Section 44

1. The relevant provisions of ss 44 and 10 are reproduced below:

Section 44 - Identical etc. trade marks

(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

(a) it is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar services or closely related goods; or

(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1: For deceptively similar see section 10.

Note 2: For similar services see subsection 14(2).

Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. ...

(a) that there has been honest concurrent use of the 2 trade marks; or

(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or

(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2: For predecessor in title see section 6.

Section 10 - Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[5] by a person other than the Applicant:
   • has a priority date which is earlier than that of the Trade Mark ('the first requirement');
   • is substantially identical with or deceptively similar to the Trade Mark ('the second requirement'); and
   • is in respect of similar services, and/or goods which are closely related to, the Applicant's Services ('the third requirement').
2. In the event that each of these requirements is satisfied by the Opponent it may still be possible for me to allow the application to proceed to registration if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent's relied upon mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.
3. The Opponent has particularised the ground of opposition in the SGP by reference to the trade mark below (owned by a third party) (the 's44 Mark'). The s44 Mark has a priority date that is earlier than the priority date of the Trade Mark.

14 Definition of similar goods and similar services

(2) For the purposes of this Act, services are similar to other services:

(b) if they are of the same description as that of the other services.

1. The factors relevant to the consideration of whether services are similar include their nature such as their origin and characteristics, uses made of the services including their intended purposes, source of supply, respective trade channels and whether the ordinary consumer of the services would regard the services as being from a single source.[6] These can be conveniently summarised as: whether the respective services are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[7]
2. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering 'goods of the same description' in the context of a s 92 removal action said the following, much of which is equally relevant to considering whether the services are services of the same description:

In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; 91 CLR 592 at 606 the High Court (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) observed that there may be many matters to be considered in determining whether one product is a good of the same description as another. One is the inherent nature of the respective goods. Others include: their respective uses; the trade channels through which they are each sold; their origin; their purpose; whether they are produced by one and the same manufacturer or distributed by the same wholesale houses; whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers; and whether they are regarded by those engaged in their manufacture and distribution as belonging to the same trade. No single consideration is conclusive in itself. The classifications contained in the schedules to the Trade Marks Act are not a decisive criterion.

Broadly, it may be said that the authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold....[8]

Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression "goods of the same description" is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[9]

1. I fail to identify any of services for which the s44 Mark are registered that are similar to the Applicant's Services. The Applicant's Services are IT services. The s44 Mark is registered for financing of home loans. The Applicant's Services are services of a different nature for a different purpose and offered in different channels from services for which the s44 Mark is registered.
2. I find that the Opponent has failed to establish the ground of opposition under s 44.

Section 43

1. Section 43 is reproduced below:

Section 43 Trade mark likely to deceive or cause confusion

An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

1. To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:

'Connotation' is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [10]

1. In Winton Shire Council v Lomas Spender J said:

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [11]

1. The ground of opposition pursuant to s 43 was particularised in the SGP as follows:

The proposed trademark "Property Pal" is deceptively similar and likely to cause confusion with my common law ownership of the mark "Property Pals" and my established business name "Property Pals" for several reasons: > > High Degree of Similarity: Both marks share the core terms "Property" and "Pal," creating a high degree of similarity. Consumers are likely to misinterpret or confuse the two names. > > Target Audience: Both trademarks target the same consumer base - individuals, small businesses and selfmanaged super funds seeking real estate related services. This overlap increases the risk of confusion for potential clients. > > Impact on My Established Business: My business, "Property Pals," has built a strong reputation through various avenues: > > Loyal Client Base: We've cultivated a loyal client base who recognize and trust the "Property Pals" brand. > > Positive Online Reviews: Clients have consistently left positive reviews for "Property Pals" on various platforms, reflecting our established reputation. > > Marketing: We've conducted successful letterbox drop campaigns within the local area, further solidifying brand awareness with "Property Pals." We have also printed our Property Pals business logo on office decals, business cards, T-shirts, notebooks and other stationary. > > Social Media Presence: We have hundreds of followers on Facebook, Instagram, and LinkedIn, actively engaging with the "Property Pals" brand. > > Granting the "Property Pal" trademark will likely mislead consumers into believing the applicant is associated with my established business. This could damage my brand reputation, potentially divert customers, and negatively impact the positive client experiences which the "Property Pals" name has become synonymous for. > > The high similarity between the trademarks, their relevance to the real estate industry, and the shared target audience create a strong likelihood of confusion for consumers. Granting the "Property Pal" trademark would be detrimental to my established business and will likely mislead the public. > > 1.My business has built a strong reputation and market presence since April 2023. As noted in my initial response, I have built a strong and loyal client base, I enjoy 5-star online reviews and a commanding online and social media presence. I have invested significantly in marketing activities and have built strong industry networks with financial institutions, mortgage brokers, builders, property managers, architects, accountants, selling agents and other buyers agents. As a result of our brand recognition, Property Pals was recently selected as a finalist for the local business awards. I would therefore consider "Property Pals" to be a famous trade mark. > > The applicant's trade mark is likely to deceive and/or cause confusion, as consumers may wrongly believe the applicant has a licensing arrangement, or some other association, with my business and/or my common law trade mark (Property Pals). This is particularly a concern as the applicant intends to use the trade mark in the same or similar industry in which I have built my brand recognition (being the real estate industry). > > 2. The filings in relation to the proposed trade mark "Property Pal" suggests that the applicant will use the trade mark in connection with the provision of certain technology products / services relating to real estate. The term "Pal" is commonly associated with natural persons. > > The term "Property Pal" is likely to be considered by the average and ordinary person to mean a natural person or persons who are in the business of providing property services to consumers. The average and ordinary person is, therefore, likely to be deceived in circumstances where the trade mark is used in connection with a technology product or service.

2. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties. The first step in establishing this ground of opposition requires the Opponent identify some connotation inherent in the Trade Mark. The statements in the SGP and the EIS regarding the reputation the Opponent has in 'Property Pals' are not relevant in considering this provision and hence cannot support a ground of opposition under s 43.
3. Furthermore, even if I was satisfied that the Trade Mark contained the connotation proposed in the final part of the SGP, I do not consider that the use of the Trade Mark in respect of IT services would mislead; it is entirely possible that the IT services offered under the Trade Mark could relate to property and hence the use of the Trade Mark would not mislead.
4. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Applicant's Services, there is an apparent connotation within it which is likely to result in deception or confusion. I find that the ground of opposition under section 43 has not been established.

Section 58

1. Section 58 is reproduced below:

Section 58. 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.

Note: For applicant see section 6.

1. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia (while having an intention to use the applied-for mark), whichever is the earlier. It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:
   • that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent ('the first factor');[12]
   • that the Applicant's Services are the 'same kind of thing' as the services for which the trade mark(s) relied upon by the Opponent was used ('the second factor');[13] and
   • that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant ('the third factor').[14]
2. The ground based on s 58 was particularised in the SGP as follows:

Ownership of a trade mark at common law is established through use of that trade mark (Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58). As mentioned previously, I began using "Property Pals" for my real estate business on 16th of April 2023, demonstrably predating the applicant's October 22nd, 2023 filing date. Furthermore, I have continued to use the mark "Property Pals" as the cornerstone of my business since that time. In contrast, the applicant has no prior use of the mark. Nor has the applicant sought to use the "Property Pal" mark since the time of registration. In contrast, my established use is further supported by:

Registration of the business name "Property Pals" on October 5th, 2023.

Creation of my business Facebook Page under 'Property Pals' on June 29th, 2023

Creation of my Instagram account with the handle 'property.pals' on June 29th, 2023

Creation of my Linkedin Business Page 'Property Pals Buyers Agency' on June 29th, 2023

Extensive use of my "Property Pals" business logo on my website, social media, office decals, business cards, T-shirts, notebooks and other stationary since June 29th, 2023

Securing the domain name www.property-pals.com.au on April 16th, 2023, demonstrating my prior use of the mark online.

Creation of, and use of, my official business email address, being info@property-pals.com.au since April 16th, 2023

1. In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[15] stated as follows:

The "same kind of thing" in respect of the goods or services of the parties does not equate to goods or services which may be "of the same description" (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[16].

2. The Opponent has used 'Property Pals' for a property buyer's agency. The Applicant's Services are IT services. These are self-evidently not the 'same kind of thing'.
3. As the Opponent has failed to establish the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

Section 59

1. Section 59 is reproduced below:

Section 59 - Applicant not intending to use trade mark

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. The relevant date for assessing the Applicant's intention to use the Trade Mark is the filing date being 22 October 2023.[17]
2. The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd ('Health World') where he stated:

In my view, the intention, or lack thereof, to which s 59 is directed, is a 'real and definite intention' of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[18]

1. There is a presumption that where an application has been filed, the applicant has the requisite intention.[19] However:

There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent's evidence, a finding of lack of intention may be made.

The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[20]

1. Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:

The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[21]

1. In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Applicant lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Applicant for rebuttal. The relevant intention requires that an applicant must have 'a real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but it means a resolve or settled purpose which has been reached at the time when the mark is to be registered'.[22] There must be 'a real and definite intention' to use the mark publicly as a trade mark in connection with the services applied for.[23]
2. The Opponent has particularised this ground of opposition in the SGP as follows:

The applicant's attempt to register "Property Pal" for real estate services raises questions of integrity and bad faith intentions. I do not believe the applicant has a bona fide intent to use the mark, but instead has made the application to unfairly disrupt my brand and business.

It has been over six months since the application for registration of the trademark was submitted by the applicant. Yet, the applicant has not commenced any business activities resembling, utilising and referencing "Property Pal" since the registration date. Nor is there any ascertainable online presence for "Just Sort it Out Pty Ltd", or a business run by the applicant which leverages the "Property Pal" mark.

Accordingly, I consider the application was made without any intent to use the trademark, but instead to disrupt my established business and cause confusion amongst my clientele. I consider such an application to be made in bad faith, warranting rejection under sections 59 and 62A.

While the applicant's intent is suspect, my opposition primarily relies on the strong arguments already presented:

Not capable of distinguishing under section 41;

Prior use of, and common law ownership of, the "Property Pals" mark under Sections 44, 58 and 58A.

Likelihood of confusion under Section 43.

Pre-existing reputation under section 60.

While I agree that the act of registration of a trade mark brings about a presumption that the applicant held an intention to use it, in the current case, I consider that presumption to be rebutted.

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 acknowledged that "use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application". I consider the non-use of the trade mark either before or after the date of application to be relevant when considered in light of other circumstances.

Separate to the failure by the applicant to use the trade mark to date, the applicant has also not commenced any business activities which resemble, utilizes or references anything associated with "Property Pal" or real estate services. Furthermore, not only has the applicant not commenced any relevant business activities, but it is also evident that the applicant has not commenced any preparatory activities in connection with the commencement of such a business activity. For example:

• Just Sort it Out Pty Ltd has not registered a domain name which resembles "Property Pal" or the provision of real estate services;

• Just Sort it Out Pty Ltd has not registered any business names which resembles "Property Pal" or the provision of real estate services;

• Just Sort it Out Pty Ltd does not appear to have a social media presence which resembles "Property Pal" or the provision of real estate services;

• Just Sort it Out Pty Ltd does not appear to have any other online presence which resembles "Property Pal" or the provision of real estate services;

• Just Sort it Out Pty Ltd does not appear to have any other offline presence which resembles "Property Pal" or the provision of real estate services - for example, the registered address is not connected with any business which resembles "Property Pal" or the provision of real estate services.

Accordingly, I consider the applicant has no intention of using the trade mark.

1. The Opponent has not provided sufficient evidence in support of this ground of opposition to shift the evidentiary onus. Noting that the Applicant's Services is confined to IT services, and I am not satisfied (addressed elsewhere in the decision) that there is any evidence of bad faith intention around registration, the mere fact that the Opponent is unable to identify any evidence of the Applicant using the Trade Mark is not a sufficient basis to shift the onus. The Opponent has failed to establish a prima facie case that the Applicant lacked the requisite intention as at the filing date, and has, consequently, failed to establish a ground of opposition pursuant to s 59.

Section 60

1. Section 60 is reproduced below:

Section 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. To establish a ground of opposition under s 60, an opponent must demonstrate that 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 in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.
2. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark - here, the Aachi mark - in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation. > > The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O'Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is "likely" to be deceptive or cause confusion.[24]

In McCormick & Co Inc v McCormick[25], Kenny J considered what is intended by the word 'reputation' as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was 'the recognition of the [trade mark] by the public generally'.[26] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner ...[27]

On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar's delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures. > > As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the 'recognition' component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the 'esteem' component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, 'contra deals' and so forth. > > It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[28]

As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[29] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to 'reputation' at all, only that use of the impugned trade mark would be 'likely to deceive or cause confusion'. Nevertheless the words of Heerey J provide some guidance:

What is 'significant' or 'substantial' will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient ... We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[30]

The Opponent has particularised the ground of opposition in the SGP in the manner set out below:

The trade mark/s had acquired reputation before the priority date of the trade mark being opposed I have clearly established a reputation for the mark "Property Pals". This is demonstrated by consumer appreciation, significant marketing efforts, industry recognition and an extremely strong social media presence. > > As an example: > > Social media presence: I have hundreds of followers on Facebook, Instagram, and LinkedIn, actively engaging with the "Property Pals" brand. > > Industry recognition: "Property Pals" is consistently recognised at industry events. Most recently, it was a finalist in the Real Estate Buyer's Agency category for the Inner West Local Business Awards 2024, demonstrating industry recognition of our brand. A LinkedIn post celebrating Property Pals' recognition of this award received over 4,500 impressions on the LinkedIn platform alone. > > Positive online reviews: Clients have consistently left positive reviews for "Property Pals," reflecting our established reputation. > > Extensive marketing efforts: We've conducted letterbox drop campaigns within the local area, further solidifying brand awareness with "Property Pals." We have also printed our Property Pals business logo on office decals, business cards, T-shirts, notebooks and other stationary. > > When viewed in the context of our prior use of the "Property Pals" brand and demonstrably established reputation, the granting of the applicant's mark will likely cause significant deception or confusion, due to the similarity of the two trade marks. That is, there is a real tangible danger that granting the applicant's "Property > > Pal" trademark will create deception or confusion among a significant and substantial number of our clients (who are familiar with our reputable and continuously used "Property Pals" brand).

At the relevant date the Opponent's business had been established for approximately 6 months. Noting the absence of evidence of sales or number of employees, number of customers or advertising spend, I am not satisfied that the Opponent's 'Property Pals' mark had, before the relevant date, acquired a reputation in Australia for real estate buyer's agency services, sufficient for the requirements under s 60(a). I reach this conclusion noting the significant market for real estate buyer's agency services in Australia and the somewhat descriptive nature of the 'Property Pals' mark in the context of services assisting buyers to acquire property. 8. As the requirements under s 60(a) have not been satisfied, it is not necessary to consider s 60(b). I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

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[31]:

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.[32]

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.[33]

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

The close similarity of the applicant's "Property Pal" to my established "Property Pals" brand name, particularly within the real estate industry, raises concerns about the integrity of the application under Section 62A.

The application was curiously made a few weeks after I successfully registered my business with the Australian Business Registry. It was also following a period in early 2023, when my business was gaining significant momentum, reputation and growth online and in social media. Consistent with Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, persons adopting proper standards would regard the applicant's decision to register "Property Pal" as having been made in bad faith. Reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour, as it is intentionally directed at disrupting and undermining my legitimate business activities. The application seeks to weaponize the intellectual property laws of Australia in a manner that is unfair, in bad faith and illegitimate.

1. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[34] Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark in respect of IT services was a decision made to take advantage of the reputation of the Opponent in Property Pals. I consider that the Opponent's reputation in Property Pals was very limited at the time and the parties appear to be offering/intending to offer quite different services. Furthermore, the Opponent provides no evidence about the Applicant (as opposed to assertions regarding its business name registration and social media use) that would suggest that the Applicant was aware of the Opponent at the relevant date. In circumstances where the evidence in support of the s 62A ground of opposition is very limited and the Opponent bears the onus, I am not satisfied the Applicant's conduct in filing the application was unscrupulous, underhanded or unconscientious in character.
2. Finally, it also bears repeating here that 'mere knowledge before the relevant date of another person's trade marks, without more, does not in itself constitute the basis for a finding of bad faith.' [35] The Opponent's allegation of bad faith here does not rise above an assertion of prior knowledge of its mark by the Applicant. Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2399725 may proceed to registration not less than one month from the date of this decision. 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.
2. The Applicant 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 Opponent 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) ('Southern Cross'), see also s 29(1) Trade Marks Act 1995 (Cth).

[5] or an international registration designating Australia protected or sought to be protected under Reg 4.15A

[6] Re Jellinek's Application [1946] 63 RPC 59 (Romer J).

[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 606 (Kitto J).

[8] [2020] FCA 1808, [279]-[280].

[10] [2006] FCA 1663; (2006) 70 IPR 599, [53].

[11] [2002] FCA 288; (2002) 119 FCR 416; (2002) 56 IPR 72, [19].

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

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

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

[15] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).

[16] Colorado Group Limited v Strandbags Group Pty Ltd ('Colorado') [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) [1996] ATMO 16; (1996) 34 IPR 340.

[17] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31] (Hearing Officer Kirov). The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (Dodds-Streeton J) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (Keane CJ, Stone and Jagot JJ).

[18] [2008] FCA 100, [160].

[19] Aston v Harlee Manufacturing Co [1960] HCA 47, [21] (Fullagar J).

[20] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [162]-[163] (citations omitted).

[22] Re Ducker's Trade Mark (1928) 45 RPC 397, 402.

[24] [2023] FCA 487, [20]-[21] (Kennett J)

[25] [2000] FCA 1335.

[28] [1999] ATMO 23; (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

[29] [2000] FCA 1587.

[30] Ibid [91] (emphasis in original). Justice Heerey's decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

[31] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

[32] [2012] FCA 81, [147].

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

[35] 1872 Holdings VOF v Havana Club Holding SA [2017] ATMO 12, [64] (Hearing Officer Thompson).