2025 ATMO 206

Trade Marks Act 1995 (Cth) - opposition under section 52 - ss 43, 58, 60, 62(b) and 62A pursued - ground of opposition established under s 62A - applications refused registration

1. This decision concerns oppositions under s 52 of the Trade Marks Act 1995 (Cth)[1] by SSP Assets Pty Ltd ('Opponent') to registration of the following trade mark applications filed in the name of Bluebonnet Capital Pty Ltd ('Applicant'):

Class 41: arranging and conducting of motor car racing events; organisation and conducting of motor car racing events; organising and conducting of motor car racing events; organization and conducting of motor car racing events; organizing and conducting of motor car racing events; arranging of motor car racing events; organisation of motor car racing events; organising of motor car racing events; organization of motor car racing events; organizing of motor car racing events; motor car racing

Class 39: rental of motor racing cars; rental of motor cars

Class 40: factory production of motor cars on assembly lines; in-plant production of motor cars on assembly lines; custom manufacture of motor cars; custom manufacturing of motor cars; custom manufacture of motor cars for others; custom manufacturing of motor cars for others; mass production of motor cars

Class 14: model cars [ornaments] made of precious metal; scale model cars [ornaments] of precious metal

Class 40: custom manufacturing of cars; factory production of cars on assembly lines; mass production of cars; mass production of motor cars; custom manufacturing of cars for others; factory production of motor cars on assembly lines; custom manufacture of cars

Class 41: arranging and conducting of motor car racing events; organisation and conducting of motor car racing events; arranging of motor car racing events; organizing and conducting of motor car racing events; organization and conducting of motor car racing events; organising and conducting of motor car racing events; organisation of motor car racing events; organising of motor car racing events; organization of motor car racing events; organizing of motor car racing events; motor car racing

Class 42: automotive design; industrial design of cars; design of motor cars; design of cars

Class 12: vehicles; land vehicles; sports cars; motor cars; motor racing cars; engines for land vehicles; propulsion mechanisms for land vehicles; vehicle chassis; motorized cars [land vehicles]; electric motors for cars; electric vehicles

Class 14: model cars [ornaments] made of precious metal; scale model cars [ornaments] of precious metal

Class 35: marketing; retail services or wholesale services for clothing; retail services or wholesale services for footwear; business management; provision of foreign trade information; advertising; providing sales and lease leads for others in the field of new cars; negotiation of sales contracts for others relating to automobiles and two-wheeled motor vehicles, and provision of information thereof; distributorship services in the field of automobile parts; sales agency services featuring automobiles; retail services or wholesale services for automobiles; retail services provided by automobile parts and accessories stores; retail services relating to vehicles; retail services for vehicles; retail services relating to automobile accessories; provision of an on-line marketplace for buyers and sellers of goods and services

Class 37: automobile restoration; maintenance and repair of engines; tuning of engines; overhaul of vehicles; painting of vehicles; automobile reconditioning services; refurbishment of vehicles; repair of vehicles; custom installation of exterior, interior and mechanical parts of vehicles [tuning]; maintenance and repair of vehicles; maintenance, servicing and repair of vehicles; provision of information relating to the repair or maintenance of automobiles; rust removal; repair services; anti-rust treatment of vehicles; vehicle detailing

Class 39: rental of motor racing cars; rental of sports cars; rental of vehicles

Class 40: custom manufacture of vehicles for others; custom manufacture of motor cars; custom assembling of motors and engines; custom manufacture of vehicle graphics and wraps; custom manufacturing services for others in the field of propulsion systems for motors and engines

Class 41: motor car racing; organisation and conducting of motor car racing events; organisation and conducting of vehicle races; racing driver training; entertainment in the nature of automobile races

Class 42: design of motor cars; design of vehicles; development of vehicles; vehicle design services; vehicle engine design services; engineering services; industrial design

1. Following the advertisement of acceptance for possible registration of the Applications, the Opponent filed Notices of Intention to Oppose registration of the 571 and 575 Marks on 24 October 2024, the 574 Mark on 28 October 2024 and the 920 Mark on 6 February 2025, followed by its Statements of Grounds and Particulars ('SGPs') on 20 November 2024 on the 571, 574 and 575 Marks and 13 February 2025 on the 920 Mark. The Applicant filed Notices of Intention to Defend the Oppositions on 13 January 2025 for the 571, 574 and 575 Marks and 20 March 2025 for the 920 Mark.
2. The Opponent filed identical Evidence in Support ('EIS') in connection with all four oppositions. The Applicant did not file any Evidence in Answer.
3. The parties were given the opportunity to request to be heard by written or oral submissions. While neither party elected to be heard, the Opponent requested a decision without a hearing on each Application. I am a delegate of the Registrar of Trade Marks and these matters have been allocated to me to determine. I have decided these matters based on the particulars set out in the SGPs and the EIS.

1. The SGPs nominate grounds of opposition under ss. 43, 58, 60, 62(b) and 62A. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the priority date of the Applications.[4]

Declaration of Stephen Luke Baker, Director of the Opponent ('Baker')

1. Baker provides a history of Elfin Sports Cars ('ESC'), a car manufacturer which was founded in 1959 by Garrie Cooper and has a significant reputation in Australian motor racing. ESC manufactured 36 different model variants between 1959 and 2006, some road vehicles and others motor racing vehicles. At its peak, EFC was the world's second largest producer and manufacturer of racing cars winning Grands Prix between 1968 and 1974. The most recent Elfin vehicle was manufactured in 2008 by the Walkinshaw Group, a subsequent owner of ESC.
2. Baker states that the trade marks ELFIN, ELFIN SPORTS CARS and ('Elfin Trade Marks') were used by ESC. The name, brand and cars are celebrated at the Elfin Heritage Centre, a museum dedicated to ELFIN cars located in Moorabbin, Victoria.
3. Baker claims that the Elfin Trade Marks remain internationally recognised, with cars raced and sold in the Australian motorsport industry. Baker annexes three undated photographs of ELFIN sports cars still raced today. While none of the Elfin Trade Marks are visible on the cars in these photographs, Baker also annexes a timing sheet from a race event at the 36th Phillip Island Classic Festival of Motorsport on 7 March 2025, showing that four ELFIN cars were in the race.
4. Baker claims that by an Asset Sale & Purchase Agreement ('Agreement'), the Opponent purchased the 'Elfin brand', vehicles, inventory and intellectual property from Elfin Sports Cars Pty Ltd, a member of the Walkinshaw Group on 10 May 2023. Baker annexes a redacted copy of the Agreement. I note that the Agreement refers to the sale of Assets. Other than the 'Elfin Trade Mark' any further Assets have been redacted. The 'Elfin Trade Mark' is defined as trade mark registration 767061 for the trade mark ('Registration').
5. Baker declares that on 20 May 2024, the Applicant filed a successful non use removal application against the Registration as the Opponent did not file a Notice of Intention to Oppose the removal application ('NIO') and failed to obtain an extension of time to file a NIO. The Registration was removed on 30 July 2024. Baker annexes copies of correspondence with IP Australia concerning the extension of time to file the NIO.
6. Baker states that 'since purchasing the trade mark Elfin brand and associated intellectual property and assets, SSP Assets has continuously used 'ELFIN', 'ELFIN SPORTS CARS', a logo containing an elf head and variations of those trade marks in respect of motor vehicles, motor racing and related services'.
7. Baker provides the following examples of use of the Elfin Trade Marks:
   • Updating and making live the Elfin website at www.elfin.com.au annexing the following undated screenshot from the homepage of the website:

• Screenshots dated between May 2023 and March 2024 from the Young Timers Garage ('YTG') Instagram account, an example of which appears below. Many of the posts are in respect of restored Elfin Type 5 cars and Garrie Cooper's induction into the Australian Motorsport Hall of Fame. Baker claims YTG is an associated company of the Opponent. To this end, I note from the copies of correspondence with IP Australia concerning the extension of time to file the NIO, that Baker's email address is listed as steve@ytg.co.[5]

• Undated press release from YTG claimed to be dated 18 June 2023 which states 'Young Timers Garage (YTG) purchases Elfin Sports Cars from Walkinshaw Automotive Group' and a press release dated 23 October 2023 which states:

• On 17 June 2023, YTG releases S1 E21 of the YTG Podcast titled 'Elfin is Back! YTG Buys Historic Racing Manufacturer, Here is the Inside Scoop' on Spotify, Apple and YouTube providing screenshots of the episode, examples of which appear below:

;

• Mailchimp EDMs with screenshots titled 'Calling All Elfin Owners!' and '2023 year in review' covering acquisition of the Elfin brand. Details of the latter screenshot appear below:

• An Instagram invitation dated 18 October 2023 to a gathering of owners of Elfin cars produced over the years to be held on 4 November 2023;
• LinkedIn posts concerning the Elfin Type 5 and Garrie Cooper's Hall of Fame induction dated January and March 2024; and
• YTG sponsorship of Phillip Island Classic in March 2024 which states:

1. Baker attests that the Opponent has engaged in discussions with various parties over the last 12 months in relation to a potential sale of the Elfin brand, including the Applicant. Baker annexes a copy of a Confidentiality Agreement dated 12 April 2024 between the Applicant and the Opponent in connection with potential sale discussions. The Agreement is signed by Aaron Hickmann ('Hickmann') as an authorised representative of the Applicant.
2. Baker states that on 15 April 2024, the Opponent rejected an offer from the Applicant's director Hickmann to purchase the Elfin brand and its assets. Baker annexes WhatsApp messages between Baker and Hickmann. The message with an offer to Baker from Hickmann begins with:

and the message rejecting the offer states:.

1. Baker attests that sometime between 20 May 2024 and 27 May 2024, the sole director of the Applicant registered the following companies:
   • Elfin Motorsport Pty Ltd ACN 677 484 267;
   • Elfin Racing Pty Ltd ACN 677 537 969;
   • Elfin Sports Cars Pty Ltd ACN 677 699 508;
   • Elfin Racing Cars Pty Ltd ACN 677 509 625; and
   • Team Elfin Pty Ltd ACN 677 546 664.
2. Baker claims that via a WhatsApp message dated 25 October 2024, a director of the Applicant acknowledged that the Opponent continues to be the owner of the Elfin brand and all of its associated assets and intellectual property (whether registered or not). Baker annexes a screenshot of the message which states:

1. Baker annexes copies of letters sent by the Opponent's lawyers to the Applicant dated 28 October and 1 November 2024 which make a number of allegations and demands regarding actions of the Applicant and the Applicant's director Aaron Hickmann, including breach of the Confidentiality Agreement.

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 Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[6] and DC Comics v Cheqout Pty Ltd.[7] The following propositions emerge from these decisions which are relevant to the present opposition:
   • Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject of that application.[8]

• Bad faith is a serious allegation that 'impugns the character of an individual or collective character of a business' and requires correspondingly cogent evidence. The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[9]

• Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[10] As stated by Dodds-Streeton J in Fry Consulting:

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.[11]

• The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[12]

• All the circumstances surrounding the application to register the mark are relevant.[13]

• A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[14]

• The examples of bad faith applications in the Explanatory Memorandum are predominantly, but not exclusively, manifestations of blocking or holding to ransom the party which is, at least in conscience, entitled to a mark, but the illustrations in the Explanatory Memorandum are merely inclusive and do not limit the breadth of the concept of bad faith.[15]

• Bad faith, in the context of s 62A, does not require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.[16]

1. The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Applicant knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?
2. The Opponent bears the onus of establishing that the filing of the Applications was in bad faith and it will not be easily established given the serious nature of the allegation.[17]
3. In summary the SGP claims that the Opponent has invested significant time, resources and funds to promote the Elfin brand to re-build its profile in the motor racing industry. In April 2024, the Applicant commenced discussions with the Opponent with respect to the Opponent potentially purchasing the Elfin brand and its associated intellectual property. On 12 April 2024 the Applicant and Opponent entered into a Confidentiality Agreement. On 15 April 2024, Hickmann, as a representative of the Applicant, made a written offer to Baker, as a representative of the Opponent, to purchase the Elfin brand and its assets which was rejected. Following the rejection, the Applicant filed a successful non-use application against the Registration, applied for the Applications and registered a number of companies using the Elfin name. The Applicant's actions in filing the Applications are made in bad faith, with full knowledge that the Applicant does not, and has not ever, owned the Elfin brand or the right to register any trade marks associated with it.
4. For the purpose of considering the s 62A ground of opposition and determining the Applicant's subjective intention, it is necessary to look at the circumstances surrounding the filing of the Applications which includes the relevant actions of each party.
5. In the present opposition, I am satisfied that the Applicant's knowledge was such that the decision to apply for registration of all of the Applications would be regarded as in bad faith by persons adopting proper standards.
6. In finding against the opponent in Fry Consulting, her Honour expressly noted that she considered it relevant that the applicant had not learned of the opponent's claimed conflicting rights 'through a licence agreement or a prior relationship which imposed obligations of a fiduciary or quasi-fiduciary character'.[18] Her Honour's comments are relevant here. This is not a case of mere knowledge before the priority date of another person's trade marks. This is a case which involves a prior relationship between the Applicant and the Opponent. That relationship involved the parties discussing a possible sale of the Opponent's Registration and assets which led to the execution of a confidentiality agreement, which in turn led to an offer to purchase and a rejection of that offer. Once the offer was rejected, the Applicant sought removal of the Registration and filed the Applications.
7. I am also satisfied that by offering to purchase the Elfin brand and its assets, the Applicant acknowledged that the Opponent owned the Elfin business and the name Elfin. To then file the Applications just after the Applicant had dealings with the Opponent which did not go the Applicant's way, and knowing that the Elfin Trade Marks were the property of the Opponent, is the very essence of bad faith.
8. I also add that, despite being on notice of the ground of bad faith in the SGP for each Application, followed by the evidence in support being served on it, the Applicant has chosen not to challenge or dispute the evidence in any way. Such silence and failure to address the issue of bad faith simply strengthens the Opponent's case and supports the claim of bad faith.[19]
9. The Opponent has established this ground of opposition.
10. Having found the s 62A ground of opposition established, it is unnecessary that the remaining grounds be considered.

(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 established on the balance of probabilities, the ground of opposition under 62A. I accordingly refuse to register the Applications. If the Registrar is served with a notice of appeal within one month from the date of this decision, I direct that the disposition of the Applications be in accordance with the court's direction or order.

1. The Opponent has sought costs. I see no reason to depart from the general rule that costs follow the event. Accordingly, with respect to the opposition to the 571 Mark, I award costs against the Applicant in accordance with the amounts in Schedule 8 of the Regulations and for the oppositions to the 574, 575 and 920 Marks, I award reduced costs against the Applicant under s 221 in the same manner as Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd.[20]

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

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

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

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

[6] [2012] FCA 81 (Dodds-Streeton J) ('Fry Consulting').

[7] [2013] FCA 478 (Bennett J) ('DC Comics').

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

[19] Hard Coffee (n 17), [22]-[24].

[20] [2001] ATMO 78 (Hearing Officer Williams).