In the opposition matter between Hub Ventures Pty Ltd (The Opponent) and Zig Zag Hub Pty Ltd (The Applicant), Baxter IP acted for the Applicant in defending the opposition and successfully rebutted the grounds of opposition raised by the Opponent in relation to similarities, reputation, and bad faith. In this article, we will let you know how we did it.
Background
The Applicant is a provider of co-working spaces in the Wollongong and Nowra areas. Their services include leasing services of office spaces, business administration and management, career advisory, business training and coaching, and temporary office accommodation (Relevant Services). The business has been running since 2016. In order to protect the brand and the goodwill of the business, the Applicant filed a trade mark application in 2016 for their logo mark “ZIG ZAG HUB COWORKING SPACES” (shown below) and claimed protection for the Relevant Services. The Application was examined without any objection being raised.
Following the acceptance of the application, an opposition was raised by Hub Ventures Pty Ltd, (the Opponent), under sections 44, 60, and 62A of the Trade Marks Act 1995.
Grounds of opposition raised
As provided in the Trade Marks Act 1995 (Cth):
Section 44 – Identical etc. trade marks
(2) subject to subsections (3) and (4), an application for registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Section 60 – Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Arguments and evidence filed
Section 44 – Identical etc. trade marks
Section 44 is a ground of opposition through which an application can be opposed for being identical or deceptively similar to trade marks on the register. It is also a ground of objection through which examiners can object to a trade mark application for the same reason.
In this case, it is worth noting that the Application was not objected during examination, which means the examiner had not found the trade mark to be conflicting with any prior trade mark registrations.
Opponent’s evidence and arguments
In support of the ground under section 44, the Opponent raised Trade Mark Registration No. 1630134, a series trade mark which was registered in the name of the Opponent.
The Opponent asserted that the Applicant’s trade mark was deceptively similar to the series trade mark of the Opponent as it shared a common word, “HUB”, and contained a rectangle shape, which resembled the square shape of the series trade mark. Both trade marks claimed protection for similar services.
Applicant’s arguments
In a rebuttal of Opponent’s allegations, the Applicant argued that the Opponent had not obtained any exclusivity in connection with the word “HUB” given that its previously filed application for “HUB”, a plain word mark, in respect of the relevant services was refused for registration under Section 41 for lacking in the inherent adaptability to distinguish the claimed services. As such, the word “HUB” ought not to be taken as a prominent feature of the series mark when comparing the marks.
The Applicant also argued that the basis of the decision as to whether a likelihood of deception or confusion would occur should be determined in consideration of the overall imperfect recollection of the marks, particularly, the visual and aural effects of each mark. In this matter, the additional features of the Applicant’s trade mark well distinguished it from the series mark of the Opponent.
Section 60 – Trade mark similar to trade mark that has acquired a reputation in Australia
The second ground of opposition raised by the Opponent was the ground under section 60. The key to establishing this ground is to demonstrate a significant reputation of a trade mark and a likelihood of deception or confusion occurring as a result of that reputation. Factors also taken into consideration are the similarities shared by the applied-for Trade Mark and the trade mark with a reputation. The bar for establishing a significant reputation is not very high. It requires evidence of a high volume of sales of the relevant goods and/or service, substantial advertising, promotional expenditures and demonstrated consumer recognition.
Opponent’s evidence
The Opponent claimed that its HUB series mark had made significant sales of services since 2010 and that the unregistered “HUB” word mark had received significant and continuous media exposure throughout Australia for providing the relevant services, from which a significant reputation had been acquired by both trade marks of the Opponent. As evidence, the Opponent provided several newspaper articles, figures of followers of its social media accounts, pages of its website bearing the series trade mark, as well as a few tax invoices which demonstrated the use of the series trade mark for the relevant services.
The Opponent asserted that due to the reputation of its trade marks, the resembling elements contained in the Applicant’s trade mark, being the word “HUB”, and the rectangle shape, were likely to cause deception and confusion.
Applicant’s arguments
In rebutting the Opponent’s assertions, the Applicant challenged the evidence submitted by the Opponent.
The Opponent, firstly, raised that there were only two invoices which had generated only a small amount of revenue. The requirement of “a high volume of sales” was not satisfied. Secondly, since the invoices were dated back to 2010 which was seven years earlier than the filing date (Relevant Date) of the Opposed Application and no other invoices were provided, the Applicant had a reason to infer that the use of the series trade mark had been discontinued for years. Thirdly, the Applicant challenged that the website page was an archived page dated back to 2012 and that page was no longer listed, which again suggested that the use of the series trade mark did not continue, let alone gained a significant reputation. Lastly, the Applicant observed that the media articles were dated after the Relevant Date and, therefore, they could not support the Opponent’s alleged reputation in connection with the unregistered “HUB” word mark.
Section 62A Application made in bad faith
The last ground that the Opponent replied on was section 62A – that the Application was made in bad faith.
Opponent’s arguments
In particularising this ground, the Opponent alleged that the Applicant had become aware of the Opponent’s marks when it performed searches for assessing the availability of the Trade Mark on Google and ATMOSS and that the inclusion of the word “HUB” in the Trade Mark was an attempt to leverage from the reputation acquired by the Opponent’s marks.
Applicant’s arguments
The Applicant denied bad faith in making the application and stated that the inclusion of the word “HUB” in the Trade Mark was due to its literal significance which had reference to the services of the Applicant. Further, since the Opponent had not obtained exclusive rights of the word, nor had it acquired a reputation for using that word in providing relevant services, any other traders should have the legitimate rights in using that word.
Decision of the Trade Marks Office
After assessing the evidence and submissions of the parties, the Trade Marks Office decided no grounds of opposition were established and the Applicant’s trade mark proceeded to registration.
Takeaway tips for readers
Whilst an opposition may seem challenging when a number of grounds are raised, it is worth establishing your position and preparing to defend your application because chances of success by the Opponent are not guaranteed and often, evidence might not support the opponent’s claims. You will need to engage a qualified trade mark attorney to deal with the matter for ensuring the best outcome.
Baxter IP is always at your service.
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