2025 ATMO 215

Trade Marks Act 1995 (Cth) - opposition under section 52 - grounds of opposition under sections 58, 59 and 62A - no ground established - trade mark to proceed to registration

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by FORME WHOLE BODY PTY LTD ('Opponent') to registration of the following trade mark:

Mermaid Beach Radiology Pty Ltd and Kirralee Jo Sherif ('Applicants')

Class 44: Radiology services ('Applicants' Services')

1. The Trade Mark was examined and advertised as accepted for possible registration on 7 August 2024.
2. On 30 September 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 24 October 2024, the Opponent filed a Statement of Grounds and Particulars ('SGP'). The Applicants filed a Notice of Intention to Defend the opposition on 29 November 2024. No evidence was filed by either of the parties.
3. The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Applicants requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP.

1. The SGP nominates grounds of opposition under ss 58, 59 and 62A. The Opponent carries the burden of establishing a ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]

Section 58**

1. Section 58 provides that the registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
2. The right to registration under the Act depends upon ownership of the trade mark and not ownership by registration.[5] The requirement as to ownership must be satisfied at the filing date of the application.[6] Ownership of a trade mark may be established 'either by reason of authorship and prior use or by reason of authorship, filing an application and an intention to use'.[7] Authorship in this context is not predicated on being the first to coin the trade mark, instead it refers to the first to adopt the trade mark with an intention of using it in Australia in respect of the claimed goods and/or services.[8]
3. 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.[9]

1. The default position under the Act is that the Applicants are prima facie considered to be the owners of the Trade Mark. Consequently, it is the Opponent who bears the evidential onus of establishing that the Applicants were not the owners of the Trade Mark at the Relevant Date.
2. The Opponent has made unsubstantiated claims in the SGP as follows:

"FORME" - Forme Whole Body Pty Ltd (Forme Whole Body) was formed with the Applicant's knowledge while the Applicant and its ultimate owners were co-owners and directors of an incorporated joint venture business, Brisbane Radiology Pty Ltd, with the Opponent's ultimate owners. "Forme" was a proposed new business for that business. In breach of various duties including directors duties due to Brisbane Radiology Pty Ltd, the ultimate owner of the Applicant filed the application in its own name knowing full well it was a business to be pursued by the business.

1. The Opponent has not provided any evidence or submissions to support any assertions made in the SGP. In particular, the Opponent has not provided evidence of the corporate ownership of either Brisbane Radiology Pty Ltd or the Opponent, nor evidence of the name(s) of the director(s) of these companies. As the Opponent has not provided any evidence or submissions, the Opponent has not satisfied its burden of establishing that the Applicants were not the owners of the Trade Mark at the Relevant Date. Consequently, the Opponent has failed to establish the ground of opposition pursuant to s 58.

Section 59

1. Section 59 provides (notes omitted):

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

1. Under s 27, an intention to use or authorise use of a trade mark in Australia is a prerequisite to a valid application for registration.
2. It is well established that applying for registration of a trade mark brings with it a presumption that an applicant intends to use the trade mark.[10] In Aston v Harlee Manufacturing Co, Fullagar J stated:

I do not regard his Honour [Dixon J in The Shell Co of Australia Ltd v Rohm & Haas [1948] HCA 271] as meaning that an applicant is required, in order to obtain registration, to establish affirmatively that he intends to use it. There is nothing in the Act or the Regulations which requires him to state such an intention at the time of application, and the making of the application itself is, I think, to be regarded as prima facie evidence of intention to use.[11]

1. The presumption arising from filing an application to register a trade mark may be challenged by evidence from the Opponent that establishes the contrary, thereby shifting the onus from the Opponent onto the Applicants and requiring evidence from the Applicants which demonstrates the intention to use the Trade Mark.
2. A mere assertion of lack of intention to use does not require a response from an applicant. Further as Hearing Officer Homann said in Intel Corporation v Magnatex International Pty Ltd:

No evidence as to these matters was led by the applicant. At the same time I must also say that there was no obligation on the applicant to do so. Failure on the part of the applicant to establish affirmatively its capacity or intention to use the mark is in no sense evidence of a lack of such capacity or intention.[12]

1. The first question for consideration is whether the Opponent has satisfied its burden of establishing a prima facie case of lack of intention to use by the Applicants. The Opponent has made unsubstantiated claims in the SGP as follows:

Forme Whole Body Pty Ltd (Forme Whole Body) was formed with the Applicant's knowledge while the Applicant and its ultimate owners were co-owners and directors of Brisbane Radiology Pty Ltd. "Forme" was a proposed new business for that business. In breach of various duties including directors duties due to Brisbane Radiology Pty Ltd, the ultimate owner of the Applicant filed the application in its own name knowing full well it was a business to be pursued by the joint venture business. The Applicant did not have a bona fide intention as at the date of filing the Opposed Mark to use the Opposed Mark in respect of the goods.

1. The Opponent has not provided any evidence or submissions to support the mere assertion of lack of intention to use. The Opponent's mere assertion of lack of intention to use does not require a response from the Applicants. The Opponent has not discharged its overall onus and s 59 ground of opposition fails.

Section 62A

1. Section 62A provides:

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

1. As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

The question is whether, in all the particular circumstances, the applicant's knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[13]

1. In DC Comics v Cheqout Pty Ltd, Bennett J noted that:

Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person's behaviour fell short of acceptable commercial standards.[14]

1. 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.[15]
2. The Opponent has made unsubstantiated claims in the SGP as follows:

Forme Whole Body Pty Ltd (Forme Whole Body) was formed with the Applicant's knowledge while the Applicant and its ultimate owners were co-owners and directors of Brisbane Radiology Pty Ltd. "Forme" was a proposed new business for that business. In breach of various duties including directors duties due to Brisbane Radiology Pty Ltd, the ultimate owner of the Applicant filed the application in its own name knowing full well it was a business to be pursued by the business. The Applicant did not have a bona fide intention as at the date of filing the Opposed Mark to use the Opposed Mark in respect of the goods.

1. As the Opponent has not provided any supporting evidence that the Applicants' filing of the Application falls below acceptable commercial standards, the Opponent has not established the ground of opposition under s 62A.

1. Section 55 relevantly provides:

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(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.

1. I find that the Opponent has failed to establish a ground of opposition it nominated in the SGP. Accordingly, registration of the Application may proceed not less than one month from the date of this decision.
2. If the Registrar is served with a notice of appeal, 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.

1. The Applicants have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) ('Act') and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) ('Regulations').

[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 Edelmann JJ).

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J).

[5] 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).

[6] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [29] (Greenwood, Jagot and Beach JJ).

[8] Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6, [48] (Nicholas, Yates and Beach JJ).

[10] Aston v Harlee Manufacturing Co [1960] HCA 47, [21].

[12] [1998] ATMO 20.

[13] [2012] FCA 81, [167].

[14] [2013] FCA 478, [62].

[15] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).