The Hearing Officer
found that the
Applicant’s conduct fell
short of the standards of
acceptable commercial
behaviour observed
by reasonable and
experienced persons.

In finding that s.62A was made out
in the present case, the Hearing
Officer – whilst noting that a finding
of similarity was not necessary
under that ground – found it was
relevant that the R&R Estate mark
was ‘substantially identical’ to
the Applicant’s earlier filed RUSH
RICH mark. This RUSH RICH
mark had been in widespread use
and as such, the Hearing Officer
found that there was a risk that
the Applicant’s reputation in the
Rush Rich mark would survive and
lead to confusion with the R&R
Estate mark. The Applicant filed no
evidence in support of its case and
the Hearing Officer, whilst noting
that no adverse implication flowed
from this, stated ‘it can be assumed
that any information would not have
assisted the Applicant’s case’. Thus,
the Hearing Officer found that the
Applicant’s conduct fell short of the
standards of acceptable commercial
behaviour observed by reasonable
and experienced persons.

The bad faith ground may
provide opponents with a
vehicle to successfully challenge
the registration of marks that
might otherwise proceed to
registration where for example,
the marks are not similar enough
to establish a s.44 ground or a
reputation is not sufficient for
a s.60 ground of opposition.

Trade mark watches, particularly
for well-known and emerging
consumer brands, are an important
means to keep an eye on traders
who may be making applications
in bad faith. Stopping such conduct
is vital for trade mark owners
wanting to maintain and protect
brand value and avoid trade mark
dilution and consumer confusion.

Inspire July 2020
7 Anita Brown | Partner
BA LLB MIPLaw GAICD
anita.brown@pof.com.au