In the first substantive decision concerning the new 'bad
faith' grounds of opposition under the Trade Marks Act
1995 (Cth) (TMA), the Australian Trade Marks
Office has provided some guidance as to how oppositions made under
this section will be considered, and the scope of evidence required
to both establish and refute a claim of bad faith.1
In September 2006, the TMA was amended to add s 62A as a new
ground of opposition. The section provides that the registration of
a trade mark may be opposed on the grounds that the application was
made in bad faith. There is no guidance in the TMA or the
Explanatory Memorandum as to the meaning of 'bad
Hard Coffee Pty Limited (the opponent) had been
using the HARD COFFEE trade mark in connection with several
Queensland coffee shops since 1996. In 2004 it sold one of these
coffee shops to a company called MB Raymond & Co Pty Limited.
The contract of sale expressly stated that the opponent retained
ownership of the intellectual property in the HARD COFFEE name, and
the purchaser was only given a limited licence to continue using
the marks until the store signage was changed.
In September 2007 Hard Coffee Main Beach Pty Limited
(the applicant) filed four trade mark applications
for HARDCOFFEE and HARDCOFFEE MAIN BEACH. The evidence showed that
the director of the trade mark applicant was also a director of the
purchaser of the business at the relevant time, and had signed the
contract of sale on behalf of the purchaser. The opponent opposed
The Hearing Officer held that an application made in bad faith
will involve 'an element of intentional dishonesty or a
deliberate attempt to mislead the Registrar in some way by means of
The onus falls on the opponent to submit sufficient evidence to
establish bad faith on the balance of probabilities. Where an
applicant claims that the application was not made in bad faith but
as a result of ignorance or naivety, it then becomes necessary to
determine if the evidence shows that a 'reasonable man'
standing in the shoes of the applicant should be aware that he
ought not apply for the trade mark.
The Hearing Officer also noted that, for the purposes of s 62A,
there is no formal requirement that the opponent's trade marks
be similar. However, where the question of bad faith involves
allegations that the opponent's trade marks and reputation are
being appropriated, the Hearing Officer considered that the marks
in issue would need to be assessed in a similar manner to section
44 of the TMA, that is, whether the marks are sufficiently similar
to each other so as to result in deception or confusion.
In the present case, the Hearing Officer decided that the
opponent had satisfied its onus to establish bad faith, shifting
the onus to the applicant to provide evidence in answer. The
applicant did not file any evidence or submissions in response. The
Hearing Officer considered that the failure to do so strengthened
the opponent's case of bad faith. Consequently, all four
oppositions were successful.
The decision confirms that the onus is squarely on the opponent
to prove some degree of dishonest or underhand dealing on the part
of the applicant, when relying on section 62A in trade mark
opposition proceedings. For trade mark applicants, the decision
also highlights the need to be vigilant in responding to any
evidence of 'bad faith', or run the risk that silence might
be construed as supporting the opponent's case.
1 Hard Coffee Pty Limited v Hard Coffee Main Beach
Pty Limited  ATMO 26 (1 April 2009)
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