Sheldon Paty Pty Ltd v Denbies Pty Ltd
[2023] ATMO 153
•5 October 2023
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sheldon Park Pty Ltd to registration of trade mark application number 2187387 (class 28) - SAMBA - in the name of Denbies Pty Ltd.
Delegate: | Timothy Brown |
Representation: | Opponent: Sahil Verma of LegalVision ILP Pty Ltd. Applicant: Churchill Attorneys. |
Decision: | 2023 ATMO 153 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58, 59, 60 and 62A considered – s 58 partially established – opportunity to amend – application not amended – trade mark refused registration. |
Background
This decision concerns an opposition brought by Sheldon Park Pty Ltd (‘Opponent’) under section 52 of the Trade Marks Act 1995 (Cth)[1] to the registration of the following trade mark:
Trade Mark Number: 2187387
Trade Mark: SAMBA (‘Trade Mark’)
Priority Date: 17 June 2021
Applicant: Denbies Pty Ltd (‘Applicant’)
Specification: Class 28: Apparatus for use in outdoor sporting activities; Bags adapted for sporting articles; Bats (sporting articles); Protective covers for sporting articles; Sporting apparatus; Balls for playing sports; Nets for sports.[2]
[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’).
[2] Specification at the time the trade mark application was filed.
Following examination under section 33, the Trade Mark was accepted and subsequently advertised for opposition on 18 November 2021.
A Notice of Intention to Oppose was filed by the Opponent on 14 January 2022, followed by a Statement of Grounds and Particulars (‘SGP’) on 14 February 2022. The Applicant filed a Notice of Intention to Defend on 30 March 2022.
The Opponent filed Evidence in Support of the opposition on 4 July 2022. No Evidence in Answer was filed by the Applicant.
On the 10 October 2022, the Applicant requested to amend the specification of the Trade Mark to the following:
Class 28: Apparatus for use in outdoor sporting activities; Bags adapted for sporting articles; Bats (sporting articles); Protective covers for sporting articles; Sporting apparatus; Balls for playing sports; Nets for sports; none of the aforementioned goods being for soccer (‘Applicant’s Goods’)
Following the conclusion of the evidence stages, the Opponent requested to be heard. The matter was heard by me, a delegate of the Registrar of Trade Marks, on 7 July 2023. The Opponent was represented by Sahil Verma of LegalVision ILP Pty Ltd. The Applicant did not appear at the hearing, nor did the Applicant file any written submissions.
Grounds of Opposition, Onus and Relevant Date
The nominated grounds of opposition are sections 42(b), 58, 59, 60, and 62A of the Act.
The Opponent bears the onus of establishing one or more of the grounds of opposition.[3] The required standard of proof is on the balance of probabilities.[4] The date at which the rights of the parties will be determined is the priority date of the Trade Mark, being 17 June 2021 (‘Relevant Date’).
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] ((Keane CJ, Stone and Jagot JJ).
[4] 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).
Evidence
The Opponent’s evidence consists of a declaration made by Gerrard Woods, the sole director of the Opponent, on 4 July 2022 (‘Woods Declaration’) with Annexures A to Z.
The Opponent was incorporated on 12 November 1990 with the purpose of operating a retail sports store in Australia under the trade mark ‘SPORTSMART’. The Opponent operated this business for over 20 years, selling a variety of sports related goods, such as footwear, apparel, sports equipment, and recreational games. Included in Annexure C of the Woods Declaration are screenshots of the Opponent’s website (‘Opponent’s Website’) displaying the online retail of various sports related goods.
Mr Woods declares that in early 2010, the Opponent began purchasing soccer related goods from a United Kingdom based company called B.G Sports International Limited (‘BG Sports’). The goods purchased from this company bore the trade mark ‘SAMBA’ (‘SAMBA Mark’). From 2010 until the present, the Opponent retailed goods bearing the SAMBA Mark through the Opponent’s Website and via the Opponent’s physical stores. Mr Woods declares that he has used the SAMBA Mark with authorisation from BG Sports for over 10 years in Australia. The Woods Declaration includes Internet Wayback Machine evidence showing screenshots from the Opponent’s Website of the SAMBA Mark used in relation to portable soccer/football goals dated 9 July 2014.[5]
[5] Annexure H.
In 2015, Mr Woods incorporated SPTGRP (Wholesale) Pty Ltd (‘SPT’) to manage the wholesale of goods bearing the SAMBA Mark. For the purposes of this decision, the Opponent, BG Sports and SPT will be referred to collectively as the ‘Samba Group’.
SPT is the owner of the website sambasports.com.au (‘SPT Website’), which has operated from 2020 to the present. Annexed to the Woods Declaration are screenshots from the SPT Website featuring use of the SAMBA Mark in relation to a variety of soccer goals and spare parts, such as goal nets. [6]
[6] Annexure G.
The Samba Group promote the SAMBA Mark via various social media platforms, including Facebook, Twitter, Youtube, and LinkedIn. Screenshots demonstrating use and promotion of the SAMBA Mark on these platforms are included in Annexures I, J, K and L of the Woods Declaration. The Woods Declaration also includes a copy of 2020 Australian Trade Catalogue published by BG Sports that features the SAMBA Mark used on soccer goals, rugby, hockey and hurling goals, training aids such as cones, pitch markers, mannequins, sports bags, flags, and soccer and rugby balls.
Mr Woods declares that SPT promotes the SAMBA Mark through direct email marketing campaigns. The SAMBA Mark has also been promoted by third party retailers in Australia, including Harvey Norman, Mitre Sports, Costco Australia, Kogan and Onside Sports.
In regard to the Applicant, Mr Woods observes that the Trade Mark is primarily used in connection with fire and BBQ consumables, and that the Applicant’s other brands relate to garden care and various hardware tools. These observations are derived from the Applicant’s website and (collectively, ‘Applicant’s Websites’). Annexed to the Woods Declaration are screenshots from the Applicant’s Websites demonstrating advertisement for sale of various firelighters, charcoal, and smoking chips.[7]
[7] Annexure X.
Section 58
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.
Ownership of a trade mark can be established through authorship and use of a trade mark,[8] or, in the absence of use, a combination of authorship, the filing of an application and an intention to use the trade mark.[9] 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 good or services that are ‘the same kind of thing’ as the Applicant’s Goods; and
· Another person has an earlier claim of ownership based on use of the earlier trade mark before the Relevant Date.[10]
[8] 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).
[9] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ); Shell Co of Australia Ltd v Rohm and Haas Co (1948) 78 CLR 601, 627 (Dixon J).
[10] Pham (n 11) [50].
The Opponent asserts that the Applicant was not the owner of the Trade Mark at the Relevant Date because the SAMBA Mark was used in relation to various sporting goods in Australia prior to the Relevant Date by the Samba Group.
In regard to the first requirement, I note that the SAMBA Mark is identical to the Trade Mark.
I am also satisfied that the Samba Group had used the SAMBA Mark in Australia prior to the Relevant Date in connection with a range of sporting goods. The earliest demonstrated use of the SAMBA Mark in Australia occurred on the Opponent’s Website on 9 July 2014 in relation to portable goals. The SAMBA 2020 Australian Trade Catalogue, which displays products distributed in Australia by SPT, also demonstrates use of the SAMBA Mark in relation to goals used for hockey and rugby, bags and covers for balls, various pieces of training equipment, replacement nets and rugby balls. The Opponent’s evidence also demonstrates use of the SAMBA Mark in Australia by BG Sports before the Relevant Date in the form of commercial invoices showing the sales of bags, nets and training equipment bearing the SAMBA Mark dated 19 December 2019 and 22 February 2021.
The remaining question is whether the goods used in connection with the SAMBA Mark are the ‘same kind of thing’ as the Applicant’s Goods. For reference, the Applicant’s Goods are:
Class 28: Apparatus for use in outdoor sporting activities; Bags adapted for sporting articles; Bats (sporting articles); Protective covers for sporting articles; Sporting apparatus; Balls for playing sports; Nets for sports; none of the aforementioned goods being for soccer
The Opponent submits that the sporting goods sold and distributed by the Samba Group in Australia are the ‘same kind of thing’ as the Applicant Goods because soccer and non-soccer related goods are sold by the same traders, and many of the sporting goods sold by the Samba Group are not limited to soccer.
The test for whether goods are the ‘same kind of thing’ is a narrower assessment than whether they are goods of the ‘same description’.[11] In Colorado Group Ltd v Strandbags Group Pty Ltd[12] Allsop J stated:
The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article.[13]
[11] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184, [14] (Kenny J).
[12] [2007] FCAFC 184 (Kenny, Gyles and Allsop JJ).
[13] Ibid [89].
Despite the exclusion of soccer goods from the Applicant’s Goods, I consider many of the goods used in connection with the SAMBA Mark to be goods of the same kind as ‘Bags adapted for sporting articles’, ‘Protective covers for sporting articles’, ‘Sporting apparatus’ and ‘Nets for sports’. Bags and covers for soccer balls and soccer equipment are largely equivalent to those used for other balls and sports equipment. Similarly, there little distinction between nets for portable soccer goals and nets for portable goals in other sports such as hockey. I consider these goods to be true equivalents of one another. The broader specifications, ‘Apparatus for use in outdoor sporting activities’ and ‘sporting apparatus’, would also include the previously mentioned goods as well as other goods equivalent to the goods used in connection with the SAMBA Mark.
The sole exception is the Applicant’s claim for ‘bats (sporting articles)’. I do not consider bats used in sports to be an equivalent to, or a substitute for, any of the sporting goods used in connection with the SAMBA Mark. The bags, nets, portable goals, balls, training aids, and flags are all distinct from bats, which in the context of sports, would include goods such as cricket and baseball bats. Accordingly, I am satisfied that ‘bats (sporting articles)’ are not the ‘same kind of thing’ as the goods used in connection with the SAMBA Mark.
For reasons outlined above, I am satisfied that the Applicant is not the owner of the Trade Mark and that one or more of the entities in the Samba Group have prior claims of ownership based on their use of the SAMBAMark in Australia. Accordingly, the section 58 ground for opposition has been establish in relation to the following goods:
Class 28: Apparatus for use in outdoor sporting activities; Bags adapted for sporting articles; Protective covers for sporting articles; Sporting apparatus; Balls for playing sports; Nets for sports; none of the aforementioned goods being for soccer
I now need to consider whether the Opponent has established any of the other grounds of opposition in relation to the remaining goods in Class 28.
Section 59
Section 59 provides:
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) To use, or authorise the use of, the trade mark in Australia; or
(b) To assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
In the SGP the Opponent particularised the section 59 ground of opposition as follows:
1. The Applicant knew of the Mark, the Opponent and the Opponent’s prior rights in the Mark at the time of filing the Opposed Application.
2. The Opposed Application was filed for the purpose of creating a commercial roadblock for the Opponent. The Applicant has no intention of using the Opposed Mark for the Goods in Australia.
Filing an application for registration of a trade mark is a claim of intention to use the trade mark.[14] The onus is on the Opponent to establish a lack of intention to use the trade mark.[15] If the Opponent makes out a prima facie case that the Applicant lacked the requisite intention at the Relevant Date, the evidentiary onus will shift to the Applicant to demonstrate its intention to use the trade mark at the time of filing.[16]
[14] Aston Harlee Manufacturing Co (1963) 103 CLR 391, 401 (Fullagar J); Suyen Corporation v Americana International Limited [2010] FCA 638, [193] (Dodds-Streeton J) (‘Suyen’).
[15] Ibid.
[16] Suyen (n 14) [190].
The Opponent contends that the presumption can be rebutted by ‘slight evidence’. The evidence relied on by the Opponent concerns the Applicant’s existing business activities, namely the use of the Trade Mark on the Applicant’s Websites. The Applicant’s Websites shows use of the Trade Mark in relation to fire, barbecue, household and gardening products, in particular firelighters, charcoal, smoking chips, gardening tools and household tools such as brushes and dusting pans.
A lack of use of the Trade Mark by the Applicant in relation to the specified goods or services does not necessarily imply an absence of intention to use the Trade Mark.[17] As Dodds-Streeton J pointed out in Suyen Corp v Americana International Ltd,[18] ‘there may be good reason to defer use until the protection of registration is secured’[19].
[17] Ibid [207].
[18] [2010] FCA 638.
[19] Ibid.
There is authority for a finding of lack of intention to use a trade mark where an applicant has been put on notice that its intention to use the trade mark was in issue and has not responded to the opponent’s evidence.[20] However, in this matter I am not satisfied that the evidence provided by the Opponent is sufficient to establish a lack of intention to use the Trade Mark by the Applicant. The Opponent’s evidence is merely indicative of the Applicant’s current business activities, which while different to the Applicant’s Goods, do not indicate the Applicant would be incapable of providing the Applicant’s Goods or are otherwise reflective of a lack of intention to use the Trade Mark.
[20] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [162] (Jacobson J); see also: Phillip Morris Products SA v Sean Ngu [2002] ATMO 96 (Delegate McDonagh).
Finally, there is no evidence filed by the Opponent that indicates the Trade Mark was filed for the purposes of creating a commercial roadblock for the Opponent. The Opponent’s submissions and the Woods Declaration refer to correspondence between the parties regarding claims by the Applicant of infringement, misleading or deceptive conduct and passing off. However, evidence of this correspondence was not included in the Woods Declaration.
The section 59 ground of opposition is not established.
Section 60
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.
To succeed on this ground of opposition, the Opponent must establish:
A reputation in another trade mark in Australia before the Relevant Date; and
That use of the Trade Mark would be likely to deceive or cause confusion because of the reputation of the other trade mark.
Reputation, in the context of section 60, refers to ‘recognition of [the mark] by the public generally’[21]. It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[22]
[21] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J).
[22] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176, [118] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[23] or providing evidence of high volume of sales,[24] advertising expenditure or other promotion of goods or services to which the trade mark applies.[25]
[23] Ibid [118].
[24] McCormick (n 21) [86].
[25] Ibid.
In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:
The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.[26]
[26] [2019] FCA 923, [83] (O’Bryan J).
The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[27] 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.[28]
[27] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).
[28] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
The Opponent relies on its use of the SAMBA Mark in Australia since 2014 and the use of the SAMBA Mark by BG Sports in the United Kingdom, claiming that as of the Relevant Date the Opponent had acquired a substantial reputation in the SAMBA Mark in Australia.
The Opponent’s evidence of the reputation in the SAMBA Mark’s includes:
Third party promotional advertisements from retailers in Australia, including Mitre Sports, Coscto Australia, Kogan, Harvey Norman, Hart Sports and Onside Sports.
Third party media articles and reviews including articles in news publications The Independent and The Sun.
The Samba Group’s social media accounts, which combine to around 10,000 social medial followers. This includes followers across Youtube, Facebook, Twitter and LinkedIn.
The Opponent’s and SPT’s online advertising expenditure in Australia since February 2020.
Sales reports of all goods sold to Australian consumers bearing the SAMBA Mark from 1 January 2011 to 17 June 2022.
The sale of goods bearing the SAMBA Mark to high profile football clubs, such as Manchester United Football Club, Arsenal Football Club, and Chelsea Football Club.
Whilst the Opponent describes the reputation of the SAMBA Mark in the sporting industry as ‘independent and substantial’, the Opponent’s sales reports and advertising expenditure are not reflective of a reputation amongst a substantial or significant number of persons in the relevant market. Although the SAMBA Mark has been used in Australia for at least 7 years before the Relevant Date, both the Samba Group’s marketing expenditure and marketing activities in Australia have been limited. Furthermore, the Opponent’s sales reports do not provide a total of the revenue accrued from goods sold bearing the SAMBA Mark. This information is not necessarily determinative to the question of reputation, but it does make it difficult to determine the extent of any reputation that may have developed from the use of the SAMBA Mark. I can infer from sales reports provided by the Opponent that use of the SAMBA Mark has generated a level of recognition amongst the Samba Group’s customers in connection with portable soccer/football goals. However, given the modest social media presence and promotion of the SAMBA Mark that has taken place, I am not satisfied that the SAMBA Mark has established a reputation amongst a significant or substantial number of people in the relevant market.
As the evidence is not sufficient to establish that the Opponent had a reputation in a trade mark in Australia, the ground of opposition under section 60 has not been established.
Section 42(b)
Section 42(b) relevantly provides:
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
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.
In order 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.[29]
[29] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Australian Consumer Law
Section 18 of the ACL requires there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Goods and Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. 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.[30] The requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[31]
[30] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
[31] 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).
For the reasons outlined in relation to the section 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 goods or services into believing that the Trade Mark and the SAMBA Mark are related.
Passing Off
Where a trade mark does not contravene section 18 of the ACL, it is unlikely to amount to passing off.[32] Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 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: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18.[33]
[32] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).
[33] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40] (French J).
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.
In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
‘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.[34]
[34] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).
Whether the application to register the Trade Mark was made in bad faith requires me 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.[35]
[35] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164]-[167] (Dodds-Streeton J).
The Opponent submits that the Applicant’s lack of intention to use the Trade Mark, its awareness of the SAMBA Mark, and its failure to file evidence of use of the Trade Mark in good faith indicate that the Applicant’s behaviour fell short of acceptable commercial standards.
I have previously addressed the alleged lack of intention to use the Trade Mark in relation to the section 59 ground of opposition. A lack of intention to use the Trade Mark may be a relevant factor or otherwise provide context to the Applicant’s behaviour, but ultimately it remains a question of whether the Applicant’s decision to apply for registration of the Trade Mark would be regarded as in bad faith by persons adopting proper commercial standards.
Given my conclusions regarding the alleged lack of intention to use the Trade Mark discussed in relation to the section 59 ground of opposition, I do not consider it conclusive that the Applicant had no intention of using the Trade Mark in relation to the Applicant’s Goods.
Turning to the other factors raised by the Opponent, I note that mere awareness of another trade mark does not constitute bad faith, nor is the Applicant required to file evidence of use of the Trade Mark in good faith in response to an allegation of bad faith.
The Opponent also emphasized that the Applicant was in the process of preparing and sending a cease and desist letter to the Opponent and has made allegations of trade mark infringement. However, since this correspondence was not included in the Opponent’s evidence, there is no basis for me to draw any conclusions from the Applicant’s alleged communications.
As there are no other aspects of the Opponent’s evidence that point to any activity or actions 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.
Decision
Section 55(1) of the Act 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.
The Opponent has established a ground of opposition under section 58 in respect of some of the Applicant’s Goods. Accordingly, I wrote to the Applicant on 25 September 2023 advising the Applicant that I intended to refuse to register the Trade Mark unless the Applicant agreed to amend the Applicant’s Goods as follows:
Class 28:
Apparatus for use in outdoor sporting activities; Bags adapted for sporting articles; Bats (sporting articles);Protective covers for sporting articles; Sporting apparatus; Balls for playing sports; Nets for sports; none of the aforementioned goods being for soccerThe Applicant did not respond to the request to amend the Applicant’s Goods. Accordingly, the Opponent has established a ground for refusal under s 58 of the Act and I refuse to register trade mark application number 2187387.
Costs
The Opponent sought an award of costs. As the Opponent has been successful in the opposition, I award costs against the Applicant under s 221 of the Act in accordance with Schedule 8 of the Regulations.
Timothy Brown
Hearing Officer
Delegate of the Registrar of Trade Marks
5 October 2023
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