Bad faith oppositions beat Ben Ford, Like a Boss

Southcorp Brands Pty Limited (a subsidiary of Treasury Wine Estates Limited), the company behind the well-known Penfolds wine brand, recently opposed the registration of two trade marks ‘Barry Ford’ and ‘Ben Ford’ applied for by Li Li Shen. Southcorp Brands Pty Limited (‘Southcorp’) was successful in its opposition of the two trade marks.¹

The root cause of this opposition was that Southcorp determined, and successfully established, that Shen had filed the trade marks in bad faith. In essence, Southcorp’s argument was that Shen filed the applications for the trade marks in an effort to capitalise on the brand equity attributed to and associated with Southcorp’s registered trade marks.

In similar fashion, Airtasker Pty Ltd recently opposed the registration of the trade mark ‘Like a Boss’ in the name of Freelancer Technology Pty Limited on the basis that the mark was applied for in bad faith. Airtasker’s argument was that Freelancer Technology applied for the trade mark as a result of seeing the mark prominently used in a major Airtasker advertising campaign only days before the application was made.²

Prohibition on bad faith trade mark applications

Section 62A of the Trade Marks Act 1995 (Cth) (‘the Act’) provides that the ‘registration of a trade mark may be opposed on the ground that the application was made in bad faith.’

Bad faith, being the opposite of good faith, has been defined in this context as:

The ground of opposition against the registration of a trade mark based on bad faith is distinct from the other grounds of opposition, and as a result making out this ground of opposition does not require a finding that the use of the trade mark will cause public confusion.

Section 62A of the Act specifically looks to the circumstances surrounding the application for the mark itself, and the reasons behind and intentions of the trade mark applicant in respect of the use of the trade mark.

As a result, the opponent must establish on the balance of probabilities that the applicant filed the application in bad faith.⁴

In the case of the ‘Barry Ford’ and ‘Ben Ford’ trade marks, the Chinese character trade mark used for ‘Penfolds’ wine in the Chinese market is ‘奔富’, which transliterates to ‘Ben Fu’.

Southcorp argued that Shen sought to capitalise on the similarity between ‘Ben Fu’ and Shen’s ‘Barry Ford’ and ‘Ben Ford’ trade marks by using the existing brand equity built up by Penfolds to sell its own wines.

As a result, Southcorp established the ground of opposition and in doing so Shen was found to have filed the applications for both trade marks in bad faith in contravention of section 62A of the Act.

Similarly, Airtasker relied on the submission that Freelancer Technology sought to capitalise on Airtasker’s use of an as yet unregistered trade mark by applying for the mark themselves. Ultimately, Airtasker successfully made out the ground of opposition that the application was made in bad faith.

It followed that the respective Delegates of the Registrar of Trade Marks refused to register the ‘Barry Ford’ and ‘Ben Ford’ trade marks as well as the ‘Like a Boss’ trade mark.

The importance of trade mark monitoring

There are several lessons that businesses can take away from these oppositions, chief of which is that comprehensive trade mark monitoring is essential to help businesses identify and subsequently oppose trade mark applications which either infringe on an existing mark or are filed in bad faith.

Particularly in the case of ‘Barry Ford’ and ‘Ben Ford’, the trade marks filed in bad faith may not have been caught without complex search patterns capable of detecting filings that are similar but do not necessarily match a business’s registered trade marks.

If Southcorp hadn’t been engaging lawyers to undertake a monthly trade mark watch service, Shen may well have brought their copycat Penfolds wine to a bottle shop near you.

Key takeaways

1. The Australian Trade Marks Office can refuse to register trade marks if it is established that they are filed in bad faith;
2. The company behind Penfolds wine successfully opposed two trade marks found to be filed in bad faith by a Chinese applicant;
3. In a similar fashion, Airtasker successfully opposed a trade mark found to be filed in bad faith by a competitor; and
4. Trade mark watch services are an essential element of any business’s intellectual protection repertoire.

Macpherson Kelley first published a version of this article, and to the extent that elements of this article are the same as or similar to another version, they are published here with permission.

• 1.Southcorp Brands Pty Limited v Li Li Shen [2019] ATMO 42.
• 2.Airtasker Pty Ltd v Freelancer Technology Pty Limited [2019] ATMO 77.
• 3.DC Comics v Cheqout Pty Ltd [2013] FCA 478, [77].
• 4.Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81.