1300 Repair Pty Ltd v 1300 Phonewords Australia Pty Ltd - [2009] ATMO 58

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by 1300 Repair Pty Ltd to registration of trade mark application 1092781(35) - 1800 REPAIR DEVICE - filed in the name of 1300 Phonewords Australia Pty Ltd.

Delegate:

Terry Williams

Representation:

Opponent: Florence McFarlane, trade marks attorney

Applicant: Dr Ricketson of counsel, instructed by WMB lawyers

Decision:

2009 ATMO 58

S 52 opposition: S 58 - trade marks not substantially identical, permission for further evidence refused; S 59 succeeds in part; allowability of amendment. Registration proceeding.

Background

1300 Phonewords Australia Pty Ltd (“the applicant”) applied on 3 January 2006 to register the following trade mark

and three similar trade marks. The four trade marks differ only in the addition of a letter S as a suffix to the word REPAIR and/or the rendering, in blue and red instead of black and grey, of the rectangular panels shown above.

These four trade marks were all applied for in a single application, number 1092781, as a series of trade marks under s 51 of the Trade Marks Act 1995 (“the Act”). The differences between the four trade marks in question will not affect the outcome. Where I refer, below, to “the applicant’s trade mark” I will do so in the singular for convenience.
The application has been examined and accepted for possible registration. The services in respect of which the application was accepted are, “sales of telecommunications equipment; business administration, business management, marketing of freephone and local rate telephone numbers”.
Registration of the applicant’s trade mark has been opposed by 1300 Repair Pty Ltd (“the opponent”). Since then, both sides have used the process under part 5 of the Trade Marks Regulations to file, and to serve copies of, evidence in support of, and in answer to, the opposition. Ultimately, s 55 of the Act requires the Registrar of Trade Marks to decide the opposition after giving the parties an opportunity to be heard. I conducted the necessary hearing under delegation from the registrar. What follows is my decision on both the substantive matter and on a procedural question that arose shortly before the hearing.
At that hearing, the opponent was represented by Ms Florence McFarlane, patent attorney of EKM Patent. Dr. Sam Ricketson of counsel, instructed by WMB Lawyers, represented the applicant. Representatives of the instructing solicitors also attended.

Issues and reasons

In order to succinctly explain my conclusions, I will first note that the opponent relies on grounds of opposition arising under sections 58, 59 and 43 of the Act. I will deal with these in that order.

Section 58

This provision provides a ground of opposition based on ownership of a trade mark. At the heart of ownership is the issue of substantial identity. If an opponent is to succeed, it must be able to point to use of a trade mark that is the same mark as the applied-for trade mark or, at least, to usage of one that is substantially identical. This was stressed by Gummow J in Carnival Cruise Lines Inc v Sitmar Cruise Ltd (1994) 31 IPR 375. After referring to The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27; (1949) 78 CLR 601, Gummow J said:
When the decision is understood in this way, it does not supply any general authority for the proposition that in the case of disputed claims to proprietorship under the present statute anything less than substantial identity between the two marks will suffice. The phrase "substantially identical" as it appears in s. 62 (which is concerned with infringement) was discussed by Windeyer J in The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1961] HCA 75; (1963) 109 CLR 407 at 414. It requires a total impression of similarity to emerge from a comparison between the two marks. In a real sense a claim to proprietorship of the one extends to the other. But to go beyond this is, in my view, not possible.
Coexisting with that issue, to which I will return shortly, the opponent has filed an application seeking permission, under reg 5.15, to serve and rely on further evidence. That evidence consists of detailed examples of the use of the trade mark on which the opponent relies.
At hearing, Dr. Ricketson cautioned me that the applicant strongly distrusts certain aspects of the opponent’s further evidence. He therefore asked me to note that, in the event that I granted the opponent permission to bring in the further evidence, his client would need to be given an opportunity to expose that evidence to informed scrutiny by bringing in its own answering evidence.
Dr Ricketson also made a telling point about the further evidence. He argued, quite correctly, that because of the grounds on which the opponent is relying, this evidence could be relevant only if the trade mark to which it refers was substantially identical to the applicant’s trade mark. Clearly, if that is not the case then the further evidence cannot be relevant and I should refuse permission to introduce it. Having had the benefit of the submissions of both sides on this question, my decision is that the trade marks of the applicant and opponent are not substantially identical. Therefore I am not satisfied, for the purposes of reg 5.15, that the grant of permission is appropriate, and I refuse the opponent the permission it seeks.
Having refused permission to the opponent to bring in its further evidence, I will now fully explain my conclusion on the issue of substantial identity, which will in turn decide the section 58 ground.
The opponent relies on use of a trade mark that, at its broadest, might be the plain words and numerals 1300 REPAIR. Ms McFarlane relied on the specifics of the opponent’s trade mark as shown in the opponent’s own pending application for registration, 1114639. I will refer to this as “the opponent’s device trade mark”.

However, to avoid any doubt, I will also consider the position in relation to the opponent’s trade mark rendered in plain text, 1300 REPAIR.

At the hearing, Ms McFarlane argued that both trade marks share the word REPAIR, which, although “not overly distinctive in itself”, as she put it, was an essential element of both marks. She noted that the trade marks contain the numbers 1800 and 1300, which are visually very close. These numerals are also familiar as the beginnings of “special” phone numbers, in the sense that they indicate, as Ms McFarlane conceded, the level of charges that will be incurred by a caller. However, she argued that it is unlikely the majority of the Australian customers would know that one number indicates the call will be charge-free whereas the other does not - or, if they do, which one is which. Therefore, she argued that when the word REPAIR is combined with either of those numbers, the resulting combinations appear substantially identical.
I take her further point that, with regard to the applicant’s trade mark and the opponent’s device trade mark, the respective elements 1300 REPAIR and 1800 REPAIR are shown in a rectangular frame, with the devices of various tools. It is true that, as she conceded, the tools in the applicant’s trade mark are a spanner and a hexagonal nut, and those represented in the opponent’s device trade mark are a spanner, screw driver, hammer and pliers. None the less she submitted that a total impression of similarity emerges from a comparison of each trade mark as a whole and that these trade marks are likely to be remembered by the public as “REPAIR + phone word with tool devices”. I agree with her that very little turns on the tool devices.
At the hearing, Ms McFarlane expressly referred to the report of the examiner of trade marks in relation to the opponent’s own application, 1114639. The examiner, using a turn of phrase that is common in official reports, said that “Your trade mark is identical to or closely resembles the following earlier filed trade mark and is for similar goods or services”. The examiner then nominated the details of the presently-opposed application.
I can give the language used in the examiner’s report no weight at all. The words in question appear to be a plain English, but inaccurate, approximation of the terms of s 44. That provision relevantly deals with trade marks that are either substantially identical or deceptively similar. As I said at the hearing, it is hard to imagine that the trade marks in question are not deceptively similar. However, the text produced by boilerplate word processor codes and set out in the examiner’s report sheds no light at all on the specifics proposed by the law I have already quoted. I set out, now, the relevant portion of Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407. At para 12 of his judgment, Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court's own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
Ms McFarlane submitted that the similarities between the essential elements of the trade marks clearly outweigh the dissimilarities. She noted that, as Hearing Officer Thompson said in Estar Online Trading Pty Ltd v Estar Ltd (2001) 53 IPR 583: “The fact that trade marks are not exactly identical does not necessarily mean that they are not substantially identical”. She went on to note three further decisions by delegates in other matters.
In Fresh Intellectual Properties Inc v Goldman (2006) 69 IPR 337, Hearing Officer O’Brien found that a total impression of similarity emerged from a comparison of the trade marks below:

Applicant’s trade mark Opponent’s trade mark

Ms O’Brien, applying the principle of “total impression of similarity” from Carnival Cruise, supra, found that the competing trade marks were substantially identical and said:
The essential feature of both is a flower device. In the applicant’s trade mark the device consists of a flower emerging from a rectangular shaped box. Only half of the flower is visible. In the opponent’s trade mark there are four flowers (plus stems) atop the box. Nonetheless, these differences do not detract from the total impression of similarity.
Ms McFarlane also relied on the decision of Hearing Officer McDonagh in New Tel Communications Pty Ltd v New Tel Limited (formerly Transom International Limited) [2002] ATMO 48. The trade marks he compared are as follows.

Applicant’s trade mark Opponent’s trade mark

The Hearing Officer assessed them as follows:

(The applicant’s trade mark) is a composite word and device mark. The mark comprises the word "New", in a sans serif font, followed by the word "Tel", having a grotesque "e", superimposed on a dark rectangle, which has a contrasting curved device. Below this are the words "new communications now". This device is visually different to the opponent's globe mark comprising the words "New Tel" in a bold font with serifs above the word "communications", all surmounted on a globe with meridians. I note that the evidence tendered in these proceedings shows the NEW TEL word element of the globe mark clearly dominating the remaining elements. As I have mentioned earlier, the globe device is simply a commonly used background element. The competing device marks, too, shared the essential feature of the words NEW TEL. Additionally however they both also share a similar sub-title of "communications".
This sub-title is essentially descriptive in nature and can be discounted for comparison purposes. Overall, the differences in the device elements of the competing marks are merely colourable. While the contested marks are neither literally identical nor visually identical, it is clear from the dicta of Gummow J in Carnival Cruises, supra, at 391, that this is not required. What is required is a total impression of similarity to emerge from a comparison between the contested marks and, in a real sense, for a claim to proprietorship of one mark to extend to the other(s). I am satisfied that the contested marks satisfy these criteria. In my opinion each of the marks could properly be characterised as "the NEW TEL mark.

A comprehensive overview of earlier case law can be found in Effem Foods Pty Ltd [1999] ATMO 80 where Hearing Officer Thompson considered sections of relevant Acts and cases where substantial identity has been found. These include:
Kendall Co v Mulsyn Paint & Chemicals (1963) 109 CLR (POLYKIN and POLYKEN); Seven Up Company v O.T. Ltd (1947) 75 CLR 203 ('7UP in a circle' and '8UP in a square'); Pelican Trade Mark [1978] RPC 424 (PELICAN and PELIKAN); Pelikan International Handelsgesellschaft Mbh & Co Kg v Lifinia Pty Ltd (1994) 30 IPR 615 (PELICAN and PELIKAN); Shachihata Industrial Co Ltd v Magic Marker Corp (1984) 3 IPR 519 (LIQUID CRAYON and LIQUID CRAYONS); Re Applications By Stratco Metal Pty Ltd (1984) 4 IPR 48 (CLICKFAST and KLICK-FAST); Michael Sharwoood & Partners Pty Ltd And Others v Fuddruckers Inc (1989) 15 IPR 188 (FUDRUKKERS and FUDDRUCKERS); Re Application By Jacuzzi Inc (1990) 17 IPR 414 (AERO and AEROSPA - on spa equipment); Re Application By Fastrack Racing Pty Ltd (1994) 29 IPR 193 (FASTRACK and FAST TRACK); Sportscraft Consolidated Pty Ltd v General Sportcraft Co Ltd (1993) 27 IPR 74 (SPORTCRAFT and SPORTSCRAFT); Alexander v Tait-Jamison (1993) 28 IPR 103 (ECO-FARM and ECO-FARMS); Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495 (FUNSHIP and FUN SHIP); Warner-Lambert Co v Harel (1995) 32 IPR (DERMOFILM and DERMAFILM); and Bull SA v Micro Controls Ltd (1990) 19 IPR 299 (MICROL and MICRAL). In these decisions, the trade marks involved have been found to be 'substantially the same mark' to quote D.R. Shanahan in Australian Law of Trade Marks and Passing Off, or, as Justice Gummow referred to it, 'substantially identical' in Carnival Cruise Lines, supra.
To contrast the above decisions, the following trade marks have been found to be neither 'substantially the same mark' or 'substantially identical': "Otrivin" Trade Mark [1967] RPC 613, (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (T/A Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Photo Disc Inc v Gibson And Another (1998) 42 IPR 473 ('PHOTO-DISK' - with descriptive phrase and arabesques and PHOTODISC), although in the latter decision, the delegate observed that if the trade marks had been PHOTO-DISK and PHOTODISC, solus, she would have found that the trade marks were substantially identical.
It is difficult to be categorical about the point at which deceptive similarity shades into substantial identity. However, having looked at the matter as carefully as I can in terms of Sitmar and Shell v Esso, both supra, it seems to me that the key to deciding the issue here is the numerals 1300 and 1800. Both trade marks will, because of those elements, be seen as essentially being phonewords. Both numerals, as part of those phonewords, are prominent and clearly different elements in the competing trade marks. The public may well be confused about what either of the numerals might mean in terms of charging costs, as Ms McFarlane argued. Even so, their visual difference is obvious when compared side-by-side. Allowing for the uncertainty to which Ms McFarlane referred, an appropriate side-by-side comparison might therefore come down to terms something like, “Ah, yes; now does 1300 mean I don’t have to pay - or is that what 1800 means?” In a side-by-side comparison of the trade marks as wholes it is thus quite clear that the numerals are to be assessed on the basis that the difference between them is significant.
The finding that the numerals are significant is of great weight when it is also noted that the only other word element in the marks being considered is the word REPAIR. Ms McFarlane conceded, quite correctly, that this was “not overly distinctive”. It is either a common element in the opponent’s and applicant’s trade marks or, at most, is rendered in the singular in the former and in the plural in two versions of the applicant’s trade mark. Consequently, even though I give no weight at all to the minor differences to the surrounding device elements, the trade marks of which the numerals form part are not substantially identical.
Accordingly, I find that the s 58 ground is not established.

Section 59

This provides:
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
It is clear from the evidence, and common ground between Ms McFarlane and Dr. Ricketson, that the applicant intends to use the trade mark in respect of what the evidence describes as “collecting inquiries for repair work (or leads) via the telephone number 1800 REPAIR/1800 REPAIRS and referring these inquiries by SMS to repairers making a charge for this service to subscribers, ie the repair services who make use of the referral services”. Dr. Ricketson argued that this was clearly a service falling within services for “business administration” or “business management”, namely a service for administering or managing a repair referral system through the use of an appropriate phoneword.
At the hearing, I put it to Dr. Ricketson that the applicant’s intention to use this particular trade mark in relation to any of the remaining services was, from the evidence, lacking. I proposed an amendment and adjourned the hearing to allow both the applicant and opponent to consider their positions while I myself decided if I would grant permission for the opponent to bring in the further evidence. Both parties are now satisfied that, after a further exchange of written submissions, they have fully articulated their cases. The applicant has confirmed that it does not object to amending the application as I had proposed. I will refer to this as “the proposed amendment”. The proposed amendment would specify "the collection of inquiries for repair work via a central telephone number and referring those enquiries to the relevant repairer" as the only services to be covered by the registration.
Given that I have refused permission to the opponent to bring in its further evidence, I can now proceed to decide the matter. Ms McFarlane made a strong submission, with which I will deal shortly, that the proposed amendment was not allowable under s 65.
Unless Ms McFarlane is right in this argument, the proposed amendment would allow registration to proceed since, for reasons that will become apparent, the opponent’s remaining grounds of opposition will also not succeed.
Ms McFarlane noted that the applicant offers its services to repair businesses such as plumbers, handymen and so forth. The applicant’s customers are thus the repairers, not the general public who might seek to do business with the repair businesses. The service offered by the applicant to the repair businesses is what Ms McFarlane described as “the provision of potential clients”. Repairers willing to be part of the applicant’s pool of repairers pay the applicant a fee. In return, the applicant undertakes to use SMS messaging to refer repair enquiries, made by telephone calls which the applicant would receive from the public, to those repairers.

The provision of business management or business administration advice to the repair businesses was not, Ms McFarlane put it, a part of the deal. She argued strongly that the services set out in the proposed amendment “could not possibly be categorized as business management or administration services”.
For his part, Dr Ricketson argued that there is some guidance in the introductory parts of the classification index. For an application filed in January 2006, as was the applicant’s, the guiding principles of classification are set out in the International (N.I.C.E) Classification of Goods and Services, 8^th edition. Dr Ricketson made reference to the current version, the 9^th edition, on the WIPO website at http:// but nothing turns on this for present purposes. The explanatory note to class 35 includes the following general description of the kinds of services the class is intended to cover:
Class 35 includes mainly services rendered by persons or organizations principally with the object of
1. help in the working or management of a commercial undertaking, or
2. help in the management of the business affairs or commercial functions of an industrial or commercial enterprise,
as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services.
He noted some class 35 items specified in the text:
• A0043 Answering (telephone-) for unavailable subscribers.
• A0079 Assistance (business management).
• BOOS7 Business inquiries.
• B0060 Business management assistance.
As Ms McFarlane pointed out in her written submissions in response, not all services in class 35 would be within the descriptions “business management” or “business administration” services simply because they are destined to be “of help to customers in the management of their business”. I agree with her that class 35 contains services, such as advertising services, retail services, shop window dressing and the rental of vending machines, which do not form part of the management or administration of a business. They are no doubt “of help” to businesses, but not in terms of management or administration. The mere fact that the services set out in the proposed amendment fall into class 35 therefore does not indicate that those services necessarily fall within the definition of “business management” or “business administration services”.
To bring this matter to an end, I think that Ms McFarlane over-simplifies the issue as follows:
Whilst the applicant’s services may be “of help” to the repairers who have subscribed to the applicant’s services, the help provided is simply to grow the repairers’ business by providing them with customers. The applicant has no involvement in the management of the repair businesses. Its role stops at providing customers to the latter.
We reiterate that the view that “the collection of enquiries for repair work via a central telephone number and referring those enquiries to the relevant repairers” is different from “business management and business administration services”. (This view) is shared at least by the Examiner who examined the opponent’s trade mark application 1114639 and by her supervisor. Although Mr. Williams is of course not bound by the Examiner’s decision in the above matter, we submit that in consideration of the Examiner’s experience in dealing with classification issues, this decision is nevertheless worth considering and should not simply be brushed aside.
I will explain here why Ms McFarlane referred to application 1114639. That application, to which I have already referred, was filed by the opponent. It has been accepted for registration on the basis that amendment of the services to which it relates overcame an objection under s 44 based on the presently-opposed application. 1114639 now refers only to services specified as follows:
Business referral services, namely collecting repair enquiries from customers via a central phone number and referring these enquiries to service providers such as trades people and repairers
The terms of s 44, which I will not quote in full, are such that the examiner who accepted 1114639 for registration must necessarily be of the view that either the trade marks of the applicant and the opponent are not even deceptively similar, let alone substantially identical or the services now set out in 1114639 are neither the same nor of the same description as those originally specified in the presently-opposed application. Given what was said in the earlier report with regard to the comparison of trade marks, I infer that the latter is the more likely view of the examiner.
The file for 1114639 does not show that the examiner has had the benefit of a detailed submission as to the scope of the services originally specified in the presently-opposed application. Having had the assistance of Ms McFarlane’s arguments, I am unable to read the services originally set out in 1092781, viz, “sales of telecommunications equipment; business administration, business management, marketing of freephone and local rate telephone numbers” as narrowly as she urges me to.
Ms McFarlane noted the decision of Deputy Registrar Hardie in United Artists Corporation v Trevor Clarke Holdings Pty Ltd (1998) 41 IPR 425. Ms Hardie found that "motor vehicles retail services" were different from class 35 services which comprised "business management and consulting”:
The business services are provided not by merchants, but by advertising and management consultants. These services do not result in the provision of goods for sale, but in the generation of publicity and in the generation of management advice. Retail service, on the other hand, is the putting up of goods for sale - in this case those goods are motor vehicles. The use or purpose of publicity and management services is for the improvement of business. The use and purpose of retail services is to provide a market for goods. The channels of supply are different. Publicity and management services are provided by consultants and organisations with the expertise and infrastructure necessary to supply advertising and management advice commensurate with modern commercial demands. A business that provides motor vehicle retail services will not provide services of this kind - and certainly, any persons wishing to avail themselves of advertising and management services would not be expected to seek them in a car sales yard.
Whatever case might be made in respect of business management services vis a vis car yards, I am satisfied that the services covered by the proposed amendment are within the scope of “business administration”.
Ms McFarlane urged a narrow interpretation. As she put it:
The definition of "business management services" given by Ms Hardie in the above decision is:
Nature: The nature of these services is to generate management advice.
Use/purpose: Their use or purpose is to improve the business.
Trade Channels: The channels through which they are provided are consultants and organizations with the expertise and infrastructure necessary to supply management advice.
“Business administration services” directly complement business management. Their nature is to generate advice in areas such as accounting, human resources, tax, insurance, etc, to improve the administration of a business.
Organisations that provide business management and business administration services are typically management consulting firms such as Deloitte and Ernst Young, accounting firms, recruiting agencies, IT firms, business administration software providers, etc.
Ms McFarlane has argued that the only services covered by the term “business administration” would have some role, at a semi-professional level, in assisting or improving the administration of the business. However, not all business administration services can be so categorised. The words should be given their ordinary English meaning and this does not necessarily take its colour or scope from that of “business management services”. The current online version of the Macquarie Dictionary defines administration to be “the management or direction of any office or employment”. Business administration services would therefore include a range of relatively mundane administrative services that are directly of assistance in any aspect of the administration of the office of a business. Those services would include, specifically, office administration services of the sort that, for a fee, provide busy tradespeople or others with a share in the services of a receptionist or an office administrator who answers telephones and relays messages when the phone subscriber is unavailable. Such services, classification item A0038 in the 8^th edition, or see the comparable 9^th edition item to which Dr Ricketson referred, are not new and the services set out in the proposed amendment are directly analogous, albeit based on SMS messaging.
Ms McFarlane is correct to say that the applicant does not conduct repairs or enhance the repair operations that the repairer undertakes. The applicant does, however, trade in administrative services that allow its customers, the repairers, to conduct their repair services with greater efficiency. The applicant’s service allows repairers to concentrate on their repair work by freeing them of the administrative chore of answering phones at inconvenient times. This is done, obviously, in conjunction with a trade mark incorporating a commercially attractive phoneword, and presumably this phoneword generates customers for the repairer. That is no bad thing in itself and gives rise to Ms McFarlane’s point that “the service they provide is the provision of potential clients”. But this stands beside the fact that, in operating as a telephone intermediary, the applicant provides a business administration service to the repairers.
Accordingly, the proposed amendment is allowable. That being so, the s 59 ground is not established in respect of the services to which the proposed amendment refers.

Section 43

Ms McFarlane relied on, but did not press, a ground of opposition to the effect that the trade mark was likely to deceive or cause confusion because of some inherent connotation in the trade mark. As she argued it, “The word REPAIR in the opposed trade mark trade is descriptive of repair services. However, repair services are not specified in the statement of services of the opposed application”. This is true, obviously, but s 43 would be triggered only if I were to be satisfied that, as a consequence, the ordinary and fair use of the applicant’s trade mark would be deceptive or confusing in relation to the services for which the trade mark is proposed to be registered,. In fairness, this ground of opposition has been eclipsed by the proposed amendment. Be that as it may, the ground of opposition has not been established.

Conclusion and costs

With regard to the services set out in the proposed amendment I have found that no ground of opposition has been established. Therefore, after one month from the date of this decision the services set out in the presently-opposed application will be amended so as to read:
The collection of inquiries for repair work via a central telephone number and referring those enquiries to the relevant repairer.
The application may thereupon proceed to registration. If the Registrar has been served with a notice of appeal before that time, I direct that neither amendment nor registration shall occur until either the appeal is discontinued or a court so orders.
As to costs, the opponent has clearly brought about a quite substantial reduction in the scope of the application. I therefore award costs against the applicant.

Terry Williams

Hearing Officer

29 July 2009