Wollemi Capital Group Pty Ltd v Wollemi Capital Pty Ltd
[2024] ATMO 107
•12 June 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Opposition by Wollemi Capital Group Pty Ltd to registration of trade mark application numbers 2226692 WOLLEMI (class 36) and 2234287 WOLLEMI CAPITAL (class 36) - in the name of Wollemi Capital Pty Ltd
Delegate: Anne Makrigiorgos Representation: Opponent: Ed Heerey KC and Rebecca De Stoop both of counsel instructed by The Partnership of Arnold Bloch Leibler
Applicant: Tony Bannon KC and Rob Clark both of counsel instructed by Herbert Smith FreehillsDecision:
2024 ATMO 107
Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 58 and 60 considered – no ground of opposition established – both trade marks to proceed to registration.Background
1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by Wollemi Capital Group Pty Ltd (‘Opponent’) to registration of the following two trade mark applications filed in the name of Wollemi Capital Pty Ltd (‘Applicant’):
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
Application Number
Trade Mark
Filing Date/Relevant Date
2226692 (‘692 Mark’)
WOLLEMI
16 November 2021
2234287 (‘287 Mark’)
WOLLEMI CAPITAL
9 December 2021
(collectively ‘Applications’)
2. Specification: Class 36: Venture capital financing; Venture capital fund management; Venture capital management; Capital fund investment; Investment fund management; Investment management of funds; Investment of funds; Financial investment fund services; Financial investment; Financial asset management; Financial fund management; Financial investment management services; Financial management; Financial management of funds; Financial management of capital investment funds; Financial management of investments; Financial portfolio management; Financial research; Financing of investments; Monitoring of investment funds; Provision of funds; Provision of investment capital; Provision of investment services; Raising of capital; Trading of emission reduction credits; none of the aforementioned being financial planning, superannuation planning, risk management and insurance, retirement advisory and aged care advisory services
The italicised services, ‘Provision of investment services’ only appear in the 692 Mark but given the overlap between the services of both Applications, I will refer to the services of both Applications as (‘Applicant’s Services’).
3. The Applications were examined and advertised as accepted for possible registration on 17 April 2022 for the 692 Mark and 10 May 2022 for the 287 Mark.
4. On 8 June 2022, the Opponent filed Notices of Intention to Oppose registration of the Applications. On 7 July 2022, the Opponent filed its Statements of Grounds and Particulars (‘SGPs’). The Applicant filed Notices of Intention to Defend the Oppositions on 12 August 2022.
5. The same evidence was filed in connection with both oppositions. The Opponent filed Evidence in Support (‘EIS’) on 9 November 2022. The Applicant filed Evidence in Answer (‘EIA’) on 13 February 2023. The Opponent filed Evidence in Reply (‘EIR’) on 12 April 2023.
6. The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by video conference. The Hearing Notice was sent to the parties on 31 January 2024 notifying a hearing date of 19 April 2024.
7. On 13 February 2024, the Opponent advised this office that it was the applicant of Australian trade mark application number 2275829 for the mark in Class 35 with a priority date of 9 June 2022, which was opposed by the Applicant. The Opponent claimed that the opposition to this application was advanced such that this opposition could be consolidated with the current oppositions and heard on 19 April 2024. The Opponent also advised that the Applicant did not consent to the consolidation of all three oppositions.
8. The Registrar of Trade Marks did not consent to the consolidation of the oppositions on three bases:
a.the Applicant did not consent to the consolidation;
b.the opposition matters were at different stages; and
c.the grounds of opposition nominated in each opposition differed, the applications had not been made in respect of the same class of services and the applications had different priority dates, such that different evidence and legal issues were likely to be raised in each opposition.
9. I heard the 2 oppositions together in my capacity as a delegate of the Registrar of Trade Marks on 19 April 2023. Providing submissions for the Applicant was Tony Bannon SC and Rob Clark, both of Counsel, instructed by Herbert Smith Freehills. The Opponent’s submissions were made by Ed Heerey KC and Rebecca De Stoop, both of Counsel, instructed by Gabriel Sakkal and Michael Riordan of The Partnership of Arnold Bloch Leibler. Observing the hearing were Robyn Denholm, Catherine Webb and Matthew Denholm, officers of the Applicant.
Grounds and onus
10. The SGPs nominate grounds of opposition under ss 42(b), 58 and 60.
11. The Opponent carries the burden of establishing one or more of the grounds of opposition[2] on the balance of probabilities.[3] The rights of the parties are assessed as at the filing date of each application[4], which is also the priority date in each case 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).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Evidence
12. The following evidence was filed:
Evidence in Support (‘EIS’)
Declaration of Robyn Denholm, director and company secretary of the Opponent made on 9 November 2022, with Exhibits RD-1 to RD-9 (‘Denholm 1’).
Evidence in Answer (‘EIA’)
Declaration of Timothy Cameron Bishop, managing director and co-founder of the Applicant made on 12 February 2023 with Exhibits TB-1 to TB-20, TB-22. TB-26 and TB-29 and Confidential Exhibits TB-21, TB-23 to TB-25 and TB-27 to TB-28 (‘Bishop Declaration’).
Evidence in Reply (‘EIR’)
Second Declaration of Robyn Denholm made on 11 April 2023 with Exhibits RD-10 to RD-20 (‘Denholm 2’).
Summary of EIS
13. Denholm provides a history of the Opponent which was founded on 19 October 2021 as a privately funded investment office on behalf of her family, that is, a family office.[5] The directors of the Opponent are Denholm and her children Victoria and Matthew Denholm. Denholm lists the principal activities of the Opponent as:
(a) the management of private funds held by the investment office;
(b) venture capital investing;
(c) investing capital in operating businesses;
(d) the financing of investments; and
(e) charitable and philanthropic donations and activities,
[5] I understand that a family office is a privately held company which manages assets, investment and wealth for members of a single family.
specifically, within the science, technology, environmental, property and community-related industries.
14. Denholm claims that the Opponent has traded solely by reference to the words WOLLEMI CAPITAL GROUP (‘Word Mark’) as well as the WOLLEMI logo (Logo Mark’) which appears below:
(together ‘Opponent’s Marks’)
15. Denholm states that the development of the Opponent’s Marks began prior to establishment of the Opponent on 30 August 2021 by securing the domain name
16. Denholm exhibits a number of emails relating to the development and finalisation of a brand package of the Opponent’s Marks dated between 4 November 2021 and 16 March 2022. The emails include internal emails between Denholm, her children and Jayde Taylor (‘Taylor’), manager of family office operations for the Opponent, between Denholm and her children, and external emails between Taylor and graphic and web designer Design by Mouse. I note the email of 4 November 2021 was an internal request from Denholm to Taylor to see if Taylor was interested in producing letterhead for Wollemi Capital Group. The subject reference was ‘special project’.
17. Denholm states that the Opponent has used the Opponent’s Marks online, in electronic and other communications with third parties and in connection with its charitable and philanthropic activities and exhibits screenshots all dated after the Relevant Dates including from the Opponent’s website, LinkedIn® account and Twitter® account.
18. Denholm provides details of the Opponent’s investment related activities in the form of press and media coverage and Twitter® posts which she claims show use of the Opponent’s Marks. I note that the press releases and media coverage and all the Twitter® posts are dated after the Relevant Dates and refer to the Opponent’s investment in Hoops, the owner of the National Basketball League (‘NBL’) club Sydney Kings. I also note that none show use of the Logo Mark and all refer to Denholm making the purchase through her Wollemi Capital Group family office or family investment office.
19. Denholm exhibits a copy of an article dated 11 November 2021 from The Australian which states ‘[Denholm] has in recent weeks setup no fewer than three new corporate vehicles, named Wollemi Finance, Wollemi Capital Group and Wollemi Capital Notes 1’.
20. Denholm claims she became aware of the Applicant’s Trade Marks in May 2022 and provides her opinion that the Applicant competes with the Opponent and would have the same target audience
Summary of EIA
21. Bishop provides a history of the Applicant which was co-founded with Paul Hunyor (‘Hunyor’) and incorporated on 5 November 2021 as a global climate specialist investment firm. The Applicant’s activities include raising capital and using that capital to make investments in and support, businesses and technologies.
22. Bishop claims the Applicant is the operating entity of three related entities incorporated in December 2022 which all begin with the word Wollemi (together ‘Related Entities’) which are claimed to be licensed to use the Trade Marks.
23. Bishop states that the Applicant’s activities have extended across a number of workstreams including:
· Fundraising - seeking to raise capital and funds for investments involving meeting with potential investors;
· Partnerships - meeting with potential advisers and investing partners, and making investments together with the Applicant or its Related Entities, in Australia and the United States;
· Investing and Impact Management - defining and progressing impact and financial objectives and considering potential investments pursuant to those objectives; and
· Branding and Communications Strategy - development of the Applicant’s branding.
Pre incorporation activities
24. Bishop states that, together with Hunyor, they undertook a number of establishment activities for an investment firm beginning around mid-2021 including:
·6 July 2021 - discussions with strategy, branding and product agency Present Company regarding the development of a brand for the company that would become the Applicant. No supporting evidence is provided.
·14 October 2021 – deciding on the Trade Marks. I note that no supporting evidence is provided for this asserted activity.
·16 October 2021 and 20 October 2021 registering in the name of TB Impact Pty Ltd (of which Bishop claims to be the director and company secretary) the business names Wollemi Capital, Wollemi Company, Wollemi Firm, Wollemi Fund, Wollemi Partners, Wollemi Ethical, Wollemi Impact and Wollemi Ventures. The business names were transferred to the Applicant on 20 December 2022. Bishop exhibits extracts from the Australian Business Register ABN Lookup database.
Use of the Trade Marks and Related Activities: 5 November 2021 – 16 November 2021
25. Bishop asserts the following as examples of use of the Trade Marks by the Applicant:
·10 November 2021 – meeting between Bishop, Hunyor and a representative of Climate Salad Pty Ltd (‘Climate Salad)’ where Climate Salad pitched for the Applicant becoming a founding member in Climate Salad, and Bishop and Hunyor discussed the Applicant’s business with reference to the Trade Marks. Bishop exhibits a copy of the meeting invitation where I note there is no reference to the Trade Marks. Following the meeting, Bishop claims the Applicant became a founding member and exhibits undated screenshots of the Climate Salad website listing the Applicant as a founding member.
·11 November 2021 - Bishop and Hunyor attend a confidential meeting where the Trade Marks were used in connection with the investment activities of the Applicant. Bishop exhibits a summary of what occurred at the meeting and a copy of the meeting invitation which contains no reference to the Trade Marks.
·12 November 2021 - acquisition of the domain name by Hunyor and an initial publicly accessible website set up at that domain by Present Company. Bishop exhibits screenshots from that website claimed to be as it appeared on 12 November 2021 obtained from the Go Daddy domain registry on 10 February 2023. I note that the home page states and under the heading ‘Wollemi Story’ there appears the following:
Additionally, there is reference to the Applicant and its address. Bishop also exhibits confidential email correspondence between Hunyor and Present Company dated 12 November 2021 regarding the website. Bishop claims the domain name was later transferred to the Applicant.
Use of the Trade Marks and Related Activities post 16 November 2021
26. Bishop claims the Applicant has met, presented to, advised, invested in or alongside and interacted with a wide array of businesses, potential investors and individuals across Australia, Singapore, Canada, North America and Europe to discuss how they could support the future global fund raised by the Applicant. Bishop claims that at meetings, the Applicant often provides a version of the Wollemi Capital Investor Presentation, and exhibits in confidence, the first 5 pages of one version dated December 2021, where I note use of the Trade Marks.
27. Bishop declares that neither he nor Hunyor or other team members of the Applicant were aware of either the existence of the Opponent or any use by the Opponent of the word Wollemi at:
·the date of the Applicant’s incorporation;
·the date of adoption by the Applicant of the Trade Mark; or
·the priority date of either of the Applications.
Summary of EIR
28. The EIR can be categorised and summarised under the following headings:
Activities with Stellan Capital
29. Denholm provides further examples of use of the Opponent’s Marks in respect of investment by the Opponent prior to 16 November 2021 claimed to be facilitated by Stellan Capital, a private wealth management firm, engaged by the Opponent on 8 September 2021.
30. Denholm refers to an email from Stellan Capital to Denholm dated 1 September 2021 with the subject title ‘Wollemi Capital’ referring to a zoom meeting that day. Stellan Capital states ‘We look forward to working with you in achieving the goals you have with Wollemi Capital’ and ‘help identify complementary strategies and asset types that could for part of the Wollemi Capital portfolio’. The email also refers to a terms of engagement document from Stellan Capital which Denholm signs and returns on 8 September 2021 but a copy of this document is not provided.
31. Denholm asserts that as part of the services provided by Stellan Capital, its representatives immediately approached the market of potential investee companies on behalf of the Opponent to assess, consider and execute investments by the Opponent. Denholm claims that Stellan Capital has at all times referred to the Opponent by reference to the Opponent’s Marks. I note there is no evidence of this assertion.
32. The further examples of investments are:
·27 October 2021 - the Opponent, through a related entity, Wollemi Capital 1 Nominee Co Pty Ltd (‘Wollemi Capital 1’), made a capital investment of $1,000,000 to acquire units in the Warrawong Plaza Fund. The units in the Fund were allotted to Wollemi Capital 1 on 12 November 2022. Denholm exhibits a copy of a confirmation of payment and allotment where I note no reference to either of the Opponent’s Marks.
·1 November 2021 - the Opponent, through Wollemi Capital 1 made a capital investment of $250,000 to subscribe for share securities in Aliava Ventures Fund 1, LP (‘Aliava’), a Californian based company claimed to be focused on capital investment in both the United States and Australian based female founded technology and other innovative companies. Denholm claims the subscription agreement recording the investment is confidential.
Activities with Deloitte
33. Denholm refers to a meeting and correspondence with Deloitte dated 13 August 2021 in respect of the establishment of the Opponent as a family investment office. Denholm exhibits a copy of an email dated 16 August 2021 recording the minutes of the meeting where under the heading ‘Key takeaways’ it records the intended name of the family investment office was ‘WOLLEMI CAPITAL’. The email also records an instruction to Deloitte to conduct searches the results of which are claimed not to identify the name WOLLEMI CAPITAL being used by anyone in the impact investment market. I note that there is no correspondence from Deloitte which confirms the results of these searches.
34. Denholm claims that Deloitte undertook a number of activities to establish Opponent. In particular:
·26 August 2021, Deloitte reserved with ASIC the name ‘WOLLEMI CAPITAL PTY LTD’
·22 October 2021, Deloitte issued to Stellan Capital an accountant’s certificate[6] under s 708(8)(c) and s 761G(7)(c) of the Corporations Act 2001 of Wollemi Capital 1.
·22 October 2021 Deloitte filed Australian Tax Office Tax File Number registrations (‘TFNs’) for Wollemi Capital 1 Unit Trust, the Opponent and Wollemi Finance Pty Ltd.
[6] I understand that these sections broadly relate to certificates and statements for wholesale investors namely sophisticated or professional investors.
35. Denholm claims a meeting was held between the Opponent and Deloitte on 20 October 2021 and exhibits a copy of a meeting invitation which makes reference to Wollemi Cap. No further information regarding the discussions at this meeting have been provided.
36. Denholm also refers to emails from Deloitte to Stellan Capital dated 2 September 2021 and 7 September 2021 concerning the introduction of the Opponent to Stellan Capital. Denholm exhibits copies of emails which make reference to Wollemi Capital.
Preliminary Matter
37. The Opponent’s written submissions contained a request that I exercise my discretion under regs 21.15(4) and/or 21.19(1) to consider a third statutory declaration of Robyn Denholm made on 17 January 2024 (‘Denholm 3’), which was filed in answer to the opposition against the Opponent’s trade mark application no. 2275829 referred to above at paragraph 7 of this decision (‘829 Opposition’).
38. The Applicant filed separate written submissions on Denholm 3 on 9 April 2024 and the Opponent replied by way of separate written submissions on the same date. The Applicant and Opponent also filed additional submissions on Denholm 3 in their written submissions dealing with the substantive issues in these oppositions.[7] My decision below has taken all these submissions into consideration.
[7] Opponent’s written submissions filed 5 April 2024 and applicant’s written submissions filed 12 April 2024.
39. Regulation 21.15 (4) states:
The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.
40. Regulation 21.19 states:
Registrar may use information available
(1) If:
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
41. In Fed Square Pty Ltd v Federation IP Pty Ltd (‘Fed Square’), Hearing Officer Wilson said:
In order to determine whether or not to take information into account under Reg 21.19 it is necessary for an administrative decision maker to consider the nature and significance of the evidence put forward. If that material is of high probative value, that will be a crucial factor in the determination of whether it should be admitted.[8]
…
The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.[9]
[8] [2015] ATMO 42, [50].
[9] Ibid [55].
42. It was also acknowledged in Fed Square that the possibility of a de novo appeal to the Federal Court is a relevant consideration in deciding whether to exercise discretion to consider information under reg 21.19.[10] There are obvious cost and efficiency benefits to both the parties and the public in a matter being decided at first instance before the Registrar rather than a court. However, this alone is not a reason to exercise discretion to consider late filed evidence, otherwise every party who seeks to file late evidence could simply claim they intend to file a de novo appeal if discretion is not exercised in their favour.
[10] Ibid [44].
43. Considerations under reg 21.19 place an obligation of procedural fairness on the Registrar who may, in the context of hearing proceedings before her, exercise ‘some latitude as to what matters she may take into account in reaching decisions.’[11]
[11] Horizons (Asia) Pty Ltd v Enagic Australia Pty Ltd and Enagic Co., Ltd [2016] ATMO 26, [22] (Hearing Officer Kirov).
44. The Trade Marks Office Manual of Practice and Procedure provides some guidance on the factors to be considered in deciding whether to allow late filed evidence. issues the Opponent needs to address include[12]:
·Why the evidence was filed after the due date;
·If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier;
·What the evidence shows;
·Why that information is crucial to the delegate’s decision;
·Why it is in the public interest to have the information considered; and
·What is the balance of convenience for the parties if the information is considered.
[12] Part 51.2.5.
45. In short, the Opponent must make a compelling case in favour of the discretion being considered.
46. The Opponent submits that the evidence is highly probative, relevant and crucial to the s 58 ground of opposition as it provides further documentary exhibits demonstrating use of the WOLLEMI and WOLLEMI CAPITAL marks by the Opponent prior to the first use of those marks by the Applicant on 10 November 2021. On this basis, only evidence dated prior to 10 November 2021 in Denholm 3 could possibly be relevant. This evidence been identified by the Opponent as copies of four emails. It follows therefore that the balance of Denholm 3 has no probative value with respect to the s 58 ground. Further, the Opponent has not argued the probative value and relevance of Denholm 3 for any other ground.
47. The Applicant submits that the Opponent has not conceded or suggested that, absent the evidence being considered, its Oppositions would be unsuccessful, or how the documents are otherwise vital to its case. There are of course two other grounds of opposition the Opponent can rely on.
48. The Applicant further submits that the four emails are emails of the same kind as those as already in evidence. I agree. One of these emails is between Stellan Capital and Denholm (and others), two are between Aliavia and Denholm and one is between Trawalla Group, Stellan Capital and Denholm which references Aliavia. Further, Stellan Capital and Aliavia have previously been referenced in Denholm 2 with exhibited correspondence as early as 2 September 2021. Given there is evidence already filed in respect of the Opponent’s claimed use prior to 10 November 2021, the Opponent has not offered a reason as to why the four emails are crucial.
49. The Opponent accepts that the further exhibits could have been included in Denholm 1 or Denholm 2 and states that their omission was a regrettable oversight. Firstly, it is important that the Opponent be open and transparent as to why the evidence was not filed in Denholm 1 or Denholm 2 and why it is just being provided now. Saying it was a ‘regrettable oversight’ is not sufficient. Clearly failing to file evidence is regrettable but full transparency would require a proper explanation as to who made the oversight and when was the oversight first noticed. This is especially so where emails between Denholm and Stellan Capital, particularly those that reference Aliavia already appeared in Denholm 2 and the four emails were clearly available to the Opponent prior to and during the evidentiary stages.
50. The Opponent further submits that the reality is that the Applicant has been in possession of Denholm 3 since 18 January 2024 (which is well after the evidence periods of these current oppositions had passed) and has taken the opportunity to file evidence in reply to this declaration in the context of the 829 Opposition.
51. The Applicant’s possession of Denholm 3 since 18 January 2024 was in respect of a different opposition and was filed around 8 months after the evidence periods of these current oppositions had passed. Further, the fact that the Applicant has taken the opportunity to file evidence in reply in the context of the 829 Opposition does not persuade me that the four emails should be considered in these oppositions.
52. The Opponent submits that Denholm 3 has been properly filed in the course of the 829 Opposition and is plainly ‘before’ the Registrar within the meaning of reg 21.15(4) and is ‘available to’ the Registrar within the meaning of reg 21.19. The Applicant submits that to date, the new evidence has not been filed in these proceedings, so it is unclear how it is that the Opponent submits that the information is ‘before’ the Registrar, or ‘available’ to the Registrar on the present oppositions. Denholm 3 has been filed as evidence on the 829 Opposition and has merely been given to me (and the Applicant) as part of the Opponent’s written submissions. Technically Denholm 3 is before me and available to me because I can access it through IP Australia’s systems however, as the four emails in Denholm 3 could have been filed in the current oppositions but were not so filed, I do not consider it ‘before me’ or ‘available to me’ for these oppositions. Further, the Opponent provides no explanation as to why Denholm 3 has not been filed on the current oppositions, even as late filed evidence, particularly in the period between 17 January 2024 (and likely before this date given the Opponent would have been aware of the four emails during the drafting of Denholm 3) and the date of the hearing.
53. The Opponent submits that Denholm 3 was regularly filed within the relevant deadline for the 829 Opposition such that the Registrar’s delegate hearing that opposition will necessarily take Denholm 3 into account. The Opponent claims there is an obvious public interest in the Registrar’s delegates in both oppositions being able to refer to a complete and consistent body of evidence available to the Registrar regarding these two parties’ conflicting claims to the trade marks WOLLEMI and WOLLEMI CAPITAL and in avoiding an outcome where such probative evidence is taken into account by the Registrar’s delegate in one of these oppositions, but not by the Registrar’s delegate in the other opposition.
54. I am not persuaded by this argument. The 829 Opposition and the current oppositions are not on all fours. The opposed marks and the services they cover are not the same. Denholm 3 may be relevant to an opposition in Class 35 but not necessarily to an opposition in Class 36 for different marks.
55. The Opponent also submits that the exhibits to Denholm 3 will be available for the Opponent to rely on in any appeal from this decision. Of itself, this is not a reason to exercise my discretion to consider Denholm 3.
56. Finally, the Opponent submits that the Applicant is not disadvantaged by my considering Denholm 3 and in the absence of any real inconvenience to the Applicant, the balance of convenience weighs in favour of my considering the evidence. To this end I note that the Applicant has pre-emptively responded to the Opponent’s submissions referring to the late evidence. Therefore, the Applicant will not be greatly inconvenienced if the four emails are considered as part of the evidence.
57. In conclusion, the Opponent’s delay, its failure to file Denholm 3 as late evidence on these oppositions and its failure to offer any explanation weighs heavily against the inclusion of the four emails. Furthermore, for reasons that will become apparent, Denholm 3 is not crucial to the outcome of these proceedings. I am therefore satisfied it is not appropriate in the circumstances of this case to allow Denholm 3 or any part of it into these proceedings under reg 21.15(4) and 21.19. Accordingly, this decision will only have regard to the evidence which has been properly filed.
Discussion and Reasons
Section 58
58. The provisions of s 58 provide:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
The SGPs claim that the words WOLLEMI and WOLLEMI CAPITAL (‘Trade Marks’) were used by the Opponent in relation to financial and investment services prior to the filing date of the Applications and therefore the Opponent is owner of the Trade Marks.
The Applicant submits that the claim to first use and ownership of the Trade Marks by the Opponent in the SGPs did not foreshadow reliance upon any use other than that of the Opponent. The implication being that the Opponent cannot now rely on first use by any other party other than the Opponent (or a predecessor in title).
The Opponent submits that what matters under s 58 is that first use is not by the Applicant and the Applicant is wrong in suggesting that the Opponent must prove use by the Opponent. The Opponent also submits that in any event, the Opponent itself claims to have used the Trade Marks before the Applicant.
I agree with the Opponent that the s 58 ground of opposition will be established if it is found the Applicant is not the owner of the Trade Marks in respect of the Applicant’s Services.
With respect to the Opponent’s arguments which were not pleaded in the SGPs, I note that the purpose of a Statement of Grounds and Particulars is to define the issues that the Applicant is required to address in defending their application. Accordingly, the Opponent should not be able to rely on matters not notified in its SGP. Having said that, the Opponent has nominated s 58 as a ground of opposition and its EIS and EIR outlines use of the Opponent’s Marks by other than the Opponent, clearly foreshadowing a broader reliance on s 58. Accordingly, it cannot be entirely surprising to the Applicant that the Opponent wishes to rely on use of the Opponent’s Marks by persons other than the Opponent or by the Opponent’s predecessors in support of the s 58 ground. In any event, for the reasons discussed below, I do not consider that the outcome of this matter would be any different had the Opponent properly particularised the s 58 ground of opposition in its SGPs by specifying that it relies on use by persons other than the Opponent of the Opponent’s Marks.
The Act provides for registration of ownership and not ownership by registration.[13] Ownership of a trade mark may be established ‘either by reason of authorship and prior use or by reason of authorship, filing the application and an intention to use’.[14]
[13]Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [170] (Greenwood, Besanko and Katzmann JJ). See also PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602, [78]-[80] (Carr J).
[14] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ) (‘Pham Global’).
The right to registration under the Act depends upon ownership of the trade mark and this requirement must be satisfied at the filing date of the application,[15] which in this case is 16 November 2021 for the 692 Mark and 9 December 2021 for the 287 Mark.
[15] Ibid [14].
66. The concept of trade mark ownership was discussed in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd wherein the Full Court of the Federal Court observed:
[O]wnership may be acquired by the act of applying for registration of a trade mark even though the applicant has not previously used the mark and the mark has already been used outside Australia by someone else. However, the applicant’s claim to ownership of the mark may be defeated if another person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.[16]
[16] [2018] FCAFC 6, [49] (Nicholas, Yates and Beach JJ).
The use must be use as a trade mark, namely as a ‘badge of origin’ to indicate a trade connection between goods and services and the trade mark owner and the prior use must be in the course of trade in Australia.[17] The ‘course of trade’ has a broad meaning, consistent with ‘for the purposes of trade’,[18] which necessarily excludes personal use.[19]
[17] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, [19] (Black CJ and Sundberg and Finkelstein JJ).
[18] W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182, 191 (Dixon CJ, McTiernan, Williams, Webb and Taylor JJ).
[19] Oakley Inc v Franchise China Pty Ltd [2003] FCA 105 (Drummond J).
As the High Court said in W D & H O Wills (Australia) Ltd v Rothmans Ltd:
The word "trade is, as their Lordships have told us in the Aristoc Case, a very wide word, but the use of a trade mark for the purposes of trade would have to be at least a use of the mark to indicate the origin of the goods. As Lord Simonds said of the analogous words in the course of trade", the use of the mark would have to be a use for the purposes of trade in the goods.[20]
[20] (1956) 94 CLR 182, 191 (Dixon C.J., McTiernan, Williams, Webb and Taylor JJ).
The purpose and nature of the use is the relevant inquiry in answering the question whether the use is use ‘as a trade mark’.[21] The assessment of the purpose and nature of the use of the sign is objective, that is by reference to what a member of the public could be expected to understand by its use.[22]
[21] Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 422 per Kitto J.
[22] Ibid 425. See also Sports Break Travel Pty Ltd v P & O Holidays Ltd [2000] FCA 924, [14] (Burchett J).
In Oakley Inc v Franchise China Pty Ltd, Drummond J stated:
The term “trade” in the context of the phrase in s 17 the Trade Marks Act 1955 (Cth) is undoubtedly a wide one. It encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods. It has been held that “a use of a mark in an advertisement of goods is a use in the course of trade, and is of course a use in relation to the goods advertised”: The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd. The use of a mark on goods in conducting investigations as to whether there might be a market for those goods is unlikely to be a use of the mark in the course of trade: that will generally be the use of a mark in activities preparatory to the commencement of a course of trade. See Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd. But where the owner of a mark is able to show that it is committed to supplying marked goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to prospective customers in soliciting business will probably amount to the use of the mark in the course of the trade: see Settef at 439; Woolly Bull Enterprises Pty Ltd v Reynolds and cf Buying Systems (Australia) Pty Ltd v Studio Srl.[23]
[23] [2003] FCA 105, [29] (citations omitted).
In the words of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds[24] cited with approval by Katzmann J in Dick Smith Investments Pty Ltd v Ramsey:[25]
[24] [2001] FCA 261.
[25] [2016] FCA 939, [149].
[T]he owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.
The mere registration of a corporate entity,[26] business name,[27] reservation or registration of a domain name[28] do not of themselves constitute use of a sign as a trade mark. However, if the registered domain name is linked to a website that contains advertising material that promotes goods or services in relation to which the trade mark is registered, this combination of use could constitute use as a trade mark.[29]
[26] Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278, [73]; Matzka v The Mind Gym Ltd (2006) 68 IPR 339, [17]; Christou v Tonch (2008) 78 IPR 358 at [34]-[35].
[27] Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2015] FCA 554, [42] (Rangiah J
[28] Solarhart Industries Pty Ltd v Solar Shop Pty Ltd [2011] FCA 700, [50] (Perram J); CSR Limited v Resource Capital Australia Pty Limited [2003] FCA 279 [42] (Hill J).
[29] Ibid.
The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd said:
Whether a sign has been “use[d] as a trade mark” is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.[30]
[30] [2023] HCA 8, [24] ((Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).
The objective purpose and nature of use are assessed by reference to context which includes the relevant trade[31], the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote.[32]
[31] Woolworths Ltd v BP Plc [No 2] (2006) 154 FCR 97, 117 [77] (Heerey, Allsop & Young JJ).
[32] Pepsico Australia Pty Ltd v Kettle Chip Co Pty Ltd (1996) 135 ALR 192, 211-212, 218; Anheuser-Busch Inc v Budejovický Budvar Národní Podnik (2002) 56 IPR 182, 227 [186] (Allsop J).
Justice Gummow said in Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited:
The primary function of a trade mark...is that of distinguishing the commercial origin of goods or services sold under the mark. The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.[33]
[33] (1991) 30 FCR 326, [20] (my emphasis).
The Opponent must establish that the Trade Marks, or substantially identical trade marks, were used as a trade mark before the Relevant Dates by a person other than the Applicant in relation to the same services, or goods or services of the same kind, as those of the Applications.
The Opponent submits that:
·the Applicant’s Services are similar to, or ‘the same kind of thing’ as the services offered by the Opponent prior to the alleged first use of the Trade Marks by the Applicant, which include venture capital financing, capital fund investment, investment of funds, financial investment, financing of investments, provision of funds, provision of investment capital and provision of investment services (‘Used Services’).
·the Applicant claims first use of the Trade Marks on 10 November 2021 but the evidence is not sufficient as there is no reference to the Trade Marks and/or the evidence consists of an uncorroborated assertions.
·the Applicant is not the first person to use the Trade Marks in relation to the Applicant’s Services.
·the Opponent is in the business of investing capital in third party businesses. The Opponent’s source of capital is privately funded capital. The Opponent further submits that the evidence shows use of the Trade Marks on the Used Services and that the Opponent, its Related Entities or Denholm’s use of the Trade Marks were not in the guise of preparatory or preliminary activities.
The Applicant submits that:
·the Opponent has not established that, at any point in time before the respective Relevant Dates, it has offered services to, or proposed to offer services to, anyone at all, let alone by reference to any particular mark.
·the references to ‘Wollemi Capital’ and ‘Wollemi Capital Group’ in the Opponent’s evidence do not constitute use of a sign as a trade mark.
·the actions and emails referred to by Denholm in Denholm1 and Denholm 2 were merely preliminary steps to be taken to set up a Denholm family office, the Opponent and its Related Entities and therefore there was no trade mark use of Wollemi, Wollemi Captital or Wollemi Capital Group.
·the references to Deloitte and Stellan Capital were in respect of services to be provided by them and not references in respect of any services to be provided to anyone by Denholm, the Opponent or its Related Entities.
As a first step I consider it relevant to first discuss whether the Applicant was first to use the names WOLLEMI and WOLLEMI CAPITAL as a trade mark in respect of the Applicant’s Services or services considered to be the same kind of thing before the Relevant Dates. This will establish the date before which the Opponent must satisfy me that a person other than the Applicant has used the Trade Marks, or substantially identical trade marks, in relation to the same services, or services of the same kind, as those of the Applications.
Applicant’s activities
As to the Applicant’s pre incorporation activities summarised at paragraph 23 of this decision, I do not consider these activities to be trade mark use of any names. Those activities dated 6 July 2021 and 14 October 2021 are uncorroborated bald assertions which are not supported by any corroborative evidence. Further even if they were supported by evidence, these types of activities are, in my view, merely preliminary activities and not use of any names as a trade mark. The activity dated 5 November 2021 refers to the registration of a number of business names. As stated at paragraph 71 of this decision, the mere registration of a business name is not trade mark use.
As to the Applicant’s activities between 5 November 2021 and 16 November 2021 summarised at paragraph 24 of this decision, providing copies of meeting invitations which contain no reference to the Trade Marks is insufficient evidence. Further, Bishop’s reference to and summary of discussions of the Applicant’s business with reference to the Trade Marks at these meetings are unsupported and uncorroborated assertions. I cannot be satisfied that the purported use of the Trade Marks occurred on these dates.
Further, as stated at paragraph 71 of this decision, the mere registration of a domain name is not trade mark use but if a domain name is linked to a website that promotes goods or services, this combination of use could constitute use as a trade mark. Bishop’s evidence of a publicly accessible website set up at the domain consists of screenshots from that website and confidential email correspondence dated 12 November 2021 regarding the production of the website. On their face, taken in combination, I am satisfied that the registration of the domain name linked to a publicly accessible website, the content of which l see as promoting investment services, is use in the course of trade of the Trade Marks by the Applicant for investment services.
As this point, I am satisfied that the Applicant can claim first use of the Trade Marks for investment services on 12 November 2021. For the Opponent to be successful under s 58, the Opponent must satisfy me of there is use by another, be it the Opponent or otherwise, of the Trade Marks or substantially identical trade marks, prior to 12 November 2021 in respect of investment services or the same kind of thing.
Opponent’s and others’ activities
The Opponent’s evidence prior to 16 November 2021 in the EIS and EIR consists of the activities with Deloitte, the activities with Stellan Capital, two investments by Wollemi Capital 1, reservation and registration of company names, registration of domain names, obtaining an accountant’s certificate and Tax File Numbers, an internal email with Taylor and an article from The Australian.
On the evidence, the Opponent’s and Applicant’s submissions differ. The Applicant submits that the emails and meetings do not support a conclusion that any of the Opponent, its Related Entities or Denholm were providing a service to anyone. Rather the Applicant submits that the evidence only shows that the Opponent, its Related Entities or Denholm enlisted the services of Deloitte and Stellan Capital to invest, advise and facilitate investment of monies for and on behalf of Denholm and her children. The purchase of assets by the Opponent or its Related Entities is not providing an investment service to anyone. The Opponent or its Related Entities are in the business of investing family money to acquire suitable assets for the benefit of the Denholm family. It is not in the business of acquiring funds and investing those funds for third parties.
I agree with the Applicant that Stellan Capital was engaged to advise the Denholm family office with respect to appropriate investments for the Denholm family office to make. The introduction by Deloitte of Denholm, her children and the Opponent[34] to Stellan Capital and the engagement of Stellan Capital support this conclusion. Therefore, I am satisfied that Stellan Capital was providing wealth management services[35] to Denholm and the Opponent and not the other way around.
[34] The Opponent was incorporated on 19 October 2021. Denholm 1 Exhibit RD-2.
[35] As described by Denholm in Denholm 2 [5].
The Applicant further submits that the capital investments by Wollemi Capital 1 Nominee Co Pty Ltd did not constitute the provision of a capital fund in the course of trade as they were passive investments where Wollemi Capital 1 Nominee Co Pty Ltd had no role in influencing the operation or direction of the businesses invested in, and in any event a reference the name of the investor as Wollemi Capital 1 Nominee Co Pty Ltd is not use of Wollemi or Wollemi Capital as a trade mark.
The Applicant relies heavily on Anchorage Capital Partners Pty Limited v ACPA Pty Ltd[36] (‘Anchorage’) that passive investment[37] is not a service. Perram J said:
[36] [2015] FCA 882 (‘Anchorage’) (Perram J).
[37] I understand passive investment is an investment approach that avoids frequent buying and selling and seeks to invest in securities likely to grow over the long term.
As to (d), there were a number of instances prior to 2007 in which various fund entities within the second respondent’s group used the US ANCHORAGE names in transactions in Australia. Often these were not related to negotiations to acquire interests (which were generally conducted by the second respondent) but were more closely tied to the settlement elements of the transactions. For the reasons I have already given, however, I do not think that any of these arrangements involved the use by these entities of the names as trademarks in the course of their trade. They were not attempting to distinguish their services from those of others using the names because they were not providing services by passively investing in Australian businesses.[38]
[38] Anchorage (n 36), [42].
89. The Opponent submits that the provision of investment capital is the provision of a service and there is no distinction between the provision of funds and the provision of investment capital. The Opponent also submits that Anchorage was not on all fours with the present matter because the services in that case differed from the Used Services. I note the services in Anchorage were:
Acquisition for financial investment; administration of financial affairs; advisory services relating to financial investment; conducting of financial transactions; financial advisory services for companies; asset management; financial fund management; financial investment management services; financial transaction services; all the aforementioned services targeted towards special situations and mismanaged or underperforming companies to help improve their financial performance.[39]
[39] Ibid [3].
90. In reply the Applicant submitted that Anchorage applies equally to the Used Services. I agree with the Applicant as while the Used Services are not identical they are at least similar services, particularly given that the Used Services include financial investment.
91. The Opponent submits that the capital investments by Wollemi Capital 1 was Wollemi Capital 1 providing the service of a capital fund investment in the course of trade and that Warrawong Plaza Fund understood that the name Wollemi Capital identified a particular source of capital funds investment and distinguished this source of funds from other sources of capital funds investment.
92. The Opponent also submits that the fact that Stellan Capital was providing a service to the Opponent, namely finding customers for the Opponent’s venture capital to be provided under the Wollemi Capital name, does not preclude a conclusion that the Opponent (or Denholm) was using Wollemi Capital to distinguish its service of providing venture capital and financial investment.
93. Further, the Opponent submits that the receipt for the capital investment into the Warrawong Plaza Fund referred to the provider of the capital fund investment as Wollemi Capital. This is not correct. The receipt is clearly to Wollemi Capital 1 Nominee Co Pty Ltd < Wollemi Capital 1 Unit A/C>.
94. Firstly, in my view the reservation and registration of company names, registration of domain names, obtaining an accountant’s certificate and TFNs, as stated in paragraph 71 of this decision, the activities of reservation and registration of company names and registration of a domain names do not of themselves constitute use of a sign as a trade mark. Along the same lines, I consider that obtaining an accountant’s certificate or obtaining TFNs are in the same category. The acts themselves do not constitute public use of a trade mark in the course of trade. They are only records of compliance with Australia’s taxation laws and other legislative requirements and are at best preliminary activities.
95. Secondly, I also do not consider the internal email between Denholm and Taylor on 4 November 2021 is anything other than a preliminary activity and being internal is certainly not public use of any trade mark in the course of trade. Further, there is no reply from Taylor as to whether she accepted the task which I assume is unlikely given her then contacting Design by Mouse on 10 December 2021.
96. Thirdly, a newspaper report on the incorporation of one or more companies is also not cogent evidence of use of these corporate names as trade marks and nor is it evidence that Denholm, the Opponent or its related entities are providing investment or other financial services.
97. Fourthly, the following activities with Deloitte also fall short of convincing me on the balance of probabilities of use of Wollemi Cap or Wollemi Capital as a trade mark in the course of trade in respect of the Used Servicers or indeed any of the Applicant’s Services:
·20 October 2021 meeting. The Opponent provides no information as to what was discussed at the meeting of 20 October 2021 between the Opponent and Deloitte referencing Wollemi Cap.
·13 August 2021 meetings and correspondence. I consider that these activities are merely preliminary activities investigating the potential name Wollemi Capital and fall short of Denholm having committed to using any trade mark.
98. This leaves the remaining activities with Deloitte, the activities with Stellan Capital and the two investments by Wollemi Capital 1.
99. At this point, it is important to consider whether these activities and the documents support a conclusion that the Opponent, its Related Entities, Denholm or her children were providing any services to anyone in the course of trade or just to themselves. I do not consider that these activities and documents suggest that the Opponent, its Related Entities, Denholm or her children were providing or offering to provide any service to any person other than themselves.
100. Justice Lockhart in Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co said of the term services:
The Act defines neither “services” nor “goods”. In the absence of a statutory definition of “services” in the Act it will fall to the courts to give meaning to the word. Some guidance may be obtained from the Mathys Committee's recommendation (para 67) that any definition of “services” in the Trade Marks Act 1938 (UK) should be broad enough to include the following types of service:
(i) consultancy and advisory services which involve no goods;
(ii) similar services which involve goods and can be provided either with or without the promotion, or sale, of goods; and
(iii) services which necessarily involve the use, or sale, of goods.
The definition of “services” in the Trade Practices Act 1974 (sub-s 4(1) may also be a useful guide.[40]
[40] (1983) 48 ALR 511, 522). The same definition also appears in s 4(1) of the Competition and Consumer Act 2010 (Cth).
101. Section 4(1) of the Trade Practices Act 1974 states:
services includes any rights (including rights in relation to, and interests in, real or personal property), benefits, privileges or facilities that are, or are to be, provided, granted or conferred in trade or commerce,[41] and without limiting the generality of the foregoing, includes the rights, benefits, privileges or facilities that are, or are to be, provided, granted or conferred under:
[41] My emphasis.
(a)a contract for or in relation to:
(i)the performance of work (including work of a professional nature), whether with or without the supply of goods;
(ii)the provision of, or the use or enjoyment of facilities for, amusement, entertainment, recreation or instruction; or
(iii)the conferring of rights, benefits or privileges for which remuneration is payable in the form of a royalty, tribute, levy or similar exaction;
(b)a contract of insurance;
(c)a contract between a banker and a customer of the banker entered into in the course of the carrying on by the banker of the business of banking; or
(d)any contract for or in relation to the lending of moneys;
but does not include rights or benefits being the supply of goods or the performance of work under a contract of service.
102. The definition of service in the Australian Oxford Dictionary Online (2nd edition) is, inter alia:
noun 1. the act of helping or doing work for another or for a community etc.
2. work done in this way.
3. assistance or benefit given to someone
and in the Macquarie Dictionary Online is, inter alia, ‘an act of helpful activity and the supplying or supplier of any articles, commodities, activities etc required or demanded’.
103. In Adamson v New South Wales Rugby League Ltd, Wilcox J observed that:
As a reference to any standard dictionary will show, although the word “services” has a wide application, it imports always the notion of some assistance or accommodation being made available by one person to another.[42]
[42] (1991) 31 FCR 242, [43].
104. I therefore consider a service is an activity where one party provides services to another party in trade or commerce, usually for a fee. It is not an activity of providing a service to oneself.
105. The Applicant submits that Denholm, the Opponent or its Related Entities were purchasing assets and investing money with the assistance of Deloitte and Stellan Capital not for the benefit of another but for the benefit of wealth creation for Denholm and her children. The Applicant gives the example of Denholm using her money to buy shares in a bank, or units in a fund. Her acquiring those assets could not constitute her providing services in the course of trade to the bank or the fund. Furthermore, if these actions were undertaken by the Opponent, which is controlled by Denholm and her children, the result would be no different.
106. Here the Opponent or its Related Entities hold the capital of the Denholm family which is then invested with the assistance of Stellan Capital ultimately for the benefit of the Denholm family. To me this differs from a third party providing capital to the Opponent which is then invested by the Opponent for the benefit of that third party, even if it benefits the Opponent as well. I agree that the Opponent is merely one of a number of privately held vehicles through which Denholm and her family acquire their wealth and in effect Denholm, the Opponent and its Related Entities are providing services to themselves and not to third parties at arms length. The Opponent and its Related Entities are providing venture capital and undertaking financial investments but I categorise these as personal and not in the course of trade or commerce.
107. The Opponent submits that the Opponent provides capital investment services as it directs the investment of the capital funds held by the Opponent. This is true, however the direction of the capital funds is ultimately for the personal benefit of the Opponent and therefore Denholm and her family. In fact, the Opponent and its Related Entities provide the Used Services for the personal benefit of the Opponent and therefore Denholm. This is consistent with the Opponent being a family office.
108. I refer to the words of Justice Gummow in Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited:
The primary function of a trade mark...is that of distinguishing the commercial origin of goods or services sold under the mark. The registered mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such, the origin of that quality in a particular business, whether known or unknown by name.[43]
[43] (1991) 30 FCR 326, [20] (my emphasis).
109. The phrase ‘in trade or commerce’ means activities or conduct which is itself an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character.[44]
[44] Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594, 604 (Mason C.J, Brennan, Deane, Dawson, Toohey, Gaudron and McHugh JJ).
110. The interactions of Denholm, the Opponent and its Related Entities with Deloitte and Stellan Capital are interactions with third parties, but they are interactions where Deloitte and Stellan Capital are providing services to Denholm, the Opponent and its Related Entities and not the other way around.
111. I do not believe the Opponent or its Related Entities have provided any services in the course of trade or commerce. Therefore, I am not satisfied that Denholm, her children, the Opponent or its Related Entities used the names Wollemi or Wollemi Capital in respect of the Used Services or any of the Applicant’s Services prior to 12 November 2021 or the Relevant Dates. Rather, I am satisfied that the services of providing venture capital and undertaking financial investments were not provided by Denholm, her children, the Opponent or its Related Entities to anyone in a commercial sense in trade but rather only to the Opponent in a private and personal sense.
112. Therefore, the Opponent has not established that the Trade Marks, or substantially identical trade marks, were used before the Relevant Dates by a person other than the Applicant in relation to the same services or services of the same kind, as those of the Applications and the ground under s 58 has not been established.
Section 60
113. Section 60 provides:
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.
Note:For priority date see section 12.
114. To establish this ground, the Opponent must demonstrate the existence of another trade mark which had acquired a reputation in Australia before the Relevant Date. The Opponent must then establish that because of this reputation, use of the Trade Mark would be likely to deceive or cause confusion.
115. In summary, the SGP provides that the Opponent acquired a reputation in the Opponent’s Marks amongst a significant section of the public in Australia prior to 16 November 2021 in relation to the Applicant’s Services and because of that reputation in the Opponent’s Marks, the use of the Trade Marks would be likely to deceive or cause confusion.
116. While the Opponent bases the s 60 ground on the Opponent’s Marks, notably, each is considered a separate trade mark for the purposes of s 60. [45]
[45] Qantas Airways Ltd v Edwards (2016) 338 ALR 134, [160] (Yates J); Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [89] (O’Bryan J) (‘Rodney Jane’).
Reputation
117. The meaning of reputation was considered by Kenny J in McCormick & Co Inc v McCormick (‘McCormick’) as referring to ‘the recognition of the [trade mark] by the public generally’.[46]
[46] [2000] FCA 1335, [81] (‘McCormick’).
118. Further, Kenny J stated in McCormick that:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product ... public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[47]
[47] Ibid [86].
119. The reputation in the other trade mark must be amongst a ‘significant or substantial’ number of Australian consumers but this is tempered by the nature of the relevant market.[48] Here the nature of the parties’ services can be characterised as financial and investment services. Therefore, the relevant market is likely to include many Australian households. Meanwhile, the ‘existence and extent of reputation’ must be established as a matter of fact by the Opponent.[49]
[48] See, eg, Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[49] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [57] (Lockhart J).
120. 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.[50]
[50] Rodney Jane (n 45), [83].
121. The Opponent submits that the type of venture capital investment services provided by the Opponent are plainly targeted to a narrow niche market, unlike mass-marketed consumer products and that by the earliest filing date of 16 November 2021, the Opponent had a reputation among the relevant class of persons interested in venture capital investment services, including funds managers, venture capital funds and private wealth management firms.
122. There are significant weaknesses in the Opponent’s evidence as much of it relating to social media, online, electronic and other communications with third parties, newspaper articles and charitable and philanthropic activities are dated after the Relevant Dates. Further the activities with Stellan Capital and Deloitte, while some occurred before the Relevant Dates, are insufficient to establish, as a matter of fact, of any reputation in either of the Opponent’s Marks amongst a ‘significant or substantial’ number of Australian consumers of venture capital investment services, let alone a reputation sufficient to enliven s 60.
123. As I have found that neither of the Opponent’s Marks have acquired a reputation in Australia before the Relevant Dates, there is no need for me to consider the second limb of s 60 and the ground of opposition under s 60 has not been established.
Section 42(b)
124. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
125. The Opponent asserts that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). Additionally, the Opponent asserts that use of the Trade Mark would amount to the common law tort of passing off.
ACL
126. 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.[51]
[51] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
127. The claim that use of the Trade Mark would constitute misleading or deceptive conduct under the ACL relies on the Opponent establishing a reputation in the Opponent’s Marks. If there is no reputation, there can be no mistaken belief or assumption on the part of the consumer caused by use of the Trade Mark, and therefore such use cannot be misleading or deceptive.
128. I have already determined under s 60 that the evidence is insufficient to establish reputation in the Opponent’s Marks in Australia. Absent sufficient evidence of reputation, I am not satisfied that use of the Trade Mark would be contrary to law, and the ground under s 42(b) is not established.
Passing Off
129. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.
130. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
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.[52]
[52] [1989] FCA 506, [40] (Hill J).
131. Section 18 of the ACL is the equivalent of s 52 of the TPA.[53] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.
[53] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).
132. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.
Decision
133. Section 55 relevantly provides:
Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
134. The Opponent has not established a ground of opposition. Accordingly, trade mark numbers 2226692 and 2234287 may proceed to registration one month from the date of this decision.
135. If the Registrar is served with a notice of appeal before that time, I direct that registrations shall not occur until the appeal has been decided or discontinued and that the disposition of the applications should otherwise be in accordance with the Court’s order or direction.
Costs
136. Both parties have sought an award of costs. Costs usually follow the event. Accordingly, with respect to the opposition to trade mark 2226692, I award costs against the Opponent in accordance with the amounts in Schedule 8 of the Regulations and for the opposition to trade mark 2234287, I award reduced costs against the Opponent under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[54]
[54] [2001] ATMO 78 (Hearing Officer Williams).
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks12 June 2024
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