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4. Grounds for opposition to registration of national trade marks

The only grounds on which registration may be opposed are those contained in the Act and Regulations. The onus is upon the opponent to establish a ground of opposition and the standard of proof is on the balance of probabilities (Pfizer Products Inc v Karam (2006) FCA 1663 per Gyles J at [6] to [26]).

Registration may be opposed on the same grounds for rejecting an application during examination, with the exception of the ground under section 40 that the trade mark cannot be represented graphically (section 57).  

Grounds specific to opposition are detailed in Division 2 of Part 5 of the Act and are discussed below.

4.1  Registration may be opposed on the ground that the applicant is not the owner of the trade mark - section 58

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).  The owner of an unregistered trade mark in Australia for particular goods or services is taken to be the first person to use it in Australia in the course of trade in those goods or services (Seven Up Co v OT Ltd (1947) 75 CLR 203).  If there has been no use, the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner (Shell Co (Aust) Ltd v Rohm and Haas Co (1948) 78 CLR 601).

The Registrar takes at face value the claim by a person applying for registration to be the owner of the trade mark in respect of the specified goods and/or services (see paragraph 27(1)(a)).  However that claim can be displaced if the opponent is able to establish that another party is the owner at common law as it was the first to use the same, or a substantially identical trade mark, in Australia in relation to the same goods and/or services before the application for registration was made.

If a pending trade mark is assigned (section 108(2)), any title in the trade mark application devolves to the assignee who is then taken to be the person claiming to be the owner of the trade mark (under section 27(1)(a)).  As a consequence, the act of filing and any use by the predecessor in title are taken to be actions and use by the applicant (see section 6).

 

4.1.1 First use

The use relied upon must have occurred in Australia before the applicant’s use of its trade mark or before the filing date of the opposed application, whichever is the earlier.  It must be use as a trade mark by a person other than the applicant or the applicant’s predecessor in title (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414).

 

4.1.2 The same or substantially the same trade mark

The use relied on must be use of a trade mark which is closer than merely deceptively similar (Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375).

For further discussion of the term "substantially identical" see Part 26 in this manual which deals with conflicting trade marks under section 44.

 

4.1.3 Same goods or services

According to Re Hicks’ Trade Mark; Ex parte Metters Bros (1897) 22 VLR 636 the use must be in relation to goods or services that are “the same kind of thing” as the specified goods or services.  This requirement was considered in Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184 where it was stated that the goods need not be identical, but must be essentially the same. Thus, in the case of a multi-class application, or even an application covering a broad range of goods or services in a single class, it is possible that the ground of opposition may be established for some, but not all, of the specified goods or services.

4.3  Registration may be opposed on the ground that the opponent has prior use of a similar trade mark – section 58A

As a general rule the Registrar will not register a trade mark that conflicts with an earlier trade mark (section 44 and reg 4.15A).  However in some cases the applicant for registration may have already established ownership rights at common law. In recognition of this the legislation (subsection 44(4) and reg 4.15A(5)) requires the Registrar to accept (or register) the applicant’s trade mark if there is evidence that the trade mark has been used continuously in relation to the relevant goods and/or services from before the filing date of the earlier trade mark.

If subsection 44(4) or reg 4.15A(5) is applied, section 58A provides that registration may be opposed by the owner of the earlier trade mark on the basis of continuous use of the earlier trade mark starting before the first use of the applicant’s trade mark.  

For judicial consideration of section 58A see Millennium & Copthorne International Ltd v Kingsgate Hotel Group Pty Ltd [2012] FCA 1022.

4.4  Registration may be opposed on the ground that the applicant does not intend to use the trade mark - section 59

PLEASE NOTE: This ground does not apply to oppositions to registration of defensive trade marks.

The act of applying for registration is taken to be evidence of a real and definite intention to use the trade mark in relation to all the goods and services nominated (Aston v Harlee Manufacturing Co (1960) 103 CLR 391).

Section 59 provides that registration may be opposed on the basis that the applicant did not intend to use the trade mark or to authorise the use of the trade mark, or to assign the trade mark to a body corporate for use by the body corporate. The Full Federal Court in Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 found that the applicant’s lack of intention to use its trade mark must be established at the filing date, while acknowledging 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”.

If a trade mark is assigned prior to registration, the applicant in whose name the application is then proceeding inherits the presumption of intention (as at the filing date) mentioned above. In those circumstances, the opponent still bears the onus of establishing a prima facie case that the predecessor in title did not have that requisite intention.

In Suyen Corporation v Americana International Ltd [2010] FCA 638 Dodds-Streeton J noted:

Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. … Opposition has … succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.

If an opponent establishes a prima facie case the onus shifts to the applicant to establish that the requisite intention existed at the time of filing (Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100).

4.5  Registration may be opposed on the ground that use of the trade mark may confuse or deceive because of another trade mark with a reputation in Australia - section 60

Section 60 has two elements both of which must be established by the opponent.  Firstly, the opponent has to show that another person’s trade mark, registered or unregistered, had acquired a reputation in Australia before the priority date of the applicant’s trade mark.  Secondly, the opponent has to show that, in light of that reputation, use of the applicant’s trade mark would be likely to deceive or cause confusion.

 

4.5.1 Reputation

The opponent must establish the reputation of the other trade mark as a matter of fact. There are no “clear and universally applicable guidelines” for establishing reputation (Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170). It can, for example, be demonstrated through direct evidence of consumer appreciation of the trade mark (ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193) or it can be inferred from a high volume of sales combined with substantial advertising figures and other promotions (McCormick & Company, Inc v McCormick [2000] FCA 1335).  

In Tivo Inc v Vivo International Corporation Pty Ltd> [2012] FCA 252 Dodds-Streeton J noted:

The authorities ... recognise that even in the absence of sales or use, a mark may acquire a reputation in Australia by the means of direct preliminary marketing, direct advertising, indirect advertising, exposure in radio, film, newspapers and magazines or television, or because the mark has a reputation in another country which can be shown to have extended to Australia.

The reputation must be reputation as a trade mark (Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81).

 

4.5.2 The likelihood of deception or confusion

Determining the likelihood of deception or confusion resulting from use of the applied-for trade mark because of the reputation of the other trade mark requires the consideration of several issues including the similarity, or otherwise, of the trade marks.  Although section 60 makes no reference to this aspect it is headed “Trade mark similar to trade mark that has acquired a reputation in Australia”.  In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5 the Registrar’s delegate stated:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

The nature of the trade mark with the reputation also needs to be considered – whether it is general or special in character (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 608) – as does the nature of the goods for which the trade mark has the reputation.  Are they commonplace or restricted to a niche market.  Is there a consumer expectation of ‘brand extension’ (Campomar Sociedad, Limitada v Nike International Ltd (1998) 41 IPR 252).

The opponent must show that there is a real tangible danger of deception or confusion (Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020) among a ‘significant’ or ‘substantial’ number of consumers. The assessment of what is ‘significant or substantial’ must be properly and sensibly applied (Bali trade mark(1969) RPC 472) and may depend on the specialised nature of the relevant market (Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587).

 

4.6 Registration may be opposed on the ground that the trade mark contains or consists of a false geographical indication - section 61

Section 61 was included in the Trade Marks Act 1995 so that Australia met its obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (‘TRIPS’).  Subsection 61(1) provides a ground of opposition if an application for a trade mark for particular goods (relevant goods) contains a sign which is a geographical indication for goods (designated goods) originating in a country, region or locality other than the country in which the relevant goods originated, or a region or locality in a country other than the region or locality in which the relevant goods originated.  The ground is established if the relevant goods are similar to the designated goods or if the use of the trade mark in relation to the relevant goods would be likely to deceive or cause confusion. However, if subsection 61(1) is established, the applicant has resort to the defences contained in subsections 61(2) to 61(4).

4.6.1 Geographical indication

Section 6 of the Trade Marks Act 1995 defines a geographical indication as:

a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

To assist in demonstrating that a trade mark contains a sign which is a geographical indication for the goods, an opponent should provide evidence showing that the sign is recognised as a geographical indication. This material could include declarations from experts in relation to the goods, references in texts or the like, or some form of formal recognition such as registration as an appellation of origin.

 

4.6.2 Similar goods

For a discussion of what constitute ‘similar goods’ see Part 26.4.

 

4.6.3 Defences to subsection 61(1) ground

If the opponent has established subsection 61(1), the applicant may defend its application by establishing one of the defences in subsections 61(2) to 61(4):

4.7  Registration may be opposed on the grounds of improper amendment or acceptance on the basis of evidence or submissions false in material particulars - section 62

4.8  Registration may be opposed on the ground that the application was made in bad faith – 62A

Until the Act was amended by the Trade Marks Amendment Act 2006 there was no provision for opposing registration on the basis that the application for registration was made in bad faith. The Registrar’s experience had shown that such a provision was necessary because of instances where trade mark applicants deliberately set out to gain registration of their trade marks, or adopted trade marks, in bad faith.  Examples included:

For this reason section 62A was added to the Act so that registration of a trade mark could be opposed on the basis that the trade mark applicant applied for registration in bad faith.

Section 62A was judicially considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 where Dodds-Streeton J stated the test for bad faith as whether “persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.”

This test was cited with approval in DC Comics v Cheqout Pty Limited [2013] FCA 478.

4.9  Registration of certification and defensive trade marks - additional grounds of opposition

Sections 177 and 187 provide additional grounds for rejecting an application or opposing registration for certification trade marks and defensive trade marks respectively. The additional grounds for opposition are described in the Parts of this Manual dealing with defensive trade marks and certification trade marks.

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