Simon Dodd v Eden RS Pty Ltd - [2025] ATMO 129

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Simon Dodd to registration of trade mark application 2365549 (36) – EDEN (Figurative) – in the name of Eden RS Pty Ltd

Delegate: Nicholas Smith

Representation: Opponent: Self-represented
Applicant: Self-represented

Decision: 2025 ATMO 129
Trade Marks Act 1995 (Cth) - section 52 opposition: s 62A considered and established – registration refused
Background

This decision concerns an opposition brought by Simon Dodd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Eden RS Pty Ltd (‘Applicant’):

Application Number:

2365549

Filing Date:[1]

28 June 2023

Services:

Class 36: Real estate agencies

(‘Applicant’s Services’)

Trade Mark:

(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 11 January 2024. The SGP raised grounds of opposition under ss 58, 62(b) and 62A. The Applicant filed a Notice of Intention to Defend on 25 January 2024.
Evidence
The parties filed the following evidence in this matter:

Declarant and Position

Date

Annexures or Exhibits

Evidence in support

Simon John Dodd, Chairman/Treasurer SP72648 Owners Corporation (‘Dodd declaration’)

24 April 2024

1 to 5

Evidence in answer

Yanfei Liu, Director of the Applicant and Principal of Zhou Property Management Pty Ltd ATF Zhou Family Trust

8 July 2024

1-5

Evidence in reply

N/A

Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 2 September 2024 the Opponent requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 18 February 2024. In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 9 February 2024 (‘Applicant’s Submissions’). The Opponent did not file any submissions.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Simon Dodd v Eden RS Pty Ltd

Details

AGLC: Simon Dodd v Eden RS Pty Ltd [2025] ATMO 129
Case: [2025] ATMO 129
Decision Date: 1 July 2025

CaseChat Overview and Summary

This matter concerned an opposition to the registration of a trade mark by Simon Dodd (the Opponent) against Eden RS Pty Ltd (the Applicant). The dispute arose from the Applicant's application to register a logo that the Opponent claimed was created by Meriton Group in 2003 for use in relation to a residential complex known as Eden at 6-10 Romsey St Waitara NSW. The Opponent, appointed by the SP72648 Owners Corporation, alleged that the Applicant, whose director was the building manager of the property, had been using the logo for its own real estate business without the Owners Corporation's approval and had misrepresented itself as the creator of the logo in its application. The decision was made by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the grounds of opposition raised under sections 58, 62(b), and 62A of the relevant legislation had been established. Specifically, the delegate had to determine if the Applicant's conduct fell short of acceptable commercial behaviour, as contemplated by section 62A, and if any other grounds of opposition were proven. The delegate was required to decide whether to refuse or register the trade mark, taking into account the evidence and submissions presented.

The delegate found that the Opponent had established the ground of opposition under section 62A. The reasoning was that the Applicant's use of the logo, for which it was informed it held no copyright and had done so beyond any implied licence, created an inference of connection or association with the property. This conduct was deemed to fall short of the standards of acceptable commercial behaviour expected of reasonable and experienced persons. Consequently, the delegate refused to register the trade mark. The Applicant was ordered to pay the Opponent's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 11 January 2024. The SGP raised grounds of opposition under ss 58, 62(b) and 62A. The Applicant filed a Notice of Intention to Defend on 25 January 2024. Evidence The parties filed the following evidence in this matter: Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 2 September 2024 the Opponent requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 18 February 2024. In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 9 February 2024 (‘Applicant’s Submissions’). The Opponent did not file any submissions. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.The Opponent The Opponent is an individual who is the chairman and treasurer of SP72648 Owners Corporation of 6-10 Romsey St Waitara NSW 2077. In his evidence he states that he has been appointed by the Strata committee to lodge the objection on behalf of the Owners Corporation. Notwithstanding any arrangement between the Opponent and SP72648 Owners Corporation, the Opponent in this matter is Mr Dodd. The relevant claims/statements in the Dodd declaration can be summarised as follows:· The logo that comprises the Trade Mark (‘Logo’) was created by Meriton Group in 2003 for use in the marketing, sales, construction and as a building logo of the residential complex known as Eden at 6-10 Romsey St Waitara NSW (the ‘Property’). The Meriton Group was the developer of the Property. The Logo has been in continuous use since then. · The Property’s building manager is the director of the Applicant, and by co-incidence in 2023 the declarant became aware that the Applicant was using the Logo for its own real estate business including in other locations without the approval of the SP72648 Owners Corporation. Following being made aware of the concerns about this use of a logo not owned by it, the Applicant applied to register the Logo as a trade mark. · In making the application to register the Trade Mark, the Applicant has described itself as the designer/creator of the Logo, however the Logo was designed by Meriton for the Property in 2003.

Decision

Reasons for decision

Furthermore, any use of the Trade Mark would, and undoubtedly has, created the inference that the Applicant is connected or associated in some way with the Property, regardless of whether this is the case going forward. The Applicant is seeking to register as a Trade Mark a logo for which it has been informed that it holds no copyright, after having used the Logo for a period of time and for purposes well beyond any implied licence it may have initially been granted to use the Logo. I am satisfied that the Applicant’s conduct falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.[8] I find that the Opponent has established the ground of opposition under s 62A.[8] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].Decision and Costs I have found the Opponent has established the ground of opposition it raised pursuant to s 62A. As the delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks1 July 2025

Ratio Decidendi

Legal Principle Established

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Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: Self-represented
Decision:	2025 ATMO 129 Trade Marks Act 1995 (Cth) - section 52 opposition: s 62A considered and established – registration refused

Application Number:	2365549
Filing Date:[1]	28 June 2023
Services:	Class 36: Real estate agencies (‘Applicant’s Services’)
Trade Mark:	(‘Trade Mark’)

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Simon John Dodd, Chairman/Treasurer SP72648 Owners Corporation (‘Dodd declaration’)	24 April 2024	1 to 5
Evidence in answer
Yanfei Liu, Director of the Applicant and Principal of Zhou Property Management Pty Ltd ATF Zhou Family Trust	8 July 2024	1-5
Evidence in reply
N/A