FOOTWEAR INDUSTRIES PTY LTD V PT ALASMASBERKATUTAMA  ATMO 41
This case concerned an opposition to an application to register the mark HEELA, in respect of boots, protective footwear and related goods in classes 9 and 25.
The opponent was the applicant / registrant of several marks, including HEELER, HOWLER, and registrations depicting a dog device, in relation to similar goods as those for which the opposed application sought registration.
The applicant and the opponent were previously parties to a licence agreement, whereby the applicant distributed the opponent’s goods. During the term of the agreement, the opponent started promoting goods bearing the HEELER mark as well as a “dog” device, following which there was an exchange between the parties resulting in the termination of the licence agreement.
The application was opposed on several grounds; however the Delegate needed only to consider bad faith under section 62A.
The delegate considered whether in all the particular circumstances, the applicant’s knowledge was such that its decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.
The Delegate found that although the following factors each on their own may not have been enough to establish bad faith, taken together, there is sufficient evidence to find bad faith under s 62A:
- the prior business relationship of the parties which gave the applicant intimate knowledge of the opponent’s product branding, including the HEELER product;
- the visual and aural similarity between the two parties products;
- that Australia was the only jurisdiction in which it applied to register HEELA as opposed to HEELER, noting that it is likely the only jurisdiction in which it might be met by difficulty;
- both parties used of the blue heeler dog’s head and photos of an actual blue heeler; and
- the prominent use of the colour red in both parties branding.
The Delegate formed the opinion that the applicants intention was likely to be to choose marks that were close enough to carry some association with the HEELER marks, but not so close as to risk conflict with the opponents marks.
The application to register the mark was refused.
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