This article was first published in the Lexis Nexis Intellectual Property Law Bulletin October 2016 Vol 29 No 9

Key Takeaways

  • While it is standard practice to make broad goods and services claims, this may sometimes work against an applicant, especially in relation to opposition for no intention to use under s 59 of the Trade Marks Act 1995 (Cth) (the Act).
  • There must be dated evidence of trade mark use in relation to the relevant goods and services to claim ownership of a trade mark during opposition proceedings.
  • An opponent will successfully oppose an entire trade mark application if they can establish that the application was made in bad faith under s 62A. As such, an opponent should consider this ground even though proving bad faith is usually difficult.

Background

Australia Post (the applicant) filed a trade mark application for MY POST in various goods and services in classes 9, 16, 20, 35, 36, 37, 38, 39, 40, 41, 42 and 45 (the Trade Mark Application). Just before the end of the advertisement period, Jason Bosco Elvis Soares (the opponent) opposed the registration of the trade mark on grounds under ss 41, 58, 59 and 62A of the Act.

According to the opponent, he is in the business of providing IT goods online and saw an opportunity to offer courier and delivery services. He decided to call his new business MyPost and obtained the domain name, mypost.com.au. Mr Soares had unsuccessfully attempted to register trade marks before and so did not apply for the MyPost mark, thinking that the application would attract a distinctiveness objection under s 41 of the Act.

Just before the applicant applied for the trade mark, a representative of the applicant approached the opponent who unsuccessfully negotiated to buy the opponent’s domain name.

Section 41 – Capable of Distinguishing

Under s 41, the opponent must prove that the trade mark is not capable of distinguishing the goods and services claimed. With reference to the test set out by Judge Kitto in Clark Equipment Co v Registrar of Trade Marks (1964) 11 CLR 511, the hearing office considered evidence of third parties using MY POST as well as dictionary definitions of the words “my” and “post”.

The hearing officer observed that definitions of the words “my” and “post” did not prove that MY POST is descriptive. Also, careful inspection of third party use of MY POST showed the mark being used as a trade mark rather than as a descriptive or commonly used expression which describes goods and services. For this reason, the ground for opposition under s 41 was not made out.

Section 59 – Intention to Use

Under s 59, a trade mark application may be opposed if the opponent can establish that the applicant did not have the requisite intention to use the mark. The hearing officer examined the evidence both parties provided and referred to the factors that affect consideration of s 59 in Suyen Corp v Americana International Ltd (2010) 187 FCR 169.

The opponent pointed out that the applicant had claimed for a much broader specification of goods and services in the Trade Mark Application than its actual goods and services offering. For example, some of the goods claimed in classes are offered for retail sale by the applicant but do not bear the applicant’s trade mark. Also, some of the services claimed are not provided to clients or customers but are internal business functions incidental to its operations only.

The hearing officer agreed with the opponent and was not convinced that the applicant had the intention to use the mark MY POST except in relation to its digital offerings. It was pointed out that the applicant does not currently provide or offer to its customers many of the goods and services claimed and these cannot be connected to future offerings.

Section 58 – Who Owned the Trade Mark?

The opponent claimed, under s 58, that the applicant was not the owner of the trade mark. Since the applicant had not used the trade mark before the filing date of 17 February 2014, the opponent only had to demonstrate that he had used the trade mark before this date.

The opponent provided a delivery slip bearing his trade mark dated 19 June 2013. The hearing officer, citing Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, decided that this was sufficient for the opponent to establish that the applicant was not the owner of the trade mark in relation to packaging materials and packaging, courier and delivery services (the goods and services provided by the opponent).

Section 62A – Applications Made in Bad Faith

A trade mark may be opposed on the ground that the trade mark application was made in bad faith. Section 62A is a relatively new provision. In assessing whether the application was made in bad faith, the hearing officer referred to Judge Bennett in DC Comics v Cheqout Pty Ltd (2013) 299 ALR 110 discussing the decision of Judge Dodds-Streeton in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 1) [2011] FCA 1417.

In the context of s 62A, bad faith does not require dishonesty or fraud but will involve a failure to act in accordance with acceptable standards of commercial behaviour. The correspondence between the applicant and the opponent when negotiating for the mypost.com.au domain name was used to demonstrate that:

  • The applicant knew that the opponent was using a similar brand in relation to his business.
  • Despite this knowledge, and following the failure to agree during the negotiations, the applicant filed the trade mark application.
  • This showed the applicant failed to act in accordance with acceptable standards of commercial behaviour.

The opponent successfully established a ground under s 62A.

Conclusion

The opponent was successful in opposing the whole trade mark application. In practice, it would seem that successful claims under s 62A are usually accompanied by successful claims under ss 58 and 59.

This decision demonstrates how establishing an s 62A opposition may assist the opponent to achieve a more commercially beneficial and desirable outcome. In this case, if only ss 58 and 59 were established the applicant would still have been able to have their trade mark proceed to registration, albeit covering a more limited range of goods and services. However, establishing the ground under s 62A has the desired result of blocking the whole trade mark application.

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If you have any questions or need assistance with your trade mark application, get in touch with our trade mark lawyers on 1300 544 755.

Raya Barcelon

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