Warner Bros. Entertainment Inc v Casella Wines Pty Limited

[2025] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by Warner Bros. Entertainment Inc to registration of trade mark application number 2280666 (classes 32 & 33) - BEETLEJUICE - in the name of Casella Wines Pty Limited

Delegate:

Tracey Berger

Representation:

Opponent: Gilbert Tsang of Counsel instructed by Baker McKenzie

Applicant: Benjamin Fitzpatrick of Counsel instructed by Pizzeys

Decision:

2025 ATMO 50

Trade Marks Act 1995 (Cth) – opposition under section 52 – s 42(b), 60 and 62A considered – no grounds established – trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Warner Bros. Entertainment Inc (‘Opponent’) to registration of the trade mark detailed below filed in the name of Casella Wines Pty Limited (‘Applicant’):

   Trade Mark: BEETLEJUICE(‘Trade Mark’)

   Number:2280666

   Filing Date:     30 June 2022  

   Specification: Class 32: Beer

   Class 33: Cider; Alcoholic beverages (except beer); Alcoholic beverages containing wine; cider coolers (beverages)

   (together ‘Applicant’s Goods’)

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of acceptance of the Trade Mark for possible registration, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 14 April 2023 followed by a Statement of Grounds and Particulars (‘SGP’) on 12 May 2023.  The Applicant filed a Notice of Intention to Defend on 25 July 2023.

3. In accordance with the Regulations, the Opponent filed its evidence in support (‘EIS’) on 26 October 2023, followed by the filing of the Applicant’s evidence in answer (‘EIA’) on 30 January 2024. The Opponent filed its evidence in reply (‘EIR’) on 2 April 2024.

4. Once the evidence stage concluded, the parties had the opportunity to request a hearing.  Both parties requested a hearing by videoconference. Prior to the hearing, the parties’ representatives filed a written summary of their submissions.  I heard this matter as a delegate of the Registrar of Trade Marks on 6 February 2025. At the hearing, Gilbert Tsang of Counsel, instructed by Baker McKenzie, appeared for the Opponent and Benjamin Fitzpatrick of Counsel, instructed by Pizzeys, appeared for the Applicant. I make my decision based on the aforementioned materials and the written and oral submissions of the parties.  

   Grounds, onus and Relevant Date

5. The Opponent’s SGP nominates grounds of opposition under ss 42(b), 60 and 62A.

6. 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 30 June 2022, being the filing date of the application and priority date for the purposes of s 60 (‘Relevant Date’).[4]

   [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).

   Evidence

7. The following evidence was filed in the proceedings:

8.     Declarant and Position	Date	Annexures or Exhibits
EIS
Brian Rupp, Vice President, Intellectual Property Counsel of the Opponent (‘Rupp’)	25/10/2023	BR-1 to BR-28 (including confidential BR-10 and BR-19)
Evidence in answer
Julian Raccanello, Global Sales Support and South America Market Manager of the Applicant (‘Raccanello’)	29/01/2024	JR-1 to JR-6 (including confidential JR-4)
Evidence in reply
Victoria Eugenia Bernadette Bell, partner at Baker McKenzie, solicitors for the Opponent (‘Bell’)	2/04/2024	VEBB-1 to VEBB-3

Opponent’s evidence

1. Rupp describes the Opponent as ‘a fully integrated broad-based entertainment company and a global leader in the creation, production, distribution, licensing and marketing of all forms of entertainment and related businesses’ and claims the Opponent is ‘at the forefront of every aspect of the entertainment industry, including feature film, television and home entertainment production, animation, computer and video gaming, consumer product licensing and worldwide distribution’.

2. Rupp attests that BEETLEJUICE is the name of a 1988 American fantasy-comedy movie (‘Opponent’s Film’) directed by Tim Burton, distributed by the Opponent, and starring Michael Keaton, Alec Baldwin, Geena Davis, and Winona Ryder. The Opponent’s Film was initially released in America in March 1988, before being released later that year to Australian audiences. Whilst the titular character’s name in the Opponent’s Film is ‘Betelgeuse’, after a star in the Orion constellation, the phonetic spelling BEETLEJUICE was chosen as the film name for ease of consumer recognition.

3. The Opponent’s Film achieved commercial success grossing almost USD75 million worldwide (including almost USD570,000 in Australia) from a production budget of USD15 million and received critical acclaim, winning several awards including the 1989 Academy Award for best makeup and National Society of Film Critics Award for best actor.  Media articles exhibited to Rupp describe the Opponent’s film as a 'cult classic movie’, ‘Tim Burton’s 1988 comic-horror masterpiece’ and a ‘smash hit comedy’ and credit the film with boosting the careers of the stars and director. 

4. The Opponent’s Film is available on various streaming platforms including Apple TC, Amazon Prime, Binge, YouTube Movies and Google Play Movies and also physical or digital media formats.  Approximate annual global revenue from DVDs and Blu-Rays is notable but the Australian revenue is less impressive.

5. The Opponent’s Film was re-released in Australia in 2021 and a sequel was announced in May 2023. Examples of Australian media articles referring to the Opponent’s Film or its sequel are provided.

6. The Opponent has used BEETLEJUICE itself or through licensees for various goods and services including a television series which aired from 1989 to 1991; video games; the BEETLEJUICE character featured at Warner Bros. Movie World Theme Park  in The Great Gremlin Adventure attraction from 1991 to 2001; Halloween costumes and various merchandise such as stubby holders, slot machines, games, mugs, stationery, socks, clothing, backpacks, key rings and paper products (‘Merchandise’).  From 2017 to 2022, the royalty revenue earned in Australia from sales of the aforementioned licensed goods was minimal but an estimate of the retail value of these goods is more substantial.

7. In 2018, the Opponent licensed its related company Warner Bros Theatre to produce a musical adaptation of the Opponent’s Film.  The BEETLEJUICE musical production (‘Opponent’s Musical’) received some publicity in Australia as the musical score was written by an Australian.  The Opponent’s Musical premiered in Washington D.C in October 2018, before running on Broadway from April 2019 to March 2020 when it was halted due to the Covid-19 pandemic, but returned to Broadway from April 2022 to January 2023.  It was highly successful, breaking box office records and receiving  a number of accolades including 8 Tony Award nominations.  In August 2023, it was announced that the Opponent’s Musical will premiere in Australia in 2025.

8. Rupp details the Opponent’s BEETLEJUICE social media accounts and the number of followers/subscribers and YouTube video views.

9. Rupp also outlines the history between the parties including the Applicant’s 2011 registration of the Trade Mark under number 1461875 for ‘Beer’ in class 32 and ‘wine’ in class 33 (‘Initial Registration’).  Rupp declares that the Opponent succeeded in having the Initial Registration removed from the Register for non-use after the Applicant did not file any evidence in support of its opposition to the removal application.  This information is essentially repeated in Bell.

10. Bell also attests to the results of a Google search for the definition of ‘Beetlejuice” which results include reference to:

    ·    the red supergiant Alpha Orionis, also known as Betelgeuse;

    ·    a winged demon character;

    ·    a compound word of beetle + juice;

    ·    the Opponent’s Film and the main character of the same name; and

    ·    unusual antics that suggest one is crazy or mentally unstable, according to Urban Dictionary.

    Applicant’s evidence

11. Raccanello attests that the Applicant is a family owned wine company which produced its first vintage in 1971.  Raccanello outlines the history of the winery, details of its business and marketing, and provides details of the Applicant’s extensive registered Australian trade mark portfolio.

12. Raccanello declares that the name BEETLEJUICE was derived from the red supergiant star Betelgeuse, and also from the Cochineal beetle from which the natural dye carmine is derived and which is intended to allude to the colour of red wine.

    Discussion

    Section 60

13. Section 60 provides that the registration of a trade mark 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.

14. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:

    i.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; and

    ii.because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

    Reputation

15. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[5]  It is the reputation in the mark(s) relied upon by the Opponent that must give rise to a likelihood of deception of confusion.[6]  A likelihood of confusion exists if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets [of goods] come from the same source’.[7]

    [5] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

    [6] Ibid [81]-[82].

    [7] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50] (French J).

16. Reputation cannot be assumed and must be established by the Opponent as a matter of fact.[8] There are a variety of ways the reputation of a trade mark may be established, including by demonstrating that a significant number of people have been exposed to the trade mark,[9] or providing evidence of high volume of sales, advertising expenditure or other forms of promotion of goods or services to which the trade mark applies.[10] 

    [8] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

    [9] Ibid [118].

    [10] McCormick (n 5) [86].

17. In Rodney Jane Racing Pty Ltd v Monster Energy Company, it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns 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.[11]

    [11] [2019] FCA 923, [83] (O’Bryan J).

18. The reputation relied on by the Opponent must be amongst a significant or substantial number of persons.[12]  What constitutes a significant or substantial number of people is determined by the relevant market and the nature of the goods or services in question.[13]   In the present case, the relevant market is significant being the entire Australian adult population who buy, sell or consume alcoholic beverages. 

    [12] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ).

    [13] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

19. Section 60 does not require that the Opponent’s goods be similar to those claimed by the Applicant, nor that the relevant trade marks be substantially identical or deceptively similar. However, where the marks are similar and/or there is a connection between the goods claimed and those in which the relevant reputation lies, confusion is more likely.

20. In its SGP, the Opponent relies on its use of the Trade Mark for its films and television program, claiming in particular that:

    d) As at the filing date of opposed application no. 2280666 ("Application"), the Opponent's Mark has been continuously used in connection with the Opponent's films, as well as merchandise products, including, apparel, bottles, mugs, collectibles, bags and costumes. As a result of such use, it had acquired a substantial reputation in Australia and worldwide.

    e) The motion pictures and television programmes of the Opponent and/or its related entities reach and are seen by a large number of consumers. As a result, elements from these motion pictures and television programmes, such as titles, character names and phrases become well-known symbols and are in demand amongst manufacturers and/or suppliers of a wide array of goods and services.

    f) As a result, the Opponent and/or its related entities have developed a well-established business that consists of licensing marks and symbols from motion pictures and television programmes for use in connection with a wide array of goods and services. When consumers view these marks and symbols, they understand and have come to expect that such use is made pursuant to the licence of the Opponent and/or its related entities.

    g) By reason of the reputation acquired in BEETLEJUICE by the Opponent, as well as its well-established practice of licensing marks and symbols related to entertainment properties, use by the Applicant of the Opposed Mark is likely to deceive or cause confusion.

21. The Opponent argues that it had developed a substantial reputation in the name BEETLEUICE by the Relevant Date with that reputation centring on the Opponent’s Film which achieved ‘cult classic’ status soon after being released and which featured iconic characters and scenes that have become a ‘pop culture touchstone’.  Moreover, the Opponent claims that unlike many other ‘cult’ or ‘classic’ films, its reputation in BEETLEJUICE has remained in the minds of the public as a result of the Opponent’s Musical, the re-release of the Opponent’s Film, speculation about and announcement of the sequel, the Opponent’s extensive promotion of its film and musical on social media, its licensing of BEETLEJUICE for merchandise with significant sales of such products in Australia, and widespread use of BEETLEJUICE clothing and costumes. 

22. At the hearing, the Opponent stressed that the nature of its reputation in BEETLEJUICE is of particular importance.  The Opponent argues that the Opponent’s Film and titular character have a reputation for being ‘irreverent, reckless and repellent’ and hence its reputation in BEETLEJUICE is broader than simply entertainment related products and services.  In particular, the Opponent emphasised the licensed use of BEETLEJUICE for stubby holders and slot machines and suggested that use of the mark for such goods is consistent with the image and values of the trade mark as being irreverent or subversive.  Hence, the Opponent argues, consumers will call to mind the edginess of the titular character and irreverent nature of the Opponent’s Film when seeing the Trade Mark on alcoholic products.

23. The Opponent claims it coined the term BEETLEJUICE and because it has no descriptive meaning, consumers will draw connection between the Opponent’s Film and/or Michael Keaton’s titular character. 

24. The Applicant concedes that the Opponent has ‘some level of reputation’ in the Trade Mark in respect of the Opponent’s Film and titular character but argues that the Opponent has failed to establish that this reputation ‘extends beyond a relatively narrow category of entertainment goods and services’. The Applicant notes that the Opponent has never licensed use of BEETLEJUICE for alcoholic beverages and all of its licensing activities are limited to entertainment such as the Musical and merchandise associated with the Opponent’s Film or titular character. Further, the Applicant disputes that alcoholic products are ‘irreverent’ or otherwise suggestive of the personality traits of the titular character in the Opponent’s Film. In any event, even if consumers see the Trade Mark on the Applicant’s Goods and think of the Opponent’s Film or titular character this is not sufficient for the Opponent to succeed under s 60. The Opponent can only succeed if they are caused to wonder whether the Applicant’s Goods are manufactured by or under the control of the Opponent.

25. I am satisfied that the Opponent has established a reputation in BEETLEJUICE for entertainment related goods and services.  Although the Opponent’s Film was first released over 25 years ago, I accept that the re-release of the movie, the impending sequel, the Opponent’s Musical and other activities have resulted in the film and Michael Keaton character remaining in the mind of Australian consumers.  However, I do not consider that the reputation extends beyond entertainment related goods.  Rupp provides approximate licensing revenue in Australia for such merchandise which is not significant and although the extrapolated retail value of merchandise is more noteworthy, there is no breakdown of revenue for the different types of merchandise and hence it is not possible to attribute any reputation in those products.  Whilst the Opponent has licensed use of the mark BEETLEJUICE for a variety of products, I am not satisfied that the Opponent has established a reputation extending beyond entertainment products and services.  Most of the Opponent’s licensed merchandise features BEETLEJUICE in a logo form and/or the titular character.  The merchandise promotes the Opponent’s Film and the titular character and strengthens its reputation in entertainment products but in my view, the evidence does not establish that the Opponent has a reputation as a trader in the merchandised goods themselves. 

    Likelihood of deception or confusion

26. In order for the Opponent’s s 60 ground of opposition to be successful, I must be satisfied that because of the Opponent’s reputation, use of the Trade Mark in respect of the Applicant’s Services would be likely to deceive or cause confusion.

27. 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.[14] Justice Richardson discussed the meaning of the terms ‘deceive’ and ‘confuse’ in Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, noting:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. ^[15]

    [14] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

    [15] [1979] RPC 410, 423 (citations omitted).

28. The determination of whether there is a likelihood of deception or confusion 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 Goods and the goods and services in which the Opponent has a reputation, and the degree of similarity between the relevant trade marks.[16]

    [16] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

1. While s 60 of the Act does not require substantial identity or deceptive similarity between the respective marks, the degree of similarity between them is a relevant consideration when assessing the likelihood of confusion.[17]  In the present case, the two marks are identical.

   [17] Ibid.

2. ‘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 there will be a likelihood of deception or confusion even where there is very little, if any, nexus or connection between the goods and/or services under consideration’.[18]  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.[19] 

   [18] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Hearing Officer I.

   Thompson).

   [19] Woodman Labs Inc v Walmsley [2015] ATMO 81, [50] (Hearing Officer J. McDonagh).

3. The Opponent argues that as a result of the Opponent’s reputation in BEETLEJUICE, and practice of licensing that mark for a variety of goods, consumers confronted with a wine bottle (for example) bearing the identical mark would be caused to wonder whether the wine is somehow associated with the Opponent.

4. The Applicant argues that there is no reasonable basis to think that consumers would assume a connection between the Opponent and the Applicant’s Goods.  The Applicant’s Goods can only be sold through licensed liquor retailers which trade channels are vastly different to those of the Opponent’s entertainment services and merchandise.

5. I am not satisfied that there is a real tangible danger that use of the Trade Mark for alcoholic beverages would be likely to deceive or cause confusion amongst a significant number of relevant consumers.  The Opponent’s reputation  is primarily in relation to the provision of entertainment products and services.  As noted, the sale of merchandise such as costumes, stationery and clothing among other goods are connected to the Opponent’s Film and its titular character.  The Applicant’s Goods have no nexus with the entertainment related products in which the Opponent’s reputation lies.  The parties operate in different industries and the different nature, purpose and trade channels of the Applicant’s Goods from the Opponent’s offerings are such that it is unlikely that consumers would assume that there is any connection between the Applicant’s Goods and the Opponent.   

6. The s 60 ground of opposition is unsuccessful.

   Section 42(b)

7. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law. 

8. The Opponent bears the onus of establishing that use of the Trade Mark would (rather than could) be contrary to law.[20] 

   [20] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

9. In respect of this ground, the Opponent claims that because of its reputation in the Trade Mark, use of the Trade Mark by the Applicant for the Applicant’s Goods will constitute passing off and breach ss 18 and 29 of the Australian Consumer Law (‘ACL’), Schedule 2 of the Competition and Consumer Act 2010 (Cth).

10. 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. These are stricter requirements than s 60 which can be established if the use is likely to cause confusion or wonderment.[21]

    [21] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

11. Given the more stringent test under the ACL, where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail.[22] As I have found that use of the Trade Mark for the Applicant’s Goods is not likely to deceive or cause confusion under s 60, I similarly find that the Applicant’s use of the Trade Mark is not likely to be misleading or deceptive in contravention of the ACL.

    [22] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer A. Richards).

12. In Re Equity Access Pty Ltd v Westpac Banking Corporation, Hill J 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.[23]

    [23] [1989] FCA 506, [40].

13. Section 18 of the ACL is the equivalent of s 52 of the TPA.[24] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that the ACL will not be contravened, it follows that use of the Trade Mark will not amount to passing off.

    [24] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

14. I have found that use of the Trade Mark is not likely to deceive or cause confusion under
    s 60(b) and hence, 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

15. Pursuant to s 62A, registration of a trade mark may be opposed on the basis that the application was filed in bad faith.

16. Bad faith is not defined in the Act. The Explanatory Memorandum to the Bill that inserted this ground of opposition into the Act stated that this ground was introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith’.[25]  The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[26]  and DC Comics v Cheqout Pty Ltd.[27]  The following propositions emerge from these decisions which are relevant to the present opposition:

    ·     Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject application.[28]

    ·     All the circumstances surrounding the application to register the mark are relevant.[29]

    ·     Bad faith is a serious allegation that “impugns the character of an individual or collective character of a business” and requires correspondingly cogent evidence.  Nevertheless, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[30]

    ·     Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty or fraud.[31]

    ·     The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[32]

    ·     All the circumstances surrounding the application to register the mark are relevant.[33]

    ·     A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[34]

    ·     Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion.[35]

    [25] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) [4.12].

    [26] (2012) 201 FCR 565 (Dodds-Streeton J) (‘Fry Consulting’).

    [27] (2013) 212 FCR 194 (Bennett J) (‘DC Comics’).

    [28] Fry Consulting (n 26) 593-4 [145].

    [29] DC Comics (n 27) [62].

    [30] Fry Consulting (n 26) [145].

    [31] Ibid 594-5 [147]-[148], 597 [165].

    [32] DC Comics (n 27) 206 [62].

    [33] Ibid.

    [34] Fry Consulting (n 26) 596-7 [156].

    [35] DC Comics (n 27) 209 [76].

17. The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

18. The Opponent bears the onus of establishing that the filing of the Application was in bad faith and it will not be easily established given the serious nature of the allegation.[36]

    [36] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [20] (Hearing Officer D. Nancarrow).

19. The Opponent submits in its SGP that the Applicant had full knowledge of the Opponent’s BEETLEJUICE mark and reputation at the Relevant Date as a result of the Opponent’s letter to the Applicant in 2019 regarding its concerns that confusion would arise if the Applicant uses the mark, its successful removal of the Initial Registration for non-use and the dealings between the parties in other jurisdictions.  Given this knowledge and the Opponent’s reputation in BEETLEJUICE, the Opponent alleges that the Applicant filed the application to appropriate its reputation thereby acting in a manner that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.  In particular, the Opponent noted that the application was filed shortly after an announcement on (‘Hit Website’) that Michael Keaton and Winona Ryder had signed on for the sequel which would be produced by Brad Pitt’s production company.  In light of this article and previous dealings between the parties, the Opponent argued that this is not an instance where the Applicant had ‘mere knowledge’[37] of the Opponent and its reputation.  The Opponent contends that the fact the Applicant filed no evidence in the non-use proceeding against the Initial Registration and does not explain what it wants to use the Trade Mark for nor why the Applicant chose the mark, suggests that the only reason is to benefit from the Opponent’s reputation.

    [37] See for example Uber Technologies Inc v Uberdoc Pty Ltd [2021] ATMO 158, [62] (Hearing Officer T. Brown) and Ceravalo Premium Wines Pty Ltd v Ma Kirby (TRPL) Pty Ltd 135 IPR 288, [33] (Hearing Officer A. Walters)

20. The Applicant disputes that such an inference can be drawn and contends that to assume the refiling of an application for a mark previously removed for non-use constitutes bad faith amounts to a reversal of the onus under s 62A.  Moreover, the Opponent’s allegations are unsupported by evidence and there is no evidence as to the readership or notoriety of the Hit Website or indication that anyone at the Applicant saw the article about the Opponent’s sequel.  Further, the Applicant contends that its evidence explains its reasons for adopting the mark and intention to use it for alcoholic beverages.

21. I do not consider the filing of the application to have been made in bad faith.  It is not unusual for an applicant with a large trade mark portfolio to register a trade mark and then, for whatever reason, not proceed with use of the mark.  A change in plans to use a mark may result in the registration being removed from the Register in due course for non-use or non-renewal.  The fact that an applicant subsequently revived its interest in the same trade mark is not uncommon.  Further, the fact that the Applicant was aware of the Opponent’s claim to a reputation in the Trade Mark and concerns about potential confusion does not mean that the application was filed in bad faith.  The Applicant is entitled to assess those allegations and reach a different conclusion, thereby assuming any associated risk of opposition or other objection.  Even if the Opponent was aware of the planned sequel of the Opponent’s Film, given the differences in the Applicant’s Goods from the Opponent’s goods and services, a determination to apply for the Trade Mark is not unscrupulous or underhand.  In my opinion, the Opponent has not established that the Applicant’s conduct in filing the application falls short of acceptable commercial standards.

22. The s 62A ground of opposition is not established.

    Decision

23. Section 55 of the Act 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.

24. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP.  Trade mark application number 2280666 may proceed to registration not less than one month from the date of this decision. 

25. 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 discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

5 March 2025