Federal Court Allows Trade Mark Including 'Monster' for Alloy Wheels

OUTCOME: Allowed

FEDERAL COURT OF AUSTRALIA

[NAME] [COMPANY] v [COMPANY] [2019] FCA 923 Appeal from: [NAME] v [NAME] [COMPANY] [2018] ATMO 57

File number(s): VID 553 of 2018

Judge(s): O'BRYAN J

Date of judgment: 21 June 2019

Catchwords: [NAME] – registration – opposition – appeal from decision of [NAME] refusing registration – whether appellant had valid claim to ownership of [NAME] at priority date – whether appellant intended to use or authorise use of [NAME] at priority date – whether [NAME] likely to deceive or cause confusion – appeal allowed EVIDENCE – admissibility of documents downloaded from websites, the [NAME], [NAME] and [NAME] and data generated by Google Analytics – whether documents constitute business records under section 69 of the Evidence Act 1995 (Cth) – whether Court should exercise its discretion under section 135 of the Evidence Act 1995 (Cth) to exclude the evidence

Legislation: [NAME] 1995 (Cth) ss 7(3), 8, 42(b), 58, 59, 60

Cases cited: [NAME] v [COMPANY] (No 1) (2012) 207 FCR 448 [NAME] v [COMPANY] (No 5) (2012) 301 ALR 352 [NAME] v [COMPANY] (2014) 317 ALR 73 [COMPANY] [COMPANY] (in liq) v [NAME] (No 2) (2015) 235 FCR 382 ASIC v Hellicar (2012) 247 CLR 345 [NAME] v [NAME] (1960) 103 CLR 391 [COMPANY] v [COMPANY] (2018) 363 ALR 113 [NAME] v [COMPANY] (2013) 308 ALR 1 [COMPANY] v [COMPANY] (1973) 129 CLR 353 [NAME] v [NAME] [COMPANY] [2015] NSWSC 986 [NAME] v [COMPANY] (2000) 52 IPR 42 [COMPANY] v [NAME] (No 2) (2018) 133 IPR 417 [NAME] v [COMPANY] (2000) 202 CLR 45 [NAME] v [NAME] [COMPANY] [2018] VSC 3 [NAME] v [COMPANY] (2015) 49 VR 402 [NAME] v [COMPANY] (1999) 96 FCR 107 [COMPANY] v [COMPANY] (2007) 164 FCR 506 [COMPANY] v [COMPANY] (2004) 209 ALR 1 [NAME] v [NAME] Co (1951) 68 RPC 103 [NAME] v [COMPANY] (2015) 115 IPR 82 [NAME] v Commonwealth Bank of Australia [2008] FCA 59 [COMPANY] v [COMPANY] (2018) 134 IPR 220 [NAME] v [COMPANY] (2008) 77 IPR 69 [NAME] v [COMPANY] (2010) 241 CLR 144 [NAME] v [NAME] [COMPANY] (2016) 118 IPR 239 [COMPANY] v [NAME] (2010) 185 FCR 9 [COMPANY] v [COMPANY] (No 4) (2017) 123 IPR 234 [COMPANY] v [NAME] (2013) 249 CLR 435 [COMPANY] v [NAME] (Australia) [COMPANY] (2008) 75 IPR 505 [COMPANY] v [NAME] (Australia) [COMPANY] (2008) 171 FCR 579 [COMPANY] v [COMPANY] (2011) 214 FCR 396 Hugo Boss AG v [NAME] [NAME] (1999) 47 IPR 423 Jafferjee v Scarlett (1937) 57 CLR 115 [NAME] (1959) 101 CLR 298 [NAME] [NAME] v [NAME] (2016) 244 FCR 557 Manly Council v Byrne [2004] NSWCA 123 [COMPANY] v [COMPANY] (2009) 81 IPR 354 [NAME] & [COMPANY] v [NAME] (2000) 51 IPR 102 [NAME] v [COMPANY] (No 4) [2012] NSWSC 216 [COMPANY] v [COMPANY] (2017) 127 IPR 1 [COMPANY] v [COMPANY] (No 2) (1984) 156 CLR 414 [COMPANY] v [COMPANY] (No 1) [2011] NSWSC 455 [COMPANY] v [NAME] [COMPANY] (No 2) (2010) 275 ALR 526 [COMPANY] v [COMPANY] (1982) 149 CLR 191 [NAME] v [NAME] [COMPANY] (2014) 324 ALR 166 [COMPANY] v [NAME] (2006) 219 FCR 585 [COMPANY] v [COMPANY] (2017) 251 FCR 379 [NAME] v [NAME] (1977) 137 CLR 670 [COMPANY] v [COMPANY] (1993) 42 FCR 227 [NAME] [COMPANY] v [NAME] (2016) 338 ALR 134 [COMPANY] (1943) 60 RPC 87 [NAME] v [COMPANY] (1999) 93 FCR 365 [NAME] v [NAME] (No 15) [2003] NSWSC 939 [NAME] v [NAME] (No 27) [2003] NSWSC 1046 RPS v R (2000) 199 CLR 620 [COMPANY] v [COMPANY] (1941) 58 RPC 147 [COMPANY] v [COMPANY] [2007] FCA 1062 [COMPANY] v [COMPANY] (No 2) [2017] FCA 474 [COMPANY] v [COMPANY] (1963) 109 CLR 407 [COMPANY] [COMPANY] v [COMPANY] (1949) 78 CLR 601 [COMPANY] v [NAME] (2018) 140 IPR 1 [NAME] v Chief Commissioner of State [NAME] [2011] NSWSC 349 [NAME] Co v [COMPANY] (1954) 91 CLR 592 [COMPANY] v [COMPANY] (2010) 186 FCR 519 [COMPANY] v [COMPANY] (2018) 357 ALR 15 [COMPANY] v [COMPANY] (2014) 316 ALR 590 [NAME] [COMPANY] v [NAME] Co Australia [COMPANY] (2015) 237 FCR 388 [COMPANY] v [NAME] [COMPANY] [2012] FCA 252 [NAME] v [COMPANY] (2018) 137 IPR 65 [COMPANY] v [NAME] (2013) 103 IPR 1 Vitali v Stachnik [2001] NSWSC 303 [NAME] [COMPANY] v [COMPANY] (2012) 294 ALR 661 [COMPANY] v [COMPANY] (No. 10) (2018) 134 IPR 99 [COMPANY] v [COMPANY] (2010) 191 FCR 297

Date of hearing: 5, 6, 7 March 2019 and 15, 16 April 2019

Registry: Victoria

Division: General Division

National Practice Area: Intellectual Property

Sub-area: [NAME]: Catchwords

Number of paragraphs: 206

Counsel for the Appellant: [redacted]

Solicitor for the Appellant: [redacted]

Counsel for the Respondent: [redacted]

Solicitor for the Respondent: [redacted]

BETWEEN: [RESPONDENT] [NAME] [COMPANY] (ATF THE [COMPANY]) (ACN 101 266 460) Appellant

AND: [COMPANY] Respondent

JUDGE: O'BRYAN J DATE OF ORDER: 21 June 2019

THE COURT ORDERS THAT:

1. The appeal be allowed.

2. The decision of the delegate of the [NAME] given on 26 April 2018 be set aside.

3. Australian trade mark applications numbered 1670840, 1670841 and 1670842 be registered.

4. Until further order and on the ground that it is necessary to prevent prejudice to the proper administration of justice under section 37 AF of the Federal Court of Australia Act 1976 (Cth), publication of the following confidential exhibits be prohibited, [NAME] than to external solicitors and counsel retained for the purposes of this proceeding: (a) Confidential Exhibit SAP-2 to the affidavit of [NAME] sworn 4 October 2018; (b) Confidential Exhibit SPT-2 to the affidavit of [NAME] affirmed 4 October 2018; and (c) Confidential Exhibit TJK-1 to the affidavit of [NAME] sworn 4 October 2018. (d) Confidential Exhibit RBJ-20 to the affidavit of [NAME] sworn 22 November 2018. (e) Confidential Exhibit RBJ-22 to the affidavit of [NAME] sworn 12 February 2019. (f) Confidential Exhibit RBJ-23 to the affidavit of [NAME] sworn 12 February 2019. (g) Confidential Exhibit RBJ-25 to the affidavit of [NAME] sworn 12 February 2019. (h) Confidential Exhibit RBJ-26 to the affidavit of [NAME] sworn 12 February 2019. (i) Confidential Exhibit RBJ-30 to the affidavit of [NAME] sworn 12 February 2019. (j) Exhibit A2 being the email from [NAME] dated 2 May 2013. (k) Exhibit A3 being the email from [NAME] dated 15 April 2013. (l) Exhibit A4 being the email from [APPELLANT] dated 10 April 2013.

5. The respondent pay the appellant's costs of this proceeding and the proceeding before the [NAME]. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

RULINGS

O'BRYAN J:

1. INTRODUCTION 1 On 27 January 2015, the appellant, [APPELLANT] ([NAME]), applied for registration under Part 4 of the [NAME] 1995 (Cth) (the Act) of three trade [NAME] (which I will refer to as the [NAME] [NAME]) in class 12 in relation to "alloy [NAME] for automobiles excluding motorbikes". The [NAME] [NAME] are as shown in the following table. As can be seen, each of the [NAME] [NAME] includes the word "[NAME]": No 1670840 No 1670841 No 1670842

2 Registration of the [NAME] [NAME] was opposed by the respondent, [COMPANY] ([NAME]). [NAME] is a supplier of [NAME] drinks. Since 2002, [NAME] has promoted and sold its [NAME] drinks and associated products throughout the world under several trade [NAME], represented below, including in Australia since 2009. On 24 April 2018, a delegate of the Registrar refused registration of the [NAME] [NAME] pursuant to s 60 of the Act: [NAME] v [NAME] [COMPANY] [2018] ATMO 57. The delegate concluded that [NAME] had made out the ground of opposition in s 60 of the Act in respect of several of its trade [NAME]. 3 By notice of appeal filed 14 May 2018, [NAME] appeals against the decision of the delegate under s 56 of the Act, joining [NAME] as respondent to the appeal. The appeal involves a hearing de novo: [NAME] v [COMPANY] (1999) 93 FCR 365 at [32] ([NAME]). The onus is borne by the opponent to registration: [NAME] at [45]. The standard of proof is the balance of probabilities: [NAME] [COMPANY] v [NAME] Co Australia [COMPANY] (2015) 237 FCR 388 at [133]. It is common ground between the parties that the date on which the grounds of opposition must be established is the filing date of the application for registration (27 January 2015), which I will refer to as the priority date: [NAME] Co v [COMPANY] (1954) 91 CLR 592 ([NAME]); [COMPANY] v [COMPANY] (2017) 251 FCR 379 ([NAME]). 4 [NAME] maintains its opposition to registration of the [NAME] [NAME]. It relies on the ground of opposition found by the delegate of the Registrar, s 60, as well as the further grounds stated in its amended notice of contention dated 31 January 2019 being ss 42(b), 58 and 59 of the Act. [NAME] did not press ground 2 of its amended notice of contention. 5 In respect of its opposition under ss 42(b) and 60 of the Act, [NAME] relies on its reputation in each of the following trade [NAME] owned by it ([NAME] [NAME]): (a) the word [NAME] "[NAME]" and "[NAME]"; and (b) device [NAME] which incorporate a device that is referred to as the "[NAME]" (and which resembles a claw mark or scraping that might be made by a figurative [NAME]) either on its own or in conjunction with a stylised depiction of the words "[NAME]" (using script for the word "[NAME]" that is suggestive of Gothic script) as shown below: 6 In respect of s 60 of the Act, [NAME] contends that, before the priority date for the registration of the [NAME] [NAME], the [NAME] [NAME] had acquired a reputation in Australia and, because of that reputation, the use of the [NAME] [NAME] on alloy [NAME] for motor vehicles would be likely to deceive or cause confusion. Relying on s 57 of the Act, [NAME] also opposes registration of the [NAME] [NAME] on the basis stated in s 42(b) of the Act: that the use of the [NAME] [NAME] would be contrary to law. In that respect, [NAME] contends that the use of the [NAME] [NAME] on alloy [NAME] for motor vehicles would be likely to mislead or deceive [NAME] in contravention of ss 18 and/or 29 of the [NAME] by reason of: (a) the reputation of [NAME] in Australia as at the priority date in the [NAME] [NAME]; and (b) the similarity between the [NAME] [NAME] and the [NAME] [NAME]. 7 In closing submissions, [NAME] for [NAME] acknowledged that if the Court found against it under s 60, it would follow that the Court would find against it under s 42(b) of the Act. As the evidence relied upon in respect of ss 60 and 42(b) is the same, it is convenient to address both sections together. 8 In respect of s 58, [NAME] contends that [NAME] did not have a valid claim to ownership of the [NAME] [NAME] as at the priority date. In respect of s 59, [NAME] contends that [NAME] did not have the requisite intention to use the [NAME] [NAME] as at the priority date. Under both sections, [NAME] argues that another company closely associated with [NAME] (through common shareholdings and directors), [COMPANY] ([COMPANY]), was the owner of the [NAME] [NAME] and had the requisite intention to use the [NAME] as at the priority date. The evidence relied upon in respect of ss 58 and 59 is the same, and it is also convenient to address both of those sections together. 9 For the reasons that follow, the grounds of opposition are not made out. It is convenient to address the ownership and intended use issues (ss 58 and 59) before addressing the likely to deceive or cause confusion issues (ss 60 and 42(b)).

2. OWNERSHIP AND INTENDED USE

2.1 Overview 10 On these issues, the dispute between the parties is whether [NAME] or [COMPANY] is to be regarded as the owner of the [NAME] [NAME] as at the priority date for the purposes of s 58 of the Act, and a corresponding issue as to which of those companies had the intention to use the [NAME] [NAME] as at that date for the purposes of s 59 of the Act. The dispute arises out of the circumstances in which the [NAME] [NAME] were created and first used and the corporate and commercial relationship between [NAME] and [COMPANY], including particularly the dual positions held by [NAME] as the sole director of [NAME] and as a director and CEO of [COMPANY]. 11 [NAME] contends that, as at the priority date, it was the owner of the [NAME] [NAME] because it (through Mr [NAME]) authored the [NAME] and controlled the first use of the [NAME] as trade [NAME] in respect of alloy [NAME] by [COMPANY]. [NAME] argues that all relevant conduct undertaken by Mr [NAME] was undertaken by him in his capacity as the sole director of [NAME] and not in his capacity as a director and CEO of [COMPANY]. [NAME] says that it was always its intention to license [COMPANY] to use the [NAME] [NAME] under the control of [NAME]. 12 [NAME] contends that, as at the priority date, [COMPANY] was the owner of the [NAME] [NAME] because it authored the [NAME] and had been using the [NAME] since about May 2013. [NAME] says that, despite Mr [NAME] testimony to the contrary, the documentary record shows that all relevant steps taken in the creation and use of the [NAME] [NAME] before the priority date were taken by or on behalf of [COMPANY]. 13 To resolve the dispute, it is necessary to have close regard to the evidence concerning the creation and first use of the [NAME] [NAME]. Before turning to that evidence, it is helpful to refer to the applicable legal principles (about which there was no dispute between the parties).

2.2 Legal principles 14 Section 58 of the Act provides that registration of [NAME] may be opposed on the ground that the applicant is not the [NAME]. The word "owner" is not defined in the Act. Its meaning has been established by a number of decisions, reflecting both the common law origins of trade mark rights and the statutory provisions. Most relevant for present purposes are the decisions of the [ADDRESS] of the Federal Court in [COMPANY] v [NAME] (2010) 185 FCR 9 ([NAME]) and [NAME]. Those decisions establish the following principles: (a) While at common law, rights in [NAME] are established by use, the Act allows an applicant to obtain title to [NAME] prior to use so long as the requirements in s 27 of the Act are met. Those requirements are that the applicant claims to be the [NAME] and the applicant is either using or intends to use (or authorises or intends to authorise another to use) the mark in relation to the goods or services concerned: [NAME] at [49]; [NAME] at [18]. (b) In respect of a mark that has not been used prior to the application for registration, the basis of a claim to ownership has been found in the combined effect of authorship of the mark, the intention to use it upon or in connection with the goods and the application for registration: [NAME] at [52] citing [COMPANY] [COMPANY] v [COMPANY] (1949) 78 CLR 601 at 627 per [NAME]; [NAME] at [18] and [19]. (c) In respect of a mark that has been used prior to the application for registration, ownership is established by authorship of the mark and prior use: [NAME] at [55]; [NAME] at [19]. (d) An intention to use the trade mark may be inferred from the making of an application to register the mark: [NAME] at [67], [70] and [72]. (e) The question of ownership is to be determined as at the date of application for registration: [NAME] at [14], [31]. (f) The ground of opposition in s 58 is not confined to a party itself claiming ownership of the trade mark. The ground can be established by any third party showing that the applicant is not the owner: [NAME] at [58]. However, the court should be cautious to allow the legal fiction of the corporate veil to defeat registration in a case where one of a group of companies, all controlled by the same directing mind and will, used the mark prior to the [NAME]: [NAME] at [61]. (g) The burden of proof to establish the ground of opposition under s 58 is on the opponent. If the evidence is not sufficiently clear to enable a finding of fact to be made about ownership of the mark at the time of registration, the opponent will fail on that ground of opposition: [NAME] at [48]. 15 Authorship of [NAME] involves the origination or first adoption of the word or design as and for [NAME]: [COMPANY] [COMPANY] v [COMPANY] (1949) 78 CLR 601 at 628 per [NAME]; applied in [NAME] v [NAME] (1960) 103 CLR 391 at 399 per Fullagar J. 16 In [NAME] v [COMPANY] (2010) 241 CLR 144, [NAME], Gummow, Crennan and Bell JJ approved (at [43]) the statement by the [ADDRESS] of the Federal Court in [NAME] v [COMPANY] (1999) 96 FCR 107 at [19] ([NAME]) that: "Use 'as [NAME]' is use of the mark as a 'badge of origin' in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods … That is the concept embodied in the definition of "trade mark" in s 17 – a sign used to distinguish goods dealt with in the course of trade by [NAME] from goods so dealt with by [NAME] else." 17 As observed by their Honours (at [42]), the essential characteristics of [NAME] are distinguishing goods of a registered owner from the goods of others and indicating a connection in the course of trade between the goods and the registered owner. A use of a mark in an advertisement of goods is a use in the course of trade and is a use in relation to the goods advertised: [COMPANY] v [COMPANY] (1963) 109 CLR 407 at 422 per [NAME[NAME]; [COMPANY] v [COMPANY] (No 2) (1984) 156 CLR 414 at 433-434 per [NAME] ([NAME], [NAME] agreeing). 18 Ownership based on first use of [NAME] can be established through use by an authorised [NAME]. Section 7(3) of the Act provides that: "An authorised use of [NAME] by [NAME] (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the [NAME]". 19 The expressions "authorised [NAME]" and "authorised use" are defined in s 8 of the Act in the following terms: (1) [NAME] is an authorised [NAME] of [NAME] if the person uses the trade mark in relation to goods or services under the control of the [NAME]. (2) The use of [NAME] by an authorised [NAME] of the trade mark is an authorised use of the trade mark to the extent only that the [NAME] uses the trade mark under the control of the [NAME]. (3) If the owner of [NAME] exercises quality control over goods or services: (a) dealt with or provided in the course of trade by another person; and (b) in relation to which the trade mark is used; the [NAME] is taken, for the purposes of sub-section (1), to use the trade mark in relation to the goods or services under the control of the owner. (4) If: (a) [NAME] deals with or provides, in the course of trade, goods or services in relation to which [NAME] is used; and (b) the [NAME] exercises financial control over the [NAME]'s relevant trading activity; and the [NAME] is taken, for the purposes of sub-section (1), to use the trade mark in relation to the goods or services under the control of the owner. (5) Sub-sections (3) and (4) do not limit the meaning of the expression under the control of in sub-sections (1) and (2). 20 Sections 8(2) and (3) are deeming provisions that identify a number of situations in which [NAME] will be taken to use a registered mark under the control of the owner: [COMPANY] v [COMPANY] (2018) 134 IPR 220 at [75] per [NAME] ([NAME]). However, by virtue of s 8(5), ss 8(3) and 8(4) are not exhaustive of what may constitute control for the purpose of s 8(1) and (2): [COMPANY] v [NAME] (No 2) (2018) 133 IPR 417 at [592] per Robertson J ([NAME]). 21 Control must be exercised by a putative trade mark owner over the activities of the trade mark [NAME] such that the essential function of the trade mark, set out in s 17, is maintained. In [NAME] v [NAME] (1977) 137 CLR 670, [NAME] stated that (at 683): …the essential requirement for the maintenance of the validity of [NAME] is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control or control of the [NAME] in the sense in which a parent company controls a [NAME]. Use by either the registered proprietor or a licensee (whether registered or otherwise) will protect the mark from attack on the ground of non-[NAME], but it is essential both that the [NAME] maintains the connexion of the registered proprietor with the goods and that the use of the mark does not become otherwise deceptive. 22 Control under s 8 of the Act means actual control in relation to the use of the trade mark, which involves questions of fact and degree. There must be control as a matter of substance. The mere fact that the registered owner granted a licence to use the trade mark is not sufficient to establish control within s 8: [NAME] [NAME] v [NAME] (2016) 244 FCR 557 at [97] per [NAME] ([NAME], [NAME] agreeing) ([NAME]). His Honour also observed: [95] The meaning of "under the control of" in s 8 is informed by the principle stated by [NAME[NAME] in [NAME], that is to say, that the trade mark must indicate a connection in the course of trade with the registered owner. The connection may be slight, such as selection or quality control or control of the [NAME] in the sense in which a parent company controls a [NAME]. It is the connection which may be slight. Aickin J was not saying the selection or quality control or financial control which may be slight. … [98] As I have said, actual control will be a question of fact and degree. A licence agreement may contain a term that sets out in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. 23 Control for the purposes of s 8 may be established by many factors. As set out above, s 8(3) stipulates that exercising quality control over the relevant goods or services establishes control; and s 8(4) stipulates that exercising financial control over the trading activities of the [NAME] establishes control. In [NAME], [NAME[NAME] observed that it was sufficient that the registered owner was responsible for the manufacture of the goods ([NAME] slabs) and gave instructions to the [NAME] as to how the goods should be transported to ensure their quality (at [595]); in that manner, the registered owner provided sufficient control over the wholesaling and retailing of the goods (at [597]). In that case, the control went further and included many obligations as to the promotion, fabrication and installation of the goods (described at [598] and [599]). In [NAME], [NAME] found that control was established by virtue of the financial and managerial control that the parent company (being the registered owner) exercised over its [NAME] (being the relevant trade mark [NAME]) (at [85]-[88]). 24 In contrast, a licence agreement without more may be insufficient to establish control, at least where it has no effect on the way in which the [NAME] conducts its business: [NAME] at [97] and [103]. Similarly, a commonality of directors does not, without more, establish control, in circumstances where the registered owner is a [NAME] of the relevant trade mark [NAME]: [NAME] v [COMPANY] (2018) 137 IPR 65 at [100] per Gleeson J.

2.3 Factual history 25 The evidence concerning [NAME] and the history of the creation and use of the [NAME] [NAME] was primarily given by Mr [NAME]. 26 Mr [NAME] is the son of [NAME] who founded the business which trades as "[NAME]". The business began in around 1965 with a single automotive tyre store in Melbourne. In 1972, the first [NAME] franchise was granted to a franchisee in New South Wales. In the 1970s and 1980s the business grew, with outlets being established in Brisbane, Sydney and the Australian Capital Territory and elsewhere. The business is now one of Australia's leading automotive tyre and wheel retailers. It is comprised of company owned [NAME] operated by [COMPANY] and franchised [NAME] operated by third parties under licence from [COMPANY]. [NAME[NAME] are located in every capital city and major regional area throughout Australia and, as at January 2015, there were approximately 135 [NAME] in Australia (of which approximately 45 were company owned [NAME] and the balance were franchise [NAME]). At all relevant times, all of the shares in [COMPANY] have been held by [COMPANY] and all of the shares in that company have been held by Mr [NAME] mother, [NAME[NAME]. Mr [NAME] has been a director of [COMPANY] since 2000, and is one of two directors today, the [NAME] being [NAME[NAME]. Mr [NAME] has also been the Chief Executive Officer of [COMPANY] since 2002 and, in that capacity, has responsibility for the management of [COMPANY] and the [NAME]. 27 [NAME] was incorporated in 2002. Mr [NAME] is the sole director of the company and responsible for all aspects of its business. [NAME] has no employees. Since 2006, [NAME] has been owned by Mr [NAME] mother, [NAME[NAME]. Following its incorporation, the principal activity of [NAME] was the development and promotion of the [NAME] motorsport [NAME] including the [NAME] name "[NAME]", which has been used in relation to [NAME] on performance vehicles. 28 On 22 June 2009, [NAME] and [COMPANY] entered into a licence agreement (2009 Agreement) by which [NAME] granted [COMPANY] an exclusive licence to use the "[NAME]" [NAME] and [COMPANY] agreed to promote that [NAME] as its principal [NAME] of [NAME] across all [NAME[NAME]. The 2009 Agreement was executed by Mr [NAME] on behalf of [NAME] and by [NAME] (the [NAME] director of [COMPANY]) and Mr [NAME] on behalf of [COMPANY]. Mr [NAME] gave evidence that, thereafter, a range of brands and logos were developed for [NAME] to use to market various models of [NAME]. The development of wheel designs became a "pet project" for Mr [NAME] and he kept this work within [NAME], being the company bearing his name, rather than [COMPANY]. 29 Mr [NAME] gave evidence that he began giving serious consideration to the idea of developing a range of "[NAME]" branded [NAME] in about early 2010. Mr [NAME] explained that his interest in "[NAME]" as a [NAME] name emanated from an interest he had with [NAME] when he was younger. In particular, he recalled that, in about 1987, [COMPANY] modified a [NAME] pick-up to create the [NAME] [NAME] which was used in events and for promotional purposes. [NAME] events have been held at [ADDRESS], of which Mr [NAME] is a director. Mr [NAME] recalled attending a [NAME] event at [ADDRESS] in early 2010 at which the crowd was estimated to be in the tens of thousands. Mr [NAME] gave evidence that: For me, the word "[NAME]" in an automotive context always conjured up images in my mind of [NAME] and what they represent – big, strong, car-crushing vehicles with oversized tyres and [NAME]. About a decade ago, I became aware of the growing market in Australia for pick-up style utes, 4WDs and off-road vehicles …. I considered that the owners of such vehicles would be attracted to alloy [NAME] and chunky tyres that enhanced the appearance of their vehicles and matched the image of their vehicles. 30 When cross-examined, Mr [NAME] explained his conception of "[NAME]" as a [NAME] in the following terms: I had grown up around [NAME]. We had, you know, a [NAME] [NAME] with a 455 Oldsmobile motor in it that I used to drive... …we used to have [NAME] shows at – [NAME] shows out at Calder. The orientation of the [NAME] "[NAME]", you know, for me growing up, you know, every kid thought a [NAME] was the coolest thing they had ever seen… …I had an F250 when [NAME], [NAME], was born, that we used to tow a race car around with, and ultimately I kept driving after that. You know, he used to call it a [NAME]…he was obsessed with two things – [NAME] and football. And, you know, I think that really reignited my interest in this – this concept of pickup trucks with, you know, [NAME], and you know, the fact that the the emerging vehicle at the time was a, you know, was a [NAME]. It was becoming the biggest selling car in Australia, and at the same time there was a massive decline in [NAME], you know, coming at us, which was our biggest wheel market. So you know, it worked perfectly, [NAME] as a [NAME], to fit that market, as – as a [NAME], you know. 31 In February 2011, [NAME] lodged [NAME] application in class 12 for the word "[NAME]". The application did not pass examination and lapsed in September 2012. Notwithstanding the lapse of that application, Mr [NAME] remained interested in the [NAME] name "[NAME]" for a new range of tyres and [NAME] to appeal to the 4WD and off-road vehicle market. Mr [NAME] considered that the word "[NAME]" complemented the image he had already developed in relation to the [NAME] [NAME] but directed more towards pick-up style vehicles. 32 In about March 2013, Mr [NAME] requested the assistance of [NAME[NAME] in developing logos to be used in conjunction with the "[NAME]" [NAME] on a range of alloy [NAME]. At all times since February 2013, Ms [NAME] has been the National [NAME] Manager for [NAME]. She was initially employed by [COMPANY]; however, on a date she could not recall, Ms [NAME] became an employee of [COMPANY] (while continuing to perform the role of National [NAME] Manager for [NAME]). Mr [NAME] gave evidence that he is "the shareholder" of [COMPANY] but not a director and that [COMPANY] provides [NAME] services to the [NAME]. Mr [NAME] requested Ms [NAME] to have [NAME] draw up some possible logos for the "[NAME]" [NAME]. Mr [NAME] instructed Ms [NAME] that a prominent colour used in the "[NAME]" [NAME] should be red and that the logo should conjure up a visual suggestion of a [NAME] with eyes and a mouth. 33 Ms [NAME] gave evidence that she engaged a graphic designer, [NAME], and that they sketched out four draft logos which they provided to Ms [NAME] in early April 2013. Their work was billed to [NAME], which was the advertising agent for the [NAME]. [NAME] managed the designers ordinarily engaged by the [NAME] and [NAME] was one of those designers. 34 Mr [NAME] gave evidence that, in early April, Ms [NAME] provided him with some draft logo designs. There is no documentary record of that but, on 9 April 2013, Ms [NAME] sent an email to Mr [NAME] which appears to assume an earlier communication. The email was sent to the address [EMAIL] and attached four designs for the "[NAME]" logo. The email had the subject line "Feedback please – [NAME] logo" and stated (in part): Hi [NAME], Sorry to hassle you with this, but I am just cautious of the deadline for the logo. We would really need some feedback/direction from you. (My understanding is that we need to finalise this by Friday) 35 Mr [NAME] replied by email later that day in the following terms (errors in the original): HI [NAME] for delay I like 4 the most and kids think iys the best also. I would consider in the cap logo adding some Red maybe the symbol and use a black background with silver [NAME] and [NAME] writting. [NAME] 36 The logo selected by Mr [NAME] became the [NAME] the subject of this proceeding. Having selected the logo, Mr [NAME] requested Ms [NAME] to have three dimensional mocks-ups of alloy [NAME] with the logo on the hubcap created for his review. On 15 April 2013, [NAME] issued an invoice in an amount of $1,980 for "[NAME] logo. Four concepts developed plus selected concept mock up for wheel example centre cap". The invoice was addressed to "[COMPANY] | [NAME]". Pictures of the three dimensional mock-ups of alloy [NAME] with the logo on the hubcap were attached to the invoice. 37 Mr [NAME] gave evidence that, in the period March to May 2013, he had various discussions with [NAME], who was then the National Sales Development Manager for [NAME], and [NAME], who was the [NAME] Manager for [COMPANY] ([NAME]), regarding the production and sale of [NAME] bearing the [NAME] [NAME]. [NAME] distribute alloy [NAME] in Australia. Mr [NAME] had known and dealt with Mr [NAME] and [NAME] since the late 1990s. The effect of Mr [NAME] evidence was that, in these discussions, he was seeking to develop and have produced a "[NAME]" wheel style for [NAME], he wanted the wheel to be produced by [NAME] and he wanted the wheel to be marketed and sold exclusively through [NAME[NAME]. Hence it was necessary for Mr [NAME], Mr [NAME] and Mr [NAME] to meet and discuss the commercial arrangements. Mr [NAME] stated that his discussions with Mr [NAME] concerned the appearance of the wheel (which was to be an aggressive, black, four wheel drive wheel for utes) and the characteristics of the wheel (load ratings, diameter and width). Mr [NAME] was confident that [NAME] would produce a wheel that complied with all Australian standards and legal requirements and was safe and would not fail because he had dealt with [NAME] for a long time. Correspondingly, the discussions involving Mr [NAME] concerned the number of [NAME] that Mr [NAME] believed could be sold through [NAME], which dictated minimum manufacturing quantities and the production cost, which in turn affected the commercial viability of the product. Mr [NAME] selected a wheel offered by [NAME] called the "[NAME]". 38 On 10 April 2013, Mr [NAME] sent an email to Mr [NAME] with respect to a proposed program for the ordering, production and supply of "[NAME]" [NAME] by [NAME] to [NAME[NAME]. Although the email commences with the sentence "[NAME] and I have attached the proposed pricing schedule for the new [NAME] '[NAME]' program", it is apparent that Mr [NAME] was the intended recipient of the email (the word "and" being a typographical error). The email contains proposed details for the commercial arrangements for the production of the "[NAME]" [NAME] including pre-ordering, lead times, delivery, management of inventory and pricing, and concludes with a request for Mr [NAME] approval as follows (error in original): [NAME] I do believe that this is a good opportunity for [NAME] and the [NAME] and if you are happy with the pricing matrix and the overall program we can commence the pre-sell to gauge store commitment to the program as [NAME] will need to see that 600 unit initial commitment from [NAME] to get the program rolling. Can discuss when your available. 39 On 15 April 2013, Mr [NAME] sent an email to Mr [NAME] titled "[NAME]" asking, amongst [NAME] things, whether Mr [NAME] had obtained the "decal sign off for the black (sic) [NAME]". 40 On 29 April 2013, Mr [NAME] sent an email to [NAME] who worked in telesales for [COMPANY]. The email was a copy of the email that Mr [NAME] had sent to Mr [NAME] on 10 April 2013. 41 On 1 May 2013, Mr [NAME] sent an email to Mr [NAME], at his email address [EMAIL], and copied to Mr [NAME], containing a draft email proposed to be sent to [NAME[NAME] to announce and promote the "[NAME]" [NAME] and to seek pre-orders from the [NAME]. The email had the title "[NAME]" and commenced as follows (error in original): [NAME] and below is the draft email for the [NAME] on the [NAME]. Can you please review as I would like to send this out today to get the pre-orders rolling. The artwork has been sent to the factory to get the decal underway and they will send a sample for sign off as soon as it is completed. 42 The draft email to [NAME[NAME] followed that opening paragraph, and commenced as follows (errors in original): [NAME], I am very excited to release the new [NAME] [NAME] to the [NAME]. This new [NAME] will be targeted at the 4x and SUV market. The 1st style to be introduced into the [NAME] range is the "[NAME]". The "[NAME]" will be supplied by [NAME] [NAME] as an exclusive product for [NAME]. Size and pricing details are on the attached. The [NAME] will be warehoused and distributed by [NAME]. 43 Mr [NAME] gave evidence that he amended the draft email to [NAME[NAME] because he did not consider that Mr [NAME] "had described well enough what [NAME] was really standing for" and Mr [NAME] wanted to "make a statement to the [NAME] of the market we were chasing with this product". Mr [NAME] stated that the market he wanted to chase was the "ute and 4x4 market…with an aggressive wheel which typically comes with an aggressive tyre" and that the "[NAME] concept of [NAME] was to go and chase that market". After Mr [NAME] had amended the draft email, the email was then sent by Mr [NAME] to [NAME[NAME] on 2 May 2013 in the form approved by Mr [NAME]. The email commenced as follows (errors in original): [NAME], We are very excited to release the new [NAME] [NAME] to the [NAME]. This new [NAME] will be targeted at the 4x4 and SUV market. The lst style to be introduced into the [NAME] range is the "[NAME]". The "[NAME]" will be supplied by [NAME] [NAME] as an exclusive product for [NAME]. This is a trial program and will require everyone's support to ensure its success, the ongoing exclusivity is dependent upon continued volume. The 4x4 / SUV segment continues to grow and some of our competitors are very strong within this arena. The new "[NAME]" covers a large range of vehicles and todays best sellers. Such as Toyota Hi-Lux, FJ Cruiser, Mitsubishi Triton & Holden Colorado just to name a few. In the 16x8 we have the 45 offset to suit new Few Ford Ranger and Mazda BT50. This fitment is currently being developed in 17x8 also and we expect to have this ready for July production. This market segment represent a great opportunity as the demand to dress up these vehicles is strong, dealer work is also great as they looking for that point of difference to attract both tradies and 4x4 enthusiasts alike. Size and pricing details are below and also attached. The range has been priced aggressively with the "Black Jack" being $30 to $40 per wheel cheaper than the YHI Crawler. The [NAME] will be warehoused and distributed by [NAME]. 44 Mr [NAME] gave evidence that he approved the email "from the [NAME] [NAME] perspective" to ensure that it represented what Mr [NAME] was trying to do from an [NAME] point of view. Mr [NAME] also said that he is not ordinarily involved in approving product announcements relating to [COMPANY] products. The implication of his evidence was that he was involved in the product announcement relating to the "[NAME]" [NAME] because they were an [NAME] product. 45 On 22 May 2013, [NAME] filed trade mark application numbers 1558366, 1558367 and 1558368. Those applications were identical to the [NAME] the subject of this proceeding, save that the applications sought to register the [NAME] in classes 12, 35, 37 and 41. 46 On 17 June 2013, Mr [NAME] of [NAME] sent an email to Mr [NAME] stating that [NAME] required a letter from [COMPANY] authorising it to commence production of [NAME] bearing the [NAME] [NAME]. Mr [NAME] gave evidence that that authorisation was not given until [NAME] had licensed the use of the [NAME] to [COMPANY]. That occurred two days later. 47 On 19 June 2013, [NAME] and [COMPANY] entered into a further licence agreement (2013 Agreement) pursuant to which [NAME] granted [COMPANY] a non-exclusive, non-assignable, worldwide licence to use various trade [NAME] listed in Schedule 1 to the agreement (which included the [NAME] [NAME]) in respect of the promotion and sale of goods and services for which the [NAME] were registered or sought to be registered. The recitals to the 2013 Agreement recorded that [NAME] was the owner of all of those trade [NAME]. [COMPANY] agreed to pay [NAME] licence fees for its use of the [NAME] [NAME] and provided [NAME] with the right to exercise quality control over [COMPANY] use of the [NAME]. In respect of quality control, cl 5.1 stipulated that: [NAME] will use its best endeavours to protect the integrity of the [NAME] [NAME] and ensure the highest quality of manufacture promotion and display of any goods or services sold or promoted under the [NAME] [NAME] pursuant to this Agreement. [NAME] shall also use its best efforts to ensure that goods and services sold or promoted by [NAME] under the [NAME] [NAME] shall comply with all applicable laws and standards. 48 Clause 5.6 stipulated that: [NAME] shall have the right to exercise quality control over [NAME]'s use of the [NAME] [NAME] to a degree reasonably necessary to maintain validity of the [NAME] [NAME] and to protect the goodwill associated therewith. [NAME] shall use the [NAME] [NAME] only on or in connection with goods and services that conform to the specifications and standards of quality which [NAME] prescribes, and will not deviate materially from such standards without prior written approval from [NAME]. In order to verify compliance, [NAME] may from time to lime require [NAME] to submit samples and [NAME] [NAME] or promotional items bearing the [NAME] [NAME] for approval. 49 Also on 19 June 2013, and according to Mr [NAME] after the 2013 Agreement had been executed, Mr [NAME] (a director of [COMPANY]) sent a letter to [NAME] formally authorising it to arrange production of up to 2,500 alloy [NAME] bearing the [NAME] [NAME]. 50 There was no evidence that [NAME] had ever prescribed specifications or standards for the [NAME] on which the [NAME] [NAME] were to be used in writing, as contemplated by cl 5.6 of the 2013 Agreement. However, Mr [NAME] gave evidence that he selected [NAME] as the producer of the [NAME] because he had dealt with them for a long time and Mr [NAME] believed that [NAME] were very familiar with the requirements for [NAME] to suit vehicles in Australia, from a safety and quality perspective. Mr [NAME] also gave the following evidence with respect to his supervision of the quality of the "[NAME]" [NAME], in his dual capacities as a director of [NAME] and the CEO of [COMPANY]: (a) Mr [NAME] conducted personal inspections to check the quality of "[NAME]" [NAME] that were being supplied, as part of his regular visits to [NAME[NAME]. (b) At various times since June 2013, Mr [NAME] consulted Mr [NAME] in relation to various wheel designs, including in relation to designs featuring the possible use of the [NAME] [NAME]. [NAME] could order any new "[NAME]" wheel model from [NAME], he was required to consult with Mr [NAME] and obtain his approval. (c) In about 2016, [COMPANY] replaced [NAME] as the preferred manufacturer of "[NAME]" [NAME]. During that process, Mr [NAME] attended and participated in meetings with the [COMPANY] to satisfy himself that they were capable of producing alloy [NAME] of a sufficiently high quality for sale under the [NAME] [NAME]. (d) Mr [NAME] continued to review sample wheel designs from time to time to determine which styles would be future models to be sold in the [NAME] system as "[NAME]" [NAME]. 51 Pursuant to the Franchising Code of Conduct, [COMPANY] is required to update its Disclosure Document for franchisees and potential franchisees each year. The 2015 Disclosure Document lists the three [NAME] [NAME] on the list of trade [NAME] used in the [NAME] and records that the [NAME] are owned by [NAME]. 52 [COMPANY] paid [NAME] licence fees, in accordance with the 2013 Agreement, in return for [NAME] granting it permission to use the [NAME] [NAME]. For the period from August 2013 to January 2015, the licence fees paid by [COMPANY] to [NAME] totalled $4,918.55. 53 In August 2013, the trade mark applications that had been filed in May 2013 met with adverse reports, primarily due to the existence of the word mark 701401 "[NAME]" in class 12 owned by [NAME]. The adverse reports were not answered by their deadline of 23 October 2014 and Mr [NAME] decided to allow those applications to lapse, and then instructed his solicitors to file fresh applications. Applications for the [NAME] the subject of this proceeding were then filed on 27 January 2015 in the name of [NAME]. Those applications were only filed in class 12 and were in relation to alloy [NAME] for automobiles excluding motorbikes. On 10 February 2015, [NAME] and [COMPANY] signed an "Addendum" to the 2013 Agreement that substituted the 2015 trade mark application numbers for the original 2013 trade mark application numbers.

2.4 Disposition of the section 58 issue – [NAME] is the owner of the [NAME] [NAME] 54 As at the priority date, there had been prior use of the [NAME] [NAME] by [COMPANY]. The parties are agreed that the first use of the [NAME] [NAME] occurred through the email sent by Mr [NAME] to [NAME] on 2 May 2013. There was then further use of the [NAME] [NAME] before the priority date through the promotion and sale of alloy [NAME] bearing the [NAME]. In those circumstances, ownership is established by the authorship of the [NAME] [NAME] and the prior use. The relevant questions are: (a) was [NAME] or [COMPANY] the author of the [NAME] [NAME]; and (b) was the use of the [NAME] [NAME] by [COMPANY] use as an owner or as an authorised [NAME] under the control of [NAME] as owner?

Authorship 55 In relation to authorship, the evidence establishes that Mr [NAME] conceived the idea of "[NAME]" branded [NAME] and directed the creation of the logos which became the [NAME] [NAME]. [NAME] argues that the evidence supports the conclusion that, in doing so, Mr [NAME] was acting in his capacity as the CEO of [COMPANY] and not in his capacity as the director of [NAME]. In support of that contention, [NAME] relies principally on the fact that Mr [NAME] asked Ms [NAME] to help him develop the logos, Ms [NAME] being the National [NAME] Manager for [NAME], and that Ms [NAME] engaged [NAME] to create the logos, which was a design firm used by [NAME]' advertising agency, [NAME]. The invoices for the work were addressed to [NAME]. Various communications about the logos were sent by email to [NAME] at the address [EMAIL], the domain name for which is owned by [COMPANY]. 56 Taken on their own, the foregoing facts might support a conclusion that Mr [NAME] was acting in his role as CEO of [COMPANY] in directing the creation of the [NAME] [NAME]. The facts cannot, however, be taken on their own. Mr [NAME] gave evidence that he created the [NAME] [NAME] in his capacity as director of [NAME] and the surrounding facts, outlined earlier, are consistent with and corroborate his evidence. The key facts are the following. 57 First, the [NAME] business includes responsibility for the management of some of the intellectual property relating to the [NAME]. Upon its incorporation, [NAME]'s principal activity was the development and promotion of the [NAME] motorsport [NAME] and associated intellectual property, including the [NAME] "[NAME]". In 2009, [NAME] entered into a licensing agreement with [COMPANY] in respect of that [NAME] (the 2009 Agreement). Under that agreement, [NAME] sold [NAME] bearing that [NAME]. Thus, prior to the creation of the [NAME] [NAME], there had been a commercial relationship between [NAME] and [COMPANY] for the licensing of trade [NAME] owned by [NAME]. 58 Second, in 2011 [NAME] applied for registration of the word "[NAME]" as [NAME]. That act corroborates Mr [NAME] evidence that, in taking steps to create the "[NAME]" trade mark, Mr [NAME] was doing so on behalf of [NAME]. 59 Third, on 22 May 2013, [NAME] filed the original trade mark applications in respect of the [NAME] [NAME]. Again, that act corroborates Mr [NAME] evidence that his prior actions in creating the [NAME] [NAME] were undertaken by him in his capacity as director of [NAME] and not in his capacity as CEO of [COMPANY]. 60 Fourth, shortly after the creation of the [NAME] [NAME], [NAME] and [COMPANY] entered into a licence agreement in respect of the [NAME] (the 2013 Agreement). While entering into that Agreement cannot, of itself, change the facts that occurred prior to the date of the Agreement, it sheds light on the proper characterisation of the prior events. It confirms Mr [NAME] belief, and an understanding between the corporate entities, that the creation of the [NAME] [NAME] had been undertaken by Mr [NAME] in his capacity as director of [NAME], not in his capacity as CEO of [COMPANY]. 61 Fifth, [COMPANY] has complied with the 2013 Agreement, paying royalties to [NAME] in accordance with the Agreement. [COMPANY] has never challenged [NAME]'s ownership of the [NAME] [NAME]. 62 Given the above facts, there is no reason to doubt Mr [NAME] evidence that in creating the [NAME] [NAME] he was acting in his capacity as director of [NAME]. I accept his evidence. That evidence is not contradicted by the fact that Mr [NAME] utilised the services of employees and contractors of [COMPANY] in order to undertake design work. Given the corporate and commercial relationship between [NAME] and [COMPANY], and Mr [NAME] intention that the [NAME] [NAME] would be licensed to [COMPANY], it is understandable that [NAME] might utilise design services available through [COMPANY] while creating trade [NAME] that would be owned by [NAME]. The fact that various communications were sent to Mr [NAME] at his email address [EMAIL] is of little moment. There is no evidence that [NAME] had a domain name for emails or that Mr [NAME] had any [NAME] email address (although the evidence shows that [NAME] had letterhead). Mr [NAME] evidence was that he rarely used emails and preferred to communicate directly with people in the office using printed documents where necessary. 63 For the reasons given above, I am satisfied that [NAME] was the author of the [NAME] [NAME]. [NAME] has the onus of proving that [NAME] was not the owner, either by proving that [NAME] was not the author of the [NAME] [NAME] or was not the first [NAME]. It has failed to discharge the onus of proving that [NAME] was not the author.

Prior use 64 In relation to prior use, the evidence establishes that Mr [NAME] selected the producer of the [NAME] that would bear the [NAME] [NAME], [NAME], selected the style of wheel to be produced, directed the first communication and promotion of the "[NAME]" [NAME] to [NAME[NAME] and then continued to review and control alterations to wheel styles and the producer of the [NAME]. Again, [NAME] argues that the evidence supports the conclusion that, in undertaking those tasks, Mr [NAME] was acting in his capacity as the CEO of [COMPANY] and not in his capacity as the director of [NAME]. The evidence relied upon by [NAME] in support of that argument are the facts that: Mr [NAME], the National Sales Development Manager of [NAME], was involved in establishing the commercial arrangements with [NAME] for the supply of [NAME] bearing the [NAME] [NAME]; the "[NAME]" [NAME] were first promoted to [NAME[NAME] through an email sent on 2 May 2013 by Mr [NAME]; a director of [COMPANY], Mr [NAME], authorised [NAME] to apply the [NAME] [NAME] to the [NAME] being supplied by [NAME]; and the "[NAME]" [NAME] were sold through [NAME[NAME]. 65 There is no dispute between the parties that [COMPANY] was a [NAME] of the [NAME] [NAME]. The dispute is whether [COMPANY] was an authorised [NAME] of the [NAME] under the control of [NAME] as owner such that its use is taken, for the purposes of the Act, to be a use of the [NAME] by [NAME] (pursuant to s 7(3) of the Act). The evidence, outlined above, supports the conclusion that [COMPANY] was an authorised [NAME] of the [NAME] [NAME] under the control of [NAME] as owner. The key facts concerning [NAME]'s control of the use of the [NAME] [NAME] are the following. 66 First, Mr [NAME] selected the producer of the wheel to which the [NAME] [NAME] would be applied, and selected the type of wheel (in terms of appearance and characteristics) that would be supplied. For the reasons explained in the context of the authorship of the [NAME] [NAME], in my view the evidence establishes that, in selecting the supplier and type of [NAME] to be supplied, Mr [NAME] was acting in his capacity as director of [NAME]. 67 Second, whilst dealing with Mr [NAME] from [NAME], Mr [NAME] was also directing Mr [NAME] in relation to the commercial arrangements for the supply of [NAME] bearing the [NAME] [NAME]. In doing so, it may be accepted that Mr [NAME] was acting in two capacities: as director of [NAME] and as CEO of [COMPANY]. There was no necessary inconsistency or conflict in Mr [NAME] performing both roles. The circumstances are consistent with the apparent intention of the parties that [COMPANY] would be an authorised [NAME] of the [NAME] [NAME]. 68 Third, Mr [NAME] controlled the form of the email sent to [NAME[NAME] by Mr [NAME] on 2 May 2013. The parties agree that that email constituted the first use of the [NAME] [NAME] as trade [NAME]. That is because the email involved the advertising and promotion of goods bearing the [NAME] to [NAME] franchise [NAME]. Mr [NAME] control over that communication is clear from the fact that Mr [NAME] sent a draft to him for his approval on 1 May 2013 and Mr [NAME] made material changes to the draft email. The changes made by Mr [NAME] were to describe more fully the target market for the "[NAME]" [NAME]. The email itself identified [NAME] as the owner of the "[NAME]" [NAME] [NAME]: it commenced with the sentence "We are very excited to release the new [NAME] [NAME] to the [NAME]". The evidence of Mr [NAME] was that he approved the revised email in his capacity as director of [NAME] and not in his capacity as CEO of [COMPANY]. In my view, Mr [NAME] evidence is consistent with the surrounding facts and circumstances, and I accept his evidence. 69 [NAME] advanced a [NAME] submission in respect of the failure by [NAME] to call Mr [NAME] as a witness, to the effect that an inference can be drawn that Mr [NAME] evidence would not have been helpful to [NAME]'s case. I reject the submission. The rule in [NAME] permits, but does not require, a tribunal of fact to infer that the evidence of an absent witness, if called, would not have assisted the party who failed to call that witness: [NAME] (1959) 101 CLR 298 at 308 per [NAME] and 321 per [NAME]; RPS v R (2000) 199 CLR 620 at [26] per [NAME], Gummow, Kirby and Hayne JJ. However, the rule does not entitle a court to speculate about "what [NAME] evidence might possibly have been led": ASIC v Hellicar (2012) 247 CLR 345 at [165] per [NAME], Gummow, Hayne, [NAME], Kiefel and Bell JJ. The rule will not support an adverse inference unless the evidence otherwise provides a basis upon which that unfavourable inference can be drawn: [NAME] v [COMPANY] (2015) 49 VR 402 at [208] per [NAME], [NAME] and [NAME]. Further, the rule does not operate to require a party to give merely cumulative or corroborative evidence: Manly Council v Byrne [2004] NSWCA 123 at [61]-[65] per Campbell J ([NAME] and [NAME] agreeing); [COMPANY] v [COMPANY] [2007] FCA 1062 at [473] per [NAME]. In the present case, Mr [NAME] gave direct evidence concerning the control he exercised over the use of the [NAME] [NAME] by [COMPANY] and the capacity in which he exercised that control. The documentary evidence and surrounding facts and circumstances were consistent with Mr [NAME] evidence. In those circumstances, there was no requirement for [NAME] to call Mr [NAME] and there was no gap in the evidence required to be filled by Mr [NAME]. 70 Fourth, on 19 June 2013, [NAME] and [COMPANY] entered into a licence agreement in respect of various trade [NAME] including the [NAME] [NAME]. While that Agreement cannot alter the character of actions undertaken prior to the Agreement, it provides corroboration of the characterisation that is otherwise open on the evidence. In my view, the entry into the 2013 Agreement corroborates the fact that the earlier actions undertaken by Mr [NAME] controlling the use of the [NAME] [NAME] by [COMPANY] were undertaken in his capacity as director of [NAME] (as owner of the [NAME]). That conclusion is also supported by the evidence showing that [COMPANY] complied with the 2013 Agreement by paying royalties to [NAME], and that Mr [NAME] continued to control the selection of the [NAME] bearing the [NAME] [NAME] and the selection of the producer of those [NAME]. 71 For the reasons given above, I am satisfied that [COMPANY] was, from the outset, an authorised [NAME] of the [NAME] [NAME] under the control of [NAME] and that, as a consequence, [NAME] was the first [NAME] of the [NAME]. [NAME] has failed to discharge the onus of proving that [NAME] was not the first [NAME] of the [NAME].

2.5 Disposition of the section 59 issue – [NAME] always intended to use the [NAME] [NAME] 72 Section 59(a) of the Act provides that [NAME] may be opposed on the ground that the applicant does not intend to use, or authorise the use of, the trade mark in Australia. On this ground of opposition, [NAME] relies on materially the same evidence and arguments advanced in respect of s 58. It contends that the evidence shows that [NAME] did not exercise control over the use of the [NAME] [NAME] by [COMPANY] and never intended to use or authorise the use of the [NAME] within the meaning of the Act. 73 In closing submissions, [NAME] for [NAME] conceded, quite properly, that the determination of the s 58 issue would be largely determinative of the s 59 issue. For the reasons given in the preceding section, I find that, as at the priority date, [COMPANY] was an authorised [NAME] of the [NAME] [NAME] under the control of [NAME] which is dispositive of the s 59 issue. Indeed, as at the priority date, [NAME]'s intention to authorise the use of the [NAME] [NAME] in Australia is readily established by the combined effect of: the filing of the original applications for registration of the [NAME] and the subsequent applications; the entry into the 2013 Agreement granting a licence to use the [NAME] to [COMPANY]; and the control (through Mr [NAME]) of the use of the [NAME] exercised by [COMPANY].

3. LIKELY TO DECEIVE OR CAUSE CONFUSION

3.1 Overview 74 [NAME] also opposes registration of the [NAME] [NAME] under ss 42(b) and 60 of the Act. On these grounds of opposition, the dispute between the parties is whether the use of the [NAME] [NAME] would be likely to deceive or cause confusion because of the reputation of the [NAME] [NAME]. As noted earlier, [NAME] for [NAME] acknowledged that if the Court found against it under s 60, it would follow that the Court would also find against it under s 42(b) of the Act.

Accordingly, while some reference is made to s 42(b) below, the primary issue concerns s 60. 75 The evidence shows, and there is no dispute, that [NAME] has a strong reputation in Australia in its device [NAME] which consist of the [NAME] on its own or used in conjunction with the stylised depiction of the words "[NAME]". That reputation is as a producer of [NAME] drinks and as a sponsor of extreme sports including [NAME]. The extent of that reputation, particularly in relation to [NAME], is considered further below. The parties dispute whether [NAME] has a reputation in the word "[NAME]" that is distinct from its reputation in its device [NAME]. 76 [NAME] acknowledges that the [NAME] [NAME] and the [NAME] [NAME] are not visually similar (and, contrary to the decision of the Registrar's delegate below, the respective [NAME] do not share "striking similarities"). [NAME] contends that the use of the [NAME] [NAME] would be likely to cause confusion because a notional [NAME], aware of the reputation of the [NAME] [NAME], would (as at the priority date): (a) perceive the reference to "[NAME]" as signifying that the [NAME] [NAME] were associated with [NAME]; (b) perceive that the "[NAME]" design of the [NAME] [NAME] differed from [NAME]'s [NAME]; and (c) conclude that the design of the [NAME] [NAME] were those of [NAME] and another commercial entity with whom [NAME] had entered into a commercial relationship (and, in the case of the [NAME] [NAME] bearing the name "[NAME]", the [NAME] commercial entity would be identified as [COMPANY] or its business [NAME]). 77 In [NAME] words, [NAME] contends that the notional [NAME] would believe, or would be confused as to whether, [NAME] had entered into a commercial relationship with the [NAME] bearing the [NAME] [NAME] in the manner of [NAME] extension, lending the [NAME] "[NAME]" name to a different logo. 78 [NAME]'s contention is based on the argument that the word "[NAME]" is the essential feature in each of the [NAME] [NAME] (save for the [NAME] when used alone); that it is dominant both visually and aurally in the [NAME] [NAME]; and that the name "[NAME]" is the way in which the [NAME] [NAME] would ordinarily be recalled and described by [NAME]. [NAME] submits that when the [NAME] [NAME] are used on its [NAME] drinks and in its extensive [NAME] activities, the word "[NAME]" is prominent whether that word is used by itself or in conjunction with the word "[NAME]". [NAME] submits that the word "[NAME]" is reinforced where the [NAME] is also used because the [NAME] looks like the letter "M" and has a "[NAME]-like vibe". 79 On [NAME]'s case, the strength of [NAME]'s reputation in the word "[NAME]", being an essential feature of the [NAME] [NAME] (save for the [NAME] when used alone), is such that a notional [NAME] (aware of that reputation) would be likely to associate the use of the word "[NAME]" in connection with [NAME] with [NAME], or at least be confused about such an association. 80 [NAME] contends that there is no likelihood of confusion arising from the use of the [NAME] [NAME] (as at the priority date). In support of that contention, it makes the following arguments: [NAME] has a strong reputation in its device [NAME], but not in the word "[NAME]" alone; the reputation of the [NAME] [NAME] is in relation to [NAME] drinks and the sponsorship of extreme sports, but not in relation to the sale of [NAME]; the word "[NAME]" has a descriptive meaning and there has been extensive third party use of that word as [NAME] in relation to a range of goods and services; there are striking dissimilarities between the [NAME] [NAME] and the [NAME] [NAME]; and the [NAME] [NAME] are registered in relation to goods (alloy [NAME]) that are sold at a relatively high price and for which [NAME] make a considered purchasing decision.

3.2 Legal Principles

Section 60 81 Section 60 of the Act provides that the registration of [NAME] in respect of particular goods or services may be opposed on the ground that: (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and (b) because of the reputation of that [NAME] trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion. 82 The purpose of s 60 is to provide protection for prior well-known [NAME], whether registered or not: [NAME] to the [NAME] 2006 at [4.10(1)]. 83 The ordinary meaning of the word "reputation" is the recognition of [NAME] or thing by the public generally or the estimation in which [NAME] or thing is held by the public generally: [NAME] & [COMPANY] v [NAME] (2000) 51 IPR 102 at [81] ([NAME]). The reputation of [NAME] has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally: see [NAME] at [85]-[86]. 84 There was no dispute between the parties as to the following general principles governing the application of s 60: (a) First, the likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the [NAME] mark: [NAME] v [COMPANY] (2015) 115 IPR 82 at [29] per Jessup J ([NAME]). [ADDRESS] must compare "mark and reputation" rather than "mark and mark": [COMPANY] v [NAME] [COMPANY] [2012] FCA 252 at [306] per [NAME] ([NAME]), citing with approval [COMPANY] v [NAME] (2006) 219 FCR 585 at [27] per Gyles J. (b) Second, the reputation of the [NAME] mark is to be assessed at the priority date of the opposed application: [NAME] at 595, cited in [NAME] at [21]. (c) Third, the relevant comparison is between the prior mark as actually used and a notional normal and fair use of the mark sought to be registered: [NAME] [COMPANY] v [NAME] (2016) 338 ALR 134 at [178] ([NAME]). See also [COMPANY] v [COMPANY] (1973) 129 CLR 353 at 362 ([NAME]); [NAME] [COMPANY] v [COMPANY] (2012) 294 ALR 661 at [113]-[115]. (d) Fourth, s 60 is not constrained by the concept of deceptive similarity – the words of s 60 do not refer to resemblance at all. The question is purely one of prior reputation: [NAME] at [142]. (e) Fifth, the test for confusion under s 60 is not [COMPANY] to whether [NAME] might think that the respective [NAME] are the same. It is sufficient that [NAME] might wonder whether the respective goods might be connected in the course of trade: [NAME], [4.10(3)]; [NAME] at [82]; [NAME] at 595. It is enough if [NAME] might think that the product bearing the impugned mark is a variant of, or related to, an existing [NAME]: [NAME] at 594-595, 597; [NAME] at [50]; [COMPANY] v [COMPANY] (1993) 42 FCR 227 at 229-230; [NAME] v [COMPANY] (2013) 308 ALR 1 at [70] ([COMPANY]). (f) Sixth, there is no requirement that it be more probable than not that the use of the opposed mark will deceive or cause confusion. All that is required is that there is a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt: [NAME] at 595; [COMPANY] v [COMPANY] (2004) 209 ALR 1 at [76] ([NAME]). The creation of an incorrect belief or mental impression and causing confusion "may go no further than perplexing or mixing up the minds of the purchasing public…": [NAME] at [39]; [NAME] at [102] per [NAME]. In [COMPANY], the [ADDRESS] stated (at [70]): … the threshold for confusion is not high. Courts must compare the [NAME] visually and aurally in the context of how the [NAME] are used, and decide if there is a reasonable probability that the ordinary person to whom the [NAME] are targeted, entertains a reasonable doubt as to the relationship between the [NAME]. But there must be a realistic assessment, and a mere possibility of confusion is not enough. (g) Seventh, evidence of actual confusion is not required: [NAME] at 355 per [NAME]. (h) Eighth, a mark may acquire a reputation in Australia through indirect exposure in the press, on television and on the [NAME]: [NAME] at [336] per [NAME]; [COMPANY] v [NAME] (Australia) [COMPANY] (2008) 171 FCR 579 at [64] per [NAME[NAME]. 85 The parties' submissions were at variance on a number of matters, although the variance was mainly a matter of emphasis. 86 First, the parties placed different emphasis on the significance of the objective similarity of the [NAME] in question. [NAME] emphasised statements in the cases to the effect that, in assessing the risk of confusion, the "degree of similarity between the allegedly conflicting [NAME] will be a relevant consideration": [NAME] at [142] and [172] per Yates J; [COMPANY] v [NAME] (2018) 140 IPR 1 at [205] per Davies J ([NAME]). Further, when considering a logo mark, all visual features must be considered, including font, the arrangement and use of graphic elements, the use of any corporate name, the orientation of the mark and its constituent parts, whether text is upper case or lower case, and the overall shape, geometricity and stylistic impression of the mark: [COMPANY] v [COMPANY] (2018) 363 ALR 113 at [71]-[73] ([COMPANY]). In contrast, [NAME] emphasised that, while the respective [NAME] must be considered as a whole, [NAME] are likely to have an imperfect recollection of the prior mark, retaining only a general recollection of that mark: [COMPANY] (1943) 60 RPC 87 at 108; [NAME] v [NAME] Co (1951) 68 RPC 103 at 105-6 ([NAME]); [NAME] at [77]-[79]. For that reason, attention needs to be given to the "essential feature(s)" of the prior mark which would be recalled by the [NAME], being the "idea which the mark will naturally suggest to the mind of one who sees it", or a "significant" or "distinctive" element of the mark or aspect(s) of the mark, or the feature "which strikes the eye and fixes itself in the recollection": Jafferjee v Scarlett (1937) 57 CLR 115 at 121-2; [COMPANY] v [COMPANY] (1941) 58 RPC 147 at 162; [NAME] at 105-106; [NAME] at [74], [79]-[84]; [COMPANY] v [COMPANY] (No 2) (2010) 275 ALR 526 at [108]-[110]. [NAME] submitted that confusion may result if that feature is then adopted in the trade mark of another. [NAME] countered with the submission that, under s 60, "a strong reputation is likely to militate against any likelihood of confusion where there are differences between the [NAME] under comparison": [NAME] at [205] per Davies J. This is because a [NAME] "with a stronger awareness of the respondent's mark" is more likely to be "immediately struck by the differences between the two [NAME]": [NAME] at [29] per Jessup J. 87 Second, the parties placed different emphasis on the similarity of the goods and services in respect of which the respective [NAME] were used or intended to be used. [NAME] emphasised that the prior mark need not have established a reputation in Australia that is specific to the goods or services which are the subject of the opposed application: Hugo Boss AG v [NAME] [NAME] (1999) 47 IPR 423 at 436-7 (Hugo Boss); [NAME] at [85]; in [NAME] at [143]. [NAME] accepted the correctness of that principle, it placed reliance on observations made in a number of cases to the effect that it is a material consideration in the application of s 60: [NAME] at [203] per Davies J; [NAME] at [143] per Yates J; [COMPANY] v [COMPANY] (No 4) (2017) 123 IPR 234 at [148] per Markovic J; [COMPANY] v [COMPANY] (2011) 214 FCR 396 at [208] per [NAME]. [NAME] also emphasised the relevance of the nature of the goods or services to which the opposed mark is sought to be registered and the characteristics of the class of [NAME] for those goods and services, as those factors bear upon the interest and likely attention of the relevant [NAME] in making a purchase and therefore the likelihood of confusion: [NAME] at [71]; [COMPANY] v [COMPANY] (2018) 357 ALR 15 at [19] and [63]. 88 Third, there was some disagreement as to whether the use of the [NAME] [NAME] before the priority date was relevant to the s 60 assessment. [NAME] submitted that the use or reputation of opposed [NAME] is generally not relevant to the comparison of [NAME] under s 60. The language of s 60 asks simply whether the use of the opposed mark is likely to deceive or cause confusion because of the reputation of the prior mark. The assessment is made by considering a notional normal and fair use of the opposed mark. [NAME] accepted that account could be taken of the notional [NAME]'s familiarity with an element of the opposed mark where that element has a degree of notoriety or familiarity of which judicial notice can be taken (such as the [NAME] [NAME]): [NAME] at [61] per French J; [NAME] v [COMPANY] (2000) 52 IPR 42 at [52]; [NAME] at [90]; [COMPANY] at [41]. However, it submitted that that principle has no application to the [NAME] [NAME]. [NAME] submitted that it is well established that, when assessing whether a party (here [NAME]) had acquired a distinctive reputation in a mark, third party usage of that mark "weighs heavily against the conclusion" ([COMPANY] v [COMPANY] (2010) 191 FCR 297 at [256]-[257] per [NAME]) and that third party usage will make it more difficult for a party to establish that use of that mark is likely to deceive ([COMPANY] v [COMPANY] (2014) 316 ALR 590 at [580] per [NAME], in the context of passing off and misleading or deceptive conduct). [NAME] submitted that it followed that use of the [NAME] [NAME] before the priority date would be relevant to the s 60 assessment in so far as that use diminished the likelihood that the [NAME] [NAME] had acquired a distinctive reputation in the word "[NAME]" (also relying on [COMPANY] v [COMPANY] (2007) 164 FCR 506 at [136] per Allsop J). That proposition was accepted by [NAME]. 89 There was no disagreement between the parties that s 60 must be applied separately to each of the [NAME] [NAME] and in respect of each of the [NAME] [NAME]. It is therefore necessary to consider: what is the reputation of each of the [NAME] [NAME] considered separately? In that respect, the primary contentions advanced by [NAME] recognised that it was [NAME]'s device [NAME], comprising the [NAME] and the stylised depiction of the words "[NAME]", that had acquired a reputation in Australia, rather than the word mark containing the single word "[NAME]". [NAME]'s primary contention was that the essential element of its device [NAME] was the word "[NAME]", such that [NAME] would be likely to be confused by the use of the [NAME] [NAME], which featured the [NAME] "[NAME]".

Section 42 90 Section 42(b) provides that an application for registration of [NAME] must be rejected if its use would be contrary to law. In that respect, [NAME] relies on ss 18 and 29 of the ACL. The principles governing the application of ss 18 and 29 are well established and neither party referred to them in any detail. The principles governing s 18 were recently summarised by [NAME] in [NAME] v [NAME] [COMPANY] (2016) 118 IPR 239 at [259]-[277] ([NAME]). Similar principles govern the application of s 29 of the ACL: [NAME] v [COMPANY] (2000) 202 CLR 45 at [97]-[107]; [NAME] v [COMPANY] (2014) 317 ALR 73 at [35]-[47]; [NAME] at [259]-[277]. 91 There are, however, two important differences in the enquiry required by s 60 of the Act on the one hand and under ss 18 and 29 of the ACL on the [NAME]. First, the enquiry under s 60 requires consideration of whether the reputation of a pre-existing mark is likely to deceive or cause confusion; the enquiry under ss 18 and 29 is not so confined and all relevant circumstances can be considered. Second, under s 60 it is sufficient to show that [NAME] are given "cause to wonder" as to the source of the applicant's goods, but that is not sufficient under the ACL: [COMPANY] v [COMPANY] (1982) 149 CLR 191 at 198 per [NAME]; [COMPANY] v [NAME] (2013) 249 CLR 435 at [8] per [NAME], Crennan and Kiefel JJ.

3.3 The reputation of the [NAME] [NAME] 92 [NAME] adduced a substantial quantity of evidence concerning the use of the [NAME] [NAME] in connection with the sale of its [NAME] drinks and associated promotional activity in order to show the strength of the reputation in Australia of the [NAME] [NAME]. That evidence was principally given by [NAME], who is the Senior Vice President of [NAME] for [NAME], and by [NAME], who is the Vice President – Oceania at [COMPANY] (the [NAME] of [NAME]) ([NAME]). [NAME] largely embraced the evidence of [NAME] and [NAME], submitting that their evidence showed that each can of [NAME] drink sold by [NAME], and all of its associated promotional activity, whether by way of sponsorships or merchandising, prominently featured the device [NAME] consisting of the [NAME] and the stylised depiction of the words "[NAME]", not the word mark consisting of the plain (i.e. not stylised) word "[NAME]". [NAME] argued that it was [NAME]'s device [NAME] that had a strong reputation, not the word mark "[NAME]", and that the strength of the reputation in the device [NAME] reduced the likelihood of confusion from the use of the [NAME] [NAME]. [NAME]'s submission is correct.

[NAME] drinks 93 The original [NAME] drink was launched by [NAME] in the USA in April 2002 with a target audience of male [NAME] in the 18-34 age bracket. Between 2002 and the end of 2014, [NAME] sold more than 13 billion cans of [NAME] drink to [NAME] in 134 countries generating revenues of more than US$14 billion. [NAME] launched the original [NAME] drink in Australia in July 2009 through its wholly-owned [NAME] [NAME]. The packaging of the original drink had a black background with the [NAME] and the word "[NAME]" coloured green. Also from 2009, [NAME], through [NAME], launched variants of the [NAME] drink which were sold in Australia prior to January 2015. All of the variants featured prominently the [NAME] and the stylised depiction of the word [NAME]. On many of the variants, the word "[NAME]" was supplemented (or occasionally replaced) by the specific variant name such as "[NAME] + Juice" and "[NAME]", and the variants used different colours on the packaging. By way of illustration, those examples are depicted below: [NAME] [NAME] [NAME] "BFC" (sold in Australia since 2009) (sold in Australia between 2009 and 2013) (sold in Australia between 2009 and 2013)

94 Between July 2009 and 27 January 2015, over 90 million cans of [NAME] drinks were sold throughout Australia. Over 44 million of those were cans of the variants. [NAME] drinks were distributed and sold in Australia through in excess of 10,000 retail outlets, including at supermarkets, petrol stations, bars and pubs, cafes, milk bars and take away food outlets. 95 In its submissions, [NAME] sought to emphasise the differences in the product variants that it has sold over time, in support of its overarching submission that the constant and essential element of the [NAME] products was the name "[NAME]". In my view, the evidence supports the opposite conclusion: that despite producing many variants of its original [NAME] drink, [NAME] has preserved on all of its products the key features of its branding which are the prominent [NAME] and the stylised depiction of the word "[NAME]", usually in conjunction with the word "[NAME]". Those features are distinctive and make the [NAME] products instantly recognisable. That view is consistent with the evidence of Mr [NAME]. When cross-examined regarding the cans sold in Australia, Mr [NAME] agreed that the material appearing on the can had changed very little since 2002 and that the word "[NAME]" was rendered in a distinctive script with a vertical line through the letter "o". Further, Mr [NAME] confirmed, when cross-examined, that: "Would you agree with this: that the [NAME] business has never sold a beverage product in Australia displaying the word "[NAME]" without also displaying that M icon logo; that same distinctive script for [NAME], including the vertical line through the letter O; and the word "[NAME]"?---That's true. However, the word "[NAME]" on some variants is much smaller, so, for example, [NAME] which we sold prior to 2015."

[NAME] and promotion 96 Between 2002 and the end of 2014, [NAME]'s world-wide [NAME] and promotional spend was more than US$3.1 billion. Between July 2009 and the end of 2014, over US$42 million was spent directly on [NAME] and promotion in Australia. 97 [NAME] does not use conventional advertising methods such as paid television, radio, print or on-line advertising. Instead, [NAME] focuses on promotional activities which allow it to engage more directly with its target market. These methods have been substantially the same since the product was launched in the USA and [NAME] overseas markets including Australia. Those promotional activities include: (a) Sponsorships: [NAME] sponsors [NAME], sporting teams, [NAME], [NAME] and events. Relevantly, [NAME]'s sponsorships include [NAME]. The evidence concerning [NAME]'s sponsorship activities is described in more detail below. (b) Product sampling: [NAME] gives away its [NAME] drinks at [NAME] sponsored events or events at which [NAME] sponsored individuals or teams are competing, as well as at [NAME] venues including, in Australia, amateur sporting competitions (including [NAME] competitions), motorcycle [NAME], beaches and festivals. In Australia, between 2009 and 2014, [NAME] spent over US$4.8 million on sampling activities (which incorporates wages for sampling staff, as well as the cost of [NAME] drinks given away as samples). The [NAME] sampling teams wear [NAME] branded apparel and travel in [NAME] branded vehicles. (c) Branded apparel and merchandise: [NAME] distributes to the general public (including by giving away) apparel and merchandise bearing the [NAME] [NAME]. In doing so, it licenses others to apply the [NAME] [NAME] to a variety of apparel and merchandise such as items of clothing, caps, beanies, bandanas, belts, water bottles, umbrellas, backpacks, suitcases and cooler bags. [NAME] also provides the individuals it sponsors with [NAME] branded apparel and merchandise. Photographs of these individuals (including both Australian and internationally sponsored [NAME]) wearing [NAME] branded apparel or holding [NAME] branded merchandise are uploaded to the [NAME] social media accounts or to the [NAME] website, which are followed by a substantial number of [NAME]. The sponsored [NAME] also post such photographs onto their own and/or their team's social media accounts which can be accessed in Australia. This approach promotes the [NAME] [NAME] to its target audience by reinforcing its "cool" and "legitimate" [NAME] image. (d) Point of sale materials: [NAME] displays point of sale (POS) materials at most locations where [NAME] drinks are sold and has distributed large quantities of POS materials featuring the [NAME] [NAME]. In Australia alone, between 2009 and 2014, [NAME] spent over US$2.7 million on POS materials. (e) In-store promotions: [NAME] conducts in-store promotions and competitions to promote the [NAME] [NAME]. In Australia, those promotions are carried out largely in petrol stations and supermarkets and usually involve entry into a competition with the purchase of a [NAME] drink product. 98 [NAME] adduced in evidence a large array of photographs of its [NAME] drinks, [NAME] branded apparel and merchandise, [NAME] branded vehicles and [NAME] materials. The branding on all of that material, without exception, consists of [NAME]'s device [NAME] comprising the [NAME] on its own or in conjunction with the stylised depiction of the words "[NAME]". The plain word "[NAME]" (i.e. not in a stylised form) is never used on its own as a [NAME]. As discussed further below, [NAME] draws attention to the occasions on which it, or [NAME], use the plain word "[NAME]" when referring to [NAME] or its [NAME] drink products. However, the plain word is never used as a [NAME]. It is only ever used in written communications by [NAME], such as a brochure that contains a written description of branded merchandise (for example, [NAME] T-shirt) or point of sale material ([NAME] cooler), or written communications by [NAME] on social media writing a response to a post from [NAME] or a sponsored [NAME]. Such use is always associated with, proximate to and never separate from, the [NAME] distinctive [NAME] [NAME], being the [NAME] and the stylised "[NAME]". The evidence of Mr [NAME], when cross-examined about the sponsorship and [NAME] activities undertaken by [NAME], was: "When one reviews your photograph[s] that you have chosen to exhibit to your affidavit, there are no examples of the single word "[NAME]" being prominently displayed to [NAME] without either the M icon or the word "[NAME]". Do you accept that proposition?---That is correct."

Sponsorship 99 [NAME] allocates a large portion of its [NAME] expenditure to the sponsorship of [NAME], teams, sporting events, [NAME], music festivals, [NAME] and gaming competitions which appeal directly to [NAME]'s target market, which traditionally has been 18 to 34 year old [NAME]. Between 2002 and the end of 2014, [NAME] spent over US$590 million in relation to its international sponsorships. Between July 2009 and 27 January 2015, [NAME] spent over US$10 million on Australian sponsorships. [NAME]'s sponsorship of events and [NAME] is not [COMPANY] to placing the [NAME] [NAME] on the [NAME]'s apparel or vehicle. [NAME] also seeks to "leverage" its sponsorships, including by way of promotions, POS materials, sweepstakes and giveaways, and dressing its sponsored [NAME] with apparel and gear branded with the [NAME] [NAME], both casually and in-competition. As part of [NAME]'s sponsorship deal, the [NAME] or team may be required to upload photos taken at competitions and events to their personal or team's social media accounts, which are directed to their own personal or team fan base. 100 [NAME] promotes its sponsorships (both international and Australian) on its own website and social media accounts, including [NAME], [NAME], [NAME] and [NAME]. Content posted to [NAME]'s website and social media pages is tailored to its target market. This exposure has included the prominent display of the [NAME] [NAME] on [NAME]' clothing and equipment (including, in relation to [NAME], on [NAME]/riders and their vehicles), on banners, posters and signs around the venues and on podiums, merchandise, promotional vehicles and hospitality trailers and staff uniforms. Since at least 2005, [NAME] has had a specialised digital [NAME] team responsible for running [NAME]'s social media pages, including by compiling photos and videos and curating content to put on those pages. These pages are viewed by [NAME] around the world, including from Australia, in significant numbers as set out below: (a) The [NAME] (www.[NAME] was launched in 2003. Between 1 September 2010 and 1 January 2016, there were a total of 526,000 visits to the website from Australia. (b) The [NAME] [NAME] [NAME] has been in operation since 2008. By 2010, the [NAME] [NAME] [NAME] had received 50,000 likes/follows from Australia. By December 2014, the [NAME] had over 430,000 likes/follows from Australia. (c) In addition to its primary [NAME] [NAME], [NAME] maintains a number of ancillary pages, including (i) a "[NAME]" [NAME] which, by December 2014, had received over 38,000 likes/follows from Australia; (ii) a "[NAME]" [NAME] which, by December 2014, had received over 12,000 likes/follows from Australia; and (iii) a "[NAME]" [NAME] which, by December 2014, had received over 4,500 likes/follows from Australia. (d) [NAME] AU also maintains a separate [NAME] [NAME], using the account name "[NAME]", which posts uniquely Australian content. (e) The [NAME] account has been in operation since 2009. As at 2013, the [NAME] account had over 1 million [NAME] worldwide, including [NAME] from Australia. In addition, [NAME] maintains a separate [NAME], using the handle @[NAME], which posts uniquely Australian content and has done so since at least September 2010. (f) The [NAME] account has been in operation since 2011. By April 2012, the [NAME] account had 31,756 [NAME] from Australia. By February 2014, the [NAME] account had more than 745,000 [NAME] worldwide (including from Australia). (g) [NAME] delivers content through several [NAME] channels, including the [NAME] channel. The [NAME] channel was created in 2006, and [NAME] began posting content to that channel in 2009. By April 2014, the [NAME] channel had received more than 2.4 million views from Australia. 101 As part of its sponsorship activities, [NAME] also engages female staff known as "[NAME]" to assist with the [NAME] and promotion of its products by attending events to hand out samples and merchandise, and to meet and greet fans. [NAME] also maintains an amateur sponsorship and [NAME] development program called the "[NAME]". During the period 2009 to 2014, potential applicants worldwide could apply for inclusion in the program through the [NAME] website, at www.[NAME] By July 2012, more than 3,200 people from Australia had applied to be a part of the [NAME]. Between 1 October 2008 and 31 July 2015, the [NAME] website received more than 48,000 unique visits from Australia. By December 2014, the corresponding [NAME] [NAME] [NAME] received more than 4,000 likes/follows from Australia. 102 [NAME]'s evidence included a large array of photographs of [NAME] branded apparel, merchandise, equipment, vehicles, banners, posters, signs and staff uniforms. The observations made earlier apply. The branding on all of that material consists of [NAME]'s device [NAME] comprising the [NAME] on its own or in conjunction with the stylised depiction of the words "[NAME]", not the plain word "[NAME]".

[NAME] 103 [NAME]'s [NAME] and promotion has focused on projecting the image that [NAME] and its products are "edgy and aggressive". [NAME] perceives that this image appeals to its primary target market. For that reason, [NAME] has sponsored [NAME] and extreme sports which are seen as edgy and aggressive. [NAME] regards [NAME] as an activity of particular interest to its primary target market and one which aligns closely with its image. As a result, since the commencement of [NAME]'s business, a significant focus of [NAME]'s [NAME] activities has been [NAME] including on and off-road car and motorcycle [NAME], and [NAME] related activities such as stunt driving and motorcycle stunts. By sponsoring these [NAME], teams and events, the [NAME] [NAME] receive significant amounts of unsolicited press coverage, creating widespread exposure. This includes television and web broadcast exposure internationally through news outlets, authorised broadcasts, amateur videos and in online and printed publications covering the events. 104 The evidence established that a significant part of [NAME]'s motorsport sponsorships have an Australian audience: (a) International events such as NASCAR, F1, Dakar Rally, Superbikes, [NAME], Speedway and the AMA Supercross, at which the [NAME] brands are displayed on [NAME]'s helmets and uniforms, on track signage and/or on the press conference backdrop, are directly broadcast and/or webcast into Australia. (b) [NAME] also sponsors international [NAME] who have a significant following in Australia including, for example, [NAME] ([NAME]), [NAME] (F1), [NAME] (Rally Driver / Gymkhana), and [NAME] (Supercross and Motocross). (c) In Australia (prior to January 2015), [NAME] sponsored various events including the V8 Supercars, the Formula 1 Grand Prix (Australian event), Powercruise, the [NAME] (Australian event), Australasian Supercross Championships and the MX Nationals. (d) [NAME] has also sponsored a range of [NAME] in fields such as stunt cars, supercross/motocross, V8 supercars, kart [NAME], V8 ute [NAME], drag [NAME], drift driving, [NAME], off-road [NAME] and sprintcars. 105 [NAME] leverages its sponsorship of these [NAME], teams and events by way of cross-promotions, POS materials, sweepstakes and giveaways, dressing its sponsored [NAME]/riders with apparel and gear branded with the [NAME] [NAME] and distributing [NAME] branded [NAME] related merchandise. 106 In Australia, [NAME] has also had a significant presence in Supercross. Between 2009 and 2011, [NAME] was the naming rights sponsor of the Australian Supercross Championship series, the Super X. During this time, there were at least five Super X events held in Australian cities each year. [NAME]-sponsored riders (who had had significant success in the Super X) also competed in the series. In 2012, the Series was relaunched as the Australian Supercross Championship. [NAME] remained a sponsor of the series, in particular a named sponsor of particular series events. [NAME] branded merchandise was also sold in Australia, including replica [NAME] [NAME] branded gear, as well as [NAME] related merchandise. 107 [NAME] has also had significant involvement in Australia in relation to [NAME], including through sponsorship of [NAME], such as [NAME], who have had considerable success in the [NAME] series. For example, [NAME] sponsored [NAME] in every [NAME] series event in Australia up to the end of 2014, and that sponsorship has continued. 108 Again, [NAME]'s evidence included a large array of photographs of [NAME] branded apparel, merchandise, equipment, signs and banners at venues and on podiums. The branding on all of that material consists of [NAME]'s device [NAME], not the plain word "[NAME]". The photographs also show that [NAME] is not the only, or dominant, sponsor of the events, teams or [NAME] depicted. The trade [NAME] of many [NAME] well-known companies such as Vodafone, Samsung, Toshiba, Blackberry, [NAME] and [NAME] are commonly displayed on event signage, motor vehicles and uniforms, often in conjunction with [NAME]'s device [NAME].

[NAME] [NAME] markets and sells [NAME] drinks in Australia and does not itself sell any [NAME] merchandise in Australia. However, it has licensed a number of companies to sell official [NAME] apparel and merchandise, including in Australia. Most relevantly, since 2002 (and prior to 2015), [NAME] has licensed others to produce [NAME] related products, such as decal kits, helmets, gloves and protective clothing, replica cars, and an [NAME] edition Kawasaki motorcycle displaying the [NAME] [NAME]. In Australia, the [NAME] [NAME] have been used on [NAME] related products such as decals, helmets, gloves and protective clothing. Since at least 2013, [NAME] has also authorised the use of the [NAME] [NAME] on electronic games involving [NAME] that are available across multiple platforms such as Xbox, Play Station, Nintendo and as smart phone apps. 110 Since 2011, [NAME] has licensed [COMPANY]. ([NAME]) to manufacture and distribute [NAME] branded [NAME] in the United States and Canada. Pictures of the [NAME] in evidence show that they have the [NAME] on the hubcap. The evidence concerning the sale of [NAME] branded [NAME] in Australia was scant and there was no evidence concerning any licensing arrangements for the sale of such [NAME] in Australia. Nevertheless, [NAME] relied on the following matters as being relevant to the reputation of its [NAME] in Australia in respect of [NAME]: (a) [NAME] and its distributors (including [NAME]) have advertised the [NAME] branded [NAME] by way of promotional videos uploaded to TIS's [NAME] channel. (b) Since 2011, the [NAME] branded [NAME] have been displayed at the "[NAME]", which is a custom car show and concert tour that occurs in the United States. Advertisements for the [NAME] branded [NAME] have appeared in the associated "[NAME]" located on the DUB Show website. The [NAME] [NAME] [NAME] refers to the [NAME]. (c) [NAME] sponsored [NAME] also occasionally fit custom [NAME] branded [NAME] on their vehicles. For example, in around April 2013, [NAME] sponsored the [NAME] [NAME] who debuted his custom vehicle, fitted with [NAME] branded [NAME], as part of a stunt [NAME] called "Recoil" published to [NAME]'s [NAME] channel. The first [NAME] received over 8 million views by the end of 2014. [NAME]'s custom [NAME] were also featured in the April/May 2013 edition of the [NAME], which was promoted via the [NAME] [NAME] [NAME]. 111 Ms [NAME], a lawyer employed by the solicitors for [NAME], gave evidence of visiting the "[NAME]" section of the [NAME] website and accessing and downloading photographs of 9 vehicles with "[NAME]" or "[NAME]" [NAME] having the [NAME] on the hubcap, each vehicle apparently parked outside an identified [NAME] store. The date on which each photograph was taken was not clear from the website, although at least some of the photographs appeared to have been taken before the priority date. 112 [NAME], the Wheel Division Coordinator for [NAME], gave evidence that the "[NAME]" on [NAME] website was created in about 2013 and, from that time, sales staff located at [NAME[NAME] throughout Australia could contribute photographs to be uploaded. As at December 2018, more than 1,700 photographs had been posted on the "[NAME]". Mr [NAME] gave evidence that the photographs are not necessarily of [NAME] being offered for sale at any particular [NAME] store, although I infer that in most cases the photographs would be of vehicles recently fitted with [NAME] or tyres at the relevant store. In his evidence, Mr [NAME] identified the dates on which 7 of the photographs exhibited to Ms [NAME] affidavit were uploaded to the "[NAME]": Beenleigh (6 June 2014), Toowoomba (28 June 2014), Tweed Heads (30 January 2015), Chermside (2 March 2015), Cleveland (16 March 2015), Chermside (23 May 2015) and Cairns (25 May 2015). Mr [NAME] confirmed in cross-examination that the [NAME] would have been sold on a date earlier than the date of the upload. Mr [NAME] verified that, in each photo, the alloy [NAME] are two models of "[NAME]" [NAME] [NAME]: the "Fang" and "Krawler" models. During the period 2013-2016, the only local distributor to [NAME] of [NAME] [NAME] (including the [NAME] models) was [NAME] of Virginia, Queensland. A total of approximately 400 [NAME] [NAME] were supplied by [NAME] and sold through [NAME] during that period. 113 [NAME] tendered in evidence 4 invoices issued by [NAME[NAME] before the priority date in respect of the sale of [NAME] or [NAME] [NAME]. The invoices on their own do not refer to [NAME] branding on the [NAME] that were sold. However, the details of the invoices correspond with 4 of the photographs exhibited to Ms [NAME] affidavit (3 of which were referred to in Mr [NAME] affidavit), supporting an inference that the [NAME] depicted in the 4 photographs, having the [NAME] on the hubcap, were sold by [NAME] before the priority date. [NAME] was cross-examined about the photographs and the invoices. He agreed with the proposition that the invoices related to the vehicles shown in the photographs with corresponding details. I do not believe that his evidence rises any higher than being a conclusion he has drawn from seeing the apparent correspondence between the invoices and the photographs. Nevertheless, in the absence of contrary evidence, I draw the inference that the invoices do relate to the vehicles shown in the corresponding photographs. However, Mr [NAME] stated that he was not aware that [NAME[NAME] had ever offered for sale or sold [NAME] with the [NAME] on the hubcap. He said that, ordinarily, [NAME] [NAME] come with a "[NAME]" hubcap and he would have expected that [NAME] [NAME] sold by [NAME] had that hubcap. [NAME] also tendered in evidence a [NAME] [NAME] post dated 30 May 2014 from the [NAME] with a photograph of a [NAME] wheel with the [NAME] on the hubcap and a message stating "4x4 just got real … New stock landed and ready to go in aggressive fitments. This is the Fang - in stock to suit [NAME], Colorado, Dmax, Triton, Prado and others". In cross-examination, Mr [NAME] agreed that it appeared from the post that the [NAME] had the displayed wheel in stock, but Mr [NAME] was not personally aware of that fact. 114 I infer from the evidence that at least some [NAME] bearing the [NAME] on the hubcap were sold in Australia (through [NAME]) before the priority date. However, there is no evidence as to the quantity of those sales, beyond the 4 invoices referred to above and the [NAME] post. Further, there was no evidence that [NAME] had licensed any wheel manufacturer to produce or sell [NAME] bearing the [NAME] on the hubcap in Australia. It is therefore not clear whether the [NAME] [NAME] that were sold in Australia were imported from North America; nor is it clear whether [NAME] approved the use of the [NAME] on the wheel hubcaps for sale in Australia. Given the absence of any licensing arrangements for the sale of [NAME] branded [NAME] in Australia, it is unsurprising that there was also no evidence that [NAME] had ever promoted itself as a producer or supplier of [NAME] in Australia. Overall, the evidence concerning the sale of [NAME] branded [NAME] in North America or Australia has no material bearing on the reputation of the [NAME] [NAME] in Australia.

Findings about the reputation of the [NAME] [NAME] 115 Having regard to the evidence summarised above, I make the following findings about the reputation of the [NAME] [NAME] in Australia as at the priority date. 116 First, the evidence establishes that there is a very strong reputation in [NAME]'s device [NAME] which consist of the [NAME] on its own, and the [NAME] together with the stylised depiction of the words "[NAME]". The primary reputation is as a producer and seller of [NAME] drinks. However, through its extensive [NAME] and promotional activities, those [NAME] are also associated with various extreme sports including [NAME]. In my view, the type of association in the minds of [NAME] would be as a sponsor of events, teams and individuals. [NAME] would also associate those [NAME] with a range of merchandise bearing those [NAME], from apparel through to motorsport equipment such as gloves and helmets. However, the evidence does not establish a reputation in Australia in connection with the sale of [NAME]. 117 Second, [NAME]'s word [NAME] which contain the plain (i.e. not stylised) words "[NAME]" are likely to enjoy the same reputation. The extensive [NAME] and promotion of [NAME] drinks using the device [NAME] inevitably carries across to the word [NAME] "[NAME]". Those words, used together in plain text, would immediately identify [NAME], its products and sponsorships to a large number of [NAME]. 118 Third, and related to the preceding findings, [NAME]'s device [NAME], comprising the [NAME] and the stylised depiction of the name "[NAME]", have remain unchanged since the business was commenced in 2002. [NAME] has engaged in some [NAME] extension, by licensing those [NAME] for use on apparel and [NAME] merchandise (including certain motorsport apparel and equipment), there has been no change to the appearance of the device [NAME]. 119 Fourth, there is no evidence that [NAME] has used the word [NAME] which contain the plain (i.e. not stylised) word "[NAME]" as a [NAME] to sell its [NAME] drinks or for promotional purposes. Any use of the word "[NAME]" by [NAME] is [NAME] to the use of its device [NAME]. As such, in my view [NAME]'s word [NAME] which contain the plain word "[NAME]" have only a [COMPANY] reputation on their own. Any reputation they enjoy is derived from [NAME]'s device [NAME]. In [NAME] words, [NAME] are likely to associate the word "[NAME]" with [NAME] and its products and promotional activities if the word is used in connection with, or in proximity to, [NAME]'s device [NAME]. In that sense, it is the device [NAME] that create the association in the minds of [NAME]. [NAME] submitted that the word "[NAME]" is an integral part of [NAME]'s branding and reputation. That is undoubtedly correct, but it doesn't follow that [NAME] would associate the word "[NAME]" used on its own with [NAME] or its products or sponsorships. It is possible to imagine circumstances in which the use of the plain word "[NAME]" as a mark might cause [NAME] to wonder whether the product in question was associated with [NAME]. An obvious example is if the word was used in connection with soft drinks. However, in my view [NAME] uses of the word "[NAME]" as a mark would be unlikely to cause such confusion.

3.4 [NAME] uses of the word "[NAME]" as a [NAME] in Australia 120 [NAME] adduced evidence of the use of the word "[NAME]" as a [NAME] in Australia before the priority date both by itself (through the use of the [NAME] [NAME]) and by others. The submission advanced by [NAME] was that the word "[NAME]" is a common English word which carries the connotations of large, powerful or wild and its common usage in the course of trade in Australia diminishes the likelihood of a [NAME] associating the [NAME] [NAME] with [NAME]. [NAME] relied on four categories of evidence.

The word "[NAME]" is a commonly used mark 121 Mr [NAME] gave evidence on behalf of [NAME] of searches he conducted on the website of IP Australia, which is an Australian Government agency that administers Australia's various statutory intellectual property regimes. Mr [NAME] clicked the "Search trade [NAME]" link and typed the word "[NAME]" into the search function, producing 816 results. He then filtered the results to "trade mark words" and "registered" status, which reduced the number of results to 246, and exhibited the list of results. The resulting trade [NAME] were registered in various classes for which trade [NAME] may be registered, spanning a wide range of products. [NAME] relied on this evidence to show the common usage of the word "[NAME]" as a [NAME] in Australia. [NAME] submitted that the evidence adduced by Mr [NAME] does not go that far. First, of the 246 registrations, 57 are after the priority date and 67 are registered to [NAME]. Second, and more significantly, there is no direct evidence before the Court as to what use, if any, there has been of the remaining [NAME] between the registration date of the [NAME] and the priority date.

The [NAME] [NAME] motorbikes 122 Evidence was given about the [NAME] [NAME] of [NAME] motorbikes. Mr [NAME] searches showed that the trade mark "[NAME]" had been registered in the name of [NAME] since 1995 in respect of, amongst [NAME] things, motorcycles and clothing, footwear and headgear. Mr [NAME] gave evidence on behalf of [NAME] about those motorbikes. Until March 2003, Mr [NAME] was Managing Director of [COMPANY], an automotive business, established by Mr [NAME] in 1971, which undertook repairs, restorations, testing, vehicle sales and valuations. Since 2003, Mr [NAME] has been a consultant to various aspects of the automotive [NAME] undertaking valuations, insurance assessments and sales and acting as a forensic expert witness. He is presently a director of [NAME] and [NAME]. Mr [NAME] qualifications and experience show that he has wide experience in automotive repairs, brokering and valuations. Mr [NAME] said that he is familiar with [NAME] [NAME] motorbikes, which Mr [NAME] described as very well known, widely purchased and an iconic range of motorbikes.

[NAME] 123 Evidence was given about "[NAME]" events that have been held in Australia (and overseas) in which oversized pick-up trucks known as "[NAME]" participate. Mr [NAME] searches showed that the trade mark "[NAME]" has been registered in the name of [COMPANY] since 2011 in respect of the production, organisation and provision of sporting events, toy vehicles and clothing. 124 Mr [NAME] gave evidence that [COMPANY] had a [NAME] as early as 1987, that he had been interested in [NAME] since childhood and that he had attended [NAME] events in Australia in 2010, 2012 and subsequently, along with substantial crowds of spectators. Mr [COUNSEL], a solicitor for [NAME], gave evidence that he had attended a [NAME] event at Ballarat in 2006, where the crowd numbered several thousand people, and also at Melbourne in 2010, where the crowd numbered in the tens of thousands. Mr [NAME] gave evidence that he associated the word "[NAME]" in an automotive context with [NAME] and in particular the [NAME] series known as "[NAME]", that his initial exposure to [NAME] was in 2010/2011 via television, and that he had attended a [NAME] display at the Royal Melbourne Agricultural Show in about 2012 or 2013. 125 Ms [COUNSEL], a solicitor for [NAME], adduced in evidence documents downloaded from the "[NAME]" website that were records of [NAME] events held in Australian cities before the priority date. Those records showed that: (a) a [NAME] event was held on 19 October 2013 at [NAME] in Sydney and was attended by "more than 50,000 roaring fans" and a subsequent "pit party" was "sold out" and attended by "more than 12,000 fans"; (b) a [NAME] event was held on 27 September 2014 at [NAME] in Brisbane and was attended by "over 25,000 fans cheering for each [NAME] truck to win"; (c) there were two [NAME] events held on 4 October 2014 at [ADDRESS] in Melbourne, both of which had a "sell out crowd"; (d) a [NAME] event was held on 18 October 2014 at [NAME] in Sydney and "for the second straight year Aussie fans turned out in huge numbers at the [ADDRESS]"; and (e) in the period between 27 June 2013 and 22 January 2015, there was sustained and extensive television coverage of [NAME] events on free-to-air television in Melbourne. In total, there were 223 discrete televised broadcasts of [NAME] events over a period of approximately 1.5 years. Put another way, in the 1.5 years immediately before the priority date, a [NAME] event was, on average, broadcast on free-to-air television in Melbourne approximately every second day. 126 The evidence of Mr [NAME], on behalf of [NAME], was that the [NAME] series tours across the United States of America, and also internationally, including to Europe, Japan and (since 2013) Australia, that the series is televised internationally and that the [NAME] events, teams and [NAME] create widespread public exposure and awareness.

[NAME]'s [NAME] 127 The evidence showed that [NAME] had used the [NAME] [NAME] on alloy [NAME] before the priority date. [NAME] gave evidence that the [NAME] was launched in mid to late 2013 and alloy [NAME] featuring the [NAME] [NAME] were promoted in national catalogues and in national television advertising for the [NAME] as a featured [NAME]. Example pages from the catalogues were in evidence. They depicted [NAME] bearing the [NAME] [NAME] alongside many [NAME] [NAME] being offered for sale in [NAME[NAME]. 128 Mr [NAME] gave generalised evidence that, by the priority date, alloy [NAME] featuring the [NAME] [NAME] had been promoted in many millions of catalogues (which were distributed in Australia either through newspaper inserts or through letterbox drops); however, the evidence did not run to precise numbers. The evidence showed that, by the priority date, a total of 1,839 [NAME] bearing the [NAME] [NAME] had been sold, generating sales [NAME] of approximately $350,000. 129 Ms [NAME] gave evidence that [NAME] bearing the [NAME] [NAME] were featured on the "wheel specials" [NAME] of the [NAME] website during the period October 2013 to January 2015. I infer that the [NAME] were featured from time to time, not every day. A Google Analytics report showed that, between 2013 and the priority date, there were a total of 119,332 unique views of that [NAME]. However, without knowing how often the [NAME] bearing the [NAME] [NAME] were shown on the [NAME], it is not possible to form any assessment of the degree of exposure of the [NAME] to the public through that medium.

3.5 The purchase of alloy [NAME] 130 A number of witnesses gave evidence for [NAME] in relation to the price of alloy [NAME] and the factors that influence a purchasing decision by a [NAME]. The evidence establishes that alloy [NAME] have a premium price in comparison to [NAME] [NAME] and are generally purchased by engaged [NAME] making carefully considered purchasing decisions. 131 As stated earlier, Mr [NAME] qualifications show that he has wide experience in automotive repairs, brokering and valuations. Mr [NAME] gave evidence that car owners generally buy alloy [NAME] for one of two reasons. First, and primarily, car owners buy alloy [NAME] because they want to improve the look of their vehicles, by having [NAME] that look more sporty or distinctive in some way. As a result, car owners often spend a great deal of time "shopping around" for alloy [NAME], as they compare the look of different sets of [NAME] and the prices of those [NAME]. Second, some car owners buy alloy [NAME] for their performance benefits. There are a range of performance benefits of alloy [NAME]. In particular, alloy [NAME] are lighter than conventional steel [NAME] and lighter [NAME] allow a vehicle to accelerate faster and brake faster along with improved handling. Mr [NAME] also stated that alloy [NAME] are relatively expensive. The price of a typical set of four alloy [NAME] ranges from $2,000 to $5,000, although specialist sets can cost many times more. In Mr [NAME] experience, car owners typically spend quite a lot of time looking for and considering different sets of alloy [NAME] before making a final purchase, having regard to the considerations set out above. 132 Mr [NAME] is a store manager employed by [COMPANY] and presently manages the [NAME] store located at Nunawading in Victoria. He has been employed by [COMPANY] for approximately 25 years in various roles starting from a tyre fitter and aligner to work shop foreman before working his way up through sales and showroom positions to his current position as a store manager. He has been involved in the sales part of the [NAME] for about 20 years and has been stationed at a number of different [NAME] across Victoria. Mr [NAME] gave evidence that, in his experience, a typical [NAME] store will serve hundreds of customers each year who visit the store looking for alloy [NAME]. Customers who come to a store to purchase alloy [NAME] are making a carefully considered choice. The typical cost of a set of alloy [NAME] and matching tyres will be several thousand dollars. Typically, customers want a set of alloy [NAME] that will enhance the appearance of their motor vehicle, something that will make it look more sporty and edgy. Hence, it is typical in the [NAME] to use product names for alloy [NAME] such as [NAME], [NAME], [NAME], Stealth, [NAME], which help to evoke the sporty, edgy flavour which customers are seeking. In Mr [NAME] experience, most customers for alloy [NAME] are [NAME] across a wide band of ages and have investigated different styles and varieties of alloy [NAME] that are available on the [NAME] before coming into a [NAME] store. 133 [NAME] is the General Manager for [COMPANY] in Australia. [COMPANY] is an international alloy wheel and tyre manufacturer founded in 1983. It has a distribution network in over 60 countries, including Australia. It commenced trading in Australia in 2007 and [NAME] has remained with [COMPANY] since then. Before joining [COMPANY], [NAME] was employed in [NAME] automotive wheel businesses. In Australia, [COMPANY] is a wholesale supplier of tyres and alloy [NAME] that are sold through [NAME] and many [NAME] wheel and tyre retailers such as Bridgestone, Beaurepaires, [NAME]. Mr [NAME] gave evidence that the experience of Mr [NAME], described in the preceding paragraph, was typical for all retailers in the Australian market in his experience. In particular, the process of [NAME] purchasing alloy [NAME] tends to involve some time, with [NAME] paying particular attention to the aesthetic, functional aspects and cost of the alloy [NAME] they are considering.

3.6 The [NAME] mark 134 Two of the [NAME] [NAME] refer to the [NAME] website address ([NAME]) and thereby incorporate the [NAME] mark. [NAME] argues that this further diminishes the possibility of confusion arising from the use of those [NAME] because of the notoriety or familiarity of the [NAME] mark. Mr [NAME] gave the following evidence about the [NAME]. 135 As stated earlier, the [NAME], now owned by [COMPANY], was founded by Mr [NAME] father, [NAME]. Today, the [NAME] consists of company owned [NAME] and franchised [NAME]. As at January 2015, there were approximately 135 [NAME] across Australia. 136 [COMPANY] is the registered proprietor of a number of trade [NAME] in Australia, most of which incorporate the words "[NAME]". Since at least the early 1980's, the [NAME] mark has been an important component of the [NAME] and branding strategy of the [NAME]. The forms of media in which the [NAME] has been promoted throughout Australia by reference to the [NAME] mark include store signage, catalogues, online and printed directories, newspapers, magazines, television, sponsorship of major motorsport events, the [NAME], [NAME] staff uniforms, branded products, trade shows and promotional giveaways. By way of elaboration: (a) Since at least the 1980's, outlets for the [NAME] (whether company owned or franchised [NAME]) have used signage that bears the [NAME] mark in prominent positions. (b) Since at least the late 1980's, catalogues have been used to promote the [NAME] and the products and services offered. The catalogues have been produced every month or so and have been distributed through all State and Territory capital cities as well as major regional cities such as Ballarat, Launceston and Albany. The catalogues are generally distributed in national newspapers. (c) Since at least the 1980's, the [NAME] has been advertised in newspapers throughout Australia. The business has also been promoted through television commercials on free-to-air television stations throughout Australia usually (but not exclusively) at prime time. (d) Since at least the early 1980's, the [NAME] has maintained directory listings in the printed Yellow Pages and White Pages telephone directories published in each of Australia's capital cities and regional centres (where there are [NAME[NAME]). (e) From time to time, [COMPANY] has been a major sponsor or naming rights sponsor for major Australian motorsport events such as, from 2002 to 2004, the Bathurst V8 Supercars event and, from 1999 to 2003, the [NAME]. In addition, [COMPANY] has in the past sponsored, and continued to sponsor, individual [NAME] cars and [NAME] in a number of categories at events like the V8 Utes, Carrera Cup, Fujitsu V8 [NAME] and the V8 Supercars series. As part of that sponsorship, the relevant [NAME] cars bear the [NAME] [NAME] mark. (f) The [NAME] is also promoted through the [NAME] website with the address www.[NAME] Data extracted from Google Analytics by Ms [NAME] shows that in the period October 2013 to January 2015, the total number of users of that website was approximately 2.5 million and the total number of [NAME] views was approximately 11.5 million. 137 The evidence establishes that the [NAME] is a well-known business in Australia supplying [NAME] and tyres to [NAME].

3.7 Disposition of the section 60 issue – there is no likelihood of deception or confusion 138 As stated earlier, [NAME]'s opposition under s 60 is based on 3 contentions: that the essential feature of the [NAME] [NAME] is the word "[NAME]"; that the [NAME] [NAME] are strongly associated with [NAME] and [NAME] extreme sports, and it is a [NAME] that is marketed as edgy and aggressive; as a result the use of the [NAME] [NAME], which feature the word "[NAME]", in connection with automotive alloy [NAME] is likely to deceive or cause confusion. [NAME] for [NAME] acknowledged that there were sufficient differences between the [NAME] [NAME] and the [NAME] [NAME] that an ordinary [NAME] would not confuse them. However, [NAME] argued that there was a real and tangible risk that the ordinary [NAME] would wonder whether there was a commercial association between the alloy [NAME] bearing the [NAME] [NAME] and [NAME]. 139 In my view, the evidence establishes that the use of the [NAME] [NAME], considered separately, would not be likely to deceive or cause confusion because of the reputation of any of the [NAME] [NAME]. That conclusion is supported by the following factors. 140 First, while the word "[NAME]" is an integral part of [NAME]'s corporate name and "[NAME]" [NAME], the word on its own does not have a strong reputation. Rather, it is [NAME]'s device [NAME], and the word mark "[NAME]", which carry its reputation. That is not to say that the use of the mark "[NAME]" by another person could never give rise to confusion. However, in my view such confusion could only arise if there were aspects of the use of the mark by the third person that suggested a connection to [NAME], its products or sponsorships and that was not separately distinctive. Those features are not present in this case. 141 As submitted by [NAME]: This is a case where the sheer enormity of [NAME]'s sales, and promotional and [NAME] activities, tells strongly against any risk that a [NAME] will confuse a product which is not branded as [NAME], and which does not feature the distinctive M-logo and the rendering of the word [NAME] in a distinctive script, with an unusual vertical line through the letter "O", as a product of [NAME]. In this sense, [NAME] is "a victim of its own success". 142 The phrase "a victim of its own success" was used by [NAME] in [COMPANY] v [COMPANY] (2009) 81 IPR 354 at [32] in relation to the [NAME] "[NAME]". The phrase is used in a figurative sense because the relevant company, here [NAME], is hardly a victim, being so successful from a sales and [NAME] perspective that [NAME] in general are familiar with its product. 143 The evidence establishes that the word "[NAME]" has been registered as [NAME] in Australia in respect of a vast array of products. It is an ordinary English word which conveys a range of meanings such as large, strong or wild. It has been used in a motorsport context as the name of a series of motorbikes manufactured by [NAME] and as the name of an event, [NAME], in which [NAME] compete. 144 In my view, the word "[NAME]" is not distinctive of [NAME], its products or sponsorships. That is not to say that [NAME] does not have any reputation in the word "[NAME]". [NAME] inevitably has some reputation because, as it submitted, the word "[NAME]" is an integral part of [NAME]'s corporate name and [NAME]. However, the risk of deception or confusion from the use of the word "[NAME]" as a mark by another person is dependent on the appearance of the [NAME] mark, the goods in respect of which it is used and the related context in which it is used. 145 Second, in this case, none of the [NAME] [NAME] bears any resemblance to any of the [NAME] [NAME]. That is shown by a simple visual comparison of the [NAME] and requires little elaboration. The [NAME] [NAME] are reproduced below: No 1670840 No 1670841 No 1670842

146 [NAME] [NAME] 840 and 842 contain 3 elements, while mark 841 contains 2 elements. The first element, which features prominently in each of the [NAME], is the stylised depiction of a [NAME], with two eyes separated from the remainder of its body, comprising two large wings or arms and two small legs. The shape of the [NAME] is broadly circular. It is distinctive and entirely different to the [NAME] device [NAME]. The second element, which features prominently in [NAME] 840 and 841, and less prominently in mark 842, is the word "[NAME]". It is that element which lies at the heart of [NAME]'s opposition. However, the [NAME] use the word "[NAME]" in a plain font and in conjunction with the [NAME] image, removing any real or tangible risk of confusion with [NAME]. The third element, in [NAME] 840 and 842, is the text [NAME]. That text makes plain that the mark is connected with the well-known [NAME]. As to overall visual appearance, [NAME] 840 and 841 are rendered in a horizontal orientation, while mark 842 is rendered in a circular shape. 147 Apart from the word "[NAME]", the [NAME] [NAME] do not share any of the distinctive features of the [NAME] device [NAME], nor do they use the word "[NAME]". The [NAME] has the appearance of a claw mark made by a figurative [NAME]. It is both jagged and vertically elongated in its appearance. The device [NAME] which incorporate the words "[NAME]" adopt a distinctive script that is suggestive of Gothic script. 148 Third, the [NAME] [NAME] are used on alloy [NAME]. The evidence establishes that alloy [NAME] are the types of products which are purchased by engaged [NAME], making carefully considered purchasing decisions, at a premium price. The typical cost of alloy [NAME] and matching tyres will be upwards of $2,000. The primary reason why [NAME] purchase alloy [NAME] is aesthetic, to enhance the appearance of their vehicle. [NAME] typically investigate a range of different styles and varieties. 149 [NAME] has no reputation in respect of alloy [NAME]. It does have a strong reputation as a sponsor of [NAME], including teams and individual [NAME] and riders. It is also associated with motorsport clothing and equipment. However, that reputation does not carry across to alloy [NAME]. 150 Overall, [NAME] has failed to satisfy me that the use of the [NAME] [NAME] is likely to deceive or cause confusion because of the reputation of the [NAME] [NAME]. In my view, there is no real or tangible prospect of that occurring. 151 It also follows that [NAME]'s opposition under s 42(b) fails. In my view, the use of the [NAME] [NAME] does not contravene ss 18 or 29 of the ACL.

4. EVIDENTIARY RULINGS 152 During the course of the trial, various objections to evidence were resolved between the parties and I ruled on [NAME] objections which do not require separate reasons. These reasons address objections to evidence which were the subject of more substantive argument, concerning the admissibility of various documents downloaded and printed from the [NAME]. Specifically, these reasons explain my rulings that: (a) paragraphs 42-74 of the affidavit of [NAME] affirmed 5 October 2018, and the exhibits thereto, filed on behalf of [NAME], are inadmissible; (b) paragraphs 4-7, 9-13, 15, 22, 23, 25, 26, 28, 30, 32, 33, 35, 38, 39, 42, 44, 46, 48, 58-67, 69 and 71-76 of the affidavit of [NAME] sworn 21 November 2018, and the exhibits thereto, filed on behalf of [NAME], are inadmissible (save for paragraph 73 that was not read by [NAME]); and (c) paragraphs 6-7 of the affidavit of [NAME[NAME] sworn 20 November 2018 and the exhibit thereto, filed on behalf of [NAME], are admissible.

4.1 Affidavit of [NAME] 153 [NAME] objected to paragraphs 42 to 74 to the affidavit of [NAME] affirmed 5 October 2018 and the exhibits referred to in those paragraphs. On 7 March 2019, I ruled that those paragraphs and exhibits were inadmissible. The reasons for that ruling follow. 154 Paragraphs 42 to 74 of Ms [NAME] affidavit concerned [NAME], [NAME] and [NAME] searches undertaken by Ms [NAME] and the results of those searches which were exhibited to the affidavit. With one exception, the evidence was sought to be adduced by [NAME] to prove that [NAME] bearing an [NAME] mark had been offered for sale or sold in Australia. The one exception was a [NAME] [NAME] which depicted an alloy wheel bearing one of the [NAME] [NAME]. 155 As discussed earlier in these reasons, [NAME] adduced evidence that, since 2011, it had licensed a third party, [NAME], to manufacture and distribute [NAME] bearing an [NAME] mark. A copy of the 2013 licence agreement between [NAME] and [NAME] was adduced in evidence. Evidence was also given that [NAME] distributed those [NAME] throughout the United States, including through a distributor called "[NAME]". 156 Ms [NAME] online searches fell into a number of categories and it is convenient to consider each of these categories separately. 157 The first category of evidence comprised recent [NAME] searches performed by Ms [NAME] (during September or October 2018) of certain websites that appeared to offer for sale [NAME] and tyres for automobiles as at the date of the searches. By way of illustration of the first category, one such website had the URL https://www.[NAME] Ms [NAME] conducted searches of the website in September 2018. She exhibited screenshots of the home [NAME], which represented that [NAME] was a supplier of automotive parts. Ms [NAME] clicked on the "About Us" link and exhibited the results. The [NAME] states that the business has been supplying various types of automotive parts since 1979. Ms [NAME] used a search function on the home [NAME] and typed in the words "[NAME]" and exhibited screenshots of the results. Ms [NAME] then clicked on one of the results labelled [NAME] and exhibited screenshots of that [NAME]. The [NAME] appeared to offer for sale [NAME] produced by [NAME] which was said to be an American wheel manufacturer. One of the [NAME] displayed an [NAME] mark. Ms [NAME] also conducted a "WhoIs" search at the website https://whois.auda.org.au for the domain name "[NAME].com.au" and exhibited a screenshot of the result of that search which represented that the registrant of the domain name was [COMPANY] and the contact email was [EMAIL]. [NAME] then conducted an ASIC search of [COMPANY] and exhibited the results which recorded [NAME] as the sole director and secretary. 158 The key attribute of this category of evidence is that it concerned offers for the sale of [NAME] after the priority date. It was not evidence of offers that were current at or before the priority date. Although the "About Us" [NAME] contained statements to the effect the business had been operating since 1979, there was no evidence about the period during which the website had been functioning, and no evidence that [NAME] bearing an [NAME] mark had been offered for sale on the website before the priority date. 159 The evidence that fell within this first category comprised the following paragraphs of Ms [NAME] affidavit and the accompanying exhibits: 42-44 (the [NAME] website), 45-47 and 50 (the [NAME] website), 56-60 (the [NAME] website), 61-63 and 65 (the [NAME] website), 67-68 (the Hubcap, Tire and Wheel website) and 70-71 (the [NAME] website). The products offered for sale on the [NAME] website comprised motorbikes and related articles some of which bore an [NAME] mark, as opposed to [NAME], but the common feature of the evidence is that it concerned offers for sale after the priority date. 160 The second category of evidence comprised recent [NAME] searches performed by Ms [NAME] (during September or October 2018) using the website https://web.archive.org/ (known as the "[NAME]") and searches for historical versions of webpages using the functionality of the "archive" website. By way of illustration, Ms [NAME] visited the "archive" website and searched for the URL https://www.[NAME] She exhibited a screenshot of the results of that search. The screenshot depicted a webpage titled "[NAME]" with an adjacent statement: "Explore more than 338 billion webpages saved over time". Beneath that statement, the words "Saved 38 times between April 9, 2013 and August 12, 2018" appear, representing that the "archive website" had purportedly captured a record of the [NAME] website on 38 occasions during that period. The webpage also depicted a calendar function which enabled each of the 38 dates to be searched to retrieve the captured record of the website. Ms [NAME] clicked on the 23 December 2014 link and exhibited a screenshot of the webpage that appeared as a result of that search. From the webpage, [NAME] appeared to be a business that sold [NAME]. [NAME] things, the webpage depicted a number of brands of [NAME] or tyres under a heading "Brands", including [NAME]'s [NAME] device mark. Ms [NAME] then clicked on the date 28 March 2015 within the timeline and exhibited a screenshot of the webpage that appeared as a result of that search. The webpage displayed offers of [NAME], at least one of which bore an [NAME] mark. Ms [NAME] then clicked on the date 14 January 2014 within the timeline and exhibited a screenshot of the webpage that appeared as a result of that search. She then clicked an [NAME] link on that [NAME] and exhibited a screenshot of the webpage that appeared as a result of that search. The resulting [NAME] was dated 6 June 2014, rather than 14 January 2014, indicating that the link on the [NAME] webpage that had purportedly been archived did not operate in its original manner. The [NAME] [NAME] displayed offers of [NAME], a number of which bore an [NAME] mark. 161 The key attribute of this category of evidence is the use of the "[NAME]" to generate purported historical versions of webpages before the priority date. The evidence that fell within this second category comprised the following paragraphs of Ms [NAME] affidavit and the accompanying exhibits: paragraphs 48-49 (the [NAME] website), 64 and 69 (the [NAME] website) and 69 (the [NAME] website). 162 The third category of evidence comprised recent [NAME] searches performed by Ms [NAME] (during September or October 2018) using the [NAME] or [NAME] links attached to particular websites and searching for current and historical "posts" from those [NAME] or [NAME] accounts. By way of illustration, Ms [NAME] visited the "[NAME]" website in September 2018, clicked on the "[NAME]" link and exhibited a screenshot of the landing [NAME] for the [NAME] [NAME]. That [NAME] appeared to depict recent posts. Ms [NAME] then clicked on the "posts" function on the [NAME] and, using a search function on the [NAME], typed the word "[NAME]" and exhibited a screenshot of the results. [NAME] results, this produced a [NAME] purportedly depicting a number of posts dated 28 January 2015. The first post contained a picture of a vehicle with a caption "[NAME]'s PX Ranger rolling out 17x9 [NAME] 535BM's. Cheers for the pic [NAME]." I infer that the post was made by [NAME], but the picture had been sent to [NAME] by "[NAME]". A subsequent post contained a picture of a vehicle showing a wheel bearing an [NAME] mark with a caption stating "[NAME] FJ & a set of [NAME] rims…Very nice". Again, I infer that the post was made by [NAME], but I am unable to determine who took the photo. [NAME] would wish me to infer that these posts are evidence of the fact that [NAME] sold [NAME] to "[NAME]" and "[NAME]" bearing an [NAME] mark prior to the date of the posts, being 28 January 2015. 163 The key attribute of this category of evidence is the use of the [NAME] and [NAME] platforms to search within particular accounts and generate historical posts to those accounts. The evidence that fell within this third category comprised the following paragraphs of Ms [NAME] affidavit and the accompanying exhibits: 51-52 (the [NAME] [NAME] account) and 54 (the [NAME] [NAME] account). 164 The fourth category of evidence comprised recent [NAME] searches performed by Ms [NAME] (during October 2018) on the website https://[NAME] Ms [NAME] first conducted searches of the website http://www.monzaimports.com.au/. The website indicated that it sold a range of products, including products in a category called "Moto Division". Ms [NAME] followed links to that section of the website and downloaded current (dated 2018) catalogues titled "[NAME]" (which offered for sale motorcycle helmets bearing an [NAME] mark, amongst others), "[NAME]" (which offered for sale motorcycle clothing bearing an [NAME] mark, amongst others) and "[NAME]" (which offered for sale motorcycle parts, clothing and accessories bearing an [NAME] mark, amongst others). I address the admissibility of the current catalogues in connection with the first category of evidence. When searching the [NAME] website, Ms [NAME] observed that the product catalogues displayed on the website were displayed using an embedded reader called "[NAME]". Ms [NAME] then visited that website, typed [NAME] into the search function and exhibited screenshots of the results. Following further links produced what purported to be historical versions of various catalogues, including the [NAME] and [NAME] catalogues, in the period before the priority date. The key attribute of this category of evidence is the use of the "[NAME]" website to generate what purported to be historic versions of product catalogues. 165 [NAME] objected to those paragraphs of Ms [NAME] affidavit on three grounds: (a) the evidence was irrelevant under s 56 of the Evidence Act 1995 (Cth) (Evidence Act); (b) the evidence was inadmissible hearsay under s 59 of the Evidence Act; and (c) the evidence ought be excluded under s 135 of the Evidence Act on the basis that the probative value was substantially outweighed by the danger that the evidence might be unfairly prejudicial to [NAME]. 166 It is convenient to address each ground of objection separately.

Relevance 167 As to relevance, [NAME] submitted that the relevant date at which the grounds of opposition must be established is the priority date, 21 January 2015. It followed that a webpage of a business that offered [NAME] bearing an [NAME] mark as at 18 September 2018 is irrelevant to the statutory question, which required consideration of the position as at the priority date. As noted earlier, [NAME] also accepted that the grounds of opposition must be established as at the priority date. 168 I accept [NAME]'s submission that webpages that purported to offer [NAME] bearing an [NAME] mark as at 18 September 2018 are irrelevant to the statutory question. For that reason, the paragraphs of Ms [NAME] affidavit in the first category referred to above, and the accompanying exhibits, are inadmissible on the ground of relevance.

Hearsay 169 All of the website pages sought to be adduced in evidence are hearsay. They are evidence of previous representations and are adduced to prove the facts asserted by the representations. In broad terms, the previous representations were that various products, particularly [NAME], bearing an [NAME] mark were offered for sale on various websites in Australia. 170 [NAME] submitted that the webpages came within the business records exception in s 69 of the Evidence Act. Relevantly, to satisfy the business records exception, three matters must be shown: (a) first, that the document either is or forms part of the records belonging to or kept by [NAME], body or organisation in the course of, or for the purposes of, a business, or at any time was or formed part of such a record; (b) second, that the document contains a previous representation made or recorded in the document in the course of, or for the purposes of, the business; and (c) third, the relevant representation in the document was made by [NAME] who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such [NAME]. 171 The admissibility of website pages under the business records exception has been considered in a number of cases. 172 In [NAME] v [NAME] (No 27) [2003] NSWSC 1046, [NAME[NAME] ruled inadmissible extracts from the websites of two businesses which described the quality control procedures undertaken by each business. His Honour referred to his earlier ruling in [NAME] v [NAME] (No 15) [2003] NSWSC 939 in which his Honour had observed that not every publication by a business is a "record of the business" within the meaning of s 69. In the earlier ruling (at [5] and [6]), his Honour concluded that: The records of the business are the documents (or [NAME] means of holding information) by which activities of the business are recorded. Business activities so recorded would typically include business operations so recorded, internal communications and communications between the business and third parties. On the [NAME] hand, where it is a function of a business to publish books, newspapers, magazines, journals (including specialised professional, trade or [NAME] journals), such publications are not records of the business. They are the products of the business, not a record of its business activities. Similarly, publications kept by a business such as journals or manuals (say, for reference purposes) are not records of the business. 173 In [NAME] v [NAME] (No 27), Sperling J concluded that a flyer, media advertisement or a website publication, extolling the virtues of the business, is not a record of a business within the meaning of s 69. 174 The reasoning of Sperling J in [NAME] v [NAME] (No 15) and [NAME] v [NAME] (No 27) has been cited on many occasions, including in [COMPANY] v [NAME] (Australia) [COMPANY] (2008) 75 IPR 505 at [133] per [NAME]; [COMPANY] v [COMPANY] (No 1) [2011] NSWSC 455 at [70]-[71] per Davies J; [NAME] v [COMPANY] (No 4) [2012] NSWSC 216 at [22]-[26] per [NAME[NAME]; and [NAME] v [COMPANY] (No 5) (2012) 301 ALR 352 per [NAME] ([NAME] v [COMPANY] (No 5)). 175 [NAME[NAME]'s rulings were, of course, directed to the specific types of documents in issue before him. In [NAME] v Chief Commissioner of State [NAME] [2011] NSWSC 349, [NAME] cautioned against applying [NAME[NAME]'s reasoning as a rule of law in place of the statutory test, stating (at [41]-[44]): I do not understand [NAME[NAME] to have spoken categorically about what constituted a business record. In addition to the documents by which activities of a business are recorded I would include as business records documents relevant to the conduct of the business. The introductory words of s 69(1)(a)(i) of the Evidence Act that the provision applies to a document that is, or forms part of, the records belonging to or kept in the course of, or for the purposes of a business, encompasses more than documents recording the activities of a business. For example, a valuation of the assets of a business for insurance purposes or for the purpose of determining appropriate depreciation rates does not record the activities of a business but it is kept in the course of, or for the purposes of, the business. It is preferable, in my view, not to seek to define a business record but to be guided to a decision whether or not a document is a business record by the terms of the statutory provision itself. 176 Similarly, in [NAME] v [NAME] [COMPANY] [2018] VSC 3, Forrest J observed (at [463]): …the distinction between "product" and "records" is problematic. It does not appear in the text of s 69(1). The language used in the provision is broad and appears to encompass any documents kept by [NAME], body or organisation "in the course of, or for the purposes of" a business. To exclude documents that are part of the records of an organisation, however generated and for whatever purpose under this provision (as opposed to a subsequent discretionary exclusion under s 135) involves, I think, an artificial distinction not covered by the wording of the section. 177 As recognised by [NAME[NAME] in both [NAME] v [COMPANY] (No 5) and [COMPANY] v [COMPANY] (No. 10) (2018) 134 IPR 99 at [37] ([NAME]), there is no invariable rule that pages of a website are not business records within the meaning of s 69. Ultimately, whether the results of an [NAME] search can be shown to be a business record within the meaning of s 69 depends upon the content of the webpage and what is able to be established (whether directly or by inference) about the content of the [NAME]. Business records include invoices (as per [COMPANY] (in liq) v [NAME] (No 2) (2015) 235 FCR 382 at [11]-[16] per [NAME]) and contractual terms and conditions and customer communications (as per [NAME] v Commonwealth Bank of Australia [2008] FCA 59 at [13], [15] per [NAME]). 178 In my view, documents by which a business offers a product for sale, which typically includes a description of the product and the price and possibly [NAME] terms and conditions of the offer, would constitute business records within the meaning of s 69. That would be so whether the documents are made available to potential customers via the company's website or in the company's retail store. However, documents which are merely promotional or descriptive of the activities of a company, such as might be found on an "About Us" link on a website, are unlikely to constitute business records, consistently with the conclusions reached in [NAME] v [NAME] (No 27) and [NAME] v [NAME] (No 5). 179 Historic webpages generated through the use of the "[NAME]" have been ruled inadmissible in a number of cases: see for example [NAME] v [COMPANY] (2008) 77 IPR 69 at [126] per [NAME]; [COMPANY] v [COMPANY] (No 2) [2017] FCA 474 at [23] per [NAME]; and [NAME] at [36]-[37] per [NAME[NAME]. As observed by [NAME[NAME] in [NAME], the [NAME] website conveys an implicit representation that the website has copied third party webpages into its archive and recorded the date on which it did so and that the webpage which appears in its archive is the webpage which existed on that date. As such, documents produced using the [NAME] are necessarily hearsay (indeed, second hand hearsay in the sense that the archived webpage is itself hearsay). In each of the cases referred to above, the business records exception in s 69 was not satisfied as there was no admissible evidence to establish that the archived webpages formed part of the records of the business conducted by the [NAME] or that the webpages were created by [NAME] who might be expected to have had personal knowledge of the facts which had been recorded. 180 Turning to the evidence in dispute, it is unnecessary to consider in detail the first category of evidence because I have ruled that it is irrelevant. I observe, though, that if the webpages were relevant, I would have admitted the evidence in so far as it consisted of webpages offering products for sale and where the existence and identity of the business conducting the website was proved. 181 The second category of evidence comprised archived webpages generated by the use of the [NAME]. No evidence has been adduced concerning the business of the [NAME]. In the absence of such evidence, and consistently with the decisions referred to earlier, I am not satisfied that the archived webpages are business records. I therefore rule them inadmissible. 182 The third category of evidence consists of historical "posts" on [NAME] and [NAME] accounts maintained by a business. This category raises difficult questions. It is necessary to consider each of the three elements of the definition of business records. 183 The first element is whether the [NAME] and [NAME] posts sought to be adduced in evidence are or form part of the records belonging to or kept by an entity in the course of, or for the purposes of a business, or at any time were or formed part of such a record. In a business context, the posts are communications by the business concerned to persons who follow the [NAME] or [NAME] account of the business. I infer that such [NAME] would be past or potential future customers of the business. Taking the [NAME] posts as an example (described above), the posts are not a direct record of a business activity; drawing necessary inferences in favour of [NAME], the posts are a form of promotion, publicising the sale of "[NAME]" [NAME]. While email communications of a business have been found to be business records (see [NAME] v [COMPANY] (No 1) (2012) 207 FCR 448 at [58] per [NAME[NAME] and the cases there cited), the [NAME] posts are of a different nature in that they are not communications to specific persons but are published more broadly to "[NAME]". Nevertheless, applying the statutory language, it seems to me that the [NAME] posts are documents that form part of the records belonging to or kept by [NAME] in the course of or for the purposes of its business. The posts are a record of the communications made by the business to its [NAME], and are analogous to emails that might be sent to a customer distribution list. 184 The second element is whether the [NAME] and [NAME] posts contain a previous representation made or recorded in the document in the course of, or for the purposes of, the business. For the reasons already given, I am prepared to find that this second element is also satisfied. I infer that the posts are communications by the business concerned directed to potential customers of the business. However, a more difficult question is to determine what is being communicated by the post, which is relevant to the third element of the definition of business records. [NAME] asks me to infer that the pictures posted to the [NAME] or [NAME] accounts display vehicles with [NAME] bearing an [NAME] mark sold by [NAME] prior to the date of the posts. Certainly that inference is open. But without further evidence, [NAME] inferences are also open. It may be that the pictures uploaded to the [NAME] and [NAME] accounts are pictures taken by "[NAME]" of the businesses concerned, showing products of general interest to the business and [NAME] [NAME], but which were not purchased from the business concerned. 185 The third element is whether the previous representation in the document was made by [NAME] who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such [NAME]. There are a number of difficulties in satisfying this element in the present case. The first difficulty is identifying what the representation is. The second difficulty, associated with the first, is identifying the source of, and the background to, the photos and information in the posts. As noted above, I infer from the posts that the photos of vehicles that are depicted originated from a third person ([NAME] and [NAME] respectively). That fact does not exclude the application of s 69 (Vitali v Stachnik [2001] NSWSC 303 at [8] per Barrett J). However, given the nature of the [NAME] and [NAME] posts, there is no basis for the Court to make any clear finding as to what is represented by the post and whether the representation was made by [NAME] who had or might reasonably be supposed to have had personal knowledge of the asserted fact, or was made on the basis of information directly or indirectly supplied by such [NAME]. 186 Accordingly, I am not satisfied that the [NAME] and [NAME] posts are business records and I rule them inadmissible. 187 The fourth category of evidence comprises product catalogues which contained descriptions of various motorcycle related products apparently being offered for sale, some of which bore an [NAME] mark. In my view, such documents are capable of constituting business records. However, the documents were retrieved from a website called [NAME] and there is no evidence concerning that website or any business conducted by it. There is no evidentiary basis to find that the catalogues are business records of [NAME]. Nor is there any evidence as to the identity or operation of the businesses that published the catalogues, nor is there any evidence as to whether, where, when and how any such catalogues were made available to members of the public in Australia. For that reason, I am not satisfied that the catalogues are business records and I rule them inadmissible.

General discretion to exclude evidence 188 [NAME] also submitted that each of the categories of website evidence ought to be excluded under s 135 of the Evidence Act. [NAME] submitted that the probative value of the evidence was slight for the reason that there was no evidence as to the nature of the businesses that operated the websites, how many customers they might have, or how many people visited their website in a given period. [NAME] also submitted that admitting the evidence would be unfairly prejudicial to it because it has no opportunity to test the evidence. 189 I accept the submission that the probative value of the contested evidence is slight. At its highest, it presents a snapshot of instances in which [NAME] or motorcycle related products have been offered for sale and possibly sold in Australia bearing an [NAME] mark. There is no basis on which to assess the scale of any such offers or sales. For that reason, the evidence has very little probative value to an assessment of the reputation of the [NAME] [NAME] in Australia. 190 On the [NAME] hand, I am not generally persuaded that the admission of the evidence might be unfairly prejudicial to [NAME]. This is a civil proceeding where the onus rests on [NAME]. The evidence will be given such weight as it deserves, recognising its shortcomings. Further, it is not entirely the case that [NAME] could not test the evidence. The evidence was adduced to prove that particular businesses had offered for sale and possibly sold various products in Australia bearing an [NAME] mark. If it chose, [NAME] could have subpoenaed the various businesses referred to in the evidence to obtain records of any sales of products bearing an [NAME] mark. Understandably, [NAME] has chosen not to do that. But I do not consider that [NAME] was unable to test the evidence. As such, if the evidence had otherwise been admissible, I would not have exercised the discretion to exclude it under s 135.

4.2 Affidavit of [NAME] 191 [NAME] objected to the whole of the affidavit of [NAME] sworn 21 November 2018, [NAME] than paragraphs 1 and 50 to 57, on the grounds of relevance and hearsay. Alternatively, [NAME] asked me to exclude the evidence under s 135. [NAME] did not read paragraph 73. On 15 April 2019, I ruled inadmissible the following paragraphs and the exhibits thereto: 4-7, 9-13, 15, 22, 23, 25, 26, 28, 30, 32, 33, 35, 38, 39, 42, 44, 46, 48, 58-67, 69 and 71-76. These are my reasons for that ruling. 192 Mr [NAME] gave evidence of [NAME] searches he conducted on 23 October 2018 and exhibited screenshots of the results of his searches to his affidavit. Mr [NAME] visited the homepage of IP Australia, clicked the "Search trade [NAME]" link and typed the word "[NAME]" into the search function, producing 816 results. He then filtered the results to "trade mark words" and "registered" status, which reduced the number of results to 246, and exhibited the list of results. Mr [NAME] then clicked on the links to several of the listed trade [NAME], and exhibited a printout of the trade mark details from IP Australia. The details included a depiction of the trade mark, the priority date and the registration date and the goods or services in respect of which the mark was registered. 193 In addition, in respect of some of the listed trade [NAME], Mr [NAME] conducted [NAME] searches of the name of the owner of the mark and/or the mark using Google. By way of illustration, Mr [NAME] conducted a search of "[NAME]", locating a website https://monsterproducts.com.au/, purportedly the Australian website for [NAME] which described the entity as the largest headphone manufacturer in the world. Mr [NAME] then clicked on the "Our Story" tab and exhibited a screenshot of the results, including a [NAME] that promoted its collaboration with several brands including the [NAME] [NAME]. Mr [NAME] exhibited screenshots of several [NAME] pages of the website that contained promotional descriptions of the business under the "[NAME]" link. Mr [NAME] repeated this exercise in respect of several [NAME] "[NAME]" [NAME]. In respect of some of the websites visited, Mr [NAME] exhibited screenshots of products offered for sale by the business via the website. However, none of the webpages, and therefore none of the offers, were dated before the priority date. 194 [NAME] submitted that the evidence was adduced to prove the extent to which the word "[NAME]" had been used by traders in Australia as [NAME] before the priority date. It was submitted that such evidence was relevant to the nature and extent of [NAME]'s reputation in the word "[NAME]" in the marketplace. To illustrate, it was said that if the evidence showed that there had been extensive use of the word "[NAME]" as a mark in respect of alloy [NAME], and if [NAME] had not used its [NAME] in that product category, it would be open to the Court to conclude that a notional [NAME] would not associate the use of the word in that category with [NAME]. [NAME] acknowledged that the evidence obtained from the IP Australia website, showing registration of [NAME], did not directly prove use or extent of use of the [NAME]. However, it submitted that many of the [NAME] were registered before the priority date, in some cases 20 or 30 years earlier, and the Court could draw an inference that at least some of the [NAME] had been used before the priority date. [NAME] also submitted that the evidence demonstrated that a large number of traders had adopted the name "[NAME]" with the intention of using the name as [NAME]. [NAME] also acknowledged that none of the website pages of the businesses that used the "[NAME]" [NAME] predated the priority date. However, it submitted that the Court could infer that the [NAME] had been used before the priority date because the registration of the [NAME] had been in place well before the priority date. 195 The evidence can be divided into two categories. The first category is the result of searches conducted on the IP Australia website of the trade mark registrations. The objection is that the evidence is irrelevant because registration does not prove use or extent of use before the priority date. I will allow the evidence. I accept that its probative value is [COMPANY]. Nevertheless, I infer that many of the traders who have registered a "[NAME]" mark have used the mark at least to some extent, and it follows that there are a significant number of traders who have adopted the "[NAME]" mark. Although I have not excluded the evidence on the ground of relevance, the evidence has not been material to my overall conclusions in this case. 196 The second category of evidence is the result of Google searches of the name of the owner of the mark and/or the mark. The objection is that the evidence is irrelevant (because it shows use of the [NAME] after the priority date) and is hearsay. I uphold those objections and will not admit that evidence. First, many of the webpages are promotional and descriptive of the businesses (downloaded from the 'About Us' sections of websites). For the reasons explained earlier, such material is inadmissible hearsay. Second, in so far as the webpages are in the nature of offers for products, those offers show use of the [NAME] after the priority date and I cannot infer from the evidence that the relevant company used the [NAME] in a similar manner before the priority date. The evidence is irrelevant for that reason. That evidence is contained in the paragraphs of the affidavit I have ruled inadmissible, and the exhibits thereto.

4.3 Affidavit of [NAME] 197 [NAME] objected to paragraphs 6 and 7 of the Affidavit of [NAME] sworn 20 November 2018 and exhibit ZZ-3 on the ground of hearsay. On 15 April 2019, I ruled that evidence to be admissible. These are my reasons for that ruling. 198 Ms [NAME] is the National [NAME] Manager for [NAME]. Ms [NAME] gave evidence that she had collated from [NAME]' computer system data concerning the number of visitors to the [NAME] website and to pages of that website which featured "[NAME]" [NAME]. That data was recorded in exhibit ZZ-3. In further oral evidence in chief, Ms [NAME] stated that exhibit ZZ-3 was a document printed out from Google Analytics, which was used by [NAME] for measuring traffic to the [NAME] website. Ms [NAME] stated that [NAME] had a Google Analytics account which gave access to the information presented in the document. She also stated that [NAME] used the data obtained from Google Analytics to make [NAME] decisions as to what would be displayed on the [NAME] website. [NAME] used the data for ongoing [NAME] campaigns. 199 Exhibit ZZ-3 is hearsay. It is evidence of previous representations (data relating to visits to the [NAME] website) adduced to prove the facts asserted by the representations. [NAME] submitted that the document did not come within the business records exception in s 69 of the Evidence Act, in part because it had been prepared in contemplation of litigation within the meaning of s 69(3). 200 Data obtained from Google Analytics by businesses operating websites has been admitted into evidence in a number of cases: [COMPANY] v [COMPANY] (2010) 186 FCR 519 at [56]-[57]; [COMPANY] v [NAME] (2013) 103 IPR 1 at [115]; [NAME] v [NAME] [COMPANY] (2014) 324 ALR 166 at [133]-[134] ([NAME]); [NAME] v [NAME] [COMPANY] [2015] NSWSC 986 at [7]; [COMPANY] v [COMPANY] (2017) 127 IPR 1 at [57]-[60], [66]-[68], and [111]; and [NAME] at [62] and [77]. However, in most of those cases, there was no challenge to admissibility. 201 In [NAME], an objection was taken to the admissibility of a document recording Google Analytics data. [NAME[NAME] concluded that the document was admissible as a business record of the entity that operated the website. Her Honour concluded that the document formed part of the records belonging to the entity for the purposes of its business. Her Honour also found that the document was produced by a computer (using Google Analytics). In accordance with s 146 of the Evidence Act, her Honour considered that it was reasonably open to find that the process used is one that, if properly used, produces the outcome of identifying the number of website [NAME] views on the dates in question. 202 With respect, I agree with the conclusions expressed by [NAME[NAME]. Although no direct evidence was adduced in relation to the Google Analytics service, I infer from the evidence of Ms [NAME] and exhibit ZZ-3 that Google Analytics is a service supplied by Google to individual businesses which tracks and records traffic to the business' website. Ms [NAME] gave evidence that [NAME] [NAME] has an account with Google Analytics and is able to retrieve such data through the account. Ms [NAME] also gave evidence that [NAME] uses the data in the course of and for the purposes of the business at [NAME]. 203 I am satisfied that exhibit ZZ-3 satisfies the requirements of the business records exception. Although the data is apparently stored by Google Analytics, and only comes into the possession of [NAME] when it is accessed through the [NAME] account, it is data kept by Google Analytics for [NAME] and is accessible by [NAME] whenever it chooses to access it. The data therefore forms part of the records belonging to [NAME] in the course of and for the purposes of its business. The document contains a previous representation made or recorded in the course of and for the purposes of the business of [NAME] and, given the nature of the Google Analytics service, I infer that the relevant representations in the document were made on the basis of information indirectly supplied by [NAME] who had or might reasonably be supposed to have had personal knowledge of the underlying facts. 204 In my view, s 69(3) is not applicable to exhibit ZZ-3. I infer from the evidence of Ms [NAME] and exhibit ZZ-3 that [NAME] [NAME]' account with Google Analytics pre-dated this proceeding. The underlying data was recorded and stored by Google Analytics for [NAME] in an ongoing capacity and the underlying data (which is the relevant representation in the document) was not prepared or obtained for the purpose of conducting, or for or in contemplation of or in connection with, a proceeding. 205 Accordingly, in my view paragraphs 6 and 7 of, and exhibit ZZ-3 to, the Affidavit of Ms [NAME] are admissible.

5.

CONCLUSION AND ORDERS 206 In conclusion, I uphold [NAME]'s appeal against the decision of the delegate of the [NAME], and I reject each of the grounds of opposition raised by [NAME]. The orders I will make are to allow the appeal, set aside the decision of the delegate and to order that [NAME]'s trade mark applications proceed to be registered. I will also order that [NAME] pays [NAME]'s costs of this proceeding and the proceeding before the [NAME]. I certify that the preceding two hundred and six (206) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice O'Bryan.

Associate: Dated: 21 June 2019