The President and Fellows of Harvard College v Harvard Legal Pty Ltd
[2025] ATMO 25
•6 February 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The President and Fellows of Harvard College to registration of trade mark application number 2237158 (class 45) – HARVARD LEGAL - in the name of Harvard Legal Pty Ltd
Delegate: | Jonathon Galloway |
Representation: | Opponent: Victor Ng of Cooper Mills Lawyers Pty Ltd Applicant: Anthony Franklin SC instructed by Stellar Law Pty Ltd |
Decision: | 2025 ATMO 25 Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 43, 60 and 62A pressed – no ground established – trade mark to proceed to registration |
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by The President and Fellows of Harvard College (‘Opponent’) to registration of the following trade mark:
Trade mark number: 2237158
Trade mark: HARVARD LEGAL (‘Trade Mark’)
Applicant: Harvard Legal Pty Ltd (‘Applicant’)
Filing date: 21 December 2021
[1] Unless otherwise stated, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively.
Specification:
Class 45: Legal services; Legal advice; Legal advocacy services; Legal consultancy services; Legal document preparation services; Legal mediation services; Legal information research services; Legal research; Certification of legal documents; Information services relating to legal matters; Legal services in relation to the negotiation of contracts for others; Legal services relating to the negotiation of contracts (for others); Providing information, including online, about legal services; Provision of information relating to legal services; Provision of legal information; Provision of legal research; Conveyancing.
The Trade Mark was examined as required by s 33 and advertised as accepted for possible registration on 22 May 2022.
On 14 July 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 15 August 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’).
The Opponent filed the following Evidence in Support (‘EIS’) on 1 March 2023:
- Declaration by Enrique Calixto, Executive Director of the Harvard University Trademark Program, President and Fellows of Harvard College dated 28 February 2023 with annexures EC-1 to EC-25 (‘Calixto’).
The Applicant filed the following Evidence in Answer (‘EIA’) on 4 October 2023:
- Declaration by John Harvard, Director and sole shareholder of the Applicant dated 4 October 2023 (‘JH Declaration’).
The Opponent filed the following Evidence in Reply (‘EIR’) on 12 December 2023:
- Declaration by Victor Wei-Cho Ng, registered trade marks attorney and a principal of Cooper Mills Lawyers Pty Ltd dated 12 December 2023 with annexures VWN-1 to VWN-13 (‘Ng’).
Once the period for filing evidence had ended, both parties requested an oral hearing.
As a delegate of the Registrar of Trade Marks, I heard the matter on 7 November 2024. The Opponent filed written submissions and was represented by Victor Ng of Cooper Mills Lawyers Pty Ltd. The Applicant filed written submissions and was represented by Anthony Franklin SC, instructed by Steve Davey of Stellar Law Pty Ltd.
The following constitutes my decision on this matter as required by s 55 based on the evidence set out above, the SGP and the parties’ submissions.
Grounds and Onus
The SGP nominates grounds of opposition under ss 42(b), 43, 44, 60 and 62A. The Opponent did not press the s 44 ground of opposition. As such, I find that the Opponent has not satisfied me that s 44 is established to any extent.
The Opponent carries the burden of establishing one or more grounds of opposition.[2] The standard of proof is on the balance of probabilities.[3] The date at which the parties’ rights are assessed is 21 December 2021 (‘Relevant Date’), being the filing date of the Trade Mark and the priority date of the Trade Mark for the purposes of s 60.
[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 Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
Preliminary Matter
On 18 January 2024, the Applicant submitted further evidence being a second declaration by John Harvard made on 16 January 2024 with exhibits 1 and 2. The exhibits consisted of a photograph of an Australian passport and a New South Wales Photo Card, both in the name of John Harvard.
On 24 October 2024 the Opponent filed further evidence in response to the Applicant’s further evidence. The Opponent’s further evidence comprised a second declaration made by Victor Wei-Cho Ng, dated 24 October 2024 with annexures VWN-14 to VWN-16. The Opponent’s evidence set out to establish the possibility that the name of the director of the Applicant was at some point changed to John Harvard.
At the hearing, I heard submissions from both parties regarding the admission of the further evidence.
The Applicant sought to submit this new evidence because of the implications it says were raised in the EIR. As will be discussed, the EIR questions whether the director of the Applicant changed his name after the Trade Mark application was filed. The Applicant further argued that the EIR questioned the existence of the director of the Applicant.
For the reasons that follow, it is not necessary for me to consider the further evidence filed by the parties as this evidence has no material bearing on the outcome of the substantive decision.
EIS
The Opponent operates Harvard University, an educational and research institution based in Cambridge, Massachusetts in the United States of America (‘USA’). Harvard University was named in 1639 in recognition of the bequest of the Minister John Harvard. Harvard University is declared to be the oldest institution of higher education in the USA and one of the most prestigious universities in the world.[4]
[4] Calixto [6].
The EIS demonstrates that the Opponent uses a number of trade marks that incorporate the word ‘HARVARD’, these include:
The EIS provides that Harvard University is comprised of several well-known schools including Harvard Law School, Harvard Business School, Harvard Medical School, as well as the undergraduate school, Harvard College. Harvard Law School was founded in 1817 and is declared to be the oldest continuously operating law school in the USA and is home to the largest academic law library in the world.[5] The EIS states that ‘Harvard Law School is ranked among the top 5 law schools’ and admission to Harvard Law School is ‘highly competitive’.[6] Notable alumni of Harvard Law School include Barack Obama and Michelle Obama as well as sixteen former justices of the Supreme Court of the United States. Harvard Law School alumni have also sat on the Supreme Courts of numerous countries and the International Court of Justice. The current Chief Justice of the Australian High Court, Stephen Gageler, is also a graduate of Harvard Law School.[7]
[5] Ibid [18].
[6] Ibid [19].
[7] Ibid [19]–[20].
Annexure EC-9 contains the financial reports of the Opponent from 2018 to 2022. An inspection of the 2021 financial report indicates Harvard University’s business activities generated US $5.2 billion dollars. Harvard University has consistently ranked highly among various world university and education ranking systems over the last decade.[8]
[8] Ibid Annexures EC-22; EC-23; EC-24.
In addition to being a renowned institute of higher education, Harvard University has other business activities such as the Harvard University Press which has been operating since 1913[9] and the Harvard Business Review, which is described as ‘one of the best known business periodicals in the world’.[10]
[9] Ibid Annexure EC-10.
[10] Ibid [30].
EIA
The EIA provides that the Applicant intends to operate a law firm in Sydney, Australia, under the Trade Mark, upon completion of the requisite qualifications by Mr Harvard.
The EIA lists universities and law firms which share a name in the Australian marketplace as being indicative of the fact that consumers would not assume a connection between educational institutions and a provider of legal services. Specifically, the Applicant refers to ‘Griffith Legal’, ‘Macquarie Lawyers’, ‘Bond Lawyers’, ‘Sydney Lawyers’ and ‘Deakin Legal’ as being law firms which have similar names to well-known Australian universities.[11] In addition, the EIA refers to three separate entities that conduct business in Australia, Harvard Associates Pty Ltd trading as ‘Harvard Associates Chartered Accountants’, Harvard Building Group Pty Ltd and Harvard Wealth Management Pty Ltd trading as ‘Harvard Wealth’. The Applicant asserts that these businesses ‘are clearly not associated with [the Opponent] because of the nature of their business services’.[12]
[11] JH Declaration [15]–[19].
[12] Ibid [23].
The EIA also references existing trade mark registrations in the European Union and the USA which include HARVARD, in respect of concierge and security services.[13] Mr Harvard further points out that HARVARD MARKETPLACE ‘was registered as European trade mark registration 008770463 and covered’ services including legal services.[14]
[13] Ibid [21]-[22].
[14] Ibid [21].
The EIA asserts that there is no risk that consumers would infer that the goods and services of the Opponent are related to the services of the Applicant because a legal qualification from Harvard University would not entitle someone to practise law in Australia.[15]
[15] Ibid [13].
EIR
The EIR asserts that John Harvard is a contrived name. The Opponent attaches records from the Australian Securities and Investments Commission (‘ASIC’), property title searches, domain name searches, legal practitioner searches, Australian Business Number searches and a report by a private investigator. The ASIC records show that Mr Harvard was appointed as the director of the Applicant on 7 December 2021, being two weeks before the Relevant Date and lists Mr Harvard’s address as being in Greystanes, New South Wales (‘Address’). The property title search of the Address, conducted on 8 November 2023, shows the registered owner as being in the name of a person other than Mr Harvard. The domain name search of the web page ‘ conducted on 8 November 2023, lists the Applicant as the registrant but the contact details are not Mr Harvard. The Opponent alleges that, on 8 November 2023, a search of every Australian state and territory register of legal practitioners did not reveal any practitioner with the surname ‘Harvard’ or the full name ‘John Harvard’.
Annexure VWN-7 shows correspondence from a private investigation service (‘Private Investigator’). The correspondence states:
Precision Integrity Services were engaged by Cooper Mills Lawyers to investigate the legitimacy of a person by the name of John Harvard in relation to the registered Australian business Harvard Legal Pty Ltd.
The Private Investigator’s report outlined various searches conducted. The results of which led the Private Investigator to conclude that no person with the name ‘John Harvard’ resides at the Address and ‘[t]here appear[s] [to be] no records that indicate that a real person with the name John Harvard and date of birth … resides in Australia’.[16]
[16] Ng Annexure VWN-7.
In addition, the EIR responds to the Applicant’s assertion that foreign legal qualifications do not entitle legal practitioners to practise in Australia. The EIR includes information on the requirements of legal practitioners who intend to practise law in Australia. These documents clarify the requirements of legal practitioners who hold foreign qualifications to be admitted to the legal profession in an Australian jurisdiction.
Section 60
Section 60 relevantly provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first- mentioned trade mark would be likely to deceive or cause confusion.
To establish this ground of opposition, the Opponent must demonstrate:
- A reputation was acquired by another trade mark in Australia before the Relevant Date; and
- That because of the reputation of the other trade mark, use of the Trade Mark would be likely to deceive or cause confusion.
The SGP relevantly provides that ‘[b]ecause of the fame and substantial reputation of the HARVARD brand worldwide and in Australia, the use of the [Trade Mark] by the Applicant is likely to deceive or cause confusion’.
Reputation
Reputation in the context of s 60, refers to the ‘recognition of the [mark] by the public generally’.[17] Reputation is not assumed, it must be established by the Opponent as a matter of fact.[18]
[17] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).
[18] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
The relevant reputation must be amongst a significant or substantial number of persons.[19] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[20]
[19] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[20] Le Cordon Bleu Bv v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
There are a number of factors that are relevant in establishing reputation, such as demonstrating that a large number of people have been exposed to the trade mark,[21] evidence that demonstrates high sales volumes, and expenditure in relation to advertising and promotion of goods bearing the trade mark.[22] There are also qualitative aspects to the reputation of a trade mark, these concern ‘the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally’.[23]
[21] ConAgra (n 18) [118].
[22] McCormick (n 17) [86].
[23] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).
The SGP has not nominated a specific trade mark for this ground of opposition. Instead, it relies on what it refers to as the reputation of the ‘Harvard brand’. However, the Opponent’s written submissions state that it relies on the Opponent’s ‘HARVARD trade mark’. The evidence shows that Harvard is used as an element of various trade marks which differentiate the faculties of education that comprise Harvard University and to differentiate the Opponent’s other business activities from its core education services. There is some evidence to suggest that Harvard is used colloquially and can refer equally to Harvard Law School, Harvard Medical School, Harvard Alumni, among others.[24]
[24] Calixto Annexures EC-8; EC-9; EC-10.
Annexure EC-9 includes financial reports of the Opponent’s business activities, including annual revenue, operating expenses, endowments and income generated from investments. An inspection of the 2021 financial report indicates the Opponent’s business activities generated US $5.2 billion in revenue and that figure represented a 2% increase on the revenue generated in 2020. It is not clear how much of this revenue can be attributed directly to the reputation of Harvard as opposed to any of the Opponent’s other trade marks.
Annexures EC-22 to EC-24 evidence the reputation of Harvard University as a provider of higher education. Annexure EC–22 is the Times Higher Education World Reputation Rankings from 2011 to 2022. Annexure EC-23 is the Center for World University Rankings from 2012 to 2023. Annexure EC-24 is the Academic Ranking of World Universities from 2003 to 2022.[25] These ranking systems consistently place Harvard University as number one.
[25] The Academic Ranking of World Universities (ARWU) was first published in June 2003 by the Center for World-Class Universities (CWCU) Graduate School of Education (formerly the Institute of Higher Education) of Shanghai Jao Tong University, China.
Annexure EC-10 provides a brief history of how the Opponent developed its publication operation and provides that as a means of expanding this operation, the Opponent undertook the strategy of publishing books of general interest emanating from lectures given at Harvard University.
The evidence, as a whole, shows use of numerous trade marks by the Opponent. These trade marks generally incorporate the word Harvard. The evidence demonstrates that Harvard is used as an umbrella term to refer to any of the fields of study that the Opponent provides in addition to its business activities such as Harvard University Press and the various networks of the Opponent.[26] As such, while I do not consider use of Harvard Law School, for example, is itself evidence of the reputation of Harvard, it is clear from the evidence that Harvard is used to refer to the Opponent’s various faculties of education, publication services, and goods such as clothing and stationery. In Australia, the reputation of Harvard is demonstrated through the establishment of the ‘Frank Knox Memorial Fellowship’[27] which provides funding for students from countries including Australia to study at Harvard University. In addition, a collaboration between Sydney Law School and Harvard University provides an opportunity for Australian law students of the University of Sydney to study on exchange at Harvard University.[28] The Opponent has also established a club for Australian alumni, which as of 2019 had 606 members.[29] I am satisfied that the Opponent has established a reputation in the word Harvard in Australia. The reputation primarily resides in the provision of further education
[26] Calixto Annexures EC-5; EC-8.
[27] Ibid Annexure EC-15.
[28] Ibid [37].
[29] Ibid Annexure EC-16.
I also note that the Applicant does not dispute that the Opponent’s Harvard trade mark, being the plain word Harvard has acquired a reputation in Australia. Rather the Applicant contends that the ‘particular services’ in respect of which the opposed services are sought are not the same as any services in respect of which the Harvard mark has acquired a reputation.[30]
[30] Applicant’s submissions [36].
Likelihood of Deception or Confusion
The likelihood of deception or confusion is not automatically established upon the opponent demonstrating a reputation in the relied upon trade mark. Under s 60(b), the Opponent is required to establish a causal connection between the reputation of the Opponent’s trade mark and the likelihood that use of the Trade Mark will deceive or cause confusion.
The test for deception or confusion turns on whether use of the trade mark would result in a reasonable number of people being caused to wonder whether the Applicant’s services are from the same trade source as another trade mark.[31] This determination is informed by a number of relevant factors, including, the strength of the reputation of the other trade mark, the similarity between the Applicant’s services and the goods and services associated with the reputation of the other trade mark, and the degree of similarity between the relevant trade marks.[32]
[31] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).
[32] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).
I note that ‘it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration’.[33] However, in circumstances where the parties trade in ‘quite different markets’ and the nature of the goods or services is ‘vastly different’ such deception or confusion will generally be unlikely.[34] As mentioned above, the strength of the reputation of the Harvard mark is primarily in relation to the provision of further education. This has been the core business activity throughout the history of the Opponent, which spans almost 400 years. The sale of publications, stationery and clothing among other goods are all connected to the prestige of the Harvard mark in the context of its core offering as an educational institution.
[33] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer Thompson).
[34] Woodman Labs Inc v Walmsley [2015] ATMO 81, [50] (Hearing Officer McDonagh).
In Cantarella Bros Pty Ltd v Muller and Kennedy, the hearing officer found that there was a very low likelihood of confusion between the trade marks CAFÉ AT HOME and HOME CAFÉ. The hearing officer stated:
It is of course possible to see that, in the broad spectrum of potential operations that are within the scope of the opposed application, there may therefore be some degree of confusion between the opponent’s activities under the trade mark CAFE AT HOME and the HOME CAFE services of the applicants. However, there is one factor that would tend to mitigate this quite significantly, and that is the essential nature of the trade built up by Woolworths, on behalf of the opponent.
At the date of the opposed application, the opponent’s trade mark was known to be used in relation to what is basically a sales system, based on shelf signage and used only within Woolworths supermarkets. The extent to which there would be confusion reduces sharply the further one moves from that narrow confine of business.[35]
[35] [2007] ATMO 62, [17]–[18] (Hearing Officer Williams).
In the current matter, I consider that the likelihood of confusion is reduced by the fact that the reputation of the Harvard mark is primarily in the provision of educational services and this is an essential nature of the trade built up by the Opponent. However, there is no evidence before me to conclude that consumers would infer that a trade mark which has a significant reputation in the provision of educational services is now involved in the provision of legal services in Australia.
Accordingly, I am not satisfied that there is a real, tangible danger that use of the Trade Mark in respect of legal services would be likely to deceive or cause confusion amongst a significant or substantial number of relevant consumers.
The ground of opposition under s 60 is not established.
Section 42(b)
Section 42(b) relevantly provides:
An application for the registration of a trade mark must be rejected if:
(a)…
(b)its use would be contrary to law.
The Opponent relies on ss 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the bases for the ground of opposition under s 42(b).
In order to establish an opposition under s 42(b), the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would, as opposed to could, contravene ss 18 or 29 of the ACL.[36]
[36] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading.
The test for conduct contravening the ACL is stricter than the test under s 60.[37] Given I am not satisfied that the ground of opposition under s 60 has been established, it follows that in consideration of the stricter test to be applied under the ACL, I am likewise not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive or amount to a false or misleading representation under the ACL. Where use of a trade mark does not contravene s 18 of the ACL it will not amount to the tort of passing off.[38]
[37] Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
[38] Hachette Filipacchi Presse v KIND TO ME Pty Ltd [2024] ATMO 204, [96]-[97] (Hearing Officer Robertson).
The ground of opposition under s 42(b) is not established.
Section 43
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.
The Opponent submits that there is a real likelihood that the connotation in the sign Harvard would cause persons to wonder if there is some association, relationship or connection between the Applicant and the Opponent, including wondering whether the Applicant’s sole director is an alumnus of Harvard or Harvard Law School, whether the Applicant has licensed the Harvard mark from Harvard University or Harvard Law School, or whether Harvard University has established a program for lawyers in Australia.
In Winton Shire Council v Lomas, Spender J said:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[39]
[39] [2002] FCA 288, [19].
I note the Opponent’s reference to Rocket Trademarks Pty Ltd v Cunliffe Management Pty Ltd, in which the delegate stated:
A second meaning of connotation has been recognized by the Registrar of Trade Marks, that is where there is a connotation of sponsorship, endorsement, affiliation or connection with another entity may arise. This other entity must possess a degree of notoriety that surpasses the concept of reputation.[40]
[40] [2004] ATMO 29, [27] (Hearing Officer McDonagh).
As observed by the authors of Australian Trade Mark Law: [41]
The sponsorship and endorsement cases are clearly analogous to situations in which there is a conflict with an earlier mark with a reputation. Indeed, attempts to explain how the language of s 43 excludes, on the one hand, considerations of whether two marks conflict while allowing, on the other hand, consideration of sponsorship or endorsement are far from satisfactory, and have rested on some tortuous interpretations of the word ‘connotation’.[42]
[41] Robert Burrell and Michael Handler’ Australian Trade Mark Law (Lexis Nexis Australia 3rd ed, 2024).
[42] Ibid 363.
The case law that considers whether s 43 permits consideration of prior trade marks at all is unsettled, particularly where a party argues that an existing trade mark has a degree of notoriety, and the connotation would be one of sponsorship or affiliation that exceeds the concept of reputation contemplated under s 60. Regardless, the evidence before me is not sufficient to demonstrate that the Harvard mark is itself notorious or ubiquitous.
In the current matter, the evidence of the Opponent does not go beyond reputation to notoriety. The evidence is primarily directed towards the reputation of the Opponent’s Harvard mark in the provision of education services. The evidence does not support the Harvard mark being a sign with a degree of notoriety that surpasses reputation which is already contemplated under s 60.
The ground of opposition under s 43 is not established.
Section 62A
Section 62A provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
In DC Comics v Cheqout Pty Ltd,[43] Bennett J considered the concept of bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2),[44] wherein her Honour commented:
Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.
The formulation in [the] 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’s Trade Mark Application [2005] FSR 10].
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…
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[45]
[43] [2013] FCA 478.
[44] Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81 (Dodds-Streeton J).
[45] Ibid [164]-[167].
The subjective element and objective element of the test for bad faith involve considering whether the knowledge of the Applicant, at the time it filed the trade mark application, was such that the decision to register the Trade Mark would be regarded as in bad faith by persons adopting the proper standards.[46]
[46] Ibid [147].
While mere awareness of another trade mark before an application for registration is made will not in itself constitute bad faith, such an awareness will form part of the context in which an assessment is made as to whether the Applicant’s conduct in seeking registration of the mark should be regarded as in bad faith when judged against proper commercial standards.[47]
[47] Ibid [167].
There is no exhaustive definition of ‘bad faith’, or list of conduct that may constitute bad faith.[48] The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[49]
[48] Marvel Characters Inc v Charles [2011] ATMO 92, [20] (Hearing Officer Windsor).
[49] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).
This ground of opposition is based on the following circumstances. At the Relevant Date the sole director of the Applicant was ‘Zaki Hajjar’ whom the Applicant asserts is an Australian lawyer, and in the Opponent’s opinion ought to have been aware of the Harvard mark at the Relevant Date.
The second circumstance that the Opponent believes is relevant to establishing bad faith is the fact that the Applicant only changed its sole director and shareholder to ‘John Harvard’ in the weeks immediately preceding the filing of its EIA. While the form was filed on 27 September 2023, the purported effective date was 7 December 2021.
The Trade Mark is in relation to the provision of legal services, while I have no doubt that the sole director at the time of filing the application was aware of the Harvard mark at the Relevant Date, this alone does not establish bad faith. This circumstance is most easily disposed of by noting that the reputation of the Opponent’s Harvard mark is in unrelated services. I do not think that anyone adopting proper business standards would regard the Applicant’s conduct as being in bad faith. Despite being aware of the Harvard mark at the Relevant Date, there is no evidence that the Applicant was aware or had any reason to believe that the Opponent may intend to provide legal services in Australia under the Harvard mark, or somehow sponsor, or form an affiliation with others who intend to practise law in Australia. The circumstances set out by the Opponent do not establish anything beyond mere awareness of the Harvard mark.
The Opponent has called in to question whether or not the ‘John Harvard’ is in fact the name given to the sole director of the Applicant at birth. I note that the EIA is deposed by a ‘John Harvard’. The Opponent submits that the sole director was changed to John Harvard a few weeks before filing the EIA, in what it says is an attempt to give legitimacy to the application and make it appear as though it were filed in good faith. Even if this could be established, I consider it to be irrelevant in circumstances where the Trade Mark is in respect of legal services, being services which the Opponent has no registered Australian trade mark, or at the very least any objective intention to expand its use of the Harvard brand to include the provision of legal services in Australia.
The ground of opposition under s 62A is 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.
The Opponent has not established any of the nominated grounds of opposition. Accordingly, trade mark application 2237158 may proceed to registration one month from the date of this decision.
Should the Registrar be served with a notice of appeal before registration of the Trade Mark, I direct that the registration of the Trade Mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.
Costs
Costs generally follow the event, and given there is no apparent reason to depart from this principle I award costs against the Opponent.
Jonathon Galloway
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
6 February 2025
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