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Bad faith trademark application denied

By James Wan

What you need to know (in a nutshell)

  1. The Australian Trade Marks Office has refused the registration of a trademark due to the application being made in bad faith.
  2. The 2009 decision in the case of Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited was the first successful opposition under section 62A of the Trade Marks Act.
  3. The Delegate in the case determined that “bad faith” in the context of a trademark application requires some element of intentional dishonesty or attempt to mislead the Registrar, and that the conflicting trademarks must be sufficiently similar to deceive or confuse in order to establish “bad faith.”

Full Article

For the first time ever in Australia, a trade mark registration was denied due to bad faith. The ruling of Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26 is the primary case where s 62A of Trade Marks Act (applicable from 23 October 2006) has been put into action successfully and states: “The registration of a trademark may be challenged on grounds that application had ill intent.”

In 1996, the rival opened a few cafés in Queensland using “HARD COFFEE” as an unregistered trademark. In 2004, Main Beach’s café was sold with M B Raymond signing for both vendor and buyer - who agreed that all rights to “Hard Coffee” and its location name will stay with the former. Raymond is a director of this purchaser company too.

The Trade Marks Act does not explain what “bad faith” is, so the Delegate looked to a previous ruling that stated an applicant’s refusal to answer why they chose this trade mark could be considered bad faith. The same was true in this case; it was evident that…

The Delegate said that there is no obligation for the opposing party to have a similar trade mark in order to prove “bad faith”. However, if they claim appropriation of their brand by the applicant, then both marks must be close enough together so as not confuse (the same way it would under section 44).