JLIP, LLC v Greg Weige as trustee for Jetlev Trust [2013] ATMO 88 (29 October 2013)

What you Need to know

This case relates to an opposition by JLIP, LLC (“the Opponent”) to registration of trade mark Application No 1457715 JETLEV filed in the name of Greg Weige as trustee for the Jetlev Trust (‘the Applicant’).

The Opposition

The Applicant filed an application to register the trade mark JETLEV in relation to “leisure boats” in Class 12 on 7 November 2011 (“the Application”). Registration of the Application was subsequently opposed by JLIP, LLC (“the Opponent”). One of the grounds of the opposition was based on s 62A of the Trade Marks Act 1995 (Cth) which relates to an application to register a trade mark made in bad faith.

Background

Some of the evidence in support of the opposition consisted of the statutory declaration of Benjamin White, President of the Opponent (“the White Declaration”). The White Declaration provided that in or around 1998, Raymond Li conceptualised a water powered jetpack device that allows users to levitate above water using water jets. At least as early as 2003 Mr Li named the jetpack device “JETLEV”.

Mr Li filed patent applications around the world (including in Australia and the USA) for his “JETLEV” jetpack product, and established the “JETLEV” business.

The White Declaration provides that the Opponent’s “JETLEV” goods featured in a number of websites as well as in various YouTube videos accessible in Australia.

The White Declaration also provides that in or around November 2011, Greg Weige approached the Opponent. Mr Weige did so in order to reach a commercial arrangement to distribute the Opponent’s products in Australia under the “JETLEV” trade mark. After preliminary negotiations, no such agreement was reached.

During those negotiations, Mr Weige acknowledged that the Opponent owned the rights to its “JETLEV” technology and the rights to the “JETLEV” trade mark. Mr Weige also sought a licence from the Opponent for the use of the “JETLEV” trade mark.

Mr Weige then filed an application to register the trade mark JETLEV, and used the trade mark “JETLEV” in Australia without the Opponent’s authority.

The Opponent then instructed its solicitors to write to Mr Weige regarding his unlawful use of the “JETLEV” trade mark.

The White Declaration details various examples of confusion in the Australian marketplace caused by Mr Weige’s use of the “JETLEV” Trade Mark.

Consideration of What Constitutes Bad Faith

The Delegate of the Registrar referred to Bennett J’s consideration of bad faith in DC Comics v Chequout Pty Ltd FCA 478, where she endorsed the approach taken by Dodds-Streeton J in Fry Consulting v Sports Warehouse Inc (No 2) [2012] FCA 81; (2012) 201 FCR 565.

Bennett J established the following elements of bad faith:

  • It must be at the time of the application;
  • The onus is on the opponent;
  • The standard of proof is on the balance of probabilities;
  • Examples of bad faith can include “holding to ransom” a party which is, at least in conscience, entitled to the mark.

Dodds-Streeton J considered relevant authorities from the UK. Those cases made the following important points:

  • Bad faith is a serious allegation. Therefore, cogent evidence is required to support it;
  • Bad faith does not require dishonesty;
  • Bad faith involves subjective and objective elements. The subjective element is the knowledge of the relevant person at the time of making the application. The objective element requires the decision maker to decide whether the relevant person’s behaviour fell short of acceptable commercial standards observed by reasonable and experienced persons in the particular area;
  • It is difficult to see how a person who applies to register, in his own name, a mark he had previously recognised as being the property of a potential overseas principal, can be said to be acting in accordance with acceptable standards or commercial behaviour. Combining the mark with the Applicant’s own name is no answer to that criticism;
  • A registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading;
  • All circumstances surrounding the application to register the mark are relevant;
  • An act of bad faith cannot be cured by an action after the date of application.

Her Honour also stated that the Applicant’s mental state is relevant:

"...mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not… suffice as the concept of bad faith imports conduct which… is of an unscrupulous, underhand or unconscientious character".

Conclusion

The Opponent alleged that Mr Weige negotiated in November 2011 with the Opponent in terms which acknowledged the Opponent’s ownership of the trade mark. Mr Weige did not address the allegation.

Consequently, the onus has been transferred onto the Applicant, and required a response from the Applicant.

The unexplained failure by a party to give evidence may lead to an inference that the uncalled evidence would not have assisted the party’s case: Jones v Dunkel [1959] HCA 8; (1959) 101 clr 298, 308, 312 and 320-321.

Consequently, the Opponent was found to have established its opposition to registration of trade mark No 1457715 JETLEV.

The Opponent was entitled to costs against the Applicant.