StockX LLC v GEO Industries Pty Ltd

[2023] ATMO 129

TRADE MARKS ACT 1995

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

Re:Opposition by StockX LLC to registration of trade mark application number 2041161 (classes 9, 35) - StockX - in the name of GEO Industries Pty Ltd

Delegate:

Katrina Brown

Representation:

Opponent: Chelsea Peters & Daniel Wilson of Spruson & Ferguson

Applicant: Not represented

Decision:

2023 ATMO 129

Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42(b), 58, 59, 60 & 62A – s 62A established – registration refused.

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by StockX LLC (‘Opponent’) to registration of the following trade mark:

Trade mark no:  2041161

Trade mark:  StockX (‘Trade Mark’)

Applicant:  GEO Industries Pty Ltd (‘Applicant’)

Filing date:  2 October 2019

Specification:  Class 9 - Downloadable computer application software and mobile application software allowing users to search for, find, research, analyse, compare, purchase, and sell goods and services in the field of fashion, including but not limited to clothing, shoes, belts, watches, jewellery, bags and accessories via the internet, global computer communication networks, and wireless telecommunications networks; downloadable application software for computer systems and mobile phones that enable customers to search an online database in the field of fashion, including but not limited to clothing, shoes, belts, watches, jewellery, bags and accessories, and to sell or purchase consumer goods and view product information

Class 35 - Retailing of goods and services in the field of fashion, including but not limited to clothing, shoes, belts, watches, jewellery, bags and accessories via internet websites

(‘Applicant’s Goods and Services’)

1. The trade mark application was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 7 June 2021.

2. The Opponent filed a Notice on Intention to Oppose on 5 August 2021, followed by a Statement of Grounds and Particulars (‘SGP’) on 3 September 2021.

3. The Applicant filed a Notice of Intention to Defend (‘NID’) on 19 November 2021.

4. The Opponent filed the following declaration as evidence in this opposition:

• Declaration of Laura Lewis (General Counsel of Opponent) made on 20 February 2022 with Exhibits 1 to 15 (‘Lewis Declaration’).

1. The Applicant did not file any evidence in this opposition.

2. Once the time allowed for filing evidence ended, the Opponent requested a hearing by way of written submissions. Written submissions were made by Chelsea Peters and Daniel Wilson of Spruson and Ferguson on behalf of the Opponent. The Applicant did not file written submissions.

3. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [5], and [7] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent particularised grounds of opposition under ss 42(b), 58, 59, 60 and 62A of the Act.

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] In the event that the Opponent establishes one of the grounds in relation to all the Applicant’s Goods and Services, there is no requirement for me to consider the other grounds of opposition.

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

3. The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

4. The date at which the rights of the parties are to be determined is 2 October 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

The Opponent

1. The Opponent operates an online marketplace, connecting sellers and buyers of various types of merchandise including clothes, shoes and watches, under or by reference to the trade mark ‘StockX’ and the following stylised representations (collectively ‘Opponent’s Trade Marks’):

1. The Opponent provides its online marketplace via the website ‘stockx.com’ (‘Opponent’s Website’) and through a mobile application. Exhibit 6 to the Lewis Declaration, provides the number of visitors to the Opponent’s Website and to the mobile application from Australia. From 2017 to 2019, there was more than 11 million visitors from Australia.

2. The annual revenue generated under or by reference to the Opponent’s Trade Marks has been provided for each of the years between 2018 and 2021. The revenue specific to Australia is significant including in 2018 to 2019 which is before, or at the Relevant Date. The worldwide revenue for the same period is substantial.

3. In addition to the Opponent’s Website and mobile application, the Opponent’s Trade Marks are promoted in Australia via online and mainstream print media. Exhibits 9(a) and 9(b) to the Lewis Declaration provide examples of such promotion including from media outlets such as 9 News, the Australian Financial Review and the Sydney Morning Herald. Additionally, the Opponent’s Trade Marks are also promoted via social media platforms such as Facebook, Instagram, and Twitter.

The Applicant

1. The Applicant has not involved itself in this opposition, beyond filing the NID. As such, I do not have any insight into the Applicant, or its business, other than what has been provided in the Opponent’s evidence.

2. Exhibit 14 to the Lewis Declaration consists of extracts from the Australian Trade Mark Search database. These extracts show that before the Relevant Date the Applicant had applied to register various trade marks in Australia including:

Trade mark number	Trade mark	Class/es
1605216	H&M	3, 4, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 32, 35
1605217	H&M	43, 44
1605218	9, 16, 35, 43
1605219	H&M Hennes & Mauritz	9, 16, 35
1605220	9, 16, 35
1646052	9, 14, 38
1646053	9, 36, 45
1646054	TESLA	35
1646079	Apple Watch	9, 14, 38
1646602	UBER	9, 35, 38
1848468	ALEXA CHUNG	9, 25
1849171	ALEXA CHUNG	14, 18

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. The phrase ‘bad faith’ is not defined in the Act. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) (‘Explanatory Memorandum’) provides the following examples of bad faith which have been characterised as ‘manifestations of blocking or holding to ransom the party which is, at least in conscience, entitled to a mark’[3]:

• a person who monitors new property developments; registers the name of the new property development as a trade mark for a number of services; and then threatens the property developer with trade mark infringement unless they licence or buy the trade mark;

• a pattern of registering trade marks that are deliberate misspellings of other registered trade marks; and

• business people who identify a trade mark overseas which has no market penetration in Australia, and then register that trade mark with no intention to use it in the Australian market and for the express purpose of selling the mark to the overseas owner.

  [3] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [163] (Dodds-Streeton J) (‘Fry Consulting’).

1. In the context of s 62A bad faith does not require dishonesty or fraud, ‘it is a wider notion, potentially applicable to diverse species of conduct’.[4] In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   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.[5]

   [4] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [63] (Bennett J).

   [5] Ibid [62].

2. Justice Bennett also acknowledged that conduct that is ‘exploitative and designed to acquire a springboard or advantage’ can amount to conduct that falls short of acceptable commercial standards.[6] Most recently in Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods, Kennett J observed:

   Clearly, also, opportunistic registration of a trade mark in an attempt to profit from someone else’s intellectual property or the work done by another business to build its reputation, or to gain a windfall from the sale or licencing of the mark, at least suggests bad faith.[7]

   [6] Ibid [66].

   [7] [2023] FCA 487, [74].

3. The Opponent asserts that the application to register the Trade Mark was made in bad faith because it was designed to take advantage of the goodwill in the Opponent’s Trade Marks and the Applicant has a history of applying for the well-known trade marks of others.

4. It is evident from the Lewis Declaration that, at the Relevant Date, the Opponent’s online marketplace and the Opponent’s Trade Marks had significant exposure worldwide, including in Australia.

5. As the Applicant has not involved itself in this matter beyond filing a Notice of Intention to Defend, it has not confirmed or denied whether it was aware of the Opponent’s marketplace or the Opponent’s Trade Marks at the Relevant Date. Nonetheless, given that ‘StockX’ is unique and otherwise distinctive, the likelihood of two parties thinking of it independently strikes me as rather remote.

6. At this point it is convenient to acknowledge that mere awareness is not of itself sufficient to establish bad faith. That approach is unduly absolute.[8]

   [8] Fry Consulting (n 3) [167].

7. In this matter there are other circumstances which support bad faith namely that the Applicant has a history of applying to register well-known trade marks. As set out in [18] of this decision, the Applicant has applied to register UBER, TESLA, H&M, and APPLE composite marks. I consider it uncontroversial that these brands are well-known. This is supported by Exhibit 15 to the Lewis Declaration which lists each of the four brands as being in the ‘Top 500 Global Brands’ for 2019.

8. The Applicant has provided no explanation for its conduct in applying for these well-known trade marks. In the absence of an explanation, the information before me is consistent with a pattern of behaviour designed to exploit the goodwill of well-known trade marks for its own advantage. Additionally, it is behaviour which has the characteristics of the examples of bad faith provided in the Explanatory Memorandum.

9. In my opinion, the Applicant’s actions cast significant doubt on the bona fides of its intentions in filing the application for the Trade Mark. Given the Applicant’s history of applying for trade marks which it arguably does not own, or apparently have permission to use, I am satisfied that the Applicant’s conduct in filing the application for the Trade Mark was exploitative, designed to acquire a springboard or advantage, and would be regarded as in bad faith by persons adopting proper standards.

10. Accordingly, the ground of opposition under s 62A of the Act has been established.

Decision

1. Section 55 of the Act relevantly 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.

2. The Opponent has established the ground of opposition under s 62A of the Act. Consequently, I refuse to register trade mark number 2041161.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Applicant in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

31 August 2023