Opposing a trade mark on the grounds of bad faith

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If a someone has applied to register a trade mark and has done so in bad faith, knowing something they have said is incorrect or false, registration may be able to be opposed or, if it has already been registered, apply for removal of the trade mark on the grounds of bad faith.

If a someone has applied to register a trade mark and has done so in bad faith, knowing something they have said is incorrect or false, registration may be able to be opposed or, if it has already been registered, apply for removal of the trade mark on the grounds of bad faith.^[1]

This article will use the following terms to describe the relevant parties:

• Registered Owner means the owner or applicant of the trade mark in question; and
• Opponent means the party who is opposing the trade mark’s registration or applying for its removal.

What is bad faith in trade mark matters?

The Trade Marks Act 1995 (Cth) (Act) does not provide a definition for either ‘bad faith’ or ‘good faith’.  Therefore, what will constitute bad faith has been left to the Court to determine. Past judgments indicate that there are two (2) elements to be considered when determining whether a trade mark has been applied for in bad faith: subjective and objective.

The subjective view looks at the Registered Owner’s knowledge at the time of filing.^[2]

The objective view asks whether filing the trade mark ‘falls short of the standards of acceptable commercial behaviour’.^[3]  The issue of commercial behaviour was considered by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81 who said that the Registered Owner’s knowledge of the Opponent’s trade mark had to be ‘such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.’^[4]  The Registered Owner in that case was found not to have acted in bad faith as:

• they indicated a willingness to cease using the trade mark if the Opponent provided evidence of its entitlement to it;
• the Opponent did not provide evidence of its entitlement and failed to register its own trade mark in Australia; and
• the Registered Owner continued to develop his business using the trade mark by adding ‘Australia’ to the end of it and designing a logo to create a mark consisting of both the words and logo.^[5]

This issue of commercial behaviour was raised again Bolero Co. Ltd. V RSD Holdings Limited [2021] ATMO 105.  Bolero, the Opponent, had two (2) trade marks which included an image of a drop of water with the letter ‘B’ in the centre (B Logo) and RSD Holdings, the Registered Owner, had a trade mark which was an image of a drop of water with the letter ‘C’ in the centre (C Logo).  Both logos had a black background with white writing.  The Court held that the C Logo was not registered in bad faith as:

• the water drop on the C Logo represented water or moisture that was connected to the brand’s products, being incontinence underwear; and
• as the B Logo was used in relation to entirely different products, the Registered Owner had no reason to have been aware of the Opponent or its trade marks and would have had no desire to be associated with either of them.^[6]

It is important to know whether the trade mark in question has been registered or is still in the application stage as the time periods and requirements differ for opposing registration or applying for the removal of a trade mark for non-use (Removal Application).

Opposing an application for registration

If the trade mark is in application stage, it can be opposed by filing a Notice of intention to oppose (Opposition Notice) within two (2) months of the application being advertised by IP Australia.^[7]  The Opposition Notice notes the details of the trade mark and the Opponent.

Within one (1) month of filing the Opposition Notice, the Opponent must also file a Statement of Grounds and Particulars^[8] stating the grounds for opposing the registration and why the Opponent believes the trade mark has been applied for in bad faith.

Removal Application

If the trade mark has been registered, a Removal Application can be filed when:

• the Registered Owner has not used the trade mark, or used it in good faith, in Australia at any time up to one (1) month before filing the Removal Application; and
• on the day of filing the Removal Application, the Registered Owner has no intention in good faith to
• use;
• authorise the use of; or
• assign the trade mark to a body corporate for use,

within Australia.^[9]

The Removal Application notes the details of the trade mark, the Opponent and the grounds for removing it.  Unlike opposing a trade mark’s registration, a Statement of Grounds and Particulars is not required when applying to remove a trade mark for non-use.

Links and further references

Legislation

Trade Marks Act 1995 (Cth)

Cases

Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81

Bolero Co. Ltd. V RSD Holdings Limited [2021] ATMO 105

Further information about opposing the grant of a trade mark

If you need advice on opposing the grant of a trade mark on the grounds of bad faith, contact us for a confidential and obligation-free discussion:

Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

[1] Trade Marks Act 1995 (Cth) ss 52 and 92(4)(a).

[2] Bolero Co. Ltd. V RSD Holdings Limited [2021] ATMO 105 [46].

[3] Bolero Co. Ltd. V RSD Holdings Limited [2021] ATMO 105 [46] and Corn Products Development Inc. v Cargill Inc. [2021] ATMO 92 at [42].

[4] Fry Consulting Pty Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81 [167].

[5] Ibid [174].

[6] Bolero Co. Ltd. V RSD Holdings Limited [2021] ATMO 105 [48].

[7] Trade Marks Act 1995 (Cth) s 52(2) and Regulation 5.6 of the Trade Marks Regulations 1995 (Cth).

[8] Regulation 5.6 of the Trade Marks Regulations 1995 (Cth).

[9] Trade Marks Act 1995 (Cth) s 92(4)(a).

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