All England Lawn Tennis Club (Wimbleton) Limited v Jae Hwan Kim

[1999] ATMO 93

TRADE MARKS ACT 1995

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

RE:Opposition by THE ALL ENGLAND LAWN TENNIS CLUB (WIMBLEDON) LIMITED to the registration of trade mark application number 708344 in the name of JAE HWAN KIM.

Background

On 13 May 1996, Jae Hwan Kim (the applicant) filed the above numbered application in respect of, "Watches, clocks, and other time pieces, and their parts, including wrist watches, pocket watches, alarm clocks, table clocks, electric time pieces, electronic time pieces, automobile time pieces, stop watches, watchdials, watch springs, watch glasses, watch bands, watch chains, and measuring watches" in Class 14, for the composite word and device trade mark, as represented below.

The application was accepted on a first examiner's report. Acceptance was advertised in the Australian Official Journal of Trade Marks of 20 February 1997.

After being allowed an extension of time in which to do so, The All England Lawn Tennis Club (Wimbledon) Limited (the opponent) filed a notice of opposition on 20 August 1997.

The grounds, under the Act, on which opposition was said to be based were specified in terms of s.41, s.42(b), s.43, s.44, s.58, s.59, s.60, s.61(1), s.42(a), s.62(a) and s.62(b).

The evidence in support was filed and served by 20 May 1998. The applicant served no evidence in answer. The opponent presented supporting written submissions to this Office on 5 July 1999. As neither party requested to be heard in the matter it was directed to me, as a delegate of the Registrar, for a decision on the written material held in the Trade Marks Office.

The Evidence

The evidence in support of the notice of opposition consisted of two Statutory Declarations. The first, from John S. Oney (the Oney declaration), was declared on 26 November 1997, with an attachment containing details of the opponent's worldwide trade mark registrations. Mr. Oney is the Vice President and Associate Counsel of International Merchandising Corporation, a company acting as the exclusive worldwide commercial agent of the opponent. The second declaration, dated 17 April 1998, from Michael J Curnow, the Director of Licensing and Merchandising and International Vice President, IMG Licensing - Australia and New Zealand, contained details of the opponent's trade mark registrations and use of the mark, principally by means of exhibits 'MC-1' to 'MC-7' inclusive (the Curnow declaration). IMG Australia is a wholly owned subsidiary of International Merchandising Corporation. These exhibits detailed retail sales of merchandise and profits from ticket sales (MC-1), broadcast details for the 1993-1995 Wimbledon Lawn Tennis Championships (MC-2), details of the gross sales from the telemarketing and retail distribution of the 1996 Wimbledon video collection (MC-3), a video from the 1996 Wimbledon video collection (MC-4), a sample of the 1997 Wimbledon video collection goods (MC-5), the value of sales, turnover and advertising of the 1997 Wimbledon video collection to date (MC-6) and videos of television commercials aired by Channel 9 and Fox Sports Australia (MC-7).

Submissions

The written submissions presented by the opponent indicate the history of the Wimbledon Lawn Tennis Championships from 1877. The submissions set out the claim that the reputation acquired by the opponent since that time is considerable, by reference to various exhibits in the evidence in support. The written submissions also provide argument concerning those opposition grounds under s.44 and s.60 of the Act.

Discussion

As set out above, the notice of opposition made reference to 11 separate grounds under the Act. Only two of these grounds, s.44 and s.60, were directly supported in the written submissions. Of the remaining nine grounds, I believe that those under s.42(a), s.42(b), s.43, s.58, s.59, s.62(a) and s.62(b) require some sort of argued reasoning to explain and develop any evidentiary support before they can be seriously considered. As I have nothing before me to continue any investigation concerning these seven grounds, I find that the opposition is not successful in respect of them. Although the opponent, in relation to opposition under both s.41 and s.61(1), presented no further evidence or submissions, for completeness I intend to make brief comment in order to clarify any doubt that may have existed concerning these issues. The major grounds underpinning this opposition, however, fall under s.44 and s.60.

(a) Section 41 - Trade mark not distinguishing applicant's goods or services

The relevant legislation found at sub-sections (2) and (3) reads:

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of another person.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

The term 'inherently adapted to distinguish' has been discussed by Branson J in Blount Inc v Registrar of Trade Marks 40 IPR 498 (the Oregon case). Her Honour there confirms that the expression is to be understood under s.41(3) of the Act in the same way as under s.26(2) of the Trade Marks Act 1955 with the words at 506:

The notion of a trade mark being inherently adapted to distinguish the designated goods was of primary significance under the 1955 Act. There is no reason to think that the phrase "inherently adapted to distinguish the designated goods from the goods of other persons" appearing in s.41(3) of the Act is not intended to be understood in the light of decisions under the 1955 Act, and comparable United Kingdom legislation which includes references to inherent adaptability.

Justice Branson links the test to be made for 'inherent adaptability to distinguish' with that developed by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (the Michigan case). Justice Kitto sets out this test at 514 as follows:

… the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

For the present composite mark, despite part of the mark being the name of a geographical location, WIMBLEDON being the name of a district of South London, the mark as a whole is capable of distinguishing the applicant's goods from those of other traders. The word WIMBLEDON alone, of course, lacks any inherent capability to distinguish the applicant's goods from those of other traders. However, in this instance, where the word is merely part of a composite mark, other elements in the mark provide the necessary material to establish this quality. The major element, in the present instance, which provides this mark with the 'capability to distinguish' is the tennis racquet device superimposed with the letter W. It is not likely that other traders in goods, such as watches and clocks and their parts, actuated only by proper motives, would require such a device and letter for their trade mark. Nor does the word WIMBLEDON overwhelm the device and letter to render that part of the mark ineffective by comparison. If the present mark proceeds to registration, the applicant obtains no exclusive rights in the use of the word WIMBLEDON by means of such a registration. Unless one trade mark owner could provide evidence that, by its use of the mark, it does distinguish their goods or services from those of other traders, it is clearly a word that should remain available to the general public.

Having found that the mark is 'inherently capable of distinguishing' the applicant's goods, it is not necessary for me to consider the remainder of s.41, as discussed in Blount (supra) by Justice Branson.

This being the case, I find that opposition under the ground of s.41 is not successful.

(b) Paragraph 61(1)(a) - Trade mark containing or consisting of a false geographical indication

Although the opponent, beyond the notice of opposition, did not further develop this ground of opposition, for the sake of completeness I intend to briefly comment on some of the issues involved.

The relevant legislation reads:

61.(1) The registration of a trade mark in respect of particular goods (relevant goods) may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods (designated goods) originating in:

(a) a country, or in a region or locality in a country, other than the country in which the relevant goods originated; …

The Act further provides a definition of the term 'geographical indication' as the 27^th of the 62 definitions listed in s.6. It reads:

Definitions

6. In this Act, unless the contrary intention appears:
….

geographical indication, in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:

(a) originated in that country, region or locality; and
(b) have a quality, reputation or other characteristic attributable to their geographical origin.

The word WIMBLEDON may indicate that the goods of the application originated at that locality to satisfy condition (a) in this definition. However, in order to substantiate the opposition, it is also incumbent upon the opponent to provide material to satisfy condition (b). I have no material before me to show that use of the word WIMBLEDON as part of the trade mark, provides any indication that the goods of the application, being all types of watches and clocks and their parts, have a particular quality, reputation or other characteristic attributable to such an origin. The opponent provided no support that the Wimbledon district of South London has any notable link to the production of watches, clocks or any other horological instruments that would enable the applicant to gain some sort of advantage by either correctly or falsely indicating that the goods originated from WIMBLEDON.

From the above I find that the opposition in relation to this ground, under s.61(1), is not successful.

(c) Section 44 - Identical etc. trade marks

The legislation concerning this ground of opposition, insofar as it is relevant here, reads as follows:

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 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.

To succeed with opposition action under s.44, in the present instance, the opponent would need to show that it had an earlier registration or application for a trade mark, which is either substantially identical or deceptively similar to the applicant's mark, in respect of either similar goods or closely related services to the present application.

(c)(i) Priority date of registration

The opponent sought to rely on two 'families' of registered trade marks in relation to its opposition under s.44. The first of these families is for a series of trade marks for the words THE WIMBLEDON CHAMPIONSHIPS, registered under numbers 338141(25), 338142(28), 446094(16), 446095(18), 446096(24) and 375658(3). The second family is also a series of trade marks as represented below.

These marks are registered under numbers 375659(3), 339153(28), 446097(16), 446098(24), 446099(18) and 477999(25).

The opponent's above registrations pre-date the present application, so that the requirement of s.44(1)(b) is met by all twelve registrations.

(c)(ii) Substantial identity or deceptive similarity of competing marks

A second requirement for the opponent's mark(s) to block the application is that the applicant's mark must be found to be either substantially identical with, or deceptively similar to, one or more of the opponent's marks.

The accepted test for marks to be substantially identical, has been outlined in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd., 109 CLR 407, at page 414, where 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 present application is for the words WIMBLEDON WATCH - CLOCK COMPANY together with a device of a TENNIS RACQUET on which the letter W is superimposed, as depicted on page one of this decision. The opponent's marks are of two types. Firstly, consisting only of the words THE WIMBLEDON CHAMPIONSHIPS, and secondly, the device depicted above of the stylised letter W device.

When placed side by side, the applicant's mark and the first mentioned of the opponent's marks only contain the word WIMBLEDON in common. All other features of the marks being compared differ markedly. As such, I find that the marks are not substantially identical.

A similar side by side placement of the opponent's stylised letter W and the applicant's mark also shows that there is little commonality between them. As was the case in the above comparison, the dissimilarities quite clearly outweigh any similarities. Thus, these marks, I find, are also not substantially identical.

The test for deceptive similarity, however, is somewhat different from that applied for substantial identity of the trade marks. This time, the test revolves around the impression or recall in the mind of a potential purchaser, based on an imperfect recollection of the marks. The marks are not seen side by side. Two citations from decided cases clarify this comparison. The first of these is in the case of Rysta Limited's Application (1943) 60 RPC 87 where Luxmoore LJ held at 108 that:

It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution.

The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.

The other reference involving the test for deceptively similar trade marks, was that outlined in Australian Woollen Mills Ltd v F. S. Walton & Co. Ltd. (1937) 58 CLR 641 at 658, in the judgement of Dixon and McTiernan JJ, as follows.

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

As I mentioned in an earlier, as yet unreported decision (Wilson Sporting Goods Company v Jae Hwan Kim), issued on 9 March 1999, dealing with another opposition matter for this same trade mark, I believe that the general impression left by the applicant's mark on the mind of the potential customer, would be the WIMBLEDON word mark, in conjunction with a device of a TENNIS RACQUET and a letter W. The other words in the mark, namely, WATCH-CLOCK COMPANY would not, I believe, be seen so much as part of the trade mark as a description of the applicant's business interests.

The first of the opponent's marks, for the words THE WIMBLEDON CHAMPIONSHIPS, would, in my opinion, be readily recalled as being a trade mark different from the applicant's mark. Visually these marks are readily differentiable. In the present case, a general recollection that the opponent's trade mark does not contain a device element whereas the applicant's mark does do so, would provide a strong indication of contrast. The device element or lack of it is not the only difference between these marks. The existence of the word CHAMPIONSHIPS, in the opponent's mark, would also provide purchasers with a definite dissimilarity between the marks, both aurally and visually. The only common element, being the word WIMBLEDON, is not sufficient in itself to convince me that prospective purchasers will be deceived or confused into a belief that the marks identify the same trade source.

Thus I find that the family of word marks, THE WIMBLEDON CHAMPIONSHIPS, is not deceptively similar to the present mark.

The other family of marks consisting of the series of marks for the stylised letter W bears very little similarity at all with the present mark applied for. I cannot envisage any situation, either visual or aural, where one mark could be confused with the other. As such, I also find that these marks are not deceptively similar.

Because I have found that all twelve trade marks registered in the name of the opponent are neither substantially identical with, nor deceptively similar to, the applicant's trade mark, then it must follow that opposition in terms of s.44 is not successful. I am not required to consider the nexus of the goods involved because even if the goods were identical, the opposition could not succeed for marks found to be neither substantially identical with, nor deceptively similar to, the present mark.

(d) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

The remaining ground argued by the opponent falls under s.60 of the Act.

Section 60 of the Act reads:

60. 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.

This section of the Act begins with a statement concerning the trade mark application. It says that the registration of such an application may be opposed. A ground for such opposition may be that the mark applied for is either substantially identical with, or deceptively similar to, another trade mark. However, as one element for such a ground to be valid, it would be required that before the priority date for the first-mentioned trade mark (the application referred to at the opening of s.60, made in respect of particular goods or services) that the possible 'blocking mark' would need to have acquired a reputation in Australia.

The goods or services of the possible 'blocking trade mark' are not directly mentioned in s.60(a). They could be any goods or services to satisfy that paragraph. However, in order for opposition to be successful under this section, s.60(b) must also be triggered. The requirement involved here is that use of the applicant's mark would produce deception or confusion in the face of the reputation of the opponent's mark. Clearly, assuming a set level of reputation for the opponent's trade mark, then the more closely associated are the applicant's and opponent's goods or services then the more readily will deception or confusion occur. This consideration is part of the test to be applied under s.60, concerning the goods or services involved not the more stringent test of the necessity for similarity of goods or services required under s.44.

The opponent has argued that the purpose of s.60 is to protect the owner's reputation in a mark whether or not it is registered. I am in agreement with this statement. In order for s.60 to operate in the opponent's favour, then, one condition that is incumbent upon the opponent is to demonstrate a sizeable reputation, in Australia as at the date of application, in a trade mark that is either substantially identical with, or deceptively similar to, the present mark.

In terms of opposition under s.60, the opponent claims use of the common law trade mark WIMBLEDON. The Oney declaration, submitted as part of the opponent's evidence, documents use of the word by means of 59 separate registrations on trade mark registers in Argentina, Benelux, Brazil, Canada, Chile, China, Colombia, Denmark, France, Indonesia, Ireland, Italy, Japan, Monaco, Norway, South Africa, Spain, Sweden, Taiwan, United States of America, Uruguay and Venezuela. The Curnow declaration outlines some financial details concerning use of WIMBLEDON trade marks worldwide and television broadcast details in Australia. Exhibit MC-2 to the Curnow declaration estimates the Australian television audience for the 1994 Wimbledon Championship as being some 5 800 000 households. Comment in the written submissions is made to the effect that there is no reason to suppose that the size of this audience has been diminished in years since that time. In addition, eight videotapes - some displaying television advertising and others being tapes available for purchase by the general public - were submitted. These tapes are all available in Australia.

The tapes submitted in the evidence demonstrate the use of several different trade marks by the opponent. These include WIMBLEDON VIDEO COLLECTION, WIMBLEDON COLLECTION, WIMBLEDON CLASSIC MATCHES, WIMBLEDON - THE LIGHTER SIDE, THE WIMBLEDON CHAMPIONSHIPS and WIMBLEDON - CLASSIC RALLIES. Some of these contain minor device elements such as triangles, ovals and other shapes providing a border. Generally, however, the words listed above provide the significant trade mark elements. The opponent's registered trade marks also feature on these tapes, as do some other marks not registered in Australia, such as that containing a device of two crossed tennis racquets.

When all of this evidence is taken together, against the background of the interest that the Australian public has in things sporting, I believe that this material does provide a substantial reputation in the word WIMBLEDON, as a trade mark, by the opponent prior to the application date of the present application of 13 May 1996. Despite the currency of the word WIMBLEDON as a geographic identifier of a district of South London, I believe that the evidence provides support for the contention, that in the minds of the Australian public the word is more readily associated with the opponent's tennis championships than with the geographic location. This reputation of the opponent, from the evidence presented, is in respect of the organising of an annual tennis tournament and in marketing, not only of the event, but also of a variety of memento and souvenir goods. The videotapes mentioned above provide one obvious example.

Having decided that the opponent does hold an impressive reputation in the word WIMBLEDON as a trade mark, I must now determine whether this mark is either substantially identical with, or deceptively similar to, the trade mark application within the context of the goods and/or services of interest for both the applicant and the opponent. It is clear that the applicant's area of interest involves trade in goods in class 14, principally all types of watches and clocks and their parts. The opponent's business involves organising the annual Wimbledon Lawn Tennis Championships, arranging advertising and broadcasting of the event, marketing of a wide variety of goods to further advertise or expose the event and, given the size of the operation, some peripheral business activities that are of little consequence here. The goods for which the opponent has registrations in Australia include clothing (all goods in class 25), games (all goods in class 28), all types of printed matter and publications (all goods in class 16), leather, imitation leather and travel goods (all goods in class 18), textile goods (all goods in class 24) and cosmetics and perfumes (all goods in class 3). I believe that the goods claimed in such registrations also provide information concerning the opponent's business interests.

It is my opinion that, in recent times, in order for a sporting club or organisation to financially survive it has become virtually mandatory for such a party to aggressively market goods that the general public will link to that club or organisation. The purchaser may desire some sort of memento of a significant event involving that party or, perhaps, simply may desire to support that party financially by purchasing the goods. Whatever the reason, it is often possible to purchase caps, t-shirts, various other items of apparel such as ties and scarves, mugs, key chains, clothing accessories such as belts and sundry other items that are marketed in connection with a significant event or tournament, to either support a particular club or organisation or as a memento. I note that the opponent's registered trade marks generally cover the type of souvenir goods in this list. In my view, watches also fall into this category and are often available whether at an event, through mail order or via some other marketing mechanism. Given the background above, watches are of the type of goods that the general public could expect the opponent to market in the normal course of its business. Although I do not need to find a direct connection between the goods of the application and the goods of interest of the opponent to trigger s.60, I believe, from the outline above, that such a link does exist.

This, I believe, is a relevant factor in considering the surrounding circumstances when deciding the question of similarity of the applicant's mark and the opponent's mark. I have reproduced the applicant's mark once more here for ready comparison with the opponent's WIMBLEDON trade mark, which is not registered in Australia.

Relevant tests for two trade marks to be either substantially identical or deceptively similar are set out in the Discussion under s.44 above. In addition to these tests, a comment from Parker J concerning a comparison of marks is also pertinent. I refer here to Pianotist Company Ltd's Application (1906) 23 RPC 774 where at 777 Parker J said in relation to a comparison of trade marks:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

Little more than a cursory glance is all that is required to recognise that the marks are not substantially identical. The applicant's mark has several features not contained within the opponent's unregistered mark. The above words of Parker J, however, impact significantly on the test for deceptive similarity.

In general, I believe that a strong case exists for deceptive similarity between two trade marks where one mark is entirely subsumed within another. It is common practice for trade mark owners to use a single trade mark, two or more trade marks or a composite trade mark containing one or other of the single marks on the same goods quite regularly. Common examples of this practice can be seen with HOLDEN and COMMODORE or with COLES and EMBASSY. In some instances, these traders choose to use both marks in conjunction and sometimes just one of the marks. Both of these examples indicate a use of a 'housemark'. In the above cases, either HOLDEN or COLES is a housemark of the trader, used in conjunction with a second mark for a particular line, model or range of goods, in the above cases COMMODORE or EMBASSY. Despite recognising a difference between the trade mark HOLDEN COMMODORE and the trade mark COMMODORE, I believe that the purchasing public would expect them to designate goods from the same source. This type of situation was discussed in John Fitton & Co. Ltd's Application 66 RPC 110 at 113 where Mr S. E. Chisholm, the Assistant-Comptroller, commented:

With reference to the nature of the confusion alleged the evidence furnished on behalf of the Opponents by their trade declarants is directed not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

The public would readily expect such a situation, I believe, in the present case. Given the magnitude of the reputation of the opponent in its WIMBLEDON mark, in relation to both the organising of an annual tennis championship and its associated marketing activities, I consider that the applicant's mark is deceptively similar to it. In addition, the present application not only contains the word WIMBLEDON to produce some level of confusion in the minds of prospective purchasers, but also provides further emphasis to a probable link with the opponent by means of the TENNIS RACQUET device in the mark. The net effect of these factors in the mind of the prospective purchaser is to produce a recollection of the Wimbledon Lawn Tennis Championships in connection with purchase of the applicant's goods.

As the quotation above in Pianotist (supra) emphasised, I must consider 'all the surrounding circumstances' relevant to a comparison. The above factors come under that umbrella in terms of s.60. This combination of factors, involving the opponent's reputation, the usual conditions of trade by sporting clubs, associations or organisations and the common use made by trade mark owners of 'housemarks', is sufficient, in my opinion, to find that the marks are deceptively similar in terms of s.60.

Because of the reputation of the opponent in its unregistered WIMBLEDON mark, I believe that a substantial number of people would be deceived or confused by the use of the applicant's mark in respect of the goods claimed in the application the face of that reputation.

Thus, all conditions for a successful opposition in terms of s.60 have been met. Use, by the opponent, of its unregistered WIMBLEDON mark pre-dates the present application, the mark is deceptively similar to the application and because of the opponent's reputation in its mark (as at the present application date) use of the applicant's mark would be likely to cause deception or confusion.

Conclusion

From the foregoing, I have found that the opposition fails on grounds claimed in the notice of opposition under s. 41, s.61(1) and s.44 and on seven other grounds that were not further pursued by the opponent. However, the opposition is successful in terms of s.60. Therefore, as a delegate of the Registrar, and subject to an appeal from this decision, I refuse to register this trademark application.

As I having nothing before me to suggest that costs should not follow the decision, I award costs in this matter to the opponent.

Don Nancarrow

Acting Hearing Officer
15 September 1999