Taronga Conservation Society Australia v Sydney Zoo Pty Ltd
[2017] ATMO 155
•11 December 2017
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Taronga Conservation Society Australia to registration of trade mark application 1696793 (16, 18, 21, 25, 28, 35, 39, 41, 43, 44) – SYDNEY ZOO and DEVICE - filed in the name of Sydney Zoo Pty Ltd
Delegate: | Nicholas Smith |
Representation: | Opponent: Ed Heerey QC of Counsel instructed by Gilbert + Tobin Applicant: Michael Hall SC of Counsel instructed by Allens Patent & Trade Mark Attorneys |
Decision: | 2017 ATMO 155 Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 60 and 62A considered – none established – trade mark to proceed to registration |
Background
1. This is an opposition brought by Taronga Conservation Society Australia (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of Sydney Zoo Pty Ltd (‘Applicant’):
Application Number:
1696793
Filing Date:
28 May 2015
Goods and Services:
Listed in Annex 1, but most relevantly ‘amusement and recreation services provided in connection with the operation of zoological parks’ in class 41
(collectively ‘Applicant’s Goods and Services’)
Trade Mark:
(‘Trade Mark’)
2. Following the advertisement on 26 November 2015 in the Australian Official Journal of Trade Marks of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 25 January 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 24 February 2016. The SGP was assessed by this office as adequate. The SGP raised grounds of opposition under ss 42(b), 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 21 March 2016.
Evidence
3. The Opponent filed Evidence in Support of its opposition (‘EIS’) on 11 June 2016. This evidence consists of:
a)A declaration of Stephen Mark Williams, manager, guest experience operations, for the Opponent, dated 7 July 2016 together with Confidential Annexure SW-1 (‘Williams Declaration’);
b)A declaration of Andrew Leonard Bunn, research director at Essential Research, dated 8 July 2016 together with Confidential Annexures AB-1 and AB-2 (‘Bunn Declaration’);
c)A declaration of Gillian Hopkins, project manager for the Opponent, dated 11 July 2016 together with Annexure GH-1 (‘Hopkins Declaration’);
d)A declaration of Natalie Scobie, marketing projects manager for the Opponent dated 11 July 2016 together with Annexures NS-1, NS-2, NS-3, NS-4 and Confidential Annexure NS-5 (‘Scobie Declaration’); and
e)A declaration of Garen Holopikian, Senior Associate at Minter Ellison, the former representatives of the Opponent, dated 11 July 2016 together with Annexure GH-1 (‘Holopikian Declaration’).
4. The Applicant filed Evidence in Answer (‘EIA’) on 13 October 2016. This evidence consists of a declaration of Jake Burgess, Managing Director of the Opponent, dated 27 September 2016, together with Exhibit JB-1 and Confidential Exhibit JB-2 (‘Burgess Declaration’). The Opponent chose not to file any evidence in reply.
5. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 16 February 2017 the Opponent requested an oral hearing. Following a request from both parties, the matter was set down for a hearing in Sydney on 1 November 2017 and the matter was allocated to me. In line with usual practice, an email was sent to the parties on 19 November 2017 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 17 October 2017 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 24 October 2017 (‘Applicant’s Submissions’). At the hearing Ed Heerey QC of Counsel instructed by Gilbert + Tobin represented the Opponent and Michael Hall SC of Counsel instructed by Allens Patent & Trade Mark Attorneys represented the Applicant.
6. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide on the basis of the written record, comprised of the materials mentioned in the preceding paragraphs and the oral submissions made at the haring:
(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
7. The Opponent is the operator of Taronga Zoo in Sydney. For over 50 years Taronga Zoo was the only major zoo in Sydney. In summary, the Opponent’s evidence is that the term ‘Sydney Zoo’ (described in the Opponent’s Submissions as the ‘SYDNEY ZOO Mark’) is associated by the public with Taronga Zoo. In particular, the results of a consumer survey, an analysis of Instagram tags, and an analysis of Google search algorithms all indicate that a significant portion of the public think of Taronga Zoo when they see the term ‘Sydney Zoo’. The Opponent deals with regular instances of consumer confusion where a member of the public has purchased a ticket for Wild Life Sydney Zoo (a facility in Darling Harbour, presently unconnected to either party) and seeks entry into Taronga Zoo.
The Applicant
8. The Applicant is an entity incorporated in 2014 that is in the process of developing a zoo located in the Western Sydney Parklands, to be known as ‘Sydney Zoo’. The individuals behind the Applicant first considered using the term ‘Sydney zoo’ in 2000, commenced taking active steps to develop its zoo in 2012 and developed the Trade Mark in 2013. The EIA notes that the Trade Mark is very different to the logo presently used by Taronga Zoo.
Grounds of Opposition, Onus and Standard of Proof
9. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 60 and 62A. To successfully oppose the application the Opponent needs to establish at least one of those grounds.
The onus of proof in an opposition rests upon the Opponent.[1] The date at which the rights of the parties are to be determined is 26 October 2015, being the filing date of the application in Australia (except in circumstances, not present here in which a different priority date is provided for in the Act).[2]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).
There was some dispute between the parties as to the appropriate standard of proof applicable in the present proceeding. The Applicant submitted that the appropriate standard is that the Opponent must establish that the Trade Mark clearly should not be registered, in reliance on the Full Court decision of Lomas v Winton Shire Council[3] and Kowa Co Ltd v NV Organon[4]. The Opponent’s submissions on this point, which I accept, note that the most recent Full Court authority on this issue is in Telstra Corporation Limited v Phone Directories Company Pty Ltd in which the Full Court stated:
A related issue which has been considered in the authorities is whether the onus on the opponent to registration is on the balance of probabilities or an onus to establish that the trade mark should clearly not be registered. That issue received little attention in the oral submissions. We would follow Kenny J in Sports Warehouse v Fry Consulting who in turn followed Sundberg J in Chocolaterie Guylian at 70 [26], and Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 at 793 [18] that the standard of proof is proof on the balance of probabilities. [5]
[3] [2003] AIPC 91-839, [17]-[19].
[4] (2006) IPR 131, [130]-[140].
[5] [2015] FCAFC 156, [133].
I find that the relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[6] I note that if I had accepted the Applicant’s submissions and adopted the higher standard of proof, my decision would be unchanged.
[6] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].
Discussion
Section 60
Section 60 of the Act is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
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 establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the Trade Mark would be likely to deceive or cause confusion.[7]
[7] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[8] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[9]
[8] [2000] FCA 1335, [81].
[9] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[10]
[10] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[11] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[12]
[11] (2000) 50 IPR 1.
[12] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[13]
[13] Mark Davison, Shanahan’s Australian Law of Trade Marks and Passing Off Online Westlaw AU, [50.2415] <
The Opponent has particularised the ground of opposition in the SGP as follows:
(a) The [Trade Mark] is substantially identical with, or deceptively similar to, the Opponent's SYDNEY ZOO Mark.
(b) The Opponent has become known by terms consisting of or including the term 'Sydney Zoo' since in or about its inception in 1916.
(c) The Opponent's SYDNEY ZOO Mark had, before the priority date of the Opposed Application, acquired a reputation in Australia and, because of that reputation, the Opponent considers that the Applicant's use of the Opposed Mark would be likely to deceive or cause confusion.
The evidence before me shows no use by the Opponent of the term ‘Sydney zoo’ as a trade mark, a matter conceded by counsel for the Opponent. While the term ‘Sydney zoo’ may be used by the public (and in isolated reports, the media) to describe Taronga Zoo, there is no evidence of the Opponent ever using ‘Sydney zoo’ to distinguish its goods and services with goods or services so dealt with or provided by any other person.
The Opponent submits that this does not matter for the purposes of s 60. It submits that as at the relevant date, the evidence demonstrates that the term ‘Sydney Zoo’ had acquired a reputation as being associated with the Opponent’s zoo. It performed the function of distinguishing the Opponent’s zoo from other zoos operated by other persons and that s 17 and s 60 of the Act do not require a trade mark to be used by the supplier of the goods or services for it to have acquired a reputation.
The Applicant has submitted that the reputation acquired by the term ‘Sydney zoo’ must be reputation acquired by a trade mark and draws a distinction between that and members of the public associating particular words with a company or person. The Applicant drew my attention to the decisions in Estate of Diana, Princess of Wales v Masterton[14] in which the Delegate accepted that the terms ‘Diana’ and ‘Diana Princess of Wales’ were associated with the late princess but that did not amount to trade mark use for s 60 purposes and Effem Foods Pty Ltd v Wandella Pet Foods Pty Ltd[15] in which the Federal Court found that the term ‘GO WACKO’ was not used as a trade mark. While of assistance, neither of these cases are particularly on point in circumstances where the Opponent has never used the SYDNEY ZOO Mark but there is clear evidence of members of the public referring to the Opponent’s Zoo as ‘Sydney Zoo’.
[14] (2001) 52 IPR 264.
[15] [2006] FCA 767.
A case that is of assistance is QANTAS Airways Limited v Amadio (‘Qantas Case’).[16] In this case the then opponent argued that it had reputation for the purposes of a s 60 ground of opposition in the expression FLYING KANGAROO, arising from the occasional use of the expression in books, newspaper and magazine articles, industry commentary and the 1980s television advertisements which resulted in the expression ‘flying kangaroo’ being synonymous with Qantas in the eyes of the public[17]. The Delegate found that none of the evidence before him showed use of the expression FLYING KANGAROO as a trade mark by Qantas and disallowed the opposition under s 60 on that basis. I note that the facts in the Qantas Case were considerably more favourable to the then opponent then the facts in the present case, as the word mark FLYING KANGAROO was not descriptive of the services provided by Qantas and there was evidence of Qantas using the term in marketing. In particular the Delegate stated:
The evidence shows that the QANTAS logo and the phrase the flying kangaroo have both become synonymous with the opponent and its services … It may well be therefore that the expression “the flying kangaroo” has in fact been used as a trade mark by the opponent. However, the opponent has not made out its opposition in terms of section 60 of the Act because none of the evidence before me shows the phrase “the flying kangaroo” in use as a trade mark. It has not established to my satisfaction that the expression ‘flying kangaroo’ has been used by it as a trade mark. As such, there is no trade mark of the opponent which could have a reputation in terms of section 60.[18]
[16] [2011] ATMO 84.
[17] Separately the then opponent submitted that its logo has been identified by commentators as ‘the flying kangaroo’ to the extent that the device and the words ‘FLYING KANGAROO’ had become interchangeable. These submissions were not accepted by the delegate.
[18] [2011] ATMO 84, [42].
Following the logic of the Delegate in the case above, it is not sufficient to show that the term ‘Sydney zoo’ has become synonymous with the Opponent, rather it is necessary that the Opponent adduce evidence that the term ‘Sydney zoo’ is in use as a trade mark. The fact that consumer confusion exists does not necessarily indicate a reputation existing in a trade mark; Confusion can arise from other sources, including the descriptive nature of particular words.
The Williams and Bunn Declarations provide evidence of confusion and association. They do not show any use of the SYDNEY ZOO Mark by third parties as a trade mark, rather they are evidence that some members of the public see the term ‘Sydney zoo’ and think of the Opponent’s zoo, located in Sydney.
The Scobie Declaration, taken at its highest, provides evidence that some individuals search for the Opponent’s zoo on Google using the term ‘Sydney Zoo’. Merely typing in a search term on a search engine does not amount to use of that term as a trade mark. While the Scobie Declaration provides some evidence of the media referring to the Opponent by the term ‘Sydney zoo’, I accept the Applicant’s submissions that such evidence is limited, frequently corrected by the Opponent to Taronga Zoo, and in the case of media reports from Dubbo, used to distinguish between the Opponent’s zoos located in Dubbo and Sydney.
The Hopkins Declaration indicates that a number of photographs taken at the Opponent’s zoo are displayed on the photo sharing site Instagram with the hashtag ‘#sydneyzoo’ next to it (along with other hashtags including ‘#tarongazoo’). The placing of a hashtag on an Instagram photo does not amount to use of the SYDNEY ZOO Mark as a trade mark pursuant to the requirements of s 17 of the Act, being ‘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’ The hashtag #sydneyzoo would not appear to the reader as operating to distinguish the Opponent’s zoological services from those of a third party[19].
[19] See QANTAS Airways Limited v Amadio [2011] ATMO 84, [30] for a further discussion of this point.
While the Opponent has supplied evidence that many consumers associate the term ‘Sydney zoo’ with the Opponent using mechanisms such as survey responses and Instagram hashtags (and also evidence of some degree of consumer confusion between Wild Life Sydney Zoo and Taronga Zoo), I find that there is no evidence that the term ‘Sydney zoo’ is in use as a trade mark and hence the Opponent has not satisfied me that the SYDNEY ZOO Mark has acquired a reputation for the purposes of s 60(a) of the Act. Therefore the Opponent has failed to establish the ground of opposition under s 60.
Section 42
Section 42 of the Act is 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) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[20] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[21]
[20] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[21] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
The Opponent has particularised the ground of opposition in the SGP as follows (I note but do not set out in this decision the list of Opponent’s Goods and Services in Schedule 1 of the SGP):
(a) The Opponent has acquired a substantial reputation, including prior to 28 May 2015, in respect of its trade mark SYDNEY ZOO (Opponent's SYDNEY ZOO Mark) in relation to at least some of the goods and services outlined in Schedule 1 (Opponent's Goods and Services).
(b) Based on that reputation, use of the Opposed Mark by the Applicant would be contrary to law as it is likely to constitute misleading and/or deceptive conduct or conduct that is likely to mislead and/or deceive and convey a false and misleading representation contrary to sections 18 and 29(1) of the Australian Consumer Law, Schedule 2 of the Competition and Consumer Act 2010 (Cth), and amounts to the tort of passing off in light of the reputation in the Opponent's SYDNEY ZOO Mark.
In Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd[22] the Delegate noted that in respect of the s 42(b) ground of opposition the Opponent need not rely on the reputation of a trade mark. In particular the Delegate stated:
Further, the Opponent need not rely on the reputation of a trade mark: it is only necessary that the indicium relied upon by the Opponent has a reputation such that the indicium is associated in the public mind with the Opponent: Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 23 FCR 553; (1989) 87 ALR 14; (1989) 14 IPR 398; [1989] ATPR 40-948; [1989] AIPC 39-044; and see QANTAS Airways Ltd v Danniel Amadio [2011] ATMO 84. Nor is this forum confined to considering only trade marks – when an indicium is associated with a trader because of usage by the public rather than the trader, a Registrar’s delegate must consider the argument put by an opponent: Advantage.[23]
[22] [2015] ATMO 54.
[23] Ibid [39].
This differs from the requirement under s 60 of the Act. However this different requirement does not result in a different outcome with respect of the s 42(b) ground of opposition.
While the Opponent’s evidence shows that some members of the public connect the term ‘Sydney zoo’ with the Opponent it does not show such a reputation that the indicium is associated in the public mind with the Opponent as anything other than a descriptive term. The term ‘Sydney zoo’ is a descriptive term for a zoo located in Sydney. An ordinary consumer, when asked to identify an entity associated with ‘Sydney zoo’, would likely think of a zoo located in Sydney. Taronga Zoo has operated in Sydney, Australia since 1916, was the only zoo in Sydney for over 50 years and at the relevant date was by far the largest and most popular zoo in the Sydney market. It is entirely understandable that many consumers would associate the descriptive term ‘Sydney zoo’ with Taronga Zoo. Many consumers would associate ‘fast food’ with McDonalds and ‘Australian airline’ with Qantas without those companies having a reputation in those descriptive terms. The fact that consumers associate a descriptive term with the dominant provider of the goods and services described by the term (and may even be confused by its use for other providers) is not evidence of reputation sufficient to ground an action under ss 18 and 29(1) of the Australian Consumer Law.
Even if the Opponent had established a reputation in the SYDNEY ZOO Mark I would have great difficulty in finding that the Applicant’s use of the Trade Mark would be, rather than could be, misleading or deceptive, noting the descriptive nature of the SYDNEY ZOO Mark, the fact that Applicant is intending to provide zoological services in metropolitan Sydney and the statements made by Stephen J at [22] in Hornsby Building Information Centre Pty Limited v Sydney Building Information Centre Limited[24] regarding the risk of confusion that must be accepted as a price to be paid for the advantages of a descriptive trade name.
[24] (1978) 140 CLR 216.
I note the decisions in the QANTAS Case and Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd[25] in which the then opponents succeeded in establishing the s 42(b) ground of opposition in circumstances in which the relevant marks (FLYING KANGAROO and TARJAY) were synonymous with the then opponents but little used. The distinguishing factor in the present case is that those marks were distinctive while the SYDNEY ZOO Mark is directly descriptive of the goods and services provided by the Opponent.
[25] [2015] ATMO 54.
Paraphrasing the statement of the Registrar’s Delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL[26], where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[27] Section 53 of the TPA is the equivalent provision to s 29 of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered 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.[28]
[26] [2014] ATMO 65, [50].
[27] [2003] FCA 104, [107].
[28] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Section 62A
Section 62A of the Act 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. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[29]:
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.[30]
[29] [2004] EWCA Civ 1028; [2005] FSR 10.
[30] [2012] FCA 81, [147].
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.[31]
[31] Ibid [165]-[166].
The Opponent has particularised the ground of opposition in the SGP as follows:
(a) The Opponent has acquired a substantial reputation, including prior to 28 May 2015, in respect the Opponent's SYDNEY ZOO Mark in relation to at least some of the Opponent's Goods and Services.
(b) The Applicant must have been aware, or ought to have been aware, of the Opponent's reputation in the Opponent's SYDNEY ZOO Mark prior to filing the Opposed Application.
(c) Therefore, persons adopting proper standards would consider that the Applicant's decision to apply to register the Opposed Mark was made in bad faith.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[32] In the present case the allegations made by the Opponent in its particulars and submissions are essentially speculative and do not fall within the non-exhaustive examples set out in the Explanatory Memorandum referred to in paragraph 40 above. In particular I note that the Opponent trades under the name Taronga Zoo and has never used the term ‘Sydney zoo’ as a trade mark, which makes it very difficult to conclude the Applicant’s application to register a trade mark containing the words ‘sydney zoo’ to be an application made in bad faith. I also reject the Opponent’s submissions to the effect that there is something improper about the Applicant, located in the Blacktown local government area, using Sydney as a geographical descriptor, since like Mosman (the location of Opponent’s zoo), the Applicant’s proposed zoo is located in metropolitan Sydney. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.
[32] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1696793 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The Applicant 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 Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
11 December 2017
Annex 1 List of Applicant’s Goods and Services
Class 16: Printed publications; printed matter including books, magazines, maps, pamphlets and calendars, albums, colouring books and activity books, greeting cards, post cards, pictures and posters; stationery; instructional and teaching materials; catalogues and brochures
Class 18: Backpacks; bags for campers and climbers; garment bags; bags for shopping; beach bags; leather shoulder belts; briefcases; canes; cases of leather or leatherboard; clothing for pets; covers for animals; dog collars; handbags; imitation leather; key cases (leatherware); music cases; parasols; purses; wallets; rucksacks; school bags; sling bags for carrying infants; suitcases; travelling bags; travelling trunks; umbrellas; valises; vanity cases (sold empty); walking sticks
Class 21: Lunch boxes and drink containers; plastic school containers; coolers and insulated containers; combs and brushes; moulds in this class; figurines and statues in this class; toothbrushes; stands in this class; drinking and eating implements in this class including of mugs and cups; glassware; porcelain and earthware; pots and containers in this class; corkscrews
Class 25: Clothing including T-shirts; headgear; footwear
Class 28: Toys and playthings in this class, including plush animals and dolls
Class 35: Retailing services, namely the sale of goods decorated with wildlife and nature themes; advertising and promotional services; dissemination of advertising material; strategic business development and planning services relating to zoological parks and wildlife services; community awareness programs being advertising and promotional services relating to zoological parks and wildlife services; public relations services
Class 39: Arranging of tours and tour packages relating to wildlife parks and zoological parks; arrangement of transport for animals
Class 41: Entertainment, education, training, cultural activities, amusement and recreation services provided in connection with the operation of zoological parks, zoological gardens, wildlife parks and similar institutions; wildlife research training and conservation training services; amusement parks and entertainment centres; the training of animals; educational services, including in relation to zoological parks and the biology of animals; recreational services; arranging and conducting of conferences
Class 43: Food and beverage services, catering services
Class 44: Veterinary services and other animal care services in this class; providing information including online, about veterinary services
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