Bad faith anxie-tea18 December 2017
Not your typical tea party
Coca Cola recently found itself in a feist-tea trade mark showdown when Teavolution Pty Ltd filed an application to register "Gold Peak" as a trade mark for, inter alia, tea and iced tea (Class 30), despite Coca Cola having produced Gold Peak iced tea in the United States (US) since 2006.
Following the advertisement of acceptance of the application for registration in the Australian Official Journal of Trade Marks on 8 October 2015, Coca Cola opposed the registration on grounds of s 62A of the Trade Marks Act 1995 (Cth) (the Act), which provides that "[t]he registration of a trade mark may be opposed on the ground that the application was made in bad faith". The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) expressly provides that applications made by persons who are aware of trade marks used overseas, and apply to register the trade marks in Australia for the sole purpose of selling them to the overseas owners, can be considered to have been made in bad faith.
Can't we all just get oolong?
Coca Cola is the holding company of Honest Tea Inc, which supplied iced tea beverages under the trade mark "Honest Tea" in the US since 1998. In its particulars of grounds of opposition, Coca Cola alleged Teavolution was well acquainted with Honest Tea Inc's existing products and trade marks in the US, yet proceeded to file trade mark applications for an "Honest Tea" word mark, a composite mark incorporating the words "Honest Tea" into a stylised T logo (remarkably similar to one used by Honest Tea Inc) and a "Refreshingly Honest" trade mark (despite Honest Tea Inc already adopting the slogan for its beverages sold under the US "Honest Tea" trade mark). Coca Cola further alleged it was unbelievable that Teavolution was unaware of the use of the trade mark "Gold Peak" by Coca Cola in the US since 2007, particularly given the significant reputation of the related products, with annual retail sales exceeding USD $1 billion.
Around August 2011, Teavolution wrote to Coca Cola's Australian licensee offering to sell its Australian "Honest Tea" trade mark registrations. Coca Cola argued that in attempting to register four of their trade marks in Australia—being "Honest Tea", the stylised T logo, "refreshingly honest" and "Gold Peak"—Teavolution had engaged in a pattern of behaviour designed to intentionally exploit Coca Cola's and Honest Tea Inc's trade marks. In its defence, Teavolution argued it believed the Gold Peak brand was available for registration and use because Coca Cola's trade mark had not appeared in their search on the Australian Trade Marks Register and Coca Cola was not the only company they had approached to sell their trade marks to.
Guilt-tea as charged
The Registrar's delegate adopted the approach of the Federal Court in DC Comics v Cheqout Pty Ltd  FCA 478 by considering all circumstances surrounding the application to shed light on the subjective intentions of Teavolution in applying for the "Gold Peak" trade mark.
The delegate found that, given the pattern of behaviour with respect to Coca Cola's other trade marks, Teavolution was either intending to usurp Coca Cola's international reputation or prevent Coca Cola from registering the "Gold Peak" trade mark in Australia. In either case, the delegate found the conduct of Teavolution fell short of the standards of acceptable commercial behaviour observed by reasonable persons and that Teavolution had acted in bad faith under s 62A of the Act. It followed that the application made by Teavolution for the trade mark "Gold Peak" was refused registration and costs were awarded against Teavolution under s 221 of the Act, proving trade mark applications made in bad faith are not the Trade Mark Office's cup of tea.