Hard Coffee, Platypus and Bad Faith

The first decisions under Section 62A (bad faith) have been issued by the Trade Marks Office in the following oppositions:

1. 1. Opposition by Hard Coffee Pty Limited to registration of trade mark applications 1199357, 1199358, 1200636 and 1200637 - HARDCOFFEE MAIN BEACH and HARDCOFFEE - filed in the name of Hard Coffee Main Beach Pty Limited(1April,2009):
   http://www.ipaustralia.gov.au/pdfs/trademarks/hearings/1199357.pdf

The Hearing Officer found that the four opposed applications had been made in bad faith under Section 62A and allowed the opposition under that ground for the following reasons:

1. the Director of the Applicant Company had had dealings with the Opponent prior to the lodging of the opposed applications and had signed a Contract Business Sale by which he had agreed that the Vendor (here the Opponent) will retain all rights, title and interest and all intellectual property rights in the name HARD COFFEE (business name and common law trade mark)
2. at the time of the filing of the applications, the Applicant could not have ignored the existence of the Opponent’s business name HARD COFFEE, nor the Applicant’s use of that name as a trade mark for coffee shop services
3. the opposed applications are for trade marks that are at least deceptively similar to the Opponent’s trade mark and business name and are for goods and services that provide “an obvious link with those in which the opponent’s businesses deal”

The Hearing Officer acknowledged that under Section 62A there is no formal requirement for the Opponent to use a similar mark, but found that where an Opponent alleges “bad faith” and claim that “the applicant is attempting to appropriate its trade mark (and reputation in that mark) I accept that the ‘conflicting’ trade marks would need to be sufficiently similar to produce deception or confusion for the purchasing public in a similar manner to that assessed under Section 44 of the Act (whether the opponent’s trade mark is on the Register or not)”.

1. 2. Opposition by Bombala Council to registration of trade mark applications 1165437, 1165438, 1165439, 1165441 and 1165443 - PLATYPUS COUNTRY SERIES - filed in the name of Peter WIlkshire (26 May, 2009):
   http://www.ipaustralia.gov.au/pdfs/trademarks/hearings/1165437.pdf

The Hearing Officer found in favour of the Opponent in terms of Section 62A for the following reasons:

1. “the applicant clearly has ‘applied to register a mark which he has previously recognized as the property of another with whom [he] has a course of dealing or some other relationship’
2. “the lodgement of the applications after the applicant has agreed to terms of settlement with the opponent but before the Federal Court has had an opportunity to issue consent orders, might in the circumstances also amount to an application made in bad faith”
3. “the evidence shows that the circumstances were such that a ‘reasonable person’ standing in the shoes of the applicant, would have been aware that he/she ought not to apply for trade mark registration”

For lack of prior Australian precedents on bad faith, the Hearing Officer referred to the UK decision in Harrison v. Teton Valley Trading Co [2005] FSR 10 at [20], where the Judge held “No doubt an application made dishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, bad faith cannot have existed.”

Conclusion:

The onus of demonstrating bad faith falls on the party making such an allegation. The fact that the applicant did know at the time of filing that the opponent was using the applied for trade mark is not in itself sufficient to establish bad faith. The opponent must demonstrate that at the time of filing, the applicant not only knew that the trade mark belonged to the opponent or could not have ignored that it did, but also that the applicant would have been aware that he/she ought not file an application for that mark. In the above cases, such demonstration was made by providing tangible proof that the applicant had had prior dealings with the opponent and that he had at the time acknowledged the opponent’s ownership of the mark.

If you have any queries, please do not hesitate to contact Florence McFarlane at florence.mcfarlane@ekmpatent.com.