Grounds of opposition, onus and standard of proof

1. The SGP nominated grounds of opposition under ss 41, 42(b), 58, 60, 62A and 59 of the Act. It is stated in the Opponent's Submissions that only the ss 58, 60 and 62A grounds of opposition are pressed. Accordingly, I treat the grounds of opposition under ss 41, 42(b) and 59 of the Act as abandoned.
2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[1] The standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 25 September 2022 ('Relevant Date'), being both the filing date and priority date of the Trade Mark.

1. The Opponent's primary business, Code Valley, has developed a software technology called 'emergent coding' that involves 'a decentralised peer-to-peer network operating wholly in a design-domain'.[3] To allow for ease of payment across international borders, Code Valley uses a cryptocurrency called 'Bitcoin Cash'.
2. The Opponent is a strong supporter of Bitcoin Cash and actively encourages its adoption by merchants in his locality of Townsville, North Queensland. The Opponent incorporated Satoshiware and Bitcoin BCH for the purposes of spreading awareness and encouraging adoption of Bitcoin Cash.
3. Satoshiware participated in media releases and published several promotional videos demonstrating the ease of use and methods of onboarding of Bitcoin Cash by merchants. It is claimed that Satoshiware has made a substantial contribution to the adoption of Bitcoin Cash by merchants in Townsville.
4. Bitcoin BCH was founded with the intention of promoting Bitcoin Cash and developing a range of Bitcoin Cash 'Internet of Things' products.

1. The Applicant is described in Otto as a 'cryptocurrency investor, influencer, journalist, educator, and video producer'.[4] The Applicant provides education, advisory and consulting services in relation to cryptocurrency and also provides videography services to clients.
2. The Applicant has organised meetups and conferences in relation to the cryptocurrency Bitcoin since around May 2017. He has been invited to speak at cryptocurrency conferences and has been interviewed for specialist publications.
3. The Applicant uses his personal website 'https://www.haydenotto.com' and personal YouTube channel to promote his cryptocurrency related business. The Applicant also operates a YouTube Channel under the name 'Hayden Otto Films' which has been used for cryptocurrency related video content since December 2017. The Applicant's videos have been featured in 'well-known crypto publications'.[5]
4. The Applicant was a co-founder of the news organisation named 'CoinSpice' which was founded in June 2018 and ceased operations in around May 2020. The Applicant is a former Australian representative, journalist and executive producer for CoinSpice.

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. To succeed under this ground, the Opponent must establish:

(i) the trade mark relied upon by the Opponent is identical or substantially identical to the Trade Mark;[6]

(ii) the Applicant's Services are the 'same kind of thing' as the goods and/or services for which the trade mark relied upon by the Opponent has been used;[7] and

(iii) a person other than the Applicant has the earlier claim to ownership based on use in Australia of the trade mark relied upon by the Opponent prior to either (a) the application to register the Trade Mark or (b) any use of the Trade Mark in Australia by the Applicant, whichever is the earlier.[8]

1. In the SGP, the Opponent claims use of an identical trade mark in relation to the same services as the Applicant's Services since at least 2019 and before the Relevant Date. It is also stated in the SGP that the Applicant was an employee of the Opponent and his related entities before the Relevant Date, and that on this basis the Opponent is not the owner of the Trade Mark.
2. It is not in dispute that requirement (i) is satisfied with respect to the Trade Mark. I note briefly that the evidence contains examples of use of the terms 'Bitcoin Cash' and 'Bitcoin Cash North Queensland', and the following logos, by Satoshiware prior to the Applicant's involvement with the Opponent:

('Logo')

1. The Opponent does not assert trade mark use or ownership in respect of any of these terms or logos. For completeness, I do not consider the terms 'Bitcoin Cash' or 'BitCoin Cash North Queensland', or the above logos, to be substantially identical to the Trade Mark. The Trade Mark contains the word 'City' which is readily distinguishable from the specific geographic term 'North Queensland' and creates a significant point of difference. The total impression of the Trade Mark and these 'Bitcoin Cash' trade marks is one of dissimilarity.
2. For the reasons which follow, it is not necessary for me to discuss requirement (ii) in detail but in short I am satisfied that requirement (ii) is satisfied with respect to some, but not all, of the Applicant's Services.
3. Regarding requirement (iii), 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'.[9] Authorship in this context refers to the first party to adopt the trade mark with an intention of using it in Australia in respect of the Applicant's Services, or services of the same kind.[10]
4. In Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2), Deane J discussed the nature of use required to establish ownership and commented:

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of "proprietor" of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods with respect to which the mark is used and that person.[11]

1. The Opponent cited the following passage in Anchorage Capital Partners Pty Limited v ACPA Pty Ltd:

Authorship in this context does not require that the applicant for registration be the first to conceive of the mark. Rather, it refers to the applicant's adoption of the mark with the intention of using it in Australia in relation to the goods or services with respect to which the applicant seeks to register the mark.[12]

1. The Opponent submits that ownership is not to be determined solely based on the first use of the term 'BITCOIN CASH CITY'; rather, the appropriate enquiry concerns first use of the Trade Mark 'as a badge of origin'. The relevant assessment is one of the nature and purpose of the use to determine whether the relevant sign is being used to distinguish the goods or services from those of other traders.[13]
2. The Opponent provides the following account of his first use of the term 'Bitcoin Cash City'. The Opponent received a comment on his post on a Bitcoin Cash Reddit forum making reference to Queensland as the 'Bitcoin Cash City'.[14] It is declared that the Opponent recognised the importance and significance of the reference to Queensland as a 'Bitcoin Cash City'[15] and sent text messages to his solicitor and a former director and shareholder of Satoshiware on 17 October 2018 querying whether Queensland could be marketed by 'reputable' press as the 'Bitcoin Cash City'.[16] It is asserted that the Opponent thereafter began to refer to North Queensland as the 'Bitcoin Cash City' 'to further market [Satoshiware's] activities in onboarding merchants to use [Bitcoin Cash]'.[17] It is noted in Lovisa 1 that at this time 'the BCH community' also began to use the term 'Bitcoin Cash City' in reference to North Queensland.[18] In my view, this documentary evidence does not rise above preliminary discussion and accordingly does not support the Opponent's claim to first use of the Trade Mark.
3. The Applicant claims first use of the term 'Bitcoin Cash City' in a text conversation with his CoinSpice co-founder Jake Smith on 18 February 2019. Otto contains extracts of this conversation in which the Applicant comments that North Queensland is 'at the point of being a Bitcoin Cash City now' and Mr Smith replies that 'I think it's a stretch to call it a Bitcoin Cash City / Although, maybe we should. It's good marketing'. I note this account post-dates the Opponent's alleged first use and is not use as a badge of origin to distinguish the Applicant's Services from those of other traders.
4. Much of the contention around the first use of the Trade Mark is centered on the parties' different accounts of the origins of, and ownership of rights with respect to, a promotional video entitled 'North Queensland's Bitcoin Cash City' that was published on the CoinSpice YouTube channel on 2 May 2019 (as well as on the website 'www.bitcoinBCH.com'), with the aim of 'promoting the adoption of [Bitcoin Cash] in North Queensland, and launching the new name for Townsville as the BITCOIN CASH CITY'[19] ('Promotional Video').
5. In oral submissions, the Opponent noted that it is questionable whether the Promotional Video is use of the Trade Mark with respect to the Applicant's Services. On inspection of the Promotional Video, I do not consider it to constitute use of the Trade Mark in respect of the Applicant's Services. The phrase 'Bitcoin Cash City' is mentioned in the title of the video and twice in the voiceover of the video but I do not think it is used 'as a trade mark' rather than in a purely descriptive sense. No mention of 'Bitcoin Cash City' is made in the Opponent's emails making arrangements for the filming of the Promotional Video. In respect of branding of the video, the Logo and/or the 'B dollar sign' device contained within the Logo feature on vehicles, labels attached to products, a flag at a promotional event for Bitcoin Cash and stenciled on coffees. The CoinSpice logo is also overlayed on the bottom left corner of each frame of the video. The Opponent's draft plan for the Promotional Video (which includes the CoinSpice logo), as well as an email from the Opponent to the photographer engaged to provide time lapse photography for the Promotional Video, both indicate that the Opponent intended for the Promotional Video to be provided under the 'CoinSpice' brand. Accordingly, to the extent there is use of a trade mark in the Promotional Video I consider it demonstrates limited use of the CoinSpice and the Logo, and not use of the Trade Mark.
6. In the alternative, the Opponent submits that there is clear use of the Trade Mark in respect of a 'Bitcoin Cash City' conference held in September 2019 ('Conference'). There is no dispute that use of the Trade Mark in relation to the Conference is use in respect of a subset of the Applicant's Services.
7. The parties' respective accounts of the conceptualisation and development of the Conference differ substantially. The Opponent's account of the preparatory work for the Conference can be summarised as follows. Having decided to hold the Conference in April 2019, the Opponent sent messages and correspondence to various contacts in relation to the Conference from May 2019, in which the Conference is described as a 'Bitcoin Cash City Conference'. Lovisa 1 contains evidence of the Opponent's plans and preparations for the Conference, the earliest of which is a text message dated 14 May 2019 from the Opponent which reads: 'Conference theme: BITCOIN CASH CITY'. Between 22 July 2019 and 26 September 2019 the Opponent, his wife and Code Valley made investments to BCH Pacific exceeding $13,000 for the purposes of conducting the Conference. Invoices and banks statements are provided in Lovisa 1. The Opponent arranged the services of a media company a digital marketing campaign in the lead up to the Conference. A summary of the digital marketing campaign and draft press releases are contained in Lovisa 1. Various people assisted the Opponent with preparations for the Conference but all major decisions for the Conference required the Opponent's approval and the Opponent had overall control over the Conference. Email correspondence between the Opponent and various employees or advisors in relation to preparations for the Conference are contained in Lovisa 1.
8. The Opponent claims to have established BCH Pacific (registered as a company on 21 June 2019) as a not-for-profit corporation to market, promote and conduct the Conference. According to Lovisa 1:

BCH Pacific conducted and managed the BITCOIN CASH CITY Conference with the assistance of paid employees and service providers. In my view, BCH Pacific became the owner and user of the BITCOIN CASH CITY trade mark and associated goodwill as well as the domain. All expenses for the organisation and conducting of the BITCOIN CASH CITY Conference were paid by me or BCH Pacific.[20]

1. Lovisa 2 contains a copy of the Constitution for BCH Pacific which specifies that its aims include promoting, providing and carrying out conferences, education and training in relation to blockchain technology and digital cash currencies. A copy of a Venue Hire Agreement for the venue at which the Conference was held is provided in Lovisa 1. The hirer of the venue is listed as BCH Pacific and the event is titled 'Bitcoin Cash City (Global Conference)'. BCH Pacific also arranged marketing material, merchandise, catering, insurance, security and signage featuring the Trade Mark in preparation for the Conference. Examples of materials and invoices from suppliers are provided in Lovisa 1. Invoices from News Corp Australia addressed to BCH Pacific are contained in Lovisa 1, showing BCH Pacific paid for advertisements in relation to the Conference in August 2019.
2. The Applicant submits that the registration of BCH Pacific by the Opponent for the purposes of running the Conference was done without consultation with the Applicant in order to 'gain more control over the conference...'.[21] It is declared in Otto that the Applicant did not agree with many of the 'exorbitant' expenses made by the Opponent and 'passed off' as Conference expenses, but in light of the Opponent's business experience and his guarantee that he would cover any cost shortfalls, the Applicant 'turned a blind eye and tolerated it'.[22]
3. Noting that much of the Opponent's asserted use of the Trade Mark is by way of one of the Opponent's Companies and not the Opponent himself, the Applicant submits that there is no reason why the Opponent, and not the Applicant, would be the rightful owner of the Trade Mark.[23] The Applicant also notes that BCH Pacific, and not the Opponent, is the applicant of Australian trade mark application number 2408634 for the word mark 'BITCOIN CASH CITY' filed on 27 November 2023. The Opponent claims that ownership of the Trade Mark passes to the Opponent by way of BCH Pacific, since the Opponent is the controlling individual of all the Opponent's Companies and the Opponent and BCH Pacific share a unity of purpose pursuant to Trident Seafoods Corporation v Trident Foods Pty Ltd.[24] The Opponent did not expand on this argument and, for the reasons which follow, it is not necessary for me to consider whether the use of the Trade Mark by BCH Pacific is use authorised by, and under the control of, the Opponent as asserted by the Opponent.
4. The Applicant's own account of the preparation for, and conducting of, the Conference is summarised as follows. The Applicant, not the Opponent or one of the Opponent's Companies, selected the name of the Conference, and devised and directed the Conference. BCH Pacific was a mere sponsor and administrator of the Conference. The Applicant first started planning to host a conference in Brisbane in August 2018 with his business partner Mr Smith. The inspiration for the Conference was a 'void' of conferences relating to Bitcoin Cash after the cryptocurrency news website CoinGeek stated it was no longer involved in Bitcoin Cash. Exhibit HDO-34 to Otto contains a copy of a chat between the Applicant and Mr Smith dated 16 August 2018, in which Mr Smith requests the Applicant's assistance in organising a conference in Brisbane.[25] The Applicant suggested the idea of hosting a conference to the Opponent as the Applicant was seeking funding for the Conference. Once he received confirmation of the Opponent's financial backing, the Applicant joined a chat group discussing the Conference with well-known industry participants who were unknown to the Opponent. The Applicant later introduced the Opponent to the chat group as 'the local contact and potentially a primary sponsor'.[26] The Applicant added the Opponent to another chat group on 3 May 2019, in which the Applicant suggests alternative names for the Conference and mentions 'Bitcoin Cash City' as the location of the Conference. The Applicant arranged additional sponsors as well as 'most if not all'[27] of the speakers at the Conference using his industry connections. He also created a Facebook page and Twitter account in respect of the Conference. The Applicant promoted and presented at the Conference in his role as Chief Media Consultant for CoinSpice, which was the official media sponsor of the Conference. At its own expense, CoinSpice promoted the Conference and released articles and videos covering the event, including an announcement about the Conference on 1 July 2019 on the CoinSpice YouTube channel.
5. None of the Conference materials provided in the evidence identify the organisers of the Conference, nor do they list a particular business or company registration number, including any of the Opponent's Companies. Both Lovisa 1 and Otto contain an 'Event Guide' for the Conference, the first pages of which contain a welcome message from the Applicant who is described as the CEO of 'BitcoinBCH.com'. The agenda indicates the Applicant delivered a welcome speech for the Conference. The Opponent is described as a speaker at the Conference. A draft announcement, prepared by the hired media company in conjunction with both the Applicant and the Opponent, describes the Opponent and the Applicant as conference co-organisers, however the published version of the announcement is not provided. Lovisa 1 also contains a pamphlet distributed at the Conference that describes the purpose of BCH Pacific and refers to the Opponent as a point of contact, but it is not clear whether this pamphlet was distributed at the Conference.
6. Media articles in relation to the Conference describe the Applicant as the organiser of the Conference. The Opponent is not so described. Otto contains a copy of an article promoting the Conference dated 23 June 2019 on the 'Bitcoin.comNews' website which refers to the Applicant as a Conference organiser and CoinSpice Chief Media Correspondent. Both the Applicant and the Opponent are mentioned as speakers at the Conference.
7. It is clear that the Opponent and BCH Pacific made substantial financial and administrative contributions to the Conference, including venue hire and marketing. However, in light of the evidence described above, I accept the Applicant's submission that there is no evidence that the Opponent controlled any aspect of the Conference, or that the Opponent's role extended beyond that of a sponsor and administrator of the Conference.
8. A further point of contention concerned ownership of the website 'www.bitcoincashcity.com' ('Conference Website'), created for the purpose of promoting, and publishing videos of, the Conference. The Opponent claims to have arranged for the Applicant to register the domain name for the Conference Website ('Domain Name') and to have paid for the creation of the Conference Website.
9. The Opponent submits that at the time the Conference was held the Applicant was an employee of one of the Opponent's Companies and was therefore acting on behalf of the Opponent with respect to both the Conference and the Domain Name. Specifically, the Applicant was initially employed as a web developer for Code Valley, and then as CEO of Bitcoin BCH. The Applicant registered the Domain Name on 20 May 2019, which the Applicant notes is prior to his first engagement as a contractor or employee of one of the Opponent's Companies on 10 June 2019. The Applicant denies that the Opponent requested that he register the Domain Name.
10. Email correspondence provided in Lovisa 1 indicates that the Applicant was granted administrative access in May 2019 to a Wordpress account in respect of websites for the Opponent's Companies. The Opponent submits that it is clear from this correspondence that in May 2019 the Applicant was providing web development services to the Opponent's Companies, including in respect of the Conference Website. Lovisa 1 contains invoices from a web developer with respect to web development services for a number of websites including the Conference Website. These invoices are made out to, variously, 'Bitcoin Cash City Conference', 'Code Valley' and 'BitcoinBCH', and are dated between 30 June 2019 and 17 February 2020. Otto contains extracts from a text conversation dated 9 June 2019 in which the Applicant discusses the design of the Conference Website with several website designers and developers.
11. The nature of the Applicant's employment is discussed further in respect of the s 62A ground of opposition. For present purposes, it is sufficient to note that the Applicant's initial contributions to the planning of the Conference and the registration of the Domain Name occurred before the Applicant entered into an employment agreement with any of the Opponent's Companies. Accordingly, I am not satisfied that the Applicant's contributions to the Conference and the registration of the Domain Name were made only in his capacity as an employee of Code Valley or Bitcoin BCH.
12. Having regard to the evidence as a whole, I am not able to determine which of the competing accounts regarding the conception of the Trade Mark is to be preferred. It is not clear that either the Opponent or the Applicant devised the name 'Bitcoin Cash City' for the Conference. Neither is it apparent from the available evidence which of the parties initiated planning for the Conference and therefore made first use of the Trade Mark with respect to some of the Applicant's Services.
13. A shifting onus of proof does not apply to s 58 of the Act; the onus remains with the Opponent.[28] The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP noted:

[A] finding that there was considerable confusion over who owned the mark means that this ground of opposition must fail given the onus on [the Opponent] to establish any ground of opposition.[29]

1. Since the evidentiary onus rests with the Opponent, the absence of persuasive evidence to adequately substantiate the Opponent's account is fatal to the s 58 ground of opposition. Having regard to the parties' competing accounts and the inconclusive nature of the evidence in its entirety, I am not satisfied on the balance of probabilities that a party other than the Applicant holds the better claim to ownership of the Trade Mark. The s 58 ground of opposition has not been established.

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

1. The phrase 'bad faith' is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather 'it is a wider notion, potentially applicable to diverse species of conduct'[30] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth).
2. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

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.

The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[31]

1. Conduct that is 'exploitative and designed to acquire a springboard or advantage'[32] or of 'an unscrupulous, underhand or unconscientious character'[33] can fall short of acceptable commercial standards.[34]
2. I must determine what the Applicant knew at the time of making the Application and whether, in light of that knowledge, the Applicant's conduct fell short of acceptable commercial behaviour.
3. An allegation of bad faith under s 62A is to be taken seriously. In this regard, I note the following comments of the Registrar's delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

The onus of demonstrating 'bad faith' falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of 'balance of probabilities'. That said, the allegation of 'bad faith' is a very serious one and a finding of bad faith should not be taken lightly.[35]

1. In the SGP, the s 62A ground is particularised as follows:

The Opponent and his related entities has a reputation in Australia in the [Trade Mark] for the applied for services. The Applicant was an employee of the Opponent and his related entities prior to the filing date of the [Trade Mark] and was aware of the reputation and exclusive association of the [Trade Mark] with the Opponent and his related entities.

In these circumstances, the Opponent believes that:

(a) the Applicant is fully aware of the Opponent's ownership of the [Trade Mark] in relation to the applied for services;

(b) the Application was filed in part to frustrate the Opponent's ability to use and register the Opponent's BITCOIN CASH CITY trade mark in Australia; and/or

(c) the Applicant's [Trade Mark] was adopted by the Applicant for his own commercial purposes and with a view to gaining a benefit by appropriating the reputation of the Opponent's BITCOIN CASH CITY trade mark.

The filing of the [Application] in these circumstances and/or for these reasons constitutes conduct that falls short of the standards of reasonable commercial behaviour.

1. In the Opponent's Submissions the Applicant's conduct was further particularised as follows:

(i) The Applicant improperly registered domain names and social media accounts in respect of the Opponent's Companies and the Conference in his own name, and failed to transfer these to the Opponent. The domain names in question are the Domain Name and the company websites for BCH Pacific and Bitcoin BCH.

(ii) The Applicant listed the Domain Name for sale for a considerable sum in November 2022.

(iii) The Applicant published false claims and misinformation with respect to the Applicant's dispute with the Opponent.

1. The Opponent submits that such conduct is demonstrative of a 'continued course of conduct' contrary to instructions, in breach of his duties as an employee of the Opponent's Companies, and designed to damage the Opponent and his companies.
2. I note in the first instance that, having regard to the lack of evidence in support of the Opponent's ownership and use of the Trade Mark as discussed with respect to the s 58 ground of opposition, the Opponent's evidence does not support the Opponent's claim to a reputation in the Trade Mark at the Relevant Date. I am not satisfied that at the Relevant Date the Trade Mark had been used to such an extent that use of the Trade Mark would result in a springboard or advantage for the Applicant. Even if I were to find that the Opponent had a reputation in the Trade Mark at the Relevant Date, that determination alone would not answer the question as to whether the Applicant's conduct falls short of acceptable commercial standards.
3. As concerns the Opponent's assertion that the Applicant was aware of the Opponent's ownership of the Trade Mark, this is likewise not supported by the evidence. It is apparent that at the Relevant Date the parties were known to each other and previously had a working relationship. However, there has been no suggestion or evidence that the Applicant recognised the Trade Mark as being the property of the Opponent at any time. The Applicant declares that at the time the Application was filed, the Applicant genuinely believed himself to be the owner of the Trade Mark.
4. Regarding the Opponent's assertion that the Applicant was an employee of the Opponent or the Opponent's Companies, I note a signed employment agreement between the Applicant and Code Valley is contained in Lovisa 1. The agreement is for a period of one year commencing on 10 June 2019. The position for which the Applicant is employed is 'Lead Web Developer'. Also provided in Lovisa 1 is an unsigned employment agreement between Bitcoin BCH and the Applicant, with an intended commencement date of 31 August 2019. The position title in this agreement is 'CEO'. Lovisa 2 contains a tax file declaration and employee details form showing the Applicant was employed by Code Valley, payslips from Bitcoin BCH directed to the Applicant dated between 31 August 2019 and 27 August 2021, and Code Valley and Bitcoin BCH timesheets signed by the Applicant dated between 6 September 2019 and 3 September 2021.
5. On the basis of the above evidence I am satisfied that the Applicant was an employee of one or more of the Opponent's Companies between at least 10 June 2019 and 18 August 2021 when, according to an email from the Applicant to the Opponent contained in Lovisa 2, the Applicant resigned from his position at Bitcoin BCH.
6. However, the Opponent's assertion that the Applicant's employment was limited to activities for the purpose of the Conference, such that the Applicant's work with respect to the Trade Mark was in the course of his duties to the Opponent, is not supported by the evidence. There is no evidence that the activities performed by the Applicant in his capacity as an employee of Code Valley or Bitcoin BCH were, or were intended to be, in relation to the Conference only, or that the Applicant was barred from performing other roles while in the employment of those companies. In fact, both employment agreements contemplate the Applicant's ability to perform additional work outside of the Opponent's Companies; each agreement contains an intellectual property clause which does not extend to work performed outside 'the normal course of employment at [Code Valley or Bitcoin BCH] without [Code Valley or Bitcoin BCH] resources'. It is feasible that the Applicant believed himself to be the rightful owner of the Trade Mark and performed work with respect to the use and promotion of the Trade Mark independently.
7. In relation to the Applicant's registration of domain names for the Opponent's Companies, crucially, there is no documentary evidence that the Opponent directed the Applicant to secure the Domain Name. The mere fact that the Applicant was employed by Code Valley as a web developer does not establish that the Applicant registered the Domain Name under instruction from the Opponent. In any event, the Domain Name was registered on 20 May 2019, prior to the commencement of the Applicant's employment with Code Valley on 10 June 2019. Accordingly, the Opponent's assertions that the Applicant was acting under the Opponent's instructions in filing the registration for the Domain Name and that the Applicant was obligated to transfer the Domain Name to the Opponent are not compelling.
8. The Opponent faces the same difficulties with respect to the Applicant's registration of social media accounts in respect of the Trade Mark. The Applicant registered a Twitter account under the handle '@BitcoinCashCity' in May 2019, being before the Applicant's employment with any of the Opponent's Companies, and a Facebook account under the name 'Bitcoin Cash City Conference' in July 2019. The Applicant's maintenance of control over these social media accounts, removal of any access to these accounts by the Opponent or employees of the Opponent's Companies, and use of logos on these accounts which were also used on materials relating to the Conference, is not unreasonable in circumstances where, as discussed in relation to the s 58 ground of opposition, there was no reason to believe the Opponent, and not the Applicant, was the legitimate owner of the Trade Mark.
9. In my view, the Applicant's decision to file the Application is not coloured by the registration of the domain names for BCH Pacific or Bitcoin BCH. The Applicant transferred the Bitcoin BCH domain name to the Opponent on receipt of an invoice evidencing that the Opponent had paid to acquire that domain name. In respect of the domain name registration for BCH Pacific, the Opponent submits that the Applicant was provided with the Opponent's bank details to register this domain name, but the Applicant used his personal account for the registration and only transferred the domain name to the Opponent after the Opponent was successful in a Uniform Domain Name Dispute Resolution Policy ('UDRP') complaint. The panelist in that decision found that the Applicant had filed the BCH Pacific domain name in his capacity as CEO of Bitcoin BCH, and having resigned from his position as CEO he did not have rights or legitimate interests in it.[36] I do not think that the Applicant's conduct in respect of these two instances is sufficient to establish a pattern of conduct that falls short of standards of acceptable commercial behaviour.
10. The Applicant submits that his decision to list the Domain Name for sale in November 2022 is irrelevant to show bad faith intent in filing the Application,[37] citing the following passage from Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case ... and must relate to the making of the subject of that application...'[38]

1. The evidence does not establish that the Opponent holds any rights in respect of the Domain Name, and I note that the Opponent was unsuccessful in securing a transfer of the Domain Name from the Applicant following a UDRP complaint. I note also that it appears as though the offer for sale of the Domain Name was not made directly to the Opponent but was open to the market at large.[39] This suggests that the offer for sale of the Domain Name was made within the Applicant's exercise of his rights as the registrant of the Domain Name and not in an attempt to extort or otherwise harm the Opponent. For these reasons, the Applicant's decision to offer the Domain Name for sale is not, by itself, sufficient to establish the s 62A ground of opposition.
2. It is clear the relationship between the parties began to sour prior to the Applicant's resignation from Bitcoin BCH. Lovisa 1 contains screenshots of the '@Bitcoin Cash City' X account and an archived screenshot of the Conference Website, on which the Applicant publishes statements on the steps taken by the Opponent with respect to the domain names and videos in dispute. The Opponent submits that these statements contain false representations and misinformation. As it is not clear which of these statements are alleged to be false or misleading, and in the absence of a verifiable counternarrative, I do not consider these statements sufficient to establish the s 62A ground of opposition.
3. Overall, the evidence before me does not establish that at the time of filing the Application the Applicant's conduct fell short of standards of acceptable commercial behaviour observed by reasonable and experienced persons. In the absence of such evidence, I am not satisfied that the application for the Trade Mark was made in bad faith. The s 62A ground of opposition has not been established.

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. To establish a ground of opposition under s 60 of the Act, the onus is on the Opponent to demonstrate that:
   1. 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
   2. because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.
2. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word 'reputation' as used in s 60 of the Act. Her Honour considered the definition provided in the Macquarie Dictionary and decided that reputation is 'the recognition of the [trade mark] by the public generally'.[40] The existence and extent of a trade mark's reputation must be established as a matter of fact by the Opponent.[41]
3. In Rodney Jane Racing Pty Ltd v Monster Energy Company, O'Bryan J 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.[42]

1. A trade mark's reputation must be amongst a 'significant or substantial' number of Australian consumers, having regard to the relevant market[43] and the nature of the goods or services in question.[44] The likelihood of deception or confusion between trade marks requires consideration of the notional use of the opposed trade mark in a normal and fair manner in respect of the goods or services the subject of the trade mark application.[45] The threshold for confusion is not high.[46]
2. It is stated in the SGP that the Opponent first used an identical trade mark in at least 2019 and that this trade mark had acquired a reputation before the priority date of the Trade Mark. The SGP reads as follows:

Due to the Opponent's and his related entity's reputation in the [Trade Mark], the Applicant's use of the [Trade Mark] in relation to the applied for services would be likely to deceive or cause confusion

1. In support of the s 60 ground of opposition, the Opponent cites the evidence referred to in relation to the s 58 ground of opposition with respect to marketing and promotion of the Conference. The Opponent submits that the Conference 'received widespread coverage and publicity from around the world'.[47] The Opponent submits that there is significant risk of confusion given the use and promotion by the Opponent and the Applicant involve an identical trade mark.
2. The Applicant submits that the fact that BCH Pacific spent money to promote the Conference does not demonstrate reputation in the Trade Mark, and that the widespread coverage of the Conference is not necessarily attributable to a person other than the Applicant. The Applicant further submits that there is no evidence of any actual confusion, nor of any use of the Trade Mark by any person other than the Applicant after 2019. The Applicant claims confusion cannot arise in circumstances where the Opponent has not made active use of the Trade Mark with respect to the Applicant's Services.
3. A digital report prepared by the media company hired for the Conference indicates that overall exposure of advertising of the Conference on social media was substantial, but no mainstream media covered the Conference and actual ticket sales appear to have numbered less than 100. There were plans for a 2020 conference which were delayed by the COVID-19 pandemic, but there is no evidence that any further conferences were held.
4. For the above reasons and, as discussed in relation to the s 62A ground of opposition, I am not satisfied that the Opponent's claim to a reputation in Australia in the Trade Mark is supported by the evidence. The Opponent has not established, as a matter of fact, that the Trade Mark was recognised in Australia at the Relevant Date by a significant or substantial number of potential consumers.
5. The requirement under s 60(a) of the Act has not been established. As s 60(a) of the Act has not been established, it is not necessary for me to consider s 60(b).

(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.

1. The Opponent has failed to establish any of the pressed grounds of opposition. Trade mark application number 2303040 may proceed to registration not less than one month from the date of this decision.
2. 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.

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 Trade Marks Regulations 1995 (Cth).

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ) ('Telstra').

[6] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).

[7] Re Hicks's Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 640 (Holroyd J).

[8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

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

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

[11] [1984] HCA 73; (1984) 156 CLR 414, 432.

[12] [2018] FCAFC 6 (Nicholas, Yates and Beach JJ).

[13] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1961) 109 CLR 407, 422-425 (Dixon CJ, Windeyer, McTiernan, Kitto, Taylor and Owen JJ); Anheuser-Busch, Inc v Budějovický Budvar, Národní Podnik & Ors [2002] FCA 390, [184]-[186] (Allsop J).

[21] Applicant's Submissions, [60(i)].

[23] Section 58 of the Act does not require the Opponent to establish ownership of the Trade Mark; all that must be established is that the Applicant is not the owner of the Trade Mark.

[24] [2019] FCAFC 100 (Reeves, Jagot and Rangiah JJ).

[30] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) ('Fry Consulting').

[31] [2013] FCA 478, [62] ('DC Comics').

[35] [2009] ATMO 26, [12] (Delegate Nancarrow).

[36] BCH Pacific Limited, Noel William Lovisa v. Hayden Otto, Bundaberg Concrete Casters (World Intellectual Property Organization Arbitration and Mediation Center, Case No. D2022-3446, 13 November 2022), 11 (Warwick A. Rothnie).

[38] Fry Consulting (n 30), [145] (emphasis added).

[40] [2000] FCA 1335, [81] ('McCormick').

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

[42] [2019] FCA 923, [83].

[43] ConAgra (n 38), [15]; Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

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

[45] Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J).

[46] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).