership’s ‘HP Boyz’ trade mark is outside the scope of s 43 of the Act.

   [8] Pfizer Products Inc v Karam [2006] FCA 1663, [53] (Gyles J) (‘Pfizer’); TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc (2000) 100 FCR 358, [43] (Gyles J).

5. Additionally, I am not satisfied that the Trade Mark contains a connotation. A sponsorship or association implied by the presence within the Trade Mark of a name with some notoriety may qualify as a connotation.[9] However, in the current matter the Opponent has not filed any evidence to establish that ‘HP Boyz’ enjoys any form of notoriety. As such, there is no evidence before me to establish that there is a secondary meaning inherent in the Trade Mark.

   [9] Pfizer [55].

6. The ground of opposition under s 43 of the Act has not been established.

Section 62A

1. 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.

2. It is asserted in the SGP that as the Applicant was aware of the Partnership, the filing of the application for the Trade Mark constituted an attempt to take unfair advantage of the Partnership’s reputation in ‘HP Boyz’. As such, the Opponent contends the application for the Trade Mark was made in bad faith.

3. In Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited, the Registrar’s delegate stated:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[10]

   [10] [2009] ATMO 26, [12].

4. The Opponent has not provided any evidence to support its assertion under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith.

5. Accordingly, the ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act 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.

2. The Opponent has not established any of the grounds of opposition nominated in the SGP. Trade mark number 2258907 may proceed to registration one month from the date of this decision.

3. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Sheona Robertson

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

22 December 2023