This matter concerned an opposition to the application for the trade mark ‘JETLEV’ in respect of class 12: leisure boats.
The trade mark applicant had previously pursued a licencing agreement with respect to the products and intellectual property of the opponent, who was developing a water based jet pack for recreational use, being promoted under the brand ‘JETLEV’. Negotiations eventually halted, and came to naught. However, the applicant proceeded to lodge the application-in-suit.
The trade mark opponent put on evidence of confusion in the form of email correspondence with a representative in Australia who assumed that the trade mark applicant was an agent for the US based opponent.
The delegate considered the application of s 62A of the Trade Marks Act, and whether the application had been made in bad faith.
The Delegate considered the developing body of case law on the topic, and summarised the principles with respect to s 62A to include:
- Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
- The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
- It is difficult to see how a person who applies to register, in his own name, a mark he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. Combining the mark with the applicant’s own name is no answer to that criticism.
- The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
- All the circumstances surrounding the application to register the mark are relevant.
- An act of bad faith cannot be cured by an action after the date of application.
In light of the above principles, and the fact that the application sought the application after licence negotiations with the opponent had failed, the Delegate was of the opinion that the opponent had established its ground of opposition, and the application was refused.
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