2025 ATMO 181

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 42(b) and 60 grounds of opposition - no evidence filed - ground of opposition not established.

1. This decision concerns trade mark application number 2370690 in the name of Gale Pacific Limited ('Applicant') filed under the Trade Marks Act 1995 (Cth).[1] I extract details of the trade mark below:

Trade mark: ECOBANNER BY GALE PACIFIC ('Trade Mark')

Specification: Class 24: Banners of textile or plastic; Flags of textile or plastic; Plastic material (substitute for fabrics); Textiles

1. Acceptance of the Trade Mark was advertised on 16 May 2024. The Trade Mark was opposed by Brendan Clayton ('Opponent'). Following the usual opposition process, the Applicant requested a decision without a hearing. None of the parties requested to be heard.
2. The Opponent asserts grounds of opposition under ss 42(b) and 60 in its Statement of Grounds and Particulars ('SGP'). The onus to prove a ground of opposition is squarely on the Opponent.[2] However, I note that the Opponent has filed no evidence in this matter.

Section 60

1. Section 60 provides:

60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

1. A relevant 'reputation' for the purposes of s 60 must be demonstrated by evidence.[3] It is for the Opponent to establish that a reputation exists as a matter of fact. The absence of evidence is generally fatal to a s 60 ground of opposition as it means the opponent will fail to evidence a reputation in another trade mark.[4]
2. The SGP references registered Australian trade mark 2245718 and states the following, in respect of s 60 ground of opposition:

EcoBanna (Banna is short for Banner) is a trademark was registered back in February 2022 as a sub brand of our well known Bannamesh brand (Trademark 1727032) in Australia & New Zealand and has fast become the go to product to for the clients that are looking for a PVC environmentally friendly banner material. Whilst the conflicting trademark that is going through has been put through as a different trademark class it is for an almost identical product in the exact same billboard and banner market here in Australia. Whilst Gale Pacific do not print banners or billboard but rather supply the substrate material to other banner and billboard manufacturers, those competitors of ours are starting to use the Ecobanner name (e.g. Cactus Imaging) to compete with our EcoBanna product. We believe if Ecobanner by Gale Pacific is registered this will allow Gale Pacific's clients to market directly against us and believe this would be unfair considering we've spent alot of time, effort and money marketing our EcoBanna brand into the Australian market as a PVC free banner material to protect the environment...

1. The following representation for registered trade mark 2245718 is also provided:

1. The SGP makes only broad statements. The Opponent has presented no evidence to corroborate a reputation in another trade mark as mentioned in the SGP. There is nothing placed before me that could reasonably satisfy me on the balance of probabilities that another trade mark had acquired a reputation. The fact of there being an earlier registered trade mark and bare assertions regarding a reputation are insufficient to establish a reputation. Accordingly, the prerequisite to a finding under s 60, being the requirements of s 60(a), is not satisfied.
2. Accordingly, the ground of opposition under s 60 has not been established.

Section 42(b)

1. Section 42(b) provides that an application for the registration of a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law.[5]
2. The SGP identifies the law of passing off as the basis for the ground of opposition under s 42(b).
3. I note my findings in relation to s 60. It follows that on the more stringent requirements posited by the law of passing off, I am not satisfied that use of the Trade Mark is likely to amount to passing off. For these reasons the Opponent has not established that use of the Trade Mark would be contrary to law.
4. Accordingly, the ground of opposition under s 42(b) has not been established.

1. The opposition fails and trade mark 2370690 should proceed to registration one month from this decision subject to the usual appeal period.
2. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should otherwise be in accordance with the Court's order or discretion.
3. The Applicant sought its costs. The usual rule is for costs to follow the event. I award costs against the Opponent in accordance with s 221 in the amounts specified in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

[1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

[2] Section 55; Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [152]-[156] (Greenwood, Besanko and Katzman JJ).

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

[4] Emark Analytics APAC Pty Ltd v Martin Kostic [2023] ATMO 107, [21]-[25] (Hearing Officer K Brown).

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