2025 ATMO 129

Trade Marks Act 1995 (Cth) - section 52 opposition: s 62A considered and established - registration refused

1. This decision concerns an opposition brought by Simon Dodd ('Opponent') to the registration of the trade mark which is the subject of the application detailed below in the name of Eden RS Pty Ltd ('Applicant'):

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.
2. Following the advertisement of the application's acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars ('SGP') on 11 January 2024. The SGP raised grounds of opposition under ss 58, 62(b) and 62A. The Applicant filed a Notice of Intention to Defend on 25 January 2024.

1. The parties filed the following evidence in this matter:

Simon John Dodd, Chairman/Treasurer SP72648 Owners Corporation ('Dodd declaration')

Yanfei Liu, Director of the Applicant and Principal of Zhou Property Management Pty Ltd ATF Zhou Family Trust

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions. On 2 September 2024 the Opponent requested a hearing by submissions and paid the appropriate fee. The matter was set down for a hearing on 18 February 2024. In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Applicant filed written submissions on 9 February 2024 ('Applicant's Submissions'). The Opponent did not file any submissions.
2. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.

In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

1. The Opponent is an individual who is the chairman and treasurer of SP72648 Owners Corporation of 6-10 Romsey St Waitara NSW 2077. In his evidence he states that he has been appointed by the Strata committee to lodge the objection on behalf of the Owners Corporation. Notwithstanding any arrangement between the Opponent and SP72648 Owners Corporation, the Opponent in this matter is Mr Dodd.
2. The relevant claims/statements in the Dodd declaration can be summarised as follows:
   • The logo that comprises the Trade Mark ('Logo') was created by Meriton Group in 2003 for use in the marketing, sales, construction and as a building logo of the residential complex known as Eden at 6-10 Romsey St Waitara NSW (the 'Property'). The Meriton Group was the developer of the Property. The Logo has been in continuous use since then.
   • The Property's building manager is the director of the Applicant, and by co-incidence in 2023 the declarant became aware that the Applicant was using the Logo for its own real estate business including in other locations without the approval of the SP72648 Owners Corporation. Following being made aware of the concerns about this use of a logo not owned by it, the Applicant applied to register the Logo as a trade mark.
   • In making the application to register the Trade Mark, the Applicant has described itself as the designer/creator of the Logo, however the Logo was designed by Meriton for the Property in 2003.
3. The annexures to the Dodd declaration display e-mails from Meriton Group, the developer of the Property, confirming that the Logo was created in April 2003 for the marketing of the Property. They also include photos of the signage installed at various locations around the Property that feature the Logo (both original and updated). Finally, the annexures also include correspondence between the declarant and the director of the Applicant where the declarant becomes aware that the Applicant has been using the Logo as a badge of origin for the real estate services offered by the Applicant, unconnected to the Property, and without the permission of the Owners Corporation to the Property. This includes correspondence where the director of the Applicant asserts that she designed the Logo in early 2014 before she became the building manager of the Property, which is contradicted by the dated evidence of the creation of the Logo provided by Meriton in April 2003.

1. The relevant claims/statements in the Liu declaration can be summarised as follows:
   • The Applicant commenced use of the Trade Mark for their real estate business in 2014 after it took over management of the Property and has continuously used the mark for 10 years.
2. The annexures to the Liu declaration display examples of the use of the Logo both in the context of the Property and by the Applicant.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 62A. Consequently, it is unnecessary that I consider the remaining ground of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.
2. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date.[4]

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

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
   • persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
   • persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
   • persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
2. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison's Trade Mark Application:[5]

Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton 'the Robin Hood test'. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

... The words 'bad faith' suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[6]

1. Her Honour continued later in the same decision:

The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant's mental state in the combined test preferred in Harrison.

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[7]

1. The Opponent has particularised this ground of opposition in the SGP as follows:

In June of 2023 the Building Manager approach[sic] me in my capacity as the owner of Worldwide North Ryde, a design, print and signage business, to produce some signage for the Building Manager for her real estate business.

As a then Strata Committee member the Committee then came to understand that the building logo was now being used by the Building Manager for her real estate businesses in other business locations in Sydney without the prior approval of the Strata Committee or SP72648 Owners Corporation.

When both our Strata Manager from Jamesons and myself, on behalf of SP72648 Owners Corporation, suggested that this wasn't appropriate use of the buildings logo and that the logo wasn't the intellectual property of Eden RS Pty Ltd to use in this manner the Building Manager subsequently claimed creation and ownership of the logo and applied for the trade mark.

The email correspondence on this will be provided in evidence.

The trade mark application has been made in bad faith.

1. The facts of this matter are that the Logo was created by the Meriton Group in 2003 for the purpose of identifying the Property and operating as the 'brand' of the Property. I am satisfied that the Logo has been used to identify the Property and has been used on signage in the property and that copyright in the Logo both exists as it is an original artistic work reduced to material form made by a qualified person, and that copyright is held either by Meriton Group or by the Owners Corporation for the Property.
2. On or around 2013 the director of the Applicant, upon being appointed Building Manager apparently decided to appropriate the Logo and commence using it as branding for her real estate business. This occurred despite the fact that neither she nor the Applicant held any copyright in the Logo, nor any licence to use the Logo (beyond any implied licence given to use the Logo in connection with the activities undertaken in the role as Building Manager of the Property). Following the receipt of correspondence from the Opponent raising concerns about these actions, the Applicant acknowledges in paragraph 3 of its submissions that it 'felt the urge to confirm if SP72648 Owners Corporation is the legal owner of this graphic logo and the best way to confirm it is to register this logo with IP Australia.' In essence, the Applicant seeks to register the Trade Mark for the purpose of 'curing' its action in using the Logo for its real estate agency business while not having any rights to use the Logo (other than for the limited purposes of its role as Building Manager of the Property).
3. Furthermore, any use of the Trade Mark would, and undoubtedly has, created the inference that the Applicant is connected or associated in some way with the Property, regardless of whether this is the case going forward. The Applicant is seeking to register as a Trade Mark a logo for which it has been informed that it holds no copyright, after having used the Logo for a period of time and for purposes well beyond any implied licence it may have initially been granted to use the Logo. I am satisfied that the Applicant's conduct falls short of the 'standards of acceptable commercial behaviour observed by reasonable and experienced persons'.[8] I find that the Opponent has established the ground of opposition under s 62A.

1. I have found the Opponent has established the ground of opposition it raised pursuant to s 62A. As the delegate of the Registrar, I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court's orders or directions.
2. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

[1] Also known in this decision as the 'relevant date'.

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

[3] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and 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] HCA 82, [4] (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).

[5] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

[6] [2012] FCA 81, [147].

[8] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].