JASON BOSCO ELVIS SOARES V AUSTRALIAN POSTAL CORPORATION [2016] ATMO 10

Mr Soares opposed the registration of the trade mark MY POST by Australian Postal in relation to a wide range of goods and services.

The opponent pressed four grounds; that the trade mark MY POST is not sufficiently distinctive to qualify for registration, that the applicant does not intend to use the trade mark MY POST, that the trade mark MY POST was first used by the opponent, and that the applicant applied to register the trade mark MY POST in bad faith.

On section 41, the Hearing Officer found that the trade mark MY POST was sufficiently distinctive to qualify for registration noting that MY POST is not a commonly used and understood expression used by other traders for similar goods/services.

On section 59, the Hearing Officer found that the applicant did not sufficiently discharge the allegation that it did not intend to use the trade mark for all of the goods and services covered under the application at the time the application was filed.

The Hearing Officer noted that the applicant made some conflicting statements in its evidence, including ‘that the Trade Mark was adopted to differentiate [the applicant’s] digital services offerings with [the applicant’s] prior statement that “The Applicant has always considered the MY POST trade mark to be a brand which could be used across its entire business.'

On section 58, the Hearing Officer noted the opponent’s evidence, being a single delivery slip that pre-dated the use and application date of the applicant’s mark, as sufficient to support the finding that the opponent was the first user of the MY POST trade mark in relation to certain postal services.

Finally, on section 62A, the opponent’s evidence detailed offers by the applicant to purchase the opponent’s business (operating under MY POST) prior to the applicant applying to register the MY POST trade mark. These offers were ultimately not successful. Accordingly, the Hearing Officer was able to find that the applicant acted in bad faith by attempting to register the opponent’s trade mark.

The opposition was taken as successful in relation to all of the goods and services covered.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.