Sentient Impact Group Pty Ltd v Sentient Finance Pty Ltd

[2024] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by Sentient Impact Group Pty Ltd to registration of trade mark application number 2194079 (class 36) - SENTIENT - in the name of Sentient Finance Pty Ltd.

Delegate:

Timothy Brown

Representation:

Opponent: Hall & Wilcox.

Applicant: Written submissions by JPS Ambikapathy of counsel, instructed by Shelley Einfeld IP Pty Ltd.

Decision:

2024 ATMO 87

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

Background

1. This decision concerns an opposition brought by Sentient Impact Group Pty Ltd (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:

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

   Trade mark number:   2194079 (‘Application’)

Trade mark:                SENTIENT (‘Trade Mark’)

Owner:  Sentient Finance Pty Ltd (‘Applicant’)

Filing date:                 15 July 2021

Services:Class 36: Advisory services relating to finance; Consultancy services relating to finance; Mortgage broking; Real estate broking; Advice regarding lending services; Agency services for lending on mortgage; Financial lending; Advisory services relating to loan services; Loan services; Loan financing; Loan services for property investment (‘Applicant’s Services’)

1. The Application was examined, accepted and subsequently advertised for opposition on 16 December 2021.

2. A Notice of Intention to Oppose registration of the Trade Mark was filed by the Opponent on 16 February 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 16 March 2022. The Applicant filed a Notice of Intention to Defend the opposition on 3 May 2022.

3. On 8 August 2022 the Opponent filed Evidence in Support of the opposition. The Applicant filed Evidence in Answer on 10 November 2022. No Evidence in Reply was filed by the Opponent.

4. Following the end of the period for filing evidence the Applicant requested to be heard by way of written submissions. The Applicant filed written submissions prepared by JPS Ambikapathy of counsel on 25 January 2024. No written submissions were filed by the Opponent. The matter was subsequently allocated to me, a delegate of the Registrar of Trade Marks, to be decided.

Grounds, Onus and relevant Date

1. The nominated grounds of opposition are ss 58, 60, 42(b) and 62A.

2. The Opponent bears the onus of establishing a ground of opposition.[2] The required standard of proof is on the balance of probabilities.[3] The date at which the rights of the parties will be determined is the filing date of the Trade Mark, except for grounds where a priority date is required. In this matter both the filing date and priority date are the same, 15 July 2021 (‘Relevant Date’).

Evidence

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

[3] 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).

Opponent

1. The Opponent’s evidence consists of a declaration made by Oliver Yates, Chief Executive Officer of the Opponent, on 8 August 2022 (‘Yates’) with Exhibits OY-1 to OY-145.

2. According to Yates, Sentient Equity Partners SPC (‘Sentient Equity’) and its related corporate entities, including Sentient Group Limited, are a financial services business that provides, amongst other things, private equity investment, financial advisory services, loans, and refinancing services. According to Yates, Sentient Equity was founded in 2001 by former members of the business AMP Australia Private Investments Resources.

3. Mr Yates declares that Sentient Equity first used ‘Sentient’ (‘Sentient Mark’) as a trade mark in or around April 2001. In support, Yates includes publications by the ‘Sentient Group’ dated April 2001, October 2001 and February 2004, which identify potential investments and risks for investors.[4]

   [4] Yates OY-13.

4. Sentient Equity manages a significant amount of capital through various global resource and investment funds, or ‘Sentient Global Resources Funds’. Information regarding four of the funds managed by Sentient Equity is exhibited to the Yates Declaration.[5]

   [5] Ibid [4.2], OY-9-OY-12.

5. Mr Yates declares that based on his own knowledge and searches conducted on behalf of the Opponent that Sentient Equity has used the Sentient Mark continuously in Australia since at least 23 September 2004. In support, Yates includes the following examples of purported trade mark use:

• Screenshots demonstrating use of the Sentient Mark on Sentient Equity’s website (‘Sentient Equity’s Website’) between 23 September 2004 and 2021, which also state that Sentient Equity has an office in Sydney.[6]

• A screenshot of Sentient Group Limited’s website (‘Sentient Group’s Website’) dated 21 November 2004.[7] This screenshot shows the trade mark ‘Sentient Group’ and lists an Australian subsidiary office address.

• A screenshot from the Sentient Group’s Website dated 10 February 2005 referencing a joint venture between Sentient Equity and Queensland Gas Company.[8] Yates also includes articles from the Australian Financial Review, The Australian and Courier Mail referencing Sentient Equity as an investor in Queensland Gas Company.[9]

  [6] Ibid OY-7, OY-15, OY-16.

  [7] Ibid OY-16.

  [8] Ibid OY-17- OY-23.

  [9] Ibid.

1. In addition to the above examples, Yates includes various examples of investments conducted by Sentient Equity and Sentient Group Limited, including investments in:

   ·     Andean Resources Limited, an Australian gold exploration and mining company;

   ·     Allegiance Mining NL, an Australian mining company;

   ·     Marengo Mining Limited, an Australian metal company;

   ·     Takoradi Limited, an Australian mining company;

   ·     Monto Minerals Limited, an Australian industrial minerals mining company;

   ·     Iron Road Ltd, an Australian iron ore infrastructure developer; and

   ·     Senex Energy Ltd, an Australian natural gas and oil company.

2. Third party media articles referencing these investments are exhibited to Yates.[10] These investments are also referenced on Sentient Equity’s Website as part of Sentient Equity’s ‘Investment Portfolio’.

   [10] See, for example: Ibid OY-25, OY-28, OY-29, OY-42, OY-46, and OY-57.

3. Also exhibited to Yates are screenshots from Sentient Equity’s Website and Sentient Group’s Website sourced from the Internet Archive Wayback Machine dated between 2002 and 2017 for the Sentient Group’s Website, and 2018 to 2021 for Sentient Equity’s Website.

4. Mr Yates also declares that based on his knowledge as a person with over 30 years’ experience in the financial services industry, Sentient Equity has acquired a significant reputation in relation to the Sentient Mark.

Applicant

1. The Applicant’s evidence consists of a declaration made by Chrisopher Frederick Fuentes, sole Director of the Applicant, on 9 November 2022 (‘Fuentes’) with Exhibits CF-1 to CF-12, including Confidential Exhibits CF-1, CF-4 and CF-11.

2. The Applicant offers financial broking and business advisory services in relation to residential lending, mortgage lending, commercial lending, loan refinancing and equipment asset finance.

3. According to Fuentes, the Trade Mark was first used in October 2020. Since then, the Applicant has grown to provide services to clients across numerous fields of business, including but not limited to, nightclubs, gyms, cafes, property developers, telecommunications, agriculture, robotics, real estate and beverages.

4. Exhibited to Fuentes are the revenue figures in relation to services provided under the Trade Mark between October 2020 and 2021, and the Applicant’s marketing expenditure from the same period.

5. Fuentes states that the Trade Mark has been used on a range of promotional material including business cards, stamps, brochures, emails and in sponsorships. Examples of these marketing materials are exhibited to Fuentes.[11] The Applicant also promotes the Trade Mark on its website and various social media accounts.[12]  Screenshots of the website are exhibited to Fuentes.[13]

Discussion and Reasons

[11] See: Fuentes CF-5.

[12] Ibid [26].

[13] Ibid CF-8.

Section 58

1. Section 58 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. Ownership of a trade mark can be established through authorship and use of a trade mark,[14] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[15] To succeed in this ground of opposition, the Opponent must establish the following:

   ·     The Trade Mark is identical, or substantially identical, to an earlier trade mark;

   ·     The alleged earlier mark has been used in respect of services that are ‘the same kind of thing’ as the Applicant’s Services; and

   ·     Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date and before any use of the Trade Mark by the Applicant.[16]

   [14] Moorgate Tobacco Co Ltd v Philip Morris Ltd (no 2) 156 CLR 414 (Deane J); Food Channel Network Pty Ltd. v Television Food Network GP [2010] FCAFC 58, [49], [55] (Keane CJ, Stone and Jagot JJ).

   [15] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ) (‘Pham’); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).

   [16] Pham (n 15) [50].

3. In its SGP the Opponent particularised the s 58 ground of opposition as follows:

   The ‘SENTIENT’ trade mark (Sentient Mark) was first used by Sentient Equity Partners SPC or its predecessors in title (SEP) as a trade mark before the priority date of the Application (with the Sentient Mark first used in Australia by SEP in or around 2000) in respect of financial services in class 36 including private equity services, funds management services, investment services and advice and financing/loan services and advice (SEP Services).

   The SEP Services are services that are identical to the Applicant Services or are the ‘same kind of thing’ as the Applicant Services.

4. In support, the Opponent relies on the following alleged instances of prior use of the Sentient Mark:

• Screenshots from Sentient Equity’s Website and Sentient Group’s Website sourced from the Internet Archive Wayback Machine from various dates between 2002 and 13 July 2021.

• Examples of investment activities in Australia evidenced by annual reports from various Australian based companies, shareholder meeting agendas, and third-party media articles referencing the investment activities of Sentient Equity and Sentient Group Limited.

1. The screenshots of Sentient Equity’s Website and the Sentient Group’s Website include the trade marks ‘Sentient’, ‘Sentient Equity’, ‘Sentient Group’ (‘Collectively, ‘Sentient Word Marks’) and the following composite trade mark:

1. The Applicant submits that the trade marks featured in the Opponent’s evidence are not substantially identical to the Trade Mark. Specifically, the Applicant submits that the additional words such as ‘Equity’ or ‘Group’ create a total impression of dissimilarity to the Trade Mark.

2. The test for whether trade marks are substantially identical was expressed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia Limited)[17]:

   In considering whether marks are substantially identical they should, I think, be 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.[18]

   [17] [1963] HCA 66.

   [18] Ibid [12].

3. I do not agree with the Applicant’s submission. First, the Opponent’s evidence includes use of ‘Sentient’, which is identical to the Trade Mark. Second, even with the additions of ‘Equity’ or ‘Group’, the word Sentient remains the essential feature of the alleged earlier trade marks. The words ‘Equity’ and ‘Group’ are completely descriptive when utilised in the context of financial services. With the exception of the composite trade mark, which features a distinct device element, the word ‘Sentient’ is the primary identifying element of each of the trade marks. When compared side by side, there is a total impression of resemblance between the Sentient Word Marks and the Trade Mark. Accordingly, I am satisfied that the Sentient Word Marks are substantially identical to the Trade Mark.

4. What is less clear is whether there has been use of the Sentient Word Marks in Australia. The Applicant submits that there is no indication that the Opponent, Sentient Equity or any of the other  entities identified in the Opponent’s evidence offered their services in Australia. Specifically, the Applicant submits that the only use of Sentient by another trader in the Opponent’s evidence is the use on the Sentient Equity and Sentient Group Websites, and that there is no evidence of Australian consumers being aware of the websites or otherwise exposed to the trade mark.

5. The Sentient Equity Website and the Sentient Group Website describe a ‘a development investor’ with a ‘diverse portfolio of mining assets’ across the globe. Both websites detail an office address in Sydney and list a number of Australian based projects that form part of Sentient Equity’s investment portfolio. For example, Exhibit OY-76 of Yates shows a screenshot dated 16 December 2018 listing ‘Senex Energy Limited’ as an investment in 2008 (‘Senex Investment’). Senex Energy Limited is described in the same screenshot as ‘an Australian company listed on the ASX with a focus on oil and unconventional gas’.[19] To supplement these examples of investment activities, Yates exhibits third party media articles referencing the investments by Sentient Equity and other entities. For example, the initial Senex Investment is referenced in an article in The Australian entitled ‘Senex’s $155m to explore gas potential’, which describes the ‘Sentient Group’ as an investor. Yates also includes material from companies who have received investment from Sentient Equity, such as an annual report from Iron Road Ltd confirming Sentient Group’s investment of capital in the company.[20]

   [19] Yates Exhibit OY-76.

   [20] See: Yates OY-74.

6. These examples demonstrate that Sentient Equity or Sentient Group Limited were involved as investors in Australia. What is less clear is who their investors are, or whether any of these entities offer their investment services to Australian customers. Sentient Equity is described on its own website as a ‘private equity investment firm’ and ‘development investor’. It states that it invests its investor’s capital ‘in a step by step manner in line with capital needs of the project’.[21] Yates also indicates that Sentient Equity has a ‘wide range of investors…in Australia’[22]. However, what is absent from the Opponent’s evidence is any information concerning Sentient Equity’s or Sentient Group Limited’s clients or investors, a prospectus, or any unambiguous offer for the supply of their services to the Australian market.

   [21] Yates OY-142, OY-138..

   [22] Yates 3.2.

7. This is further complicated by the numerous corporate entities referenced throughout the Opponent’s evidence, including Sentient Equity, the Sentient Group Limited, Sentient Global Resources Fund, and Sentient Equity Pty Ltd. The Applicant submits that it is unclear which entities have used the Sentient Mark and that the Opponent has not adduced any evidence explaining the relationship between Sentient Equity and any of these other entities. The absence of such evidence is not necessarily fatal to the s 58 ground of opposition. Section 58 only requires that the Opponent establish that the Applicant is not the owner of the Trade Mark. However, this generally does require the Opponent to establish that a person other than the Applicant has a prior claim to ownership of a substantially identical trade mark.

8. There is merit to the Applicant’s submission in paragraph 33. To illustrate the difficulty with the Opponent’s evidence, although Sentient Equity’s website references the Senex Investment in its portfolio, the third party media articles discussing the Senex Investment refer to the ‘Sentient Group’ as the investor rather than Sentient Equity. ‘Sentient Group’ appears to be a reference to Sentient Group Limited, but it is otherwise unclear whether this use can be attributed to Sentient Equity. The SGP also refers to Sentient Equity Partners SPC’s predecessors in title, but the Opponent’s evidence does not address any predecessors in title. Yates includes an ASIC extract showing the company details for Sentient Equity Partners Pty Ltd,[23] which is described in Yates as a related entity and ‘sub advisor’[24]. However, this entity is not connected to any of the purported trade mark use in the Opponent’s evidence. No effort is made by the Opponent to substantiate the relationship between these disparate entities. Consequently, when considering the Opponent’s evidence holistically, it is difficult to attribute the purported trade mark use to a particular entity. Framed another way, in my view, the Opponent’s evidence does not clearly substantiate another person’s prior claim of ownership of Trade Mark.

   [23] Yates Exhibit OY-2.

   [24] Ibid [3.2].

9. Finally, I have some reservations regarding the probative value of the Opponent’s evidence. Mr Yates is the Director of the Opponent and the Opponent’s relationship with Sentient Equity or any of the other entities referenced in the Opponent’s evidence is not addressed. Mr Yates indicates that the information included in Yates is based on his own knowledge and searches conducted on behalf of the Opponent. While I acknowledge Mr Yates’ extensive experience in the field of finance, in the absence of any information establishing the Opponent’s or Mr Yates’ relationship with Sentient Equity or the Sentient Group Limited, I cannot place significant probative value on Mr Yates’s knowledge of Sentient Equity’s business activities, or claims that Sentient Equity has continuously used the Sentient Mark in Australia beyond what is substantiated in the exhibits to Yates.

10. For these reasons and based on the Opponent’s evidence, I am not satisfied on the balance of probabilities that a party other than the Applicant had a prior claim of ownership to the Trade Mark.  Accordingly, the section 58 ground of opposition has not been established.

Section 60

1. Section 60 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.

1. 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.

2. The Opponent relies on Sentient Equity’s and its related entities’ use of the Sentient Mark in Australia before the Relevant Date. In its SGP, the Opponent purports that Sentient Equity and its related entities have used and promoted the Sentient Mark extensively and continuously in Australia and internationally in relation to financial services since in or around 2000. Due to this use, the Opponent claims that the Sentient Mark has acquired a significant reputation within Australia with respect to financial services. 

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[25] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[26]

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

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

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,[27] or providing evidence of high volume of sales,[28] advertising expenditure or other promotion of goods or services to which the trade mark applies.[29] 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.[30]

   [27] Ibid [118].

   [28] McCormick (n 25) [86].

   [29] Ibid.

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

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[31] 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.[32]

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

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

4. In my view, the Opponent’s evidence does not demonstrate that the Sentient Mark had developed a reputation amongst a substantial number of consumers in Australia before the Relevant Date. No sales or revenue figures are included in the Opponent’s evidence. Nor does the Opponent’s evidence contain any evidence of advertising expenditure. This information is not necessarily determinative to the question of reputation, but its absence presents a challenge to determining the extent of any reputation that may have developed from use of the Sentient Mark. This is compounded by lack of any meaningful examples of marketing or promotion of the Sentient Mark. Despite the Opponent’s claim that the Sentient Mark has been in use since 2002, the demonstrated use of the Sentient Mark is confined to use on the Sentient Equity and Sentient Group Websites, in third party media articles referencing investments by Sentient Equity or Sentient Group Ltd and in the business documentation of companies Sentient Equity or Sentient Group Ltd have invested in. While the numerous newspaper articles included in the Opponent’s evidence serves to demonstrate some public awareness of investments made by Sentient Equity, they do not serve to demonstrate any significant degree of exposure of the Sentient Mark to Australian consumers. Holistically, the Opponent’s evidence only demonstrates that Sentient Equity and the Sentient Group have been investors in a number of Australian mining and natural resource companies. It does not demonstrate a reputation for the Sentient Mark in Australia amongst a substantial number of people.

5. For these reasons, I am not satisfied that at the Relevant Date a reputation had been acquired in the Sentient Mark in Australia. Given s 60(a) has not been satisfied, it is not necessary to consider s 60(b). Accordingly, the s 60 ground of opposition has not been established.

Section 42(b)

1. Section 42 relevantly 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. As particularised in the SGP:

   As a result, use of the Opposed Mark in respect of the Applicant Services by the Applicant would be likely to

   mislead or deceive consumers in contravention of section 18 of the Australian Consumer Law; and/or

   (b) amount to a false or misleading representation in contravention of section 29 of the Australian Consumer Law.

   Furthermore, use by the Applicant of the Opposed Mark in respect of the Applicant Services would constitute a misrepresentation which will damage the goodwill of SEP, and will therefore amount to the tort of passing off.  

3. 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. [33]

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

Australian Consumer Law

1. The requirement that the relevant consumer be misled or deceived is one of the main differences between section 18 and 29 of the ACL and section 60. 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.[34] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[35]

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

   [35] 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. As stated in the discussion on the section 60 ground of opposition, there is no relevant reputation in Australia for the Sentient Mark. For the same reasons outlined in relation to the s 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 services into believing the Trade Mark and the Sentient Mark 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.[36] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation 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.[37]

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

   [37] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

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 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. In the SGP, the Opponent particularised the s 62A ground of opposition as follows:

   At the time of filing the Application, the Applicant knew or ought to have known about SEP’s prior use of the Sentient Mark and that:

   (a) the Opposed Mark was substantially identical with and/or deceptively similar to the Sentient Mark;

   (b) SEP had significant reputation and goodwill in respect of the Sentient Mark; and

   (c) the Applicant Services were the same as or similar to the services provided by SEP under the SEP Mark.

   By adopting and applying for the Opposed Mark when the Applicant knew or ought to have known about SEP’s prior use of the Sentient Mark and the possibility of confusion, the Application was made by the Applicant in bad faith.

3. Conversely, the Applicant submits that there is no evidence of bad faith on the part of the Applicant, and in particular, any evidence that the Applicant was aware of Sentient Equity or any of its purported predecessors in title.

4. ‘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.[38]

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

5. In DC Comics v Chequout Pty Ltd, Bennett J summarised the principles the principles for bad faith:

• Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.

• Bad faith does not require dishonesty.

• Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

• The question is whether the conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.

• 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.[39]

  [39] [2013] FCA 478, [62].

1. Whether the application to register the Trade Mark was made in bad faith requires the Delegate 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.

2. According to Fuentes, the Trade Mark was chosen out of a desire for a business name that evoked the concept of ‘life’.[40] Mr Fuentes declares that he instructed his attorneys at the time, Patentec Patent Attorneys, to undertake a trade mark search to determine whether the name ‘Sentient’ was available for registration and was advised that there was no registration or pending application that could be a barrier to the use or registration of the Trade Mark.[41] Furthermore, Mr Fuentes declares that he undertook marketplace searches, checked the ABN and ASIC register in or around September 2020, and did not identify any use of ‘Sentient’ or ‘Sentient Finance’ in those searches.[42] Mr Fuentes also declares that he had never heard of the Opponent or Sentient Equity prior to this opposition.[43]

   [40] Fuentes [15].

   [41] Ibid [6].

   [42] Ibid [15].

   [43] Ibid.

3. As submitted by the Applicant, there is no evidence that the Applicant was aware of the Opponent. Even if the Applicant had been aware of the Opponent or Sentient Equity, mere awareness of another trade mark does not constitute bad faith. As there are no other aspects of the Opponent’s evidence that point to any activity or action 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.

4. Accordingly, the s 62A ground of opposition has not been established.

Decision

1. Section 55(1) 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 2194079 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 s 221 of the Act in accordance with the amounts detailed in Schedule 8 of the Regulations.

Timothy Brown

Hearing Officer

Delegate of the Registrar of Trade Marks

1 May 2024