Bad faith doesn’t require dishonesty

The Trade Marks Office decision in Bombala Council v Peter Wilkshire[2009] ATMO 33 suggests that the section 62A ground of opposition in relation to applications made in bad faith may have quite broad application and seems to confirm the approach taken in the first Office decision on the ground in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26.

The hearing officer, while not prepared to find as a matter of fact that the applicant had copied the opponent’s mark, considered that the identical depictions of a platypus found in each mark could not be the result of coincidence and that “on the balance of probabilities, it is more likely that the applicant copied the opponent’s marks than the reverse situation”.

In assessing whether the conduct of the applicant constituted bad faith, the hearing office referred to two UK decisions in relation to bad faith noting that:

The applicant clearly has “applied to register a mark which he has previously recognized as the property of another with whom [he] has a course of dealing or some other relationship”, exemplifying bad faith as defined in William Leith New Century Marquees (supra).

Reference was also made to the decision of Aldous J in Harrison v Teton Valley Trading Co [2005] FSR 10 at [20] where it was held that:

No doubt an application made dishonestly will be made in bad faith, but it does not follow that if dishonesty is not established, bad faith cannot have existed…

Having regard to the findings noted above and the history between the applicant and the opponent which included settlement of Court proceedings, the hearing office concluded that:

I am satisfied that the evidence shows that the circumstances were such that a ‘reasonable person’ standing in the shoes of the applicant, would have been aware that he /she ought not to apply for trade mark registration.

A test along the lines of whether a reasonable person would have been aware that they ought not to have made the trade mark application, suggests that something much less than dishonesty on the part of the applicant might be sufficient to constitute bad faith for the purposes of s 62A.