The Body Corporate of the Phoenician Cts 27745 v Mantra IP Pty Ltd [2011] ATMO 96 (30 September 2011)

Last Updated: 20 October 2011

TRADE MARKS ACT 1995



DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re: Opposition by THE BODY CORPORATE OF THE PHOENICIAN CTS 27745 to registration of trade mark applications 1228732 and 1228735 (35 and 39) - PHOENICIAN - filed in the name of MANTRA IP PTY LTD.

AND

Opposition by MANTRA IP PTY LTD to registration of trade mark application 1272905 (36 and 43) - PHOENICIAN - filed in the name of THE BODY CORPORATE OF THE PHOENICIAN CTS 27745.

1. Mantra IP Pty Ltd (‘Mantra IP’), filed trade mark application numbers 1228732 and 1228735 on 10 March 2008 in classes 35, 39 and 43 of the International Classification of Goods and Services. Current details of the applications are set out below.

Trade mark: PHOENICIAN

Trade mark application: 1228732

Filing Date: 10 March 2008

Specification: Class 39: Holiday travel reservation services; advisory services relating to travel; agency services for arranging travel; arrangement of travel; booking agency services for travel; computerised reservation services for travel; consultancy for travel; information services relating to travel; provision of information relating to travel; provision of tourist travel information; provision of travel information; reservation services for travel; ticket booking services for travel; tourist travel reservation services; travel agents services for arranging travel; travel information services; travel reservation; computerised reservation services for travel; computerised transport information services; luggage storage services; organising of excursions; parking of cars; parking services for vehicles; provision of parking facilities; reservation services for tours; services for the arranging of excursions for tourists; tour organising; and arranging rental of cars

Trade mark: PHOENICIAN

Trade mark application: 1228735

Filing Date: 10 March 2008

Specification: Class 35: Advertising services for accommodation, including providing these services online

Class 39: Hotel and resort services; accommodation reservations; provision of accommodation including hotel, motel, apartment and resort; provision of temporary accommodation; administration and booking services for accommodation; rental of temporary accommodation; accommodation reservations; accommodation management services; provision of food and drink; restaurant services; reservations (temporary accommodation); hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; accommodation letting agency services (holiday apartments); arrangement of accommodation for holiday makers; arranging holiday accommodation; holiday home services (accommodation); holiday information (accommodation); holiday lodgings; holiday planning (accommodation); letting of holiday accommodation; provision of self catering holiday accommodation; reservation of places at holiday resorts; travel agencies for arranging accommodation; travel agency services for booking accommodation; travel agency services for making hotel reservations; accommodation finding services for tourists and travellers; accommodation letting agency services (holiday apartments and hotels); accommodation reservation services; arranging holiday and temporary accommodation; booking of accommodation for travellers; booking services for accommodation; hospitality services (accommodation); information services relating to the provision of temporary accommodation; letting of holiday and tourist accommodation; providing information, including online, about services for providing food and drink, and temporary accommodation; provision of self catering holiday or temporary accommodation; and resort accommodation

2. Both of the applications were eventually accepted for possible registration and the official notices of acceptance were published in the Australian Official Journal of Trade Marks. Subsequently The Body Corporate of The Phoenician CTS 27745 (‘The Body Corporate’) filed Notices of Opposition (‘the Notices’) on 19 June 2009 to registration of the applications.
3. The Body Corporate filed trade mark application number 1272905 on 18 November 2008 in classes 36 and 43 of the International Classification of Goods and Services. Current details of the applications are set out below.

Trade mark: PHOENICIAN

Trade mark application: 1272905

Filing Date: 18 November 2008

Specification: Class 36: Apartment rental services; rental of accommodation; rental of apartments; leasing of accommodation; provision of long-term accommodation; letting of apartments; letting of office accommodation; apartment house management; management of property; management of real estate; real estate administration; real estate management; provision of information relating to property; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Class 43: Resort accommodation; hotel accommodation services; provision of hotel accommodation; provision of self catering holiday accommodation; accommodation letting agency services (hotel); holiday home services (accommodation); provision of changing room facilities (incorporating shower and toilet facilities); hotel information; providing information, including online, about temporary accommodation services; providing information, including by electronic means and via a global computer network, about all of the aforesaid services

Endorsements: Provisions of paragraph s44(3)(a) and/or Reg 4.15A(3)(a) applied. Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

4. The application was accepted for possible registration and the official notice of acceptance was published in the Australian Official Journal of Trade Marks. Subsequently Mantra IP filed a Notice of Opposition on 20 July 2009 to registration of the application.
5. I heard the cross oppositions in Canberra as a delegate of the Registrar of Trade Marks on 11 February 2011. Mantra IP was represented by Mr John Swinson of Counsel instructed by Mallesons Stephen Jaques Lawyers. The Body Corporate did not appear at the hearing but did provide written submissions for consideration.

Grounds of Opposition

6. The Notices nominated most of the grounds of opposition under the Trade Marks Act 1995 (‘the Act’). The onus is upon the respective opponents to establish one or more of their grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[1] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[2].
7. The Body Corporate did not formally withdraw any of the grounds of opposition listed in the Notices but it provided submissions on sections 43, 58, 59, 60 and 62A of the Act and listed one trade mark number in support of the section 44 ground of opposition. However, the Body Corporate has not provided any evidence specific to prosecuting the remaining grounds listed in the Notices. Without more information than the Body Corporate has provided in its evidence these remaining grounds cannot be established.

Evidence

8. The evidence of the parties with regards to trade mark application no. 1228732 and 1228735 consists of the following declarations:

9. The evidence of the parties with regards to trade mark application no. 1272905 consists of the following declarations:

Background

10. The Phoenician resort was developed in the year 1997 by the building developer The Raptis Group. The developer chose the PHOENICIAN name for the building and sold apartments in the Phoenician buildings using the PHOENICIAN trade mark.
11. The Phoenician resort is located on Surf Parade in Broadbeach, Queensland. This street is apparently the tourist hub for the popular Gold Coast holiday location as it is the centre of the Broadbeach dining and shopping hub. There are many restaurants, cafes, shops, and local businesses located on the ground floor of the Phoenician building and it is close to the beach, numerous shops, casino, transport and entertainment and dining options. There is also a privately-owned day spa in the resort.
12. The Phoenician is asserted to be known by visitors and locals alike due to its prominence as a very attractive accommodation or dining/shopping location, and further due to its unique architecture, and stand out white, Mediterranean style features.
13. There are approximately 270 lots within the Phoenician, and all are individually owned (all apartments were sold by the developer in 1997). According to Jamieson #2, in 1997, The Phoenician East Tower CTS 15205 and the Phoenician Tower CTS 24293 were registered as two separate bodies corporate of the Phoenician Resort. The Bodies Corporate were formed by the developer after the name Phoenician was chosen and after the name had allegedly already been extensively promoted by the developer.
14. Body Corporate membership is every lot owner of the building collectively, and the body corporate chairperson, treasurer etc are appointed by the lot owners. The elected representatives of the Body Corporate are responsible for acting in the best interests of all lot owners.
15. The Body Corporate entered into a caretaking and letting agreement (‘Property Management Agreements’) with Bringelly Pty Ltd upon completion of both towers of the building (from May 1997). The agreements outline the responsibility of the onsite manager, being their caretaking activities, and exclusive onsite letting agency services. On 29 June 2001, the Property Management Agreements were assigned to Driftcove Pty Ltd (‘Driftcove’). Mantra Group Pty Ltd (‘Mantra Group’) owns all shares in Driftcove. According to Mr Jamieson, Mantra IP “forms part of Mantra Group”. There is a license agreement regarding the registered trade marks as at 5 June 2008 from Mantra IP to the Mantra Group (Exhibit BLJ-3 accompanying Jamieson #1).
16. Driftcove is a licensed real estate agent. Only a licensed real estate agent can provide letting services for property owners. Driftcove runs its letting business under the PHOENICIAN trade mark and the Mantra Group trade marks (Exhibit BLJ-3).
17. Driftcove’s letting business is operated “on site” on an exclusive basis. This means that Mantra IP has the exclusive right to check in and check out guests on the premises, and to operate its office on site. No other real estate agent can operate its business on site at the resort. Thus, it is similar to running a hotel business (although Driftcove does not physically own any of the residential apartments in the Phoenician towers) from the Phoenician building.[8] Driftcove also uses the MANTRA house brand, under license from Mantra IP. Driftcove owns or has the exclusive right to use certain parts of the Phoenician buildings, such as the manager’s office and the reception desk area.[9]
18. Driftcove coordinates the letting of apartments and performs letting services in the Phoenician building for all apartments where the owner has elected to appoint Driftcove as the managing agent for the apartment.[10] Driftcove also provides housekeeping, room maintenance, porter services and other services such as maintaining an onsite reception desk for these apartments. All services are all performed by Driftcove are performed under the “Phoenician” brand, so guests and owners associate “Phoenician” with Driftcove (and have done since 2001).[11]
19. An owner of an apartment in the Phoenician resort is not required to appoint Driftcove as its agent. For example, the owner could live in the apartment (and not use an agent), or could appoint a licensed real estate agent in Queensland to let the apartment to a tenant. However, that real estate agent may not operate a business from the Phoenician resort as Driftcove has been appointed the exclusive onsite letting agent.[12] This means no other organisation is permitted to carry on a letting business on the common property of the Phoenician buildings (including the Body Corporate itself, its members and owners of Phoenician apartments).[13] Thus, an owner cannot appoint the Body Corporate as its agent to let the apartment to a tenant.
20. The Body Corporate has limited control over the manner in which Driftcove provides its letting business. Driftcove has general obligations to the Body Corporate and apartment owners under the Letting Agreement, however these are not directed towards the specific tasks of running a letting business and do not dictate how the letting business should be run (this is largely at Driftcove’s discretion).[14]
21. Driftcove is the sole onsite caretaker for the Phoenician buildings, pursuant to a Property Management Agreement with the Body Corporate. The Property Management Agreement expires in 2036. The caretaker’s responsibilities under this agreement include the supervision of maintenance and cleaning areas of common property, such as pools, spas, lifts and gardens.
22. I note the Body Corporate can terminate Driftcove from the Property Management Agreement if it does not meet its contractual obligations. As annexed at exhibit 5 accompanying Trace #2 there have been recent allegations of fraud made against Mantra by the Body Corporate and the Body Corporate states it is possible that termination of the Property Management Agreement could occur in the near future.

Ownership – section 58

23. Section 58 of the Act provides:

Applicant not the owner of the trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

24. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark[15] on particular goods or services[16], or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing. The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount[17].

Trade Mark applications 1228732 and 1228735

25. The Body Corporate has argued that Mantra IP is not the owner of the PHOENICIAN trade mark due to a number of circumstances which include:
    • Mantra IP providing its letting services in the Phoenician towers due to a Property Management Agreement which is transferable; and
    • Mantra IP has only used the trade mark MANTRA PHOENICIAN not PHOENICIAN solus on its letting services.
26. However, for the requirements of the section 58 ground of opposition to be met, the Body Corporate must demonstrate:
    • that the respective trade marks of the applicant and opponent are either identical or substantially identical [18],
    • that the respective services of both parties are the ‘same kind of thing’ [19] and
    • that the opponent (or another party) has the earlier claim to ownership based on use prior to whichever is the earlier of (a) the application to register and (b) any actual use of the mark by the applicant[20].
27. I agree with the Body Corporate that a lot of Mantra’s evidence does show that Mantra has used the trade mark MANTRA PHOENICIAN when advertising its services. However, Mantra’s applications for the PHOENICIAN trade mark both have a priority date of 10 March 2008 and the onus is on the Body Corporate to show that it has used an identical or substantially identical trade mark in relation to the accommodation and holiday services claimed by Mantra’s applications in class 35 and 39 before that date.
28. The statutory declaration of Ms Cassandra Voller (‘the Voller declaration’) outlines the history of the Phoenician buildings and puts forward some evidence of the term PHOENICIAN being used (by the Body Corporate) on building units plans, valuations of the buildings, on a maintenance contract for service of the buildings lifts and various invoices for services performed upon the buildings (Appendix F to S accompanying the Voller Declaration). All of this evidence is dated before the 10 March 2008. However, this evidence does not demonstrate trade mark use of the word PHOENICIAN in regards to the same kind of services applied for by Mantra IP.
29. While it is clear that the Body Corporate has been referring to the building as ‘the Phoenician’ there is no conclusive evidence to suggest that the Body Corporate has ever offered any hotel or accommodation services to Australian consumers. The Trace Declaration states at paragraph 30 that the Body Corporate does not undertake accommodation booking services. That said, a lot of the evidence provided appears to be in relation to Mantra IP’s operation of a resort out of the Phoenician buildings as the advertisements contain the graphic device which Mantra IP has asserted is its device trade mark. Indeed, many of Mantra IP’s advertisements also include this device trade mark as well as its MANTRA PHOENICIAN or PHOENICIAN trade marks.
30. I also note the statement made in Jamieson #1 and #2 that exhibits R, AA and RR accompanying the Voller declaration are copies of advertisements which were either created by Driftcove or wholesalers who were provided inventory in the Phoenician resort by Mantra Group. It is stated that these advertisements were for services provided by Driftcove using the PHOENICIAN trade mark under license from Mantra Group. In Trace #1 at paragraphs 31-34. Mr Trace responds by stating that the lot owners have a right to use the PHOENICIAN trade mark in order to have their apartments let out. He does not dispute that the advertisements were funded and placed by Driftcove. In light of this and Mr Jamieson’s statement I am lead to believe that these advertisements dating from 2003 advertising the PHOENICIAN resort were placed by Driftcove and not the Body Corporate or individual lot owners. Therefore the first use of the PHOENICIAN trade mark on the relevant accommodation services by Mantra IP is in 2003.
31. While Mr Trace provides examples of individual lot owners advertising their apartments in exhibit 6 all of these advertisements are dated after the priority dates of the opposed applications (and the first use by the applicant in 2003) and are not relevant for the purposes of determining a section 58 ground of opposition. However, Exhibit 7 does demonstrate advertisements for holiday accommodation by a third party at the PHOENICIAN resort from July 2004. However, this use also occurs is after the first use demonstrated by Mantra IP in 2003.
32. The establishing of common law rights is a serious matter, since it goes to the very heart of the proceedings. Without more detailed or conclusive evidence from the Body Corporate I cannot be satisfied that the Body Corporate conducted any trade in hotel or accommodation services in Australia under the PHOENICIAN trade mark before the July 2004. As Mantra IP has demonstrated its own use from 2003 the Body Corporate has not established the ground of opposition under section 58.

Trade Mark application 1272905

33. As mentioned above, while it is clear that the Body Corporate has been referring to the building as ‘the Phoenician’ the earliest use of the PHOENICIAN trade mark by a third party acting on behalf of individual lot owners is in July 2004.
34. It is clear that Mantra IP has been offering hotel and accommodation services to Australian consumers under a PHOENICIAN trade mark since at least 2003. While it is true that a lot of Mantra IP’s evidence demonstrates use of the PHOENICIAN trade mark in conjunction with the term MANTRA there are instances of advertising in Mantra IP’s evidence which makes is clear that Mantra IP has used the PHOENICIAN trade mark on the relevant services before the priority date of the Body Corporate’s application.
35. In particular, I refer to exhibit BLJ-7 accompanying Jamieson #2 in which there are press advertisements for the PHOENICIAN RESORT APARTMENTS. It is clear from the other advertisements that the words Resort and Apartments are only descriptive of the services on offer[21]. I accept that Mantra IP has used the trade mark PHOENICIAN to advertise their services and that this use precedes both the priority date of the Body Corporate’s trade mark application 1272905 and the first established use of the PHOENICIAN trade mark in July 2004 on the same services as those claimed in the opposed application.
36. Therefore, I am satisfied that Mantra IP has established the section 58 ground of opposition in relation to all the Body Corporate’s claimed services. Having found in favour of Mantra IP in terms of section 58 there is no need for me to discuss the other grounds set out in the notice although this ground or any others in the Act may also be relied on in the event of an appeal to the Federal Court from this decision.
37. As Mantra IP has established its section 58 ground of opposition in relation to trade mark 1272905, it only remains to be determined if the Body Corporate is able to establish any of its grounds of opposition against Mantra’s trade mark applications 1228732 and 122873.

Section 43: Trade mark likely to deceive or cause confusion

38. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
39. The Body Corporate submitted that the PHOENICIAN trade mark applies to a recognized ‘place’ in Broadbeach on the Gold Coast. According to the Body Corporate’s submissions, the building is so large and well-known in the popular tourist destination and the reputation of the name PHOENICIAN is famous to locals and visitors alike. The Body Corporate also states that given the building caters for the public in a myriad of ways – accommodation, day spa, restaurants, cafes, shops – as a tourist attraction that PHOENICIAN has a geographical connotation which has continually been developed since completion of the building in 1997.
40. The Body Corporate relied on a line of authority[22] to state that any connotation that had a significant risk of deception or confusion arising would support the ground of opposition. It was submitted that the name PHOENICIAN was instantly recognisable as one of Broadbeach’s famous landmarks and that such recognition would involve a connotation that the Body Corporate somehow approves or endorses Mantra IP’s services.
41. The ground of opposition under section 43 is not the relevant ground of opposition for trade marks which may cause deception or confusion due to the reputation of another trade mark. Rather, it provides a ground for rejection or opposition where a trade mark contains a connotation — for example a connotation as to the nature of the services themselves — which is of itself likely to deceive or cause confusion. This interpretation was made clear by the Federal Court in Winton Shire Council v Lomas[23] where Spender J stated:
    
    

Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60.[24]

42. For this reason the deception or confusion arising from another trade mark suggested by the Body Corporate is not the kind of deception covered by section 43.[25] While it is true that the Phoenician building is distinctive in its architecture, I am not satisfied that use of Mantra IP’s PHOENICIAN trade mark in relation to its services would be likely to deceive or cause confusion. There is nothing before me to show that Mantras trade marks contain a connotation which is likely to deceive or cause confusion. I find that the section 43 ground of opposition has not been made out.

Section 44 - Identical etc. trade marks

43. To establish its opposition against registration of trade mark applications 1228732 and 122873 in terms of this section of the Act the Body Corporate must show all of the following:
    • a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
    • the trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and
    • the priority date of the trade mark(s) of the other person is (are) the earlier.
      
      
44. I note that the Body Corporate has not provided details of a trade mark application or registration with an earlier priority date to that of Mantra’s trade mark applications. Therefore, I find the section 44 ground of opposition has not been established.

Section 59 - Applicant not intending to use trade mark

45. Section 59 of the Act reads as follows:
    
    

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Note: For applicant see section 6.

46. It is generally acknowledged that filing an application to register a trade mark is prima facie evidence of an intention to use it in respect of the goods and services nominated, at least at the time the application was filed[26]. However, section 59 refers to a continuing or current intention to use the trade mark. This matter was noted by the delegate in Sapient Australia Pty Ltd and Sapient Corporation v SAP AG[27]. The issue of whether the intention to use a trade mark under section 59 of the Act should be determined at the filing date of the application has, since then, been the subject of judicial discussion in the Federal Court. In Suyen Corporation v Americana International Limited, [2010] FCA 638 (21 June 2010) Justice Dodds-Streeton stated:

Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (“Food Channel”) held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application” (at [74]).

47. Her Honour noted that[28]:

While the Full Court has now confirmed that the intention under s 59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain.

48. Despite these final words, the Full Federal Court’s approach in Food Channel was followed and, as a delegate of the Registrar of Trade Marks, I am also bound to follow the Full Federal Court. Accordingly, I proceed on the basis that intention to use the trade mark is determined at the date of filing, noting that “use (or non use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application.”[29]
49. The onus is on the Body Corporate to bring in material that suffices to shift the onus from itself, onto the shoulders of Mantra. The mere nomination of the section 59 ground cannot shift the onus[30].
50. The Body Corporate has pointed to Mantra’s evidence and stated that since the vast majority of the evidence shows use of the terms MANTRA PHOENICIAN that Mantra has no intention of using the term PHOENICIAN solus. However, Mantra’s evidence has established that it has been using its PHOENICIAN trade marks on the services claimed (exhibit BLJ-4 and 7 accompanying Jamieson #2). Without more conclusive evidence from the Body Corporate, there is no reason to question if Mantra had an intention to use its PHOENICIAN trade mark on the services claimed in its specifications. The Body Corporate’s evidence is not sufficient to shift the onus onto Mantra. Therefore, the ground of opposition under section 59 has not been established.

Section 60 – Trade mark similar to a trade mark that has acquired a reputation in Australia

51. Section 60 of the Act provides:

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.

Note: For priority date see section 12.

52. To establish the ground of opposition under section 60, the Body Corporate must demonstrate:
    • ¬ That, at the priority date of the opposed application, another trade mark had acquired a reputation in Australia; and
    • ¬ That because of the reputation of the second trade mark, use of the applicant’s trade mark would be likely to deceive or cause confusion.
53. Section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods and services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. It is now for me to determine if the Body Corporate has acquired a reputation in Australia for its PHOENICIAN trade mark which is sufficient to establish that use of the opposed PHOENICIAN trade marks would be likely to deceive or cause confusion. This is more than merely indicating prior use, the trade mark of the Body Corporate needs to be “associated in the minds of the Australian public”[31].
54. In relation to reputation Justice Kenny states in McCormick & Co Inc. v McCormick, [2000] FCA 1335; (2000) 51 IPR 102, at 128:
    
    

In ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 33 FCR 302 at 343; [1992] FCA 159; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

At 129, Justice Kenny continues:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: ...

55. I turn to the Voller declaration where it is stated that the Body Corporate has been using the PHOENICIAN trade mark since 7 May 1997 (Appendix F to S) which is before the priority dates of the opposed applications. The Body Corporate’s submissions state that the resort has been in operation since 1997, in a very popular tourist destination on the Gold Coast and that many Australian families choose the Gold Coast for their holidays, naturally due to the beaches, great weather and ample entertainment options. They further state the Phoenician resort is a well suited option with ample facilities and convenience for all holiday essentials and the resort not only caters for thousands of visitors each year from all over Australia (and international guests), but local residents frequent the building often, given the number of shops, restaurants, bars and cafes which are located on the ground floor of the building.
56. The Body Corporate’s submissions state that the significant goodwill and reputation built up in the name PHOENICIAN should reside with the building and not with a company who could be completely removed from the building at any time. However, I cannot agree with this submission. I am not satisfied that the Body Corporate has demonstrated that the reputation which exists in the PHOENICIAN trade mark has been built up or established by the Body Corporate.
57. While it is true that the evidence provided in proceedings does demonstrate that the PHOENICIAN resort has been well advertised and promoted as holiday accommodation on Broadbeach the vast majority of these advertisements have been done by Mantra. IP The evidence clearly demonstrates Mantra IP running the PHOENICIAN resort and being engaged in extensive advertising in order to promote its services and the Phoenician building (Exhibits BLJ-4, through to BLJ-7 accompanying Jamieson #1). I am also satisfied that Mantra’s advertising strategies have reached a significant number of consumers and that there is a significant awareness and reputation associated with the PHOENICIAN resort among tourists on visiting Broadbeach.
58. The Body Corporate’s submissions claim that the PHOENICIAN trade mark has been used over the course of 14 years by hundreds of lot owners, real estate agents, onsite letting agents such that the Body Corporate has the requisite reputation to establish the section 60 ground of opposition. However, the Body Corporate’s evidence does not support this. Appendix U-V of the Voller declaration and exhibits 6-7 of the Trace demonstrate limited use of the PHOENICIAN trade mark and are not sufficient to establish the requisite level of reputation required to establish the section 60 ground of opposition.
59. Therefore, while I am satisfied that there is a very significant reputation in the PHOENICIAN trade marks I am not satisfied that the reputation is associated with the Body Corporate (despite its arguments) due to the limited and minimal use of the PHOENICIAN trade marks demonstrated in its evidence. Irrespective of the invoices for lift maintenance, newsletters to lot owners and letting advertisements from some third party realtors, the Body Corporate has not demonstrated that the public would be reasonably likely to assume a connection between it and the opposed PHOENICIAN trade marks. I find the ground of opposition under section 60 has not been established.

Section 62A – Application made in bad faith

Section 62A of the Act provides:

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.

60. This ground of opposition has been introduced only recently into the Act. It applies to all trade marks accepted on or after 23 October 2006[32]. Thus far, there are limited Trade Marks Office decisions issued in which this opposition ground has been established[33]. It would appear that for an assessment of ‘bad faith’ as it applies to a situation there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way by means of the application.
61. An allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly[34]. The onus of demonstrating ‘bad faith’ falls on the party making such an allegation with the need for evidence sufficient to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’[35].
62. In the present matter, the Body Corporate has alleged Mantra IP acted in bad faith because it has applied for the trade mark PHOENICIAN when it is a letting agent who is contracted for a definite term and whose Property Management Agreement may be terminated. The Body Corporate also claims it is bad faith for Mantra IP to apply for the trade mark because of the large reputation the Body Corporates asserts they have in this same trade mark. The Body Corporate attempts to strengthen their argument by pointing to the length of its use of the PHOENICIAN trade mark and that Mantra IP filed for the PHOENICIAN trade mark in light of ongoing legal issues between the Body Corporate and Mantra IP over potential breaches of the Property Management Agreement. While it is true that there have been allegations of breaches of the Property Management Agreement these are separate issues which have been and are being dealt with by other jurisdictions. It also does not appear that the Body Corporate has terminated the Property Management Agreement with Mantra IP at this stage.
63. The Body Corporate is primarily concerned that Mantra IP should not own the exclusive rights and use of the word PHOENICIAN or any substantially identical trade marks for its letting and associated accommodation services. This is because it believes the onsite letting agent should not own this type of intellectual property given the difficulties that would arise when the letting and/or agreements are due for renewal which I note occurs in 2036. The Body Corporate hypothesizes that Mantra IP would use the PHOENICIAN trade mark registrations as a bargaining tool to pressure the Body Corporate from offering the onsite letting agreements to another company in the future. However, this argument does not persuade me that the act of filing these applications constituted bad faith.
64. It is clear from the evidence that Mantra IP has been using the PHOENICIAN trade mark on its accommodation services and that it has no intention of preventing individual lot owners from seeking independent third parties to let out their units in the building complex. The hypothesis that the Body Corporate makes regarding Mantra IP’s intentions for filing the applications has not been supported by its evidence and requires me to make an unsupported assessment of Mantra IP’s future business intentions towards the Body Corporate. This is not appropriate as none of the above matters or anything in the opponent’s evidence allows me to infer that Mantra IP may have filed an application in bad faith. Therefore, the Body Corporate has not established a ground of opposition under section 62A.

Decision

65. Section 55 of the Act provides:

Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

(a) to refuse to register the trade mark; or

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

66. I have found that the Body Corporate has not established any of the grounds in the oppositions they pursued, and therefore trade mark application numbers 1228732 and 1228735 may proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that those registrations shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the applications be subject to that decision.
67. I have also found that Mantra has established the section 58 of opposition with regard to trade mark application number 1272905. My decision is that I refuse registration of trade mark application 1272905.

Costs

68. It is usual for costs to follow the event, and I see no reason to depart from that principle here. Mantra has been successful in these matters and is entitled to costs. In determining costs, I have considered the decision made by the Registrar’s delegate in Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd[36] in respect of amounts claimed when more than one opposition is heard at the same time.
69. However, I do not believe that decision applies to Mantra’s opposition against trade mark application 1272905. Unlike Hume Industries the evidence in support of one matter has not necessarily constituted evidence in answer or reply to the other two matters. Each of the declarations in the cross opposition differs either slightly or entirely.
70. For that reason I award costs against the Body Corporate in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:
    • full costs, as per scale, for the evidence in proceedings for trade mark applications 1228732 and 1272905; and
      
      
    • at 20% of the scale[37] for the evidence in proceedings for trade mark application 1228735.
      
      

Bianca Irgang

Hearing Officer

Trade Marks Hearings

30 September 2011

[1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599;

[2] [2009] FCA 891, para 22-27

[3] For ease of reference throughout the decision this declaration will be called ‘Jamieson #1’.

[4] This declaration will be referred to as ‘Trace #1’

[5] This declaration shall be referred to as ‘Jamieson #2’.

[6] This declaration will be referred to as ‘Trace #2’

[7] This declaration shall be referred to as ‘Jamieson #3’.

[8] Paragraph 29 Jamieson #2 Declaration.

[9] Paragraph 29 Jamieson #2 Declaration.

[10] Paragraph 30 Jamieson #2 Declaration.

[11] Paragraph 30 Jamieson #2 Declaration.

[12] Paragraph 31 Jamieson #2 Declaration.

[13] Paragraph 32 Jamieson #2 Declaration.

[14] Paragraph 34 Jamieson #2 Declaration.

[15] Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413

[16] ‘the same kind of thing’ Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 3 ALR 75 at 639-40

[17] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd [1974] HCA 51; (1974) 131 CLR 592, 600 ( per Jacobs J).

[18] Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936; (1994) 31 IPR 375 (1994) 120 ALR 495

[19] Re Hicks’ Trade Mark [1897] VicLawRp 118; (1897) 22 VLR 636, 3 ALR 75

[20] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (supra) at 413

[21] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602

[22] Amalgamated Television Services Pty Ltd v Clissold [2000] ATMO 14 (7 February 2000), Winton Shire Council v Lomas [2002] FCA 696; (2002) 56 IPR 243, McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582

[23] [2002] FCA 288; (2002) 119 FCR 416.

[24] Winton Shire Council v Lomas [2002] FCA 288; (2002) 119 FCR 416, 421 (Spender J).

[25] see also T.G.I. Friday's Australia Pty Ltd v TGI Fridays Inc [2000] FCA 720; (2000) 100 FCR 358, 365 (Wilcox, Kiefel and Emmett JJ)

[26] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391 at 401

[27] [2002] 55 IPR 68

[28] Suyen Corporation v Americana (Supra) [at 177].

[29] Food Channel (supra) at [74].

[30] Medley Distilling Co v Croakers Gully Australia Pty Ltd 53 IPR 430

[31] Seven Up Co v OT Ltd [1947] HCA 59; (1947) 75 CLR 203 at 211

[32] See Item 36 (the application provision) of the Trade Marks Amendment Act 2006 (‘the Amendment Act’).

[33] One of these being Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Limited (2009) ATMO 26

[34] R v DC of Berri; Ex parte Eudunda Farmers Co-op Society Ltd (1982) 31 SASR 342 (FC), Wells J at 353

[35] Minister Administering Crown Lands (Consolidation) Act & Western Lands Act v Tweed Byron Aboriginal Land Council (1990) 71 LGRA 201 (CA NSW), the Court at 204–205)

[36] 2001 ATMO 78

[37] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd [2001] ATMO 78; (2001) 53 IPR 591