Sevdoka Pty Ltd v Magic Blue Media Pty Ltd

[2025] ATMO 133

TRADE MARKS ACT 1995

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

Re:Opposition by Sevdoka Pty Ltd as trustee of the RB Scott Estate Trust to registration of trade mark application number 2357355 (classes 9 & 41) – LOOKING FOR BON - in the name of Magic Blue Media Pty Ltd

Delegate:

Tracey Berger

Representation:

Opponent: Cherith Devenish, Sonic Lawyers

Applicant: No appearance

Decision:

2025 ATMO 133

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

Background

1. This is a decision on the opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] brought by Sevdoka Pty Ltd as trustee of the RB Scott Estate Trust (‘Opponent’) to registration of the trade mark detailed below filed in the name of Magic Blue Media Pty Ltd (‘Applicant’):

Trade Mark:               LOOKING FOR BON (‘Trade Mark’)

Number:2357355  (‘Application’)

Filing Date:                17 May 2023              (‘Relevant Date’)        

Specification:            Class 9: Motion pictures; Motion picture films for television use; Motion picture films for theatrical use; Digital music (downloadable) from the Internet; Music recordings; Cine films prepared for exhibition; Films bearing video recordings; Films for reproducing sound; Sound recordings; Application software; Personal computer application software; Pre-recorded compact discs (disks)(CDs)

Class 41:  Providing digital music (not downloadable) from the Internet; Distribution (other than transportation) of television programmes; Production of radio and television programmes; Distribution (other than transportation) of films; Film production, other than advertising films; Film directing, other than advertising films; Entertainment services; Fan club services (entertainment); Music publisher services (publication of music); Organisation of musical events

(‘Applicant’s Goods and Services’)

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2.     Following the advertisement of acceptance of the Application for possible registration, the Opponent filed a Notice of Intention to Oppose on 17 December 2023 (subsequently amended), followed by a Statement of Grounds and Particulars (‘SGP’) on 15 January 2024.  The Applicant filed a Notice of Intention to Defend on 5 February 2024.

3. The parties then had an opportunity to file evidence in accordance with the Regulations. The Opponent filed evidence in support (‘EIS’) on 6 May 2024 followed by the Applicant’s evidence in answer (‘EIA’) filed on 9 August 2024. The Opponent filed its evidence in reply on 14 October 2024.

4.     Once the time for filing evidence had ended, the parties had an opportunity to request a hearing.  The Opponent requested an oral hearing and the Applicant did not ask to be heard.  The Opponent filed a written summary of its submissions, prepared by Shelley Einfeld of Shelley Einfeld IP, on 12 May 2025.  I heard this matter as a delegate of the Registrar of Trade Marks on 26 May 2025.  At the hearing Cherith Devenish of Sonic Lawyers made oral submissions on behalf of the Opponent.  I make my decision based on the aforementioned materials and submissions of the Opponent.

Grounds and onus

5.     In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A.

6.     The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2] The standard of proof is the ordinary civil standard on the balance of probabilities.[3]  The rights of the parties are to be determined at the Relevant Date being both the filing date and priority date of the Trade Mark.

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

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot

and Edelman JJ).

Evidence

7.     The following evidence was filed:

8.     Declarant and Position	Date	Exhibits/Annexures
EIS
Damian Peter Rinaldi, Managing Director of Sonic Rights Management, exclusive manager of the RB Scott Estate Trust (‘Rinaldi 1’)	6 May 2024	DPR-1 to DPR-30 (including Confidential Exhibit DPR-5)
EIA
Damien Reilly, CEO of the Applicant (‘Steindorf’)	9 August 2024	DR-1 to DR-8
EIR
Damian Peter Rinaldi (‘Rinaldi 2’)	14 October 2024	DPR-31 to DPR-33

Preliminary comments on the evidence

9. It is clear from the Opponent’s evidence that many of its complaints about the Applicant are not relevant to the current dispute regarding the Trade Mark but rather relate to the Applicant’s conduct in using copyright works for which the Opponent says the Applicant does not have the appropriate permissions and misrepresentations by the Applicant including that the Applicant represents Bon Scott when this is not the case. This matter relates only to the Opponent’s opposition to the Application and whether it has established a ground of opposition. Whilst the Act provides for a trade mark to be opposed on the basis that the application for the mark was made in bad faith and/or that use of the Trade Mark is contrary to law, these grounds pertain to the filing of the Trade Mark and the use of the Trade Mark itself. This issue is discussed further under the relevant grounds.

Opponent’s evidence    

10.     Rinaldi 1 chronicles Bon Scott's journey from his birth as Ronald Belford Scott, through his rise to fame as the singer and lyricist of AC/DC, until his untimely death in 1980.  Bon Scott co-wrote the iconic song 'Highway to Hell', which has amassed over 1.5 billion streams on Spotify, along with other famous hits like 'T.N.T.' and 'Dirty Deeds Done Dirt Cheap,' both of which are regularly played at sporting events.  In 2024, Bon Scott was named Best Frontman of All Time by Classic Rock magazine.  Prior to joining AC/DC, Bon Scott performed in various bands including The Spektors, The Valentines and Fraternity. 

11.     According to Rinaldi 1, the Opponent was incorporated in 1982 for the sole purpose of being the trustee of the trust established to ‘house and manage’ the perpetual assets (principally the intellectual property rights and royalty streams) of the late Australian musician known as Bon Scott. The Opponent manages the trust’s assets through the appointment in January 2020 of an Australian manager, Sonic Right Management, and an American based marketing consultant, Jacksonic Sound & Vision, who was appointed in 2021.  The Opponent’s main activities include:

a)Registration of trade marks in various jurisdictions;

b)Licensing of merchandise rights;

c)Management of income from intellectual property relating to Bon Scott;

d)Liaising with third parties to produce live events and festivals;

e)Liaising with third parties seeking consent and participating in relation to audio and audiovisual productions; and

f)Establishing and maintaining the official Bon Scott website and social media accounts.

12.     The Opponent is the owner of trade mark registrations for BON SCOTT in the United States of America, the European Union and the United Kingdom, and owns the following Australian trade mark registrations (‘Opponent’s Registrations’):

Number	Trade Mark	Priority Date	Classes[4]
1213478	BON SCOTT (‘Opponent’s Mark’)	3 Dec 2007	16, 25 & 41
1250245	BON SCOTT	4 July 2008	9, 35 & 41

[4] The full specifications for the Opponent’s Marks are shown in Annexure A.

13.     The Opponent’s Mark is promoted primarily in relation to music festivals, live performances, merchandise sold through the official BON SCOTT store at (‘Opponent’s Store’), the official BON SCOTT website at (‘Opponent’s Website’) and social media channels.  Examples of use of the Opponent’s Mark are provided in Exhibits DPR-1 to DPR-6 of Rinaldi. 

14.     The sale of merchandise under the Opponent’s Mark is the main source of revenue received by the Opponent.  In 2020, the Opponent appointed Perryscope Productions as its global merchandise licensee and revenue figures are provided since that time.  The income is not split by territory and the Opponent cannot say how much of this revenue derives from Australian sales.  The Opponent also receives music royalties annually, but these are not directly related to the Opponent’s Mark.

15.     The Opponent does not spend money directly on advertising or promotion but has engaged a marketing consultant since 2021, licensed images for the Opponent’s Website and hired a PR consultant to assist with promoting Bon Scott’s 75^th birthday in 2021.  The Opponent’s promotional expenditure from 2021 to April 2024 is provided.  Perryscope Productions also undertakes marketing of official merchandise.

16.     Rinaldi declares that he first met Damien Reilly of the Applicant in 2005 and was aware that Damien Reilly operates a record label, Blue Pie Records (‘Blue Pie’).  In December 2014, Rinaldi received an article about Damien Reilly’s new projects being a documentary ‘Looking for Bon’ followed by a biopic with a script written by the late Australian music pioneer Vince Lovegrove, and Angela Anagnostopoulos.  At that time, no documentary or biopic had ever been approved by AC/DC, the Opponent or Alberts (Australian label and publishing house for AC/DC) and without any AC/DC music, it was considered unlikely any such project would proceed.

17.     In February 2009, Rinaldi met with Lovegrove and Anagnostopoulos and learnt they had pitched their script to Alberts.  After Alberts consulted AC/DC’s management, Rinaldi emailed Anagnostopoulos in June 2012 to advise that the band would not support any biopic involving or depicting them.  In 2006, Anagnostopoulos again pitched her script to Alberts, advising that she had optioned the script to Damien Reilly and Rinaldi replied on behalf of Alberts reiterating that AC/DC was not open to being associated with the project.

18.     Rinaldi 1 declares that the Applicant has engaged in misleading and deceptive conduct by misrepresenting that they have licences/permission to use Bon Scott’s copyright material and that Bon Scott is represented by Blue Pie when they have no permission to do so from the Bon Scott estate.  Rinaldi attests to various instances of this conduct including that the Applicant (or associate entity) has registered the domain name bonscott.com (‘Bon Scott Website’) which redirects to the website at (‘Applicant’s Website’).  According to Rinaldi 1, these websites claim that Blue Pie is authorised to represent and use Bon Scott’s works prior to him joining AC/DC and feature unauthorised images and copyright works of Bon Scott. 

19.     Rinaldi 1 further declares that the Applicant has engaged in a pattern of bad faith by claiming an association with Bon Scott and bands that he was involved with prior to joining AC/DC.  For example, Rinaldi 1 claims that the Applicant has registered the names of these bands as business names, uploaded their music to Spotify without permission and provides images and hyperlinks to the music and videos of these bands on its websites.  Rinaldi exhibits copies of articles suggesting that the Applicant has also used songs of other artists without permission.

20.     Rinaldi 2 reiterates that the Applicant does not have the Opponent’s permission to use recorded performances and other copyright material relating to Bon Scott’s pre-AC/DC career.  The Opponent’s Website lists the appropriate organisations to contact for permission to use music from the various bands Bon Scott was involved in.

21.     Much of Rinaldi 2 relates to the re-release of a song written by Bon Scott and Peter Head named ‘Round and Round’ which was recorded in 1974 but not released (‘Song’).  Rinaldi 2 claims that Bon Scott and Peter Head jointly held copyright in the Song.  Peter Head subsequently released the Song and another version of it named ‘Round and Round and Round’ but without the Opponent’s permission.  The Applicant then re-released another version of the Song again named ‘Round and Round and Round’ and accompanying video (‘Video’).  Rinaldi 2 details a number of statements made by the Applicant regarding ‘Round and Round and Round’ which he says erroneously infer that ‘Bon Scott is a Blue Pie artist’.  Rinaldi also claims that the Video consists of footage from an unrelated Fraternity song that has been edited to ‘give the deceptive appearance that Bon Scott is singing Round and Round’.  Rinaldi 2 declares that the Applicant has also reproduced two other songs performed by Bon Scott and co-written with Peter Head, without the Opponent’s permission, which it has made available on streaming services.  Further, Rinaldi 2 attests that the permissions obtained for copyright works for the Film and TV Series are not from the copyright owners.

Applicant’s evidence

22.     Reilly declares that the Applicant was incorporated in 1996 and produces films, television programs, sound recordings and music.  The business name Looking for Bon and domain name were registered in 2016. 

23.     The Trade Mark is to be the name of the Applicant’s 9 part, 30 minute episodic video on demand television show and 2 hour cinematic film about Bon Scott’s life from 1970 to 1974 when he joined AC/DC.  This tv series and film is based on interviews with numerous people who knew Bon Scott.

24.     Reilly attests that the Applicant’s Website states that it is licensed by the producer of Fraternity’s album ‘Livestock’, ABC TV Australia Archives and Sweet Peach Record Label to use the music, video and recordings featured in the Applicant’s film and tv series.  The Applicant’s Website also features a disclaimer that it is not authorised by the Bon Scott estate and does not feature any AC/DC material.

Discussion

Section 44

25.     Section 44 relevantly provides:

44  Identical etc. trade marks

(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.

26. The s 44 ground of opposition is established if, subject to subsections 44(3) and 44(4) of the Act, the marks relied on by the Opponent meet the following requirements:

(i)they are in the name of a person other than the Applicants;

(ii)they have a priority date which is earlier than the Relevant Date;

(iii)they are in respect of goods or services which are similar, or closely related, to the Applicants’ Goods and Services; and

(iv)they are substantially identical with, or deceptively similar to, the Trade Mark.

27.     The SGP nominates the Opponent’s Registrations as the basis for this ground of opposition which marks satisfy requirements (i) and (ii) in that these marks are registered by a person other than the Applicant and have priority dates which are earlier than the Relevant Date.

28.     In relation to requirement (iii), s 14 provides that two sets of goods (or services) are similar if they are the same or of the same description.  Whether goods (or services) are of the same description depends on whether the goods (or services) belong to the same or different trades, as determined through consideration of the following factors:[5]

(i) the nature of the goods;

(ii) the respective uses of the goods; and

(iii) the trade channels through which the goods are respectively bought and sold.[6]

[5] Re Jellinek’s Application (1946) 63 RPC 59, 64 (Romer J).

[6] Ibid 70.

29. Further, goods may be closely related to services, or vice versa. The words ‘closely related’ are not defined in the Act. Justice French noted in Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’):

The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” ... it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[7]

[7] [1999] FCA 1020, [37] (French J).

30.     In my view, the Applicant’s Goods are the same or similar to the class 9 goods of the Opponent’s registration 1250245 which covers various recordings and all other formats for the reproduction of sound and/or images.  Further, I consider the Applicant’s Services to be similar to the services of the Opponent’s Registrations or closely related to the Opponent’s registered goods.  In my assessment the Applicant’s Goods and Services have the same nature and purpose as those of the Opponent’s Registrations and are offered through the same trade channels to the same class of customers.

31.     Accordingly, I must now determine whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Registrations.  Justice Windeyer outlined the manner in which two marks are to be assessed for substantial identity in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (‘Shell’) as follows:

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.[8]

[8] (1963) 109 CLR 407, 415.

32.      The marks to be compared in this case are:

BON SCOTT  LOOKING FOR BON

33.     The Opponent does not contend that the marks are substantially identical and I agree.  It is immediately obvious that the only feature in common is the word BON and that the marks are otherwise comprised of totally different words.  There is clearly no total impression of resemblance and hence the marks are not substantially identical.

34.     Therefore, the question is whether the Trade Mark is deceptively similarity to the Opponent’s Registrations.  Section 10 provides that ‘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’.

35.     In determining the question of deceptive similarity, the respective trade marks must be compared as wholes,[9]having regard to essential or distinguishing features,[10] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[11]What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and the Opponent’s Registrations, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[12]  A mere possibility of deception or confusion is insufficient but rather what is required is a real tangible danger of it occurring.[13]

[9] Woolworths (n 7) [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

[10] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ) (‘Crazy Ron’s’).

[11] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).

[12] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer J. Spence).

[13] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J); Woolworths (n 7), [50].

36.     The Opponent claims that the dominant cognitive cue of the Trade Mark is the name ‘BON’, which the Opponent says is a clear reference to Bon Scott and can have no other meaning in the context of the Applicant’s Goods and Services.  In this regard, the Opponent contends that the present comparison is different from that in Victoria Beckham v VB Skinlab Pty Ltd[14] because Victoria is a common name and the celebrity is known as Victoria Beckham rather than just Victoria.  The Opponent argues that this situation is more akin to a reference to Elvis which the Opponent says would be a clear reference to Elvis Presley or Ringo which would obviously refer to Ringo Starr.  Further, the Opponent claims that the Opponent will probably use the Trade Mark with an image of Bon Scott so the reference of Bon in the Trade Mark to Bon Scott will be obvious.  Moreover, ‘the relevant consumers of both parties’ goods and services are likely to be substantially the same, including fans of Bon Scott and his music; fans of AC/DC and its music; fans of other bands of which Bon Scott was a member and their music; and fans and/or collectors of Australian rock and/or pop music more broadly’.

[14] [2020] ATMO 36 (Hearing Officer N. Smith).

37.     I do not find the Opponent’s reliance on Victoria Beckham v VB Skinlab Pty Ltd to be persuasive.  This decision did not concern a question of deceptive similarity under s 44 nor was it about the name ‘Victoria’ but rather the marks in that case were stylised forms of VB Salon and VB Skincare.

38.     In determining the question of deceptive similarity of the Trade Mark and the Opposed Registrations, I must compare the impression that the notional buyer would have of the Opponent’s Registrations with the impression that the notional buyer would have of the Trade Mark.[15]  The notional buyer is a person with no knowledge about any actual use of the Opponent’s Registrations[16] and is not confined to fans of Bon Scott or AC/DC.  I cannot take into account any reputation that may exist in the Opponent’s Registrations[17] nor the possibility that the Applicant may use the Trade Mark with an image of Bon Scott.  I must consider  normal and fair use for all goods and services covered by the Application and ‘not by reference to the manner in which the respondent has used its trade mark in the past’.[18] 

[15] Shell (n 8), 415.

[16] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[17] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA8,[50] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[18] Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353, 362 (Mason J).

39.     The Trade Mark is significantly different from the Opponent’s Registrations in its overall impression.  The marks are visually and phonetically distinct.  Further, the Opponent’s Registrations are obviously a name which may be recognised by some consumers as a reference to the former lead singer of AC/DC whereas the Trade Mark suggests a search or quest which creates a different conceptual impression.  In my opinion, although ‘Bon’ is an unusual name, the inclusion of the word ‘BON’ in the Trade Mark does not convey any obvious reference to the Opponent’s Registrations nor the person Bon Scott to a notional consumer of music, films and sound recordings.  I am not satisfied that there is a real tangible danger of deception or confusion.   Accordingly, the s 44 ground of opposition is unsuccessful.

Section 60

40.     Section 60 provides that:

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.

41.     The Opponent particularised this ground of opposition in its SGP as follows:

The Opponent is the authorised representative of the estate of the Australian singer/ songwriter Ronald Belford Scott (known as Bon Scott), who passed away in 1980.
The BON SCOTT trade marks have been used in Australia prior to 2007 in connection with the sound recordings and underlying musical and literary works owned by the Bon Scott Estate and associated goods and services including merchandise. The Opponent has acquired a reputation in relation to the BON SCOTT trade marks.
The BON SCOTT trade marks are important assets of the Bon Scott Estate. The BON SCOTT trade marks are exclusively associated by Australian consumers and traders within the music industry, and more broadly, with the late Bon Scott and/or the Bon Scott Estate and/or their authorised licensees.
The word BON in the Applicant’s mark LOOKING FOR BON refers to Bon Scott.
The Opponent has not authorised the Applicant or any of its affiliated companies or individuals to use any assets or indicia of the Bon Scott Estate, nor has the Opponent endorsed any reference to or association with Bon Scott by the Applicant or any of its affiliated companies or individuals.
As a result of the Opponent’s use and reputation in its BON SCOTT trade marks, registration of the trade mark LOOKING FOR BON by the Applicant will result in deception and confusion of Australian consumers.

42.     To satisfy s 60 the Opponent must establish that there was a reputation in the mark BON SCOTT in Australia at the Relevant Date.  If such a reputation is shown to exist, the Opponent must then establish that because of that reputation, use of the Trade Mark is likely to deceive or cause confusion.

43.   In McCormick & Co Inc v McCormick, Kenny J found based on the dictionary definition of the word ‘reputation’ that this meant there must be ‘recognition of the [trade mark] by the public generally’.12F9F[19]

[19] [2000] FCA 1335, [81].

44.     Justice Kenny also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[20]

[20] (1999) 47 IPR 423, 436.

45.     What constitutes a significant or substantial number of persons in the relevant market depends on the nature of the goods/services in question.[21]  In the present case, the relevant market is large being consumers of music, films and other entertainment related goods and services.

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

46.     The Opponent claims that the Opponent’s Mark is promoted through sales and promotion of merchandise, live events such as BonFest, the Opponent’s Website, official social media accounts, by its licensee and television such as the Australian Story documentary which is available on YouTube.  Worldwide revenue figures for sales of merchandise by the Opponent’s licensee are provided[22] but these are minimal.  The extracts from the Opponent’s social media accounts indicate that there were approximately 10,000 followers each of the Opponent’s Facebook[23] and Instagram accounts[24] and only 53 posts on the Instagram account.   Direct promotional expenditure by the Opponent is not impressive and there are no metrics about visitors to the Opponent’s Website.  Whilst I consider that the person Bon Scott likely has a following amongst persons of a certain age group, I am not satisfied on my assessment of the Opponent’s evidence that there was a reputation in the mark BON SCOTT for entertainment goods and services in Australia amongst a substantial number of persons in the relevant market at the Relevant Date.  Therefore, the s 60 ground of opposition is unsuccessful.

[22] Rinaldi 1, Confidential Exhibit DPR-5.

[23] Ibid, Exhibit DPR-3.

[24] Ibid, Exhibit DPR-4.

Section 42(b)

47.      Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law.

48. The Opponent claims that use of the Trade Mark would contravene ss 18, 29(1)(g) and 29(1)(h) of the Australian Consumer Law (‘ACL’), being Schedule 2 of the Competition and Consumer Act 2010 (‘ACL’), and constitute passing off.

49. Sections 18 and 29 of the ACL take a different form in that s 18 prohibits conduct that is misleading or deceptive (or likely to mislead or deceive) whereas s 29 relates to conduct that is ‘false or misleading’ but there is no material difference between the two.[25]

[25] Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130, [20-21] (Wigney, O'Bryan and Jackson JJ).

50.     As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

It is not enough for a party opposing registration to show that s 18 of the ACL [Australian Consumer Law 2010] or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.[26]

[26] 2017] FCAFC 174, [411].

51.     The elements of passing off are:

i.reputation in the relevant mark;

ii.misrepresentation leading to deception; and

iii.damage, or likelihood of damage, to the goodwill of the business relating to the relevant mark.[27]

[27] Reckitt & Colman Products Limited v. Borden Inc (1990) 17 IPR 1 (Lord Oliver).

52. In its submissions, the Opponent claims that its evidence establishes that the Applicant has engaged in conduct that contravenes ss 18 and 29 of the ACL and passing off, including by:

a. misrepresenting that it (or one or more of its closely related companies) has the right to use Bon Scott copyright material, including photographs, video and written material from before Bon Scott’s time with AC/DC when that material in fact belongs to the Bon Scott Estate;[28]

b. registering and/or holding and continuing to renew and hold the domain name bonscott.com without the Opponent’s permission and despite requests to transfer that domain name to the Opponent;[29]

c. misrepresenting to third parties that the Applicant (or one of its closely related companies) is an official representative of the Bon Scott Estate;[30] and

d. misrepresenting to third parties that the Applicant (or one of its closely related companies) represents Bon Scott as a musical artist or has an affiliation with the Opponent and is therefore entitled to use material which in fact belongs to the Bon Scott Estate.[31]

[28] Rinaldi 1, [36-39], [53-59]; Reilly, [8], [12] and [15]; Rinaldi 2, [13-29].

[29] Rinaldi 1, [38], [47-49].

[30] Rinaldi 1, [42], [44] and [58].

[31] Rinaldi 1, [54-57]; Rinaldi 2 [14], [36-39].

53.     The Opponent contends that given the similarity of the Trade Mark and Opponent’s Mark, the reputation in the Opponent’s Mark, the similarity of the parties’ trade channels and class of consumers and that there are no other traders using a deceptively similar mark to the Opponent, means that there is real possibility that consumers exposed to the Applicant’s conduct will ‘form an erroneous assumption of conclusion about some fact or matter, including the relationship between the Applicant and the Opponent’.

54.     In order to succeed on this ground of opposition, ‘the illegality must arise from the trade mark itself rather than the particular manner in which the applicant's business has been or will be arranged’.[32]  Accordingly, the misleading and deceptive conduct must involve the use of the mark LOOKING FOR BON. 

[32] M. Davidson, I. Horak Shanahan’s Australian Law of Trade Marks and Passing Off (7^th ed online, 2022) Lawbook Co., [50.2060]

55.     Exhibit DPR-14 of Rinaldi 1 is an extract of the Applicant’s Website which is headed ‘Rock ‘n ‘Roll documentary and outlines the content of the documentary.  At the end of the extract, the final paragraph reads:

56.     The Applicant freely admits in its evidence that the Applicant’s Website contains links to music, videos and press releases about Bon Scott or bands that he was involved with prior to AC/DC.  However, none of these links references the Trade Mark but rather refer to Bon Scott or other bands he performed in. 

57. In my view, the Opponent’s claims do not relate to use of the Trade Mark. Therefore, while the Opponent may have other legal avenues to address the Applicant’s conduct that allegedly breaches the ACL or constitutes passing off, such conduct is not relevant to these proceedings as it does not involve use of the Trade Mark. Even if the materials mentioned in paragraph [52a] appear on the Applicant’s Website ( without proper permission from the copyright holders, this does not constitute misleading or deceptive use of the Trade Mark in breach of the ACL, nor does it represent a misrepresentation relating to the Trade Mark. Instead, it pertains to how the Applicant is conducting their business. The potentially actionable issue is the use of copyright materials without permission and misrepresentations about Blue Pie’s authority to publish Bon Scott’s works, not the use of the Trade Mark itself.

58. The Opponent has not established that use of the Trade Mark would contravene the ACL and/or constitute passing off. Hence the s 42(b) ground of opposition is unsuccessful.

Section 62A

59.      Pursuant to s 62A, the registration of a trade mark may be opposed on the ground that the application was made in bad faith.

60. The phrase ‘bad faith’ is not defined in the Act but as Bennett J explained in DC Comics v Cheqout Pty Ltd:[33]

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 falls 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.[34]

[33] [2013] FCA 478.

[34] Ibid, [62].

61.     In its SGP, the Opponent claims that:

At the time of filing its application, the Applicant was aware that:

• the Opponent represented the Estate of Bon Scott;

• the Opponent had not authorised the Applicant or any of its affiliated companies or individuals to use any assets or indicia of the Bon Scott Estate;

• the Opponent had not endorsed any reference to or association with Bon Scott by the Applicant; and

• the Opponent had not granted permission to the Applicant to register a trade mark which includes the word BON, in clear reference to Bon Scott.

1. In its submissions, the Opponent contends that the Applicant ought to have known it should not apply to register the Trade Mark given that the Opponent expressly informed the Applicant it did not consent to the documentary.  Also, the Opponent argues the Applicant has engaged in various acts of bad faith conduct as outlined above at [52] and has adopted the distinctive element ‘BON’ from the Opponent’s Mark to suggest that the Applicant’s Goods and Services have the same trade source as those of the Opponent or that there is otherwise an association or connection with the Opponent.  In oral submissions, the Opponent also argued that the Applicant’s conduct in registering various business names based on the names of bands that Bon Scott performed in before AC/DC demonstrates a pattern of bad faith behaviour. 

   62.     There is nothing inherently illegal in producing an unauthorised documentary (although there are legal considerations such as defamation law and the need for appropriate consent to copyright materials).  Accordingly, I do not think that the fact the Applicant knew that the Opponent did not consent to the documentary amounts to bad faith.  Moreover, I have already found that the inclusion of the element BON in the Trade Mark does not itself suggest an association with Bon Scott or the Opponent. 

   63.     In terms of the press releases, music, videos and other materials available on the Applicant’s Website, this ground fails for similar reasons to the s 42(b) ground.  Whilst the conduct of the Applicant in publishing these materials on the Applicant’s Website may fall short of acceptable commercial standards, I consider that there is an insufficient nexus between the filing of the Application and use of the Trade Mark, and the conduct which the Opponent claims is in bad faith.  In my view, none of the conduct complained of can be tied directly to use of the Trade Mark itself.  The only connection is that the misrepresentations and potentially infringing copyright materials appear on the Applicant’s Website.  This conduct would be the same if the materials appeared on another website and hence the use of the Trade Mark is not integral to the Applicant’s conduct.  All of the conduct involves the use of other marks such as Blue Pie, Bon Scott or the name of Bon Scott’s earlier bands.   In my view, the publication of the misrepresentations and materials for which the Applicant allegedly does not have copyright permission on the Applicant’s Website is not a sufficiently direct use of the Trade Mark in connection with the bad faith conduct.

   64.     I am not satisfied that the Application was made in bad faith.  The s 62A ground of opposition is unsuccessful.

   Decision

   65. Section 55 of the Act provides:

   55  Decision

   (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.

   Note:          For limitations see section 6.

   66.     The Opponent has not established any grounds of opposition. The Trade Mark may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

   67. The Applicant requested an award of costs in its Notice of Intention to Defend. As costs generally follow the event, I award costs against the Opponent under s 221 in accordance with Schedule 8 of the Regulations.

   Tracey Berger

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   10 July 2025

   Annexure A – Opponent’s Registrations

Number	Trade Mark	Specification
1213478	BON SCOTT	Class 16:  Printed concert programs, printed souvenir items being postcards, posters and decalcomania; sheet music; cardboard and goods made from cardboard, not included in other classes; printed publications; books; pamphlets; magazines; plastic material for packaging (not included in other classes); cards; greeting cards; stickers; transfers; address books; and note books Class 25:  Clothing, footwear and headgear Class 41:  Production, presentation and distribution of musical and related entertainment through live performances, stage events, television, radio, electronic distribution and any other media, production of films and television programmes; fan club services (entertainment)
1250245	BON SCOTT	Class 9:  Video and audio tapes, compact discs, sound and/or video recordings, video discs, and all other devices and formats in this class for the reproduction of sound and/or visual images Class 35:  Retail and wholesale services in this class relating to entertainment, media and communications industries being the retailing and wholesaling of musical instruments, sheet music, music software, clothing, footwear, headgear, audio visual products, multimedia products, pre-recorded discs, compact discs, computer games, interactive products, games, toys, DVD's, books, posters, printed matter; promotional services relating to entertainment, media and communications services being concert promotions (for others), promotional management of celebrities, promotion and sale of naming and product supply rights (for others) and online promotion of films, television and radio programs and audio visual entertainment; distribution of samples Class 41:  Production of video and audio tapes, compact discs and other audio and audiovisual devices; publication of books and printed material; electronic publication services being: the provision of online electronic publications (not downloadable) about entertainment, electronic publication of entertainment news and topics, the production of webcasts, publication of multimedia material online, and weblog (blog) services (online publication of journals or diaries); music publishing and distribution (not being transport) services including the distribution (other than transportation) of film, television, radio, sound recordings and audio visual programs