Aldi Stores v Kaldi Coffee Pty Ltd

[2008] ATMO 29

TRADE MARKS ACT 1995

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

Re:Opposition by ALDI Stores to registration of trade mark application 1051726 KALDI & Coffee Bean Device in Classes 30, 35 and 43 in the name of Kaldi Coffee Pty Ltd.

Delegate:

Iain Thompson

Representation:

20008 ATMO 29

Opponent: Angela Dahlke, Registered Patent & Trade Marks Attorney, of Cullen & Co, Patent & Trade Mark Attorneys

Applicant: Garen Holopikian, Registered Patent & Trade Marks Attorney, of Allens Arthur Robinson, Patent & Trade Marks Attorneys

Decision:

Section 52 opposition – sections 44, 42 and 60 – trade marks dissimilar – reputation of the opponent’s trade mark for ‘coffee and similar goods’ not established by evidence; opposition not established.

Background

1. Trade mark application 1051726 KALDI & Coffee Bean Device was filed on 20 April 2005 (‘the relevant date’) by Kaldi Coffee Pty Ltd, ACN 113 732 451, of Unit 16, 25 Carrington Street, Queanbeyan 2620, New South Wales (‘the applicant’) and its acceptance for possible registration was advertised on 18 August 2005.  Current details of the application are set out below:

   Application Number:  1051726

   Priority Date:       20 April 2005

   Goods & Services:  Class 30: Coffee, tea, sugar

   Class 35: Retail of roast coffee, tea, sugar

   Class 43: Espresso bars

   Trade Mark:      

2. ALDI Stores, a Limited Partnership, of 1 Sargents Road, Minchinbury 2770, New South Wales (‘the opponent’), lodged Notice of Opposition (‘the Notice’) to registration on 17 October 2005.

3. On 9 February 2006 the opponent served and filed evidence in support of the opposition, being Statutory Declaration by Shane Carter sworn 30 January 2006, with Exhibits SC-1 to SC-10 (‘the Carter Declaration’).  The applicant did not file any evidence in answer.

4. The matter was heard before me in Canberra as a delegate of the Registrar of Trade Marks on 22 January 2008.  Garen Holopikian of Allens Arthur Robinson, Patent & Trade Marks Attorneys of Melbourne, appeared for the applicant and Angela Dahlke of Cullen & Co, Patent & Trade Mark Attorneys of Brisbane, appeared for the opponent.

   Grounds of Opposition

5. The Notice lists 15 grounds, but Ms Dahlke indicated at the hearing that the opponent was only pressing those grounds dependant upon sections 44, 42 (b) and 60 of the Trade Marks Act 1995 (‘the Act’). These grounds correspond to grounds (i) for section 44, (j) and (k) for subparagraph 42 (b) and (i) and (n) for section 60 listed in the Notice and are discussed below. I mention that while both parties agreed the opponent bears the onus of establishing a relevant opposition ground, there was a question raised as to the standard of proof required. In this regard I proceed on the basis that the opponent need only establish an opposition ground on the balance of probabilities rather than establish the opposed trade mark should clearly not be registered, in line with the approach taken by Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599; (2006) 237 ALR 787 referred to in Ms Dahlke’s submissions and having regard to the extent to which the opponent has established its opposition.[1]

   •Discussion

   [1] Section 55 of the Act.

   Section 44 of the Act

   Ground (i):         The opposed trade mark should not be registered in relation to all or any of the goods and services having regard to the provisions of section 44 of the Trade Marks Act 1995.

6. So much of section 44 as is relevant to this matter is reproduced below:

   44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:  For deceptively similar see section 10.

   Note 2:  For similar goods see subsection 14(1).
   Note 3:  For priority date see section 12.

   (2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

   (a) it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1: For deceptively similar see section 10.

   Note 2:  For similar services see subsection 14(2).
   Note 3:  For priority date see section 12.

7. In support of this ground Ms Dahlke indicated the opponent relied upon the following three registrations, (the most recent of which was a pending application as at the relevant date), all of which have priority dates earlier than the opposed application:

Number	Priority Date	Trade Mark	Classes
783718	25 January 1999	ALDI	1,3,5,6,7,11,16,21,28,29,30,31,32,33
817676	16 December 1999	ALDI	35, 39, 42
1050027	11 April 2005	ALDI	35, 38, 40, 41, 42

1. It was not in dispute that these three registrations taken as a whole cover, inter alia, goods and services the same as, similar to, or closely related to, the goods and services covered by the opposed application.

2. Further, Ms Dahlke conceded the opposed KALDI & Coffee Beans Device trade mark was not substantially identical to the ALDI trade mark subject of its three relevant registrations. Accordingly, to succeed under the section 44 ground the opponent here needs to establish on the balance of probabilities that the opposed trade mark is deceptively similar to the ALDI trade mark.

3. Section 10 of the Act defines the expression “deceptively similar”. For this ground to be established, the opposed trade mark must “so nearly resemble the earlier trade mark that it is likely to deceive or cause confusion”.

4. In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 French J said of deceptive similarity:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

5. It was common ground between the parties that in order to assess the question of deceptive similarity the trade marks should not be compared side by side.[2]  Rather, they are to be considered by their look and sound, with due allowance for imperfect recollection.  Bearing this in mind I am not persuaded there is a real tangible danger of deception or confusion occurring if the KALDI and Coffee Beans Device trade mark is used in a fair manner for the goods and services covered by the opposed application.  While, as Ms Dahlke argued, the word element KALDI in the opposed trade mark shares obvious similarities with the word ALDI when these two words are compared letter by letter and syllable by syllable, I accept Mr Holopikian’s submissions that the addition of the initial letter K changes the word quite significantly from both a visual and an aural point of view and when considered apart from each other are quite unlikely to be confused.  The difference between the words ALDI and KALDI occurs at the initial letter and as observed in London Lubricant Ltd's Appn (1925) 42 RPC 264 by Sargent L.J., "the first syllable of a word is, as a rule, far the most important for the purpose of distinction." I agree with Mr Holopikian’s submission that most people would not think of KALDI as ALDI with the letter ‘K’ in front of it, but would rather see the word KALDI as something quite separate and distinct. Nor, even taking into account the effect of careless pronunciation and speech, do I believe the trade marks are likely to be misheard such as to be mistaken one for the other.

   [2] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 (at 415)

6. Further, the trade marks must, of course, be compared as wholes.  The opposed trade mark contains in addition to the word element KALDI a device element made up of what appear to be four coffee beans arranged in a configuration referred to by the applicant as “hoof prints” and to me also bears a resemblance to the arrangement of the stars which form the constellation of the Southern Cross.  The device element is positioned such that one of the coffee beans (or hoof prints) forms a ‘dot’ above the letter ‘I’ in the word KALDI and in this sense the device forms an integral part of the trade mark as a whole.  Ms Dahlke argued the significance of this coffee bean device should be discounted given most of the goods and services covered by the opposed application are related to coffee.  While the degree of distinctiveness of the device element might be debated, the fact remains that it is a further factor serving to differentiate the opposed trade mark from the opponent’s ALDI trade mark from a visual point of view.

7. To summarise, I do not find the opposed trade mark deceptively similar to the opponent’s ALDI trade mark and the section 44 ground is accordingly not established.

   Section 42 of the Act

   Ground (j):The opposed trade mark should not be registered in relation to all or any of the goods and services having regard to the provisions of section 42 of the Trade Marks Act 1995.

   Ground (k):Use by the applicant of the opposed trade mark on all or any of the goods and services will be likely to lead to passing-off and/or be likely to mislead, deceive or cause confusion having regard to the use and registration of the same or similar trade mark by the opponent and use of the opposed trade mark by the applicant in relation to all or some of the goods and services would be contrary to the provisions of sections 52 and 53 of the Trade Practices Act 1974.

8. Section 42 of the Act provides:

   42  Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)the trade mark contains or consists of scandalous matter; or

   (b)its use would be contrary to law.

9. Subject to an initial evidentiary onus on the opponent in terms of section 55, subparagraph 42(b) places an obligation on the Registrar of Trade Marks to consider whether the use of a trade mark would be contrary to law when this ground is pursued at an opposition to registration: Advantage-Rent-A- Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 per Madgwick J at paragraphs 26 and 28:

   However, in my opinion the fact that the existence of any contrariety to law is to be exercised in some circumstances by an administrative body and, in other circumstances, by a judicial body does not mean that the phrase "if its use would be contrary to law" should have an ambulatory meaning, depending upon what kind of tribunal is to apply it. Nor can any reticence on the part of an administrative decision-maker to express an opinion on a matter of law be encouraged. The idea that "contrary to law" in the context of judicial proceedings means contrary to all laws, whilst in the context of proceedings before the Registrar it means contrary to laws which are easy for the Registrar to determine or which are "clear cut", is not sustainable. As a matter of practice, delegates of the Registrar have in some cases determined that a trade mark submitted for registration is contrary to law as a result of its being in breach of other legislation: see Re Application by Slaney (1985) 6 IPR 307 at 309 where a trade mark was found to be in breach of the Health Legislation Amendment Act 1983 (Cth) and Re Application by Athol Thomas Kelly (1987) 8 IPR 667 at 672 where it was found that the trade mark would infringe the Advance Australia Logo Act 1984 (Cth). I see no reason why some legislation should be able to be relied on before the Registrar to establish contrariety to law and other legislation such as the Copyright Act, albeit more complex, should not. Further, it is well-settled that a power granted to the Registrar and to a court can be at once administrative and judicial depending on who was exercising the power. The High Court so held in R v Quinn; Ex parte Consolidated Foods Corporation [1977] HCA 62; (1977) 138 CLR 1, of a power to remove a trade mark from the Register.

   [….]

   I acknowledge the claim made by counsel for the Registrar that such an approach requires the Registrar to look at questions of law outside his or her expertise and that this can be difficult and may place a large and onerous responsibility upon the Registrar. However, the Registrar has the comfort that the criterion is that the use "would" not "could" be contrary to law. Further, there is no reason why the Registrar could not seek legal advice before forming his/her opinion. It should also be noted that what is required is that the Registrar form a view as to whether the use of a trade mark would be contrary to law. Such opinion does not have a similar effect to say, a judicial conclusion of law as to breach of copyright in copyright proceedings; the effect is limited to the refusal of registration. In any case, an appeal de novo lies from the Registrar's decision to this Court where any error of the Registrar may be corrected.

10. In Equity Access Pty Ltd v Westpac Banking Corporation (1990) ATPR 40-994, the Court said:

    While there remain many areas of difficulty in the application of s.52 of the Act to the facts of a decided case there have been established a number of propositions, relevant to the determination of the present case, which are no longer in dispute:

    1. For conduct to be misleading or deceptive the conduct must convey in all the circumstances of the case a misrepresentation: Taco Bell at 202. In the present case the misrepresentation on the part of the respondents is said to be that the financial product advertised and marketed by each of them is the product of the applicant or that there is some business relationship between the applicant and each of the respondents or that the applicant has endorsed the respective product of the respondents.

    2. There will however be no contravention of s.52(1) of the Act unless error or misconception results from the conduct of the corporation and not from other circumstances for which the corporation is not responsible: Puxu per Gibbs CJ at p 6 and per Mason J at p 15, Global Sportsman Pty Ltd v. Mirror Newspapers Ltd (1984) 55 ALR 25, at p 34.

    3. Conduct will be likely to mislead or deceive if there is a "real or not remote chance or possibility" of misleading or deception regardless of whether it is less or more than 50%: Global Sportsman at p 34. The question of whether conduct is misleading or deceptive or likely to mislead or deceive is an objective question which the Court must determine for itself. Hence evidence that persons in the relevant class have been misled will, although admissible, not be determinative. In some cases however such evidence will be very persuasive: Puxu per Gibbs CJ at pp 198-9.

    4. Conduct of a corporation causing mere confusion or uncertainty in the minds of the public in the sense that they may be caused to wonder whether two products may have come from the same source is not necessarily coextensive with misleading or deceptive conduct: Puxu at p 100; Bridge Stock Brokers v. Bridges (1984) 57 ALR 401 at p 413 per Lockhart J. Since actual deception need not be shown the Court must consider whether a reasonably significant number of potential purchasers would be likely to be misled or deceived: Weitmann v. Katies Ltd (1977) 29 FLR 336, 343. The test in passing off cases is usually expressed as being whether a "substantial number of persons likely to become purchasers ... are liable to be deceived by the defendant's use of the name. On the other hand it is not necessary to show that all, or substantially all, persons in the market associate the name with the plaintiff's goods, if this can be shown of a substantial proportion of persons who are probably purchasers of the goods of the kind in question." (per Wilberforce J, as he then was, in Norman Kark Publications Ltd v. Odhams Press Ltd (1962) RPC 163 at 168 and see Saville Perfumery v. June Perfect Ltd (1941) 58 RPC 147 at 175-6, 10th Cantanae Pty Ltd v. Shoshana Pty Ltd (1987) 79 ALR 299 at 315 per Gummow J).

    5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant's business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person's business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.

    6. Section 52 is not confined to conduct which is intended to mislead or deceive: Puxu per Gibbs CJ at p 197 and a corporation which acts honestly and reasonably may none the less engage in conduct that is likely to mislead or deceive: Yorke v. Lucas (1985) 61 ALR 307 at p 309.

    In Taco Bell (supra) at pp 202-3 Deane and Fitzgerald JJ set out four guidelines for the application of s.52 to cases such as the present where the misrepresentation is not express. Their Honours said:

    "First, it is necessary to identify the relevant section (or sections) of the public (which may be the public at large) by reference to whom the question of whether conduct is or is likely to be, misleading or deceptive falls to be tested ...

    Second, once the relevant section of the public is established, the matter is to be considered by reference to all who come within it, 'including the astute and the gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations. ...

    Thirdly, evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential. Such evidence does not itself conclusively establish that conduct is misleading or deceptive or likely to mislead or deceive. The Court must determine that question for itself. The test is objective.

    Finally, it is necessary to enquire why proven misconception has arisen: Hornsby Building Information Centre v. Sydney Building Information Centre (18 ALR at 647; 147 CLR at 228). The fundamental importance of this principle is that it is only by this investigation that the evidence of those who are shown to have been led into error can be evaluated and it can be determined whether they are confused because of misleading or deceptive conduct on the part of the respondent."

1. Ms Dahlke’s submissions as regards likely passing off or breach of the Trade Practices Act1974 by the applicant pointed to the opponent’s reputation in trade marks containing or consisting of the word ALDI as shown through its sales and advertising activities documented in the Carter Declaration and in a “brand awareness report” forming Exhibit SC-10 thereto.  She maintained that because of the similarity of the opposed trade mark to the ALDI trade marks consumers would believe the applicant’s goods and services enjoyed some association with the opponent, whether by way of sponsorship, endorsement, approval or license.

2. I have already found the opposed trade mark is not deceptively similar to the ALDI trade mark in terms of section 44 of the Trade Marks Act1995. Mr Holopikian pointed to several decided cases confirming that more is required to establish a likelihood of misleading or deceptive conduct or conduct amounting to passing off than is the case with trade marks likely to deceive or cause confusion under section 44. [3]  As I have found that the use of a trade mark is not, as a minimum, likely to ‘confuse’, it follows logically that the use is not (on a stricter test) likely to mislead or deceive.

   [3] See for example Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 1a IPR 684; Cat Media Pty Ltd v Apex Marketing Group LLC (2004) 63 IPR 207; Rodale Inc v Gardmail Pty Ltd [2006] ATMO 84

3. Further, I am not convinced on the evidence before me that the opponent has a reputation in its trade mark for coffee or related goods and services.  On the house brand of coffee sold by the opponent the word ALDI appears as part of opponent's address and the words "ALDI Stores" also appear on the back label of the coffee products as part of the expression, "Specially packed for ALDI Stores to our stringent quality specifications.  If you are not entirely satisfied with this product, please return it to your nearest ALDI store for a full refund or replacement.”  The placement and small type-face of the word ALDI on the labels is such that it is unlikely that a consumer would associate it specifically with coffee or related goods or that it would, on this basis, develop a reputation in relation to coffee.

4. The opponent has not established its ground under section 42.

   Section 60 of the Act

   Ground (h):       The opposed trade mark is substantially identical with, and/or deceptively similar to, a trade mark that, before the priority date of the application in respect of the goods and services, had acquired a reputation in Australia, and because of the reputation of that other trade mark, the use of the opposed trade mark would be likely to deceive or cause confusion.

   Ground (n):       The opposed trade mark is substantially identical with, and/or deceptively similar to, trade marks the trade marks subject of registrations 783718 (ALDI), 847997 (ALDI SUPERMARKETS YOU’LL BE SURPRISED), 847996 (ALDI SUPERMARKETS YOU’D BE SURPRISED), 849257 (ALDI YOU’LL BE SURPRISED), 849259 (ALDI YOU’D BE SURPRISED), 849260 (ALDI FOOD STORES YOU’LL BE SURPRISED), 849261 (ALDI FOOD STORES YOU’D BE SURPRISED), 817676 (ALDI), 925662 (ALDI) and application 1050027 (ALDI) that, before the priority date of the application in respect of the goods and services of the opposed application or services closely related to the goods and services, had acquired a reputation in Australia, and because of the reputation of the other marks, the use of the opposed trade mark would be likely to deceive or cause confusion.

5. The opposed application was filed before significant amendment to section 60 which came into force on 23 October 2007 and thus the pre-amendment version of the section applies.[4] At that time section 60 read:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)         it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b)         because of the reputation of that other trade mark the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   [4] Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)

6. Here the comparison is between an existing trade mark, or trade marks, which “had acquired a reputation in Australia”, in this case the opponent’s trade marks containing or consisting of the element ALDI listed in ground (n) of the Notice, or as used in relation to the opponent’s goods and services, and the opposed trade mark.  The relevant date for assessing the reputation of the opponent’s trade marks is 20 April 2005.

7. Dealing firstly with the threshold question in paragraph (a) of section 60, I have already found that the opposed trade mark is not deceptively similar to the opponent’s registered ALDI trade mark in terms of sections 44 and 10 of the Act and I consider this finding all the more applicable in the case of the other trade marks listed in ground (n) above. It may be the case that, unlike the position under section 44, I am able to take the use and reputation of the opponent’s trade marks into account when considering deceptive similarity under section 60.[5]  However, in this case there is nothing in the Carter Declaration as to the manner of use of its trade marks or as to the extent of the opponent’s reputation in them which persuades me use of the opposed trade mark as at the relevant date would be likely to deceive or cause confusion amongst a significant number of consumers.

   [5] See for example Pfizer Products Inc v Karam (2006) 70 IPR 599, at paragraph 49.

8. In her submissions Ms Dahlke also cited the Registrar’s decision in Tran v Meldrum and Another (1999) 44 IPR 233. She referred to possible deception or confusion arising from the “bridging over” of the opponent’s reputation in the combination of its ALDI trade mark with the stylised letter ‘A’ in the opponent’s corporate logo reproduced below.

9. The stylised ‘A’ could, she submitted, be mistaken for the letter ‘K’ and when used by the opponent in combination with its ALDI trade mark might be seen by consumers as a stylised version of the word KALDI. Given, inter alia, the manner in which the opponent uses the two trade marks together as shown in the Carter Declaration (that is, with the logo always appearing above the word ALDI rather than preceding it) I do not give this argument much weight. A further difficulty for the opponent is the one that I have referred to in relation to the opposition under section 42 at paragraph 20, above. The device trade mark, above, does not actually appear on the house brand of coffee that the opponent sells and it is accordingly difficult to find on the evidence before me that the trade mark has developed a reputation in relation to coffee as an adjunct to the opponent’s supermarket retail services in general. And, while the word ALDI does appear on the labels, it is in small print in minor matter at the rear of the containers.

10. The opponent has accordingly not established its section 60 ground.

    Decision

11. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note: For limitations see section 6.

12. I have found the opposition has not been established on all grounds pressed at the hearing.  I have accordingly decided the opposed trade mark may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

13. Both parties made a claim for costs.  As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    30 April 2008