Sevdoka Pty Ltd v Magic Blue Media Pty Ltd

This decision concerns an opposition by Magic Blue Media Pty Ltd (the Opponent) to the registration of a trade mark by Sevdoka Pty Ltd (the Applicant). The Opponent contended that the Applicant's conduct in applying to register the trade mark was in bad faith, citing the Applicant's knowledge that the Opponent did not consent to a documentary, the adoption of the distinctive element 'BON' from the Opponent's mark, and the registration of business names related to Bon Scott's earlier bands. The Opponent also argued that the Applicant's website contained misrepresentations and potentially infringing copyright materials.

The primary legal issue before the Hearing Officer was whether the Applicant's application to register the trade mark was made in bad faith, pursuant to section 62A of the relevant Act. This required the court to consider whether the Applicant's actions, including its knowledge of the Opponent's lack of consent to a documentary, its use of the element 'BON', and the content of its website, demonstrated an intention to deceive or mislead, or otherwise engage in conduct that is contrary to honest commercial practices.

The Hearing Officer found that the Applicant's knowledge that the Opponent did not consent to the documentary did not, in itself, amount to bad faith, as producing an unauthorised documentary is not inherently illegal. Furthermore, the inclusion of 'BON' in the trade mark was not found to suggest an association with Bon Scott or the Opponent. Regarding the materials on the Applicant's website, while the conduct might fall short of acceptable commercial standards, the Hearing Officer determined there was an insufficient nexus between the filing of the application and the use of the trade mark, and the alleged bad faith conduct. The conduct complained of was not considered integral to the use of the trade mark itself, as it involved the use of other marks and would have occurred regardless of the trade mark's use. Consequently, the ground of opposition under section 62A was unsuccessful.

As no grounds of opposition were established, the Hearing Officer decided that the trade mark could proceed to registration one month from the date of the decision, subject to any appeal. The Applicant was awarded costs against the Opponent.