Tamboran Resources Limited v Rallen Australia Pty Ltd
[2024] ATMO 193
•8 October 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Tamboran Resources Limited to registration of the trade mark the subject of application 2254660 (31, 42, 43, 44) – TANUMBIRINI STATION – in the name of Rallen Australia Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: Andrew Fox SC, instructed by Davies Collison Cave Pty Ltd
Applicant: Melissa Marcus of Counsel, instructed by Gadens Lawyers
Decision: 2024 ATMO 193
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b), 43, 58, 59 and 62A considered – whether the name of a cattle station is a geographical location – no ground established – trade mark may proceed to registration
Background
1. This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below (‘Application’). The Application is in the name of Rallen Australia Pty Ltd (‘Applicant’). The opposition was brought, pursuant to s 52 of the Trade Marks Act 1995 (Cth),[1] by Tamboran Resources Limited (‘Opponent’).
[1] Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.
Application Number:
2254660
Filing Date:
9 March 2022
Specification:
Class 31: (including) live animals; agricultural, horticultural and forestry products and grains
Class 42: (including) quality assessment, certification, verification and inspection of cattle to verify or certify breed type and purity
Class 43: (including) provision of hotel accommodation
Class 44: (including) livestock breeding services
The full specification of goods and services appears in the annexure to this decision.
(‘Applicant’s Goods and Services’)
Trade Mark:
TANUMBIRINI STATION
(‘Trade Mark’)
2. Following publication of the Application’s acceptance, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 41, 42(b), 43, 58, 59 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
3. The Opponent filed Evidence in Support of its opposition, being:
Declaration made on 11 April 2023 by Joel Riddle, the Managing Director and Chief Executive Officer of the Opponent, with Exhibits 1 to 22 (‘Riddle 1’).
4. The Applicant filed Evidence in Answer, being:
Declaration made on 14 July 2023 by Pierre Langenhoven, a Director of the Applicant, with Annexures PL-1 to PL-42 (‘Langenhoven 1). By correspondence dated 16 November 2023, the Applicant notified the Registrar that it did not rely on paragraph 17 of Langenhoven 1 and requested the paragraph be deleted. Accordingly, that paragraph does not form part of the evidence in this matter.
Declaration made on 18 July 2023 by Will Evans, the Chief Executive Officer on the Northern Territory Cattlemen’s Association; and
Declaration made on 19 July 2023 by Paul McCormick, the North Australian Livestock Manager of the Customer Solutions Team at Elders, with Annexure PM-1.
5. The Opponent filed Evidence in Reply, being:
Declaration made on 21 September 2023 by Joel Riddle with Exhibit 23.
6. Once the time allowed for filing evidence had ended both parties requested to be heard. A hearing was scheduled accordingly.
7. Prior to the hearing the Applicant filed a declaration made on 14 February 2024 by Pierre Langenhoven Annexure PL-1A (‘Langenhoven 2’). Regulation 21.15(4) gives the Registrar the power to ‘be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. Langenhoven 2 exhibited a copy of a contract (‘Contract of Sale’) which was referred to in Langenhoven 1 but which was not annexed to that declaration. The parties agreed that it was appropriate that the contract be before the Registrar in this matter. I concur. Accordingly, Langenhoven 2 forms part of the evidence in this matter.
8. I am a delegate of the Registrar of Trade Marks, and in this capacity, I heard the matter on 28 August 2024. Andrew Fox SC, instructed by Davies Collison Cave Pty Ltd, appeared on behalf of the Opponent. Melissa Marcus of Counsel, instructed by Gadens Lawyers, appeared on behalf of the Applicant. Counsels’ oral submissions were supplemented by written summaries of submissions filed prior to the hearing.
The Opponent
9. According to Riddle 1:
[The Opponent] is a public natural gas company …
[The Opponent], its subsidiaries and/or joint venture partners hold mineral and gas exploration permits in the Beetaloo sub-basin of the Northern Territory …
The Beetaloo sub-basin covers 28,000 km2 and includes the area historically known as Tanumbirini Station.
[The Opponent] was originally granted exploration permit EP 161 in 2012. This extends across the area now known as Tanumbirini Station … [The Opponent] is now a party to a joint venture agreement with Santos QNT Pty Ltd and Santos Ltd (collectively, ‘Santos’) …
EP 161 was issued prior to the acquisition by [the Applicant] of the Tanumbirini Station leasehold. …
[The Opponent’s] wholly owned subsidiary Sweetpea Petroleum Pty Limited also holds mineral exploration permit EP 136 which includes Tanumbirini Station …
The activities carried out and planned to be carried out by [the Opponent] and its subsidiaries … under the exploration permits include hydraulic fracture stimulation, which is sometimes referred to as ‘fracking’. [The Opponent’s] joint venture partner Santos has already engaged in exploration via wells in the permit area EP 161 in the Tanumbirini Station area … which are named:
a.‘Tanumbirini-1’. This well … was drilled by Santos in 2014, before [the Applicant] acquired the pastoral lease area known as Tanumbirini Station and before the filing date of the Application; and
b.‘Tanumbirini- 2H’ and ‘Tanumbirini-3H’. These wells were drilled in 2021, before the filing date of the Application.
The naming of the above wells is consistent with the usual well naming practices in the industry in which [the Opponent] operates. …
As part of its business activities, Santos refers to the names Tanumbirini Station and Tanumbirini as geographical names. …
The Opponent is the owner of the trade mark applications detailed below:
Application number:
2305174
Priority Date:
5 October 2022
Specification:
Class 4: (including) natural gas
Class 35: (including) administration of oil and gas leases
Class 37: (including) drilling of deep gas wells
Class 39: (including) distribution and transportation of energy, including gas
Class 40: (including) gas production, processing and treatment services
Class 42: (including) engineering, design and related consulting services in relation to the exploration, production, processing, treatment, refining, supply and distribution of energy and gas
The full specification appears in the annexure to this decision.
(‘Opponent’s goods and services’)
Trade Mark:
TANUMBIRINI
Application number:
2305175
Priority Date:
5 October 2022
Specification:
Opponent’s Goods and Services
Trade Mark:
TANUMBIRINI STATION
The Applicant
According to the Langenhoven declaration:
[The Applicant’s] primary business and focus has been the cattle industry in the Northern Territory. …
On 17 January 2020 [the Applicant] purchased the cattle station named TANUMBIRINI STATION …
[The Applicant] purchased the TANUMBIRINI STATION property together with the Forrest Hill Station property …
[The Applicant] acquired the right, title and interest in the TANUMBIRINI STATION trade mark when it purchased TANUMBIRINI STATION (together with Forrest Hill Station) …
In Australia, land that is subject to a pastoral lease is owned by the government (Crown) and leased to a private individual or company for pastoral purposes. …
A pastoral lease provides the lessee with the exclusive right to conduct activities associated with pastoralism, including raising livestock and developing the infrastructure necessary for pastoralism. …
[The Applicant] is the sole owner of the Northern Territory Perpetual Lease 01060 for NT Portion 701 for the property named TANUMBIRINI. [The lease] has no end date because it is ‘perpetual’. …
TANUMBIRINI STATION is the name and trade mark used by [the Applicant] for its well-known cattle station in the Northern Territory, and the trade mark used in relation to [the Applicant’s Goods and Services]. …
The cattle station named TANUMBIRINI STATION was first established circa 1893. …
Prior to [the Applicant] purchasing TANUMBIRINI STATION, the previous owners of the cattle station have continually used TANUMBIRINI STATION as the name and trade mark for the cattle station, including in relation to cattle, livestock and related livestock breeding and rearing services.
Grounds of Opposition, Onus and Standard of Proof
At the hearing the Opponent pressed grounds of opposition under ss 41, 42(b), 43, 58, 59 and 62A. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 9 March 2022, being the filing date of the application (‘Relevant Date’).[4]
Consideration of Grounds of Opposition
[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 Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 41 - Trade mark not distinguishing applicant’s goods or services
The s 41 ground of opposition was particularised in the SGP as follows:
The Applicant is a pastoral lease holder and seeks protection for the Trade Mark in relation to goods and/or services that other traders actuated only by proper motives have used, would use and/or could need to use in the future to accurately refer to, describe and/or reference their own similar goods and/or services. Accordingly, the Trade Mark lacks the requisite inherent adaption to distinguish the Applicant's goods and/or services for which protection is sought from those of other traders and should be refused registration.
Section 41 provides:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd, Lord Parker of Waddington said:
The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[5]
[5] (1913) AC 624, 634-5 (‘Du Cros’).
In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:
[W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[6]
[6] (1964) 111 CLR 511, 514.
The basis of the Opponent’s s 41 case is that TANUMBIRINI STATION is a place name (has a geographical signification) which other traders are likely to wish to use. There are several cases which have dealt with the distinctiveness of signs which have a geographical signification. Clark Equipment is often cited in this regard. The words of Kitto J, quoted above, were made in the context of the word ‘Michigan’—a state of the United States of America—which the applicant in that case sought, unsuccessfully, to register in connection with earth‑moving equipment and the like. Kitto J continued after the passage above to state:
The fact that this is the test is the basic reason for the frequent refusal … to register as a trade mark a word of prima facie geographical signification. It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as ‘North Pole’ in connexion with bananas, or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. …
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant's goods; there is necessarily great difficulty in proving that by reason of use or other circumstances it does in fact distinguish his goods; and even where that difficulty is overcome there remains the virtual if not complete impossibility of satisfying the Registrar or the Court that the effect of granting registration will not be to deny the word to a person who is likely to want to use it, legitimately, in connexion with his goods for the sake of the geographical reference which it is inherently adapted to make.[7]
[7] Ibid [6]-[7] (citations omitted).
After referring to a number of earlier United Kingdom authorities, Kitto J continued:
[T]here is a category of words which are so adapted for descriptive purposes that no amount of acquired distinctiveness can justify their registration, and that among such words are the names of large and important industrial towns or districts, and also of smaller towns and districts if they are a seat of manufacture of the goods for which registration is sought.[8]
[8] Ibid [7].
In another case frequently referred to in respect of signs with geographical significations, Gummow J stated:
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.[9]
[9] Chancellor, Masters and Scholars of the University of Oxford v the Registrar of Trade Marks [1990] FCA 175, [41].
In Cantarella Bros v Modena Trading (‘Cantarella’)[10] the High Court indicated that the test for distinctiveness is a two-step process. The first step being to determine the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the goods. The second step, having determined the ordinary signification, being to ask the question of whether other traders might legitimately need to use the word in respect of their goods. In the joint judgement at [31]–[34] some historical matters were considered including the Trade Marks Act 1905 (UK). Section 16(1)(d) of that Act relevantly provided that a registrable trade mark must consist of, amongst other things, ‘A word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname’. The majority in Cantarella explicitly stated, at [71], that the consideration of ordinary signification of a sign is crucial including in situations where it is alleged not to be registrable because the sign is a geographical name.
[10] [2014] HCA 48.
The Opponent submitted:
Tanumbirini and Tanumbirini Station have been extensively used since the 19th century to identify a geographical location, including in government documents, Court decisions and the media. …
The ordinary signification of [the Trade Mark] is plainly of a geographical location. That is entirely consistent with the historical use of the term since the 19th century. …
[The Applicant’s Goods and Services] relate to cattle, agriculture, food service and accommodation. They are self-evidently all the sorts of goods and services that may potentially be provided from any pastoral region. Persons who purchase, consume and trade in food-related goods must be regarded as ‘virtually the entire Australian population’: see Le Cordon Bleu BV v Cordon Bleu International Ltee (2001) 50 IPR 1 at [91]. The Applicant claims to provide cattle, livestock and related livestock breeding and rearing services from the area. … [Langenhoven 1] demonstrates that the goods and services of the Application are clearly capable of being provided from the Tanumbirini / Tanumbirini Station area.
Accordingly, [the Trade Mark] is directly descriptive of the characteristics of the goods and services of the Application, as it refers to the geographical place where those goods and services are offered or capable of being offered. It is therefore a word/phrase that other traders acting honestly would want to use to describe their own goods and services with the same characteristics, and is not to any extent adapted to distinguish [the Applicant’s Goods and Services].
The Nature of a Pastoral Lease
While the land that is the subject of pastoral leasehold is owned by the Commonwealth, in the Northern Territory, pastoral leases are issued under the Pastoral Land Act 1992 (NT) (‘PLA’). Annexure PL-6 to the Langenhoven declaration is declared to be ‘a copy of the Northern Territory Perpetual Pastoral Lease 01060 for NT Portion 701 displaying the registered “property name” as “TANUMBIRINI”’. The lease document indicates that the lease is subject to the conditions and reservations set out in ss 38 and 39 of the PLA. Section 38 deals with matters such as: reservation of a right of entry and inspection in favour of the relevant Minister etc; reservation to the Northern Territory of all minerals and all petroleum; the payment of rent; reservation of timber; and, reservation in favour of the Aboriginal inhabitants of the Northern Territory. Section 39 deals with matters relating to land management such as conservation of features of environmental and cultural significance.
A pastoral lease is granted for pastoral purposes—which is defined in s 3 of the PLA as:
the pasturing of stock for sustainable commercial use of the land on which they are pastured or agricultural or other non- dominant uses essential to, carried out in conjunction with, or inseparable from, the pastoral enterprise, including the production of agricultural products for use in stock feeding and pastoral based tourist activities such as farm holidays, but does not include a use which, under section 91, is declared by the Board not to be a use for pastoral purposes.
In addition to using the land for pastoral purposes, Part 7 of the PLA provides for non-pastoral use by the pastoral lessee of the land on the issuance of an appropriate permit.
Tanumbirini
It is apparent from the evidence that ‘Tanumbirini’ forms part of the names ‘Tanumbirini Creek’, ‘Tanumbirini Waterhole’, ‘Old Tanumbirini’, ‘Tanumbirini Pastoral Lease’ and ‘Tanumbirini Station’. The creek, waterhole and ‘Old Tanumbirini’ lie within the Tanumbirini Pastoral Lease. Tanumbirini has been the name of the pastoral lease since the 19th century. TANUMBIRINI STATION was the name given to the cattle station which occupies the pastoral lease by, it appears, the original lessee. This name has been used by subsequent lessees. It is not clear which came first, Tanumbirini Creek, Tanumbirini Waterhole and Old Tanumbirini or the pastoral lease; however, it is declared in Riddle 1 that ‘I apprehend from my experience of Australian place names that Tanumbirini must be a place name adopted by the Kotandji people, or otherwise that Tanumbirini Station is named after the creek or waterhole of the same name’. In the end, nothing seems to turn on the answer to this question.
The Applicant submitted that the Trade Mark is not a geographical name in the sense contemplated in the authorities discussed above. Specifically:
[The Trade Mark] is not the name of a town, suburb or municipality. [The Trade Mark] is the name and brand used in relation to a large cattle station and the goods and services provided under and by reference to that brand. It is not a name that is part of the common heritage and is not a mark that other traders would desire to use in relation to goods and services the same or similar to [the Applicant’s Goods and Services].
The situation before the Registrar’s Delegate is analogous with the scenario the Full Court considered in MID Sydney Pty Ltd v Australian Tourism Co Ltd. [11] In that case the Full Court considered that CHIFLEY TOWER, the name of a privately owned commercial building in Sydney, was prima facie distinctive for ‘property management services, retail and office leasing services’. The Court stated:
We rather doubt that any indication is to be found in the judgement of Kitto J in Clark Equipment that he would have regarded a large privately owned office building as analogous to a large and important industrial town or district or to a smaller town or district which is a seat of manufacture of goods of a particular kind. … The Chifley Tower is not part of the common heritage in the sense that a town, suburb or municipality is.
The approach adopted by the Full Court in MID Sydney was followed in Mantra IP Pty Ltd v Spagnuolo[12] where Reeves J considered whether the mark ‘Q1’ was distinctive. Q1 was the name of a Gold Coast high-rise building that contained a mix of retail premises and residential apartments. Reflecting on the decision in MID Sydney, Reeves J stated:
Thus, it is apparent from what the Full Court said (above) in MID Sydney that a sign concurrently applied as the name of a privately owned building and to distinguish certain services to be provided from, or in relation to, that building, does not lose its inherent adaptability to distinguish the services concerned. The Full Court appears to have reached that conclusion because the name of a privately owned building cannot be regarded as being the equivalent of a geographical place name such that it is to be considered as part of the ‘common heritage’ over which the public, including a competitor trading in, or near, the building can claim to have a public right to make honest use of that sign in relation to is goods or services.[13] …
[The Trade Mark] is the name of a privately owned extremely large cattle station in the Northern Territory. No other individual or entity can breed, raise or produce cattle at the station called Tanumbirini Station other than [the Applicant] as exclusive licensee under Pastoral Lease 01060. Being the name of a single (albeit large) cattle station, other traders are not going to desire to use [the Trade Mark] in relation to the same or similar goods and services as [the Applicant’s Goods and Services]. …
[11] (1998) 90 FCR 236, 250–1.
[12] [2012] FCA 769.
[13] Ibid [59].
For the reasons submitted by the Applicant, I am inclined to the Applicant’s view that the Trade Mark is not a geographical location in the sense contemplated by Kitto J. Consequently, I am not satisfied that the Trade Mark is not capable of distinguishing the Applicant’s Goods and Services from the goods and services of other traders. This ground of opposition is not established.
Section 42(b) - Trade mark use contrary to law
The ground of opposition pursuant to s 42 was particularised in the SGP as follows:
Absent any condition or endorsement in relation to the wide range of goods and/or services for which the Applicant seeks a monopoly, the use and registration of the Trade Mark in relation to these goods and/or services is inherently misleading and deceptive to consumers as the Trade Mark indicates that these goods and/or services possess a heritage and/or originate or emanate from a specific geographic location in Australia where they could in fact originate or emanate from a different location in Australia. Accordingly, registration of the Trade Mark in the classes sought would permit the Applicant to engage in conduct in trade or commerce that is likely to:
(a)mislead or deceive Australian consumers into believing that goods and/or services offered under or by reference to the Trade Mark possess a heritage and/or originate or emanate from a specific geographic location where they could in fact originate or emanate from a different location in Australia, in contravention of section 18(1) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (the ‘ACL’).
(b)misrepresent to Australian consumers that the goods and/or services offered under or by reference to the Trade Mark possess a heritage and /or originate or emanate from a specific geographic location in Australia where they could in fact originate or emanate from a different location in Australia, when this is not the case, in contravention of sections 29(1)(a) on (k) of the ACL.
The relevant provisions of s 42 are reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[14] The relevant time for assessing whether the use of the Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[15]
[14] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[15] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
It is apparent from the particulars in the SGP that the Opponent is relying on an assertion that use of the Trade Mark could be contrary to law, rather than would be—that the Applicant’s Goods and Services ‘could in fact originate or emanate from a different location’ (emphasis added). For this ground to be made out for the reasons asserted by the Opponent I would need to be satisfied that, firstly, the Trade Mark indicates a geographical location, and secondly, that the Applicant’s Goods and Services would originate from other than that geographical location. I have found, above, that the Trade Mark does not indicate a geographical location in the sense pertinent to Trade Mark law—which is sufficient for this ground to fail. Further, there are no submissions or evidence before me that the Applicant’s Goods and Services would originate from other than Tanumbirini Station—which , if the Trade Mark did indicate a geographical location, would also be sufficient for this ground to fail. I am, therefore, not satisfied that this ground of opposition is established.
Section 43 - Trade mark likely to deceive or cause confusion
This ground of opposition was particularised in the SGP as follows:
The Trade Mark connotes that the goods and/or services for which the Applicant seeks registration possess a heritage and/or originate or emanate from a specific geographic location in Australia. However, the broad scope of protection sought permits use of the Trade Mark on goods and/or services that do not in fact originate or emanate from that geographic location. Accordingly, use of the Trade Mark is inherently likely to deceive or cause confusion.
Section 43 provides:
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
This ground of opposition suffers from a similar shortcoming to the s 42(b) ground of opposition, discussed above, in that it relies on the premise that the Trade Mark connotes a geographical location. I found in respect of the s 41 ground that it does not. For this reason, this ground of opposition is not established.
Section 58 – Applicant not owner of trade mark
The ground based on s 58 was particularised in the SGP as follows:
The Applicant’s claim to proprietorship of the Trade Mark subject of the Application is false. The Applicant is a pastoral lease holder and was not the first to devise or use the Trade Mark in Australia. The Trade Mark was first used at least as early as 1908 and certainly prior to the Applicant's 9 March 2022 application date in relation to identical or similar goods or services for which the Application seeks protection.
Section 58 is reproduced below:
Section 58 - Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
The owner of a trade mark for particular good/services is the person who first used it in Australia, or the person who first filed an application to register the trade mark in Australia, whichever is the earlier. It is now well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
· that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;[16]
· that the Applicant’s Goods and Services are the ‘same kind of thing’ as the goods and services for which the trade mark(s) relied upon by the Opponent was used;[17] and
· that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use which is prior to the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant.[18]
[16] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).
[17] Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd, à Beckett and Hood JJ).
[18] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).
The Opponent has not pointed to any earlier registration or application to register a trade mark to support this ground of opposition; therefore, the Opponent must establish that another person used the Trade Mark before the Applicant in respect of the Applicant’s Goods and Services. Such ‘use’ means use as a trade mark. Section 7 deals with use of a trade mark and provides that use of a trade mark in relation to goods/services means ‘use of the trade mark upon, or in physical or other relation to’ the goods/services. Section 17 defines a trade mark to be ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. It follows from those definitions that the simple use of a sign, in this case TANUMBIRINI STATION, to refer to a cattle station does not, necessarily, constitute use of that sign as a trade mark. Neither is it sufficient to simply establish that, for example, cattle were raised on TANUMBIRINI STATION and then sent to market, or that a progeny testing service was carried out on the station; establishing such, alone, does not establish that TANUMBIRINI STATION was used as a trade mark upon, or in physical or other relation to those goods and services.
The Opponent has provided a history of the TANUMBIRINI pastoral lease and TANUMBIRINI STATION. According to Riddle 1, the history includes the following:
·TANUMBIRINI or TANUMBIRINI STATION has been a place name since the 19th Century;
·TANUMBIRINI has been the name of a pastoral lease since the 19th century;
·In 2002 the pastoral lease was acquired by Henry and Maria Townsend;
·In 2007 the pastoral lease was acquired by Baldy Bay Pty Ltd;
·In 2012 the pastoral lease was acquired by Thames Pastoral Company;
·There were a number of other leaseholders dating back to at least 1963.
It is declared in Riddle 1 that, ‘I am aware … that various Australian government and ancillary documentation have continued to refer to Tanumbirini or Tanumbirini Station as the geographical name of the relevant area for decades’. The examples provided in the declaration are simply references to the station or pastoral lease; however, one example deserves particular mention. There is an extract in evidence from the Northern Standard (Darwin, NT), dated 23 August 1932, it reads, ‘Mr Haybull is manager of Henbury and Todmonton, SA, and was up here inspecting MacArthur and Tanumbirini bullocks and cows’. This is as close as the historical evidence gets to use of TANUMBIRINI as a trade mark. It is noted here that the Opponent submitted in relation the s 62A ground of opposition that:
In more than a century of operation of the pastoral lease, no previous lease holders had sought registration of [the Trade Mark], nor is there any evidence they (or the Applicant) have used [the Trade Mark] as a trade mark.
The Applicant submitted that ownership of the Trade Mark passed to it with its purchase of Tanumbirini Station. The Opponent disputed this assertion and made submissions regarding the wording of the Contract of Sale to support its view. It is my view that, in the end, this point is moot based on these submissions by the Applicant:
If the Registrar’s Delegate is not satisfied that the common law rights in [the Trade Mark] were assigned to [the Applicant] under the Contract of Sale, it can readily be inferred from the facts in this case that upon transfer of rights under the Pastoral Lease, earlier ‘owners’ of rights in [the Trade Mark] have been deliberately abandoned. …
[I]t is open to the Registrar to find that each of [the Applicant’s] predecessors to the Pastoral Lease intentionally abandoned their rights to the mark.
I find the Applicant’s submissions regarding abandonment persuasive. There is no evidence before me that any previous leaseholder is currently using or intends to use ‘Tanumbirini Station’ as a trade mark. This, combined with the dearth of evidence that ‘Tanumbirini Station’ was ever used as a trade mark prior to the Applicant acquiring the pastoral lease, means that I am not satisfied that a person other than the Applicant is the owner of the Trade Mark. This ground of opposition is therefore not established.
Section 59 – Applicant not intending to use trade mark
The ground based on s 59 was particularised in the SGP as follows:
The Applicant has sought registration of the Trade Mark for a wide range of goods and services including goods and/or services in relation to which it has no intention to use or authorise others to use.
Section 59 of the Act is reproduced below:
Applicant not intending to use trade mark
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.
As observed by Jacobson J, s 59 is a ‘difficult’ ground for an Opponent to establish because of
the subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent.[19]
[19] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [161].
Additionally, the onus of establishing the ground remains with the Opponent until it has established a prima facie case of the Applicant’s lack of intention, at which stage the onus moves to the Applicant for rebuttal.[20] The intention to use a trade mark must exist at the date of application,[21] consequently, it is incumbent upon the Opponent to establish that the Applicant did not intend to use the trade mark at the time of filing.
[20] Ibid [163].
[21] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [74] (Keane CJ, Stone and Jagot JJ).
The Opponent expanded on the particulars contained in the SGP in its submissions, as follows:
[T]here is no evidence that the Applicant intended to use [the Trade Mark] in Australia as a trade mark when the Application was filed.
The evidence is that [the Trade Mark] has been used to describe a geographic location since the 19th century, including by the Applicant and predecessor lessees … The Applicant has not filed any evidence that it has used, or uses, [the Trade Mark] for [the Applicant’s Goods and Services] as a trade mark at all, as outlined in paragraphs 42 to 49 [of the Opponent’s written submissions].
The above submissions of the Opponent, and those in paragraphs 42 to 49 of the Opponent’s written submissions, rely on an assertion that the Trade Mark describes a geographic location. I found in respect of the s 41 ground that it does not. The above submissions in respect of this ground are, therefore, not persuasive. The Opponent continued:
[I]f the Applicant … had intended to use the [Trade Mark] it can be inferred that the intention would have been manifested in actual use by now. The absence of such evidence plainly supports the contrary.
Rather, it appears the Application was filed in the context of the dispute between the Opponent and the Applicant … rather than with the intention of the Applicant to use [the Trade Mark].
The Applicant submitted in response:
[The Opponent] essentially seeks to reverse the onus of proof … [The Applicant] submits that [the Opponent] has not even reached first base. … The filing of the application is prima face evidence of intention to use and this, coupled with statements from Mr Langenhoven, are sufficient to overcome this ground of opposition.
There is no denying that [the Applicant] filed the application to register [the Trade Mark] in the midst of a dispute with [the Opponent]. … However, the subsequent filing of a trade mark application ought not suffice to shift the onus to [the Applicant].
Mr Langenhoven is very clear that the filing of the application to register [the Trade Mark] … was consistent with the actions of other owners of stations.
I agree with the Applicant that the Opponent has not established a prima facie case of the Applicant’s lack of intention to use the Trade Mark. Therefore, on the basis of the presumption of intention arising from the filing of the Application, I am not satisfied that Applicant lacked the requisite intention to use the Trade Mark. Consequently, this ground of opposition is not established.
Section 62A – Application made in bad faith
In the SGP the ground under s 62A was particularised as follows:
The Applicant has been engaged in a prolonged dispute with the Opponent in relation to the Opponent's business and activities. The Applicant was aware of the Opponent’s legal entitlements, activities and interest in and to the Trade Mark at the time of filing the Application. The Application represents the Applicant's attempt to position itself to secure trade mark rights to which it is not entitled and the Applicant’s behaviour falls short of a trader actuated by proper motives or acceptable commercial standards. Having been filed in bad faith, the Application should be refused registration.
Section 62A is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
- persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
- persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
- persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …
The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[22]
[22] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[23]
[23] Ibid [165]-[166].
The particulars in the SGP refer to ‘the Opponent’s legal entitlements, activities and interest in and to the Trade Mark at the time of filing the Application’ and that the Application ‘represents the Applicant's attempt to position itself to secure trade mark rights to which it is not entitled’. Other than reference to exploration sites which include the word ‘Tanumbirini’—such as Tanumbirini-1’—the Opponent filed no evidence to support a view that it has any entitlements or interests in the Trade Mark. It is apparent from the Opponent’s submissions that the focus of this ground is the ‘ongoing disputes between the parties’ and the ‘subjective knowledge of the Applicant when the Application was filed’. It is not necessary to provide details of that dispute here.
The Applicant submitted:
The suggestion that [the Applicant], having spent [a significant sum] to secure rights in a cattle station subject to a Pastoral Lease, being a station that has operated under the name Tanumbirini Station, and which has offered goods and services under and by reference to that mark, is engaging in conduct that falls short of acceptable commercial behaviour by filing [the Application] is extraordinary.
I am inclined to the Applicant’s view and am not satisfied that the filing of the Application in the context of the ongoing dispute between the parties amounts to bad faith. The dispute may well have been the trigger for the Application, however, filing an application to register as a trade mark the name of a station for which a person holds a pastoral lease is unlikely to be regarded as in bad faith by persons adopting proper standards. This ground of opposition is, therefore, not established.
Decision
Section 55 relevantly provides:
(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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade mark 2254660 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
Costs
The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
8 October 2024
Annexure
The Applicant’s Goods and Services
Class 31: Live animals; beef cattle; livestock including cattle; agricultural, horticultural and forestry products and grains; prepared foodstuffs for livestock; foodstuffs for animals and livestock; stockfeed; animal and livestock fattening preparations; straw forage; protein for animal consumption
Class 42: Quality assessment, certification, verification and inspection of cattle to verify or certify breed type and purity; scientific research services in the field of agriculture and horticulture; scientific research relating to genetics; veterinary, agricultural and agribusiness services in this class, namely progeny testing, sire proving, semen processing, analysing, screening and profiling genetics, animal selection and animal genetics
Class 43: Food and drink catering; hospitality services (food and drink); preparation of food and drink; providing food and drink; restaurant services; rental of rooms for social functions; hospitality services (accommodation); arranging hotel accommodation; booking of hotel accommodation; provision of hotel accommodation; reservation of hotel accommodation; arranging of temporary accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; providing temporary accommodation; hotel accommodation services; holiday camp services; holiday lodgings
Class 44: Livestock breeding services; livestock rearing and producing services; breeding of animals; rearing and fattening cattle; animal semen extraction; farming services; tracing services relating to the origin of meat, poultry, beef; genetic testing for medical purposes; veterinary, agricultural and agribusiness services in this class, namely insemination services, breeding and artificial breeding; provision of information, advisory and consultancy services in relation to the aforementioned services
The Opponent’s Goods and Services
Class 4: Natural gas; liquefied natural gas; petroleum gas; liquid petroleum gas; liquefied gas; oil-gas; hydrocarbon gas for use as fuel; compressed natural gas; coal bed gas; gas hydrates for use as fuel; shale gas; coal seam gas; natural gas condensates for use as fuel; liquefied natural gas; liquefied coal seam gas; hydrocarbon products being butane or propane or any other hydrocarbon gas or hydrocarbon fuel, all being for use as fuel
Class 35: Administration of oil and gas leases; business management and administrative services related to the operation of gas field installations; wholesaling and retailing of goods including those for fuel supply and energy products; wholesaling and retailing of energy and fuel; Wholesale and retail services in relation to energy and fuel supply systems and infrastructure; administrative and business management services related to the processing of gas to the distribution of gas; advertising services; promotion services; business management and business consultancy services; business project management services; business management consultancy services in relation to the provision of energy products including the provision of gas; business administration and business consulting services; office functions; marketing of exploration and field development services in the gas industry; information, support, assistance, consultancy and advisory services in relation to the aforementioned services
Class 37: Drilling; gas drilling; drilling of wells; rock drilling; boring of wells; drilling of deep gas wells; hydraulic fracturing services; fracking services; hydraulic fracturing services; gas well pumping; gas extraction services; building, installation, construction, maintenance, and repair services; building, installation, construction, maintenance, repair, supervision and bringing into operation of gas wells and gas fields; building, installation, construction, maintenance, and repair services relating to drilling and servicing of gas wells, gas infrastructure, machinery, plumbing, roads and access tracks; building, installation, construction, maintenance, and repair services relating to the supply and distribution of gas; building, installation, construction, maintenance, rental and repair services in relation to plant, apparatus, tools and equipment used in the production, generation, distribution, transportation and supply of gas; building, installation, construction, maintenance, and repair services in relation to gas pipelines; building, installation, construction, maintenance, and repair services in relation to gas products, gas production, gas storage and gas supply equipment and systems; building, installation, construction, maintenance, and repair services in relation to gas supply components; civil engineering (construction) services; mechanical engineering services (construction); civil construction services; underground civil construction and engineering (construction) services; building construction services including building construction supervision and project management services; information, support, assistance, consultancy and advisory services in relation to the aforementioned services
Class 39: Distribution and transportation of energy, including gas; supply of energy, including gas; gas reticulation services; gas distribution services; gas storage services; gas supplying; transportation, storage and delivery of natural gas liquids, natural gas and liquefied natural gas; information, support, assistance, consultancy and advisory services in relation to the aforementioned services
Class 40: Gas production, processing and treatment services; hydrocarbon production, processing and treatment services; natural gas production, processing and treatment services; natural gas liquid production, processing and treatment services; liquid natural gas production, processing and treatment services; coal seam gas production, processing and treatment services; petroleum gas production, processing and treatment services; liquid petroleum gas production, processing and treatment services; liquefied gas production, processing and treatment services; oil-gas production, processing and treatment services; hydrocarbon gas production, processing and treatment services; compressed natural gas production, processing and treatment services; coal bed gas production, processing and treatment services; gas hydrates production, processing and treatment services; shale gas production, processing and treatment services; coal seam gas production, processing and treatment services; natural gas condensates production, processing and treatment services; liquefied natural gas production, processing and treatment services; liquefied coal seam gas production, processing and treatment services; refining of gas; gas well treatment services; production and generation of energy; production and generation of gas; treatment of materials; processing and conversion of fuels and energy; technical advice in the fields of production and processing of gas; technical advice related to the manufacture of gas production equipment, control systems, and machinery; information, support, assistance, consultancy and advisory services in relation to the aforementioned services
Class 42: Engineering, design and related consulting services in relation to the exploration, production, processing, treatment, refining, supply and distribution of energy and gas; gas exploration and prospecting services; surveying and exploration services; analysis for gas exploration services; gas field surveys; gas well testing; gas well services, namely, monitoring hydraulic fracture data in gas wells; testing and analysis services for the safety of energy products and energy systems; advice on the consumption and conservation of energy; analysis for exploitation of gas; analysis for gas-field exploitation; gas prospecting, planning and design services related to building of gas wells, fields and infrastructure; hydrocarbon exploration; geophysical exploration for gas; analysis services in the field of geophysics, namely, conducting feasibility studies to study fluid flow in gas reservoirs; analysis services in the field of geophysics, namely, analysis of gas fields; gas well flow testing services; in-line testing of gas wells; drill stem testing; design of gas well and gas field surveys; geo-seismic survey services; well bore surveying services; geological surveys and research; geophysical exploration services; geophysical exploration for gas; geological prospecting; geological estimation and research; geological exploration; recordal of seismic data; gravimetric monitoring services; provision of scientific surveys; provision of technical surveys; scientific and technological services and research and design services relating to the exploration, production, processing, treatment, refining, supply and distribution of energy and gas; industrial analysis and research services relating to the exploration, production, processing, treatment, refining, supply and distribution of energy and gas; information, support, assistance, consultancy and advisory services in relation to the aforementioned services
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12
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