Angela Christou v Tonch Pty Ltd

[2008] ATMO 24

TRADE MARKS ACT 1995

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

Re:Opposition by Ms ANGELA CHRISTOU to registration of trade mark application 1018113 (21;31;35;44) — Wagging Tails — filed in the name of TONCH PTY LTD.

Delegate:	Nick Conway
Representation:	Opponent: Quang Nguyen instructed by Batallion Legal Applicant: Tom Cordiner instructed by Robert James Lawyers
Decision:	2008 ATMO 24 s.52 Opposition: Ground of opposition under section 58 not established. Opposition dismissed Costs awarded against opponent

Background

1. Tonch Pty Ltd (“the applicant”) applied to register trade mark 1018113. The relevant details of this trade mark (“the applicant’s trade mark”) are as follows:

Trade Mark No:	1018113
Trade Mark:	Wagging Tails
Applicant:	Tonch Pty Ltd
Priority Date:	01 September 2004
Class 21:	Pet grooming products and pet accessories
Class 31:	Pet and aquarium products including pet food
Class 35:	Retail sale of pets, pet supplies, pet products, pet accessories and food for animals
Class 44:	Veterinary and advisory services in connection with pets and animals

1. The application was accepted for possible registration, and advertised in the Australian Official Journal of Trade Marks on 3 February 2005. Following advertisement, Ms Angela Christou (“the opponent”) filed a Notice of Opposition. The Notice of Opposition cited all grounds of opposition available under the Trade Marks Act 1995 (Cth) (“the Trade Marks Act”).

2. Both the opponent and the applicant filed evidence in relation to the opposition. The evidence filed consists of:

   Evidence in Support

   ØStatutory declaration of Michael Duong with Annexures A–V (“the first Duong declaration”) made 30 September 2005.

   Evidence in Answer

   ØStatutory Declaration of Christopher Peter Verebes with Exhibits 1–46 (“Verebes declaration”) made 21 December 2005.

   Evidence in Reply

   ØStatutory Declaration of Michael Duong with Annexures 12.1–12.11 (“the second Duong declaration”) made 20 April 2006.

3. Each party filed written submissions prior to the hearing. I heard the matter as a delegate of the Registrar of Trade Marks in Canberra on 30 January 2008. The applicant was represented by Mr Tom Cordiner of Counsel, instructed by Robert James Lawyers, and the opponent was represented by Mr Quang Nguyen of Counsel, instructed by Batallion Legal.

4. The bulk of the evidence and weight of the parties’ submissions concerned the ground of opposition under section 58 of the Trade Marks Act. At the hearing Mr Nguyen conceded that the only applicable ground of opposition was that under section 58. As such I will confine my reasons to the application of that ground of opposition. For completeness, I find that none of the other grounds cited in the Notice of Opposition have been established.

   Evidence

5. The first Duong declaration concerns the opponent’s adoption of three trade marks — WAGGING TAILS; WAGGING TAILS DAY CARE; and WAGGING TAILS PROFESSIONAL STYLISTS. The evidence contained within the first Duong declaration provides a history the opponent’s usage of the above trade marks. This evidence is therefore relevant to the section 58 ground of opposition.

6. The applicant’s evidence in answer contained a history of the applicant’s use of its trade mark prior to the filing date of its trade mark application. The Verebes declaration also addressed the grounds of opposition furthered by the first Duong declaration, noting that many of the documents annexed to the first Duong declaration post-dated the filing date of the applicant’s trade mark.

7. The second Duong declaration solely concerns the ground of opposition under section 58 of the Trade Marks Act, providing additional evidence of the opponent’s trade mark use.

8. At the hearing, Mr Cordiner raised a threshold question concerning the admissibility of the second Duong declaration. The opponent originally sought permission to submit the second Duong declaration as further evidence in the opposition proceeding. Mr Cordiner submitted that no formal application for an extension of time had been sought by the opponent, and as such the opponent should not be entitled to rely on the second Duong declaration.

9. A review of the case file reveals that the opponent was advised by this office that the evidence contained in the second Duong declaration qualified as evidence in reply in the opposition proceeding. The applicant’s solicitors were informed of this decision by a letter from this office dated 1 June 2006, and acknowledged receipt of the evidence in reply by letter dated 18 July 2006.

10. The due date for service of evidence in reply was 25 April 2006. The second Duong declaration was served upon the applicant on 24 April 2006. The applicant did not, at the time, object to the opponent relying on this declaration. The objection to the second Duong declaration was not raised until receipt of the applicant’s written submissions. In light of these circumstances, I am satisfied that the opponent is entitled to rely upon the second Duong declaration as validly served evidence in reply in relation to this opposition.

    Reasons

11. The only ground of opposition relevant to this proceeding is that under section 58 of the Trade Marks Act. Section 58 provides:

    58     Applicant not owner of trade mark

    The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

12. The competing notions of ownership presently relevant to the application of section 58 were discussed in Shahin Enterprises Pty Ltd v Exxonmobil Oil Corp:

    Ownership of a trade mark can arise in two ways. If a person is the author of the mark and the mark has never been used, that person can apply for registration with the intention of using the mark. Alternatively, a person will be the owner of a mark if at the time of application for registration that person is entitled to the exclusive use of that mark under common law.

    Therefore, in considering whether a person is the owner of the mark for the purposes of s 27 of the Act and registration of the mark, the inquiry must be whether that person is the owner of the mark at common law. The owner of a mark at common law is the first person who uses the mark.[1]

    [1] Shahin Enterprises Pty Ltd v Exxonmobil Oil Corp [2005] FCA 1278, [63]–[64] (Lander J).

13. This ground of opposition is based upon the opponent’s asserted ownership of the applicant’s trade mark, through its use of the trade marks WAGGING TAILS, WAGGING TAILS DAY CARE and WAGGING TAILS PROFESSIONAL STYLISTS. Such a claim to ownership requires the opponent to establish three elements. The opponent must demonstrate:

    (1)     that a person other than the applicant has an earlier claim to ownership of a trade mark based on prior use of a trade mark in Australia;[2]

    (2)     that the trade mark in relation to which prior use is claimed is either identical, or substantially identical to the applicant’s trade mark; [3] and

    (3)     that the trade mark in relation to which prior use is claimed relates to the ‘same kind of thing’ as the goods and/or services claimed by the applicant.[4]

    [2] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 (Thunderbird), 600 (Jacobs J).

    [3] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 120 ALR 495, 513 (Gummow J).

    [4] Re Hicks's Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

14. At the hearing, it was common ground between the parties that:

    Ø   the applicant’s ‘Wagging Tails’ trade mark is substantially identical to the ‘WAGGING TAILS’ trade mark which the opponent claims to own.

    Ø    the use claimed by the opponent could not be classed as the ‘same kind of thing’ as the services in class 44 claimed by the applicant.

15. The opponent’s evidence is far from clear as regards use of each of the three trade marks throughout the course of the opponent’s business. In order to best assess the applicant’s prior use, I will assume the relevant trade mark is WAGGING TAILS. This assumption proceeds from the tentative basis that the additional elements DAY CARE and PROFESSIONAL STYLISTS may be seen as separate trade marks,[5] or as purely descriptive elements of the entire trade mark.[6] This assumption places the opponent’s case for ownership at its highest, and I will revisit this issue if necessary following the discussion of the opponent’s prior trade mark use.

    [5] See Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd (2004) 61 IPR 242, 247 (Bennett J).

    [6] See PB Foods Ltd v Malanda Dairyfoods Ltd (1999) 47 IPR 47, 54 – 55 (Carr J).

    Prior Use

16. The filing of a trade mark application amounts to a prima facie claim to trade mark ownership by the applicant.[7] Applying the principles of ownership in ShahinEnterprises, if the opponent is to succeed based upon this ground of opposition, it must be able to show that prior to the filing date of the applicant’s trade mark it was the person entitled to exclusive use of that trade mark under the common law.

    [7] Aston v Harlee Manufacturing Company (1960) 103 CLR 391, 398–402 (Fullagar J).

17. The evidence which is in some manner relevant to establishing prior trade mark use is summarised in the following tables:

    First Duong declaration:

Annexure:	Date:	Description
A	28/01/04	Certificate of Registration of the Business Name ‘Wagging Tails Day Care’
B	29/01/04	Invoice in relation to CGC Course billed to ‘Wagging Tails Day Care’
C	13/02/04	Receipt in relation to a career pet grooming course billed to ‘Wagging Tails Day Care’
D1;       D2	9/03/04; 16/03/04	Invoices for purchases of approximately $500 of supplies billed to ‘Wagging Tails Day Care’
F	27/06/04	Invoices for purchase of $380 of supplies billed to ‘Wagging Tails Day Care’

Second Duong declaration:

Annexure:	Date:	Description:
12.1	29/01/04	Invoice for registration of the domain name waggingtails.com.au billed to Angela Christou.
12.4	26/07/04	Invoice for ‘Logo and Business Card Design’ billed to ‘Angela Christou, Wagging Tails’

1. The remaining evidence contained in both Duong declarations either post-dates the priority date of the applicant’s trade mark, or is otherwise unhelpful in establishing trade mark use.

2. Mr Nguyen drew my attention to a lengthy body of case law which establishes the principles relevant to determining whether there has been ‘use’ of a trade mark sufficient to establish prior use. A useful starting point is the following extract from the judgment of Deane J in Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2]:

   The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of “proprietor” of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person … The requisite use of the mark need not be sufficient to establish a local reputation and there is authority to support the proposition that evidence of but slight use in Australia will suffice to protect a person who is the owner and user overseas of a mark which another is seeking to appropriate by registration under the Trade Marks Act [1955].[8]

   His Honour continued this discussion, stating:

   The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark … or that the mark has been used in an advertisement of the goods in the course of trade … In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.[9] [Emphasis added]

   [8] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2] (1984) 156 CLR 414, 432 (Deane J).

   [9] Moorgate Tobacco Co. Ltd. v Philip Morris Ltd. [No. 2] (1984) 156 CLR 414, 433–434 (Deane J).

3. This second extract has been the subject of much additional judicial consideration. In Malibu Boats West Inc v Catanese Finkelstein J noted the following as regards prior use of a trade mark:

   [t]he use must be in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods with respect to which the mark is used and that person … While the mark must be used for the purpose of indicating a connection in the course of trade, this does not mean that any actual trade or dealing in the goods is required. It is sufficient if there is an offer to trade in the goods, or an existing intention to offer or supply goods bearing the trademark.[10]

   [10] Malibu Boats West Inc v Catanese (2000) 51 IPR 134, 143 (Finkelstein J).

4. Malibu was decided based on the definition of ‘trade mark’ contained in section 6 of the Trade Marks Act 1955. However, the principles identified above were similarly applied to the definition in the current Act in Oakley Inc v Franchise China Pty Ltd where Drummond J stated:

   The term “trade” in the context of the phrase in s 17 of the Trade Marks Act is undoubtedly a wide one. It encompasses a wider range of commercial transactions than the actual sale and purchase of marked goods. It has been held that “a use of a mark in an advertisement of goods is a use in the course of trade, and is of course a use in relation to the goods advertised” … The use of a mark on goods in conducting investigations as to whether there might be a market for those goods is unlikely to be a use of the mark in the course of trade: that will generally be the use of a mark in activities preparatory to the commencement of the course of trade … But where the owner of a mark is able to show that it is committed to supplying marked goods to persons prepared to purchase them, activities preliminary to the actual commencement of selling the goods, such as the distribution of marked samples and marked brochures to agents, so that they could show them to prospective customers in soliciting business will probably amount to the use of the mark in the course of trade.[11]

   [11]Oakley Inc v Franchise China Pty Ltd (2003) 58 IPR 452, 459 (Drummond J).

5. Drummond J made similar comments in Woolly Bull Enterprises Pty Ltd v Reynolds, where His Honour observed:

   Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, that is, to carrying its intention to use the mark into effect.[12] [Emphasis added]

   [12] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 179 (Drummond J).

6. From this body of case law there appear three means through which trade mark ‘use’, sufficient to establish ownership, can be established. These are:

   (1)     use demonstrated through an actual dealing in the goods and/or services prior to the priority date of the applicant’s trade mark; or

   (2)     use demonstrated through an offering for sale of the goods and/or services prior to the priority date of the applicant’s trade mark; or

   (3)     use demonstrated through an intention to offer the goods and/or services existing prior to the priority date of the applicant’s trade mark which is manifested through preparatory steps which show an objective commitment to using the trade mark.

   (1)       Actual Dealing

7. The Thunderbird case provides a clear example of prior use demonstrated in this manner. In that case a single sale of the relevant goods was found sufficient to establish prior use of the trade mark.[13] In the present case, there is no evidence of trade mark use in this sense. The opponent has not placed any sales receipts relating to the relevant goods and/or services in evidence. The invoices placed in evidence all relate to purchases by the opponent, and as such do not go any way toward demonstrating a relevant prior dealing. It is not possible to tell, from the evidence, whether any sales have taken place at any point in time at all.

   (2)       Actual Offer

   [13] Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 602 (Jacobs J).

8. An example of an actual offer for the sale of the relevant goods and/or services sufficient to establish prior use would be evidence of an advertisement in which the trade mark was used in connection with those goods and/or services. It has been long established that this will be sufficient to establish ownership of the trade mark used.[14] There is no evidence of an offer to sell or supply the relevant goods and services before the relevant date. The closest the opponent’s evidence comes to establishing such an offer is evidence of the production of business cards (First Duong declaration, Exhibits H1 and H2). These exhibits are undated and paragraph 20 of the First Duong declaration states these were printed on 1 October 2004, one month after the priority date.

   [14] The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, 422 (Kitto J).

9. The evidence also establishes that the opponent registered the domain name on 29 January 2004 (Second Duong declaration, Annexure 12.1). Registration of a domain name does not, of itself, constitute any form of trade mark use.[15] The content of a website may be sufficient to amount to an actual offer to sell or supply the relevant goods or services,[16] but this is not established by the bare act of registering a domain name. At the minimum, it would be necessary to show that:

   Ø   the website was live before the priority date; and

   Ø   the content of the website demonstrates a relevant use of the trade mark, in relation to the relevant goods and/or services; and

   Ø   this was done in a manner which targeted Australian consumers.

   The opponent’s evidence does not establish that the website was live before the priority date. The website forming Attachment 12.3 of the second Duong declaration bears a footer stating ‘Copyright © 2005 Design by Panchute’. This tells against drawing any inference that this website was live as at the priority date. The opponent has therefore not established any prior use through an offering for sale of the relevant goods and/or services prior to the priority date of the applicant’s trade mark.

   (3)       Preparatory Steps Demonstrating Sufficient Intention

   [15] CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408, 416 (Hill J).

   [16] Ward Group Pty Ltd v Brodie & Stone Plc (2005) 64 IPR 1, 10–12 (Merkel J); Fresh Intellectual Properties Inc v Goldman (2006) 69 IPR 337, 343 (Hearing Officer O'Brien).

10. Prior use in this sense was found sufficient to establish trade mark ownership in Buying Systems (Aust) Pty Ltd v Studio SrL. In that case Gummow J found that the actions of the opponent in actively selling advertising space for a magazine, which was unpublished at the priority date, was ‘sufficient to constitute a relevant use of the mark in Australia for the purpose of indicating or so as to indicate a connection in the course of trade between [the opponent] and the new magazine.’[17] Drummond J commented further on the outcome of Buying Systems in his judgment in Woolly Bull, stating:

    Buying Systems not only had an existing intention to trade in the magazine, it had gone beyond making preliminary arrangements to use the mark by December 1983. It had an objectively ascertainable commitment to offering to supply the magazine in trade demonstrated by its having purchased and used appropriate business cards and letterheads in connection with the proposed offering of the magazine and by having solicited advertisers for the magazine.[18] [Emphasis added]

    [17] Buying Systems (Aust) Pty Ltd v Studio SrL (1995) 30 IPR 517, 520 (Gummow J).

    [18] Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, 175 (Drummond J).

1. The opponent’s evidence establishes that it possessed an intention use WAGGING TAILS as a trade mark. However, an ‘intention’ to use a trade mark is not of itself sufficient to support a claim of ownership. It would be drawing a long bow to suggest that a bare intention, without anything more, is capable of creating rights over property such as a trade mark. To establish ownership of a trade mark, a claim must move beyond an intention. It must be supported by demonstrable preparatory steps. However, in many cases, even an intention supported in this manner will not be sufficient to establish ownership of a trade mark. To establish ownership based on an ‘intention’ to use a trade mark the opponent must be able to demonstrate that, by the priority date of the applicant’s trade mark, its intention to use the trade mark was so far developed that the opponent had objectively committed itself to offering or supplying goods and/or services bearing the trade mark in the course of trade.

2. Buying Systems provides a good example of such an intention. Prior to the filing of the applicant’s trade mark, the opponent in that case was objectively committed to using its trade mark in trade. It had obtained business cards and stationary which bore the trade mark. It had distributed these in the course of soliciting potential advertisers for the placing of advertisements in the opponent’s forthcoming magazine. As Drummond J makes clear, it was these preparatory steps which demonstrated that the opponent had an objectively ascertainable commitment to offering or supplying goods bearing the trade mark in the course of trade.

3. Sizzler Restaurants International v Sabra International Pty Ltd is another case which demonstrates the objective degree to which an existing intention to use a trade mark must be established. The relevant questions before the Hearing Officer in that case were ‘whether at 14 February 1984 [the opponent] had made public use of the mark SIZZLER and whether or not that use was sufficient to establish the necessary connection.’[19] These questions were answered affirmatively based upon the opponent’s establishment of the following preparatory steps:

   Market research had been underway since 1968. In 1969 the Australian company was incorporated, in 1970 the two bovine family trade marks were filed. During the 1970s and 1980s discussions and dealings regarding franchise arrangements and the purchase and conversion of existing restaurant chains were taking place between the staff of Sizzler Restaurants International and Sizzler Australia on the one hand, and local businessmen on the other … this created a knowledge of Sizzler Restaurants International’s activities in the restaurant community in Australia. News was spread by word of mouth … And while claims of reputation based on no more than word of mouth clearly cannot suffice to establish proprietorship, in the circumstances of this case, where there is testimony to the matters just mentioned, evidence of very great success in the overseas market, and in particular, evidence of almost immediate and I might say spectacular success in the year 1985 in the Australian market, I accept that Sizzler Restaurants International had achieved public use of the mark SIZZLER by 14 February 1984.[20]

   [19] Sizzler Restaurants International v Sabra International Pty Ltd (1990) 20 IPR 331, 338 (Hearing Officer Hardie).

   [20] Sizzler Restaurants International v Sabra International Pty Ltd (1990) 20 IPR 331, 339 (Hearing Officer Hardie).

4. In distinguishing the facts of the Sizzler case from those in Moorgate Tobacco, the Hearing Officer specifically stated:

   I do not find that there were services which had been offered under the trade mark, but I do find that there was a fixed and existing intention to use the mark SIZZLER, that market research and negotiations were much more than the preliminary discussions undertaken in the Moorgate case, and that by means of the market research and trade negotiations, the Sizzler Restaurants International had exposed its use of the trade mark SIZZLER to the public.[21]

   [21] Sizzler Restaurants International v Sabra International Pty Ltd (1990) 20 IPR 331, 339 (Hearing Officer Hardie).

5. It is clear from this passage that the decision in Sizzler was grounded firmly in the intention of the opponent to use the trade mark. It is equally clear that this intention was supported by detailed and prolonged research and negotiations with third parties, and that these actions publicly exposed the connection between the opponent and the trade mark. The opponent’s subjective intention to use the trade mark was supported by objective evidence of a commitment to make public use of that trade mark.

6. As the opponent in this case cannot establish ownership through actual use, or an actual offer, before the priority date, it must rely on the objective strength of its intention by the priority date. The evidence provided by the opponent establishes the following facts:

   Ø   that the business name ‘Wagging Tails Day Care’ was registered on 28 January 2004 (first Duong declaration, Annexure A);

   Ø   that the domain name waggingtails.com.au was registered on 29 January 2004 (second Duong declaration, Annexure 12.1)

   Ø   that this business name was used in connection with payment for a career pet grooming course in February 2004 (first Duong declaration, Annexure C);

   Ø   that this business name was used in March 2004, in connection with the purchase of goods, which appear to be supplies for pet grooming (first Duong declaration, Annexures D1 and D2);

   Ø   that this business name was used in June 2004, in connection with the purchase of goods which appear to be instructional material on pet training (first Duong declaration, Annexure F); and

   Ø   that the name ‘Wagging tails’ was used in connection with the design of a logo and business cards in late July 2004 (second Duong declaration, Annexure 12.4).

   Evidence which post dates the priority date establishes that the business cards were not actually printed until 1 October 2004 (first Duong declaration, paragraph 20; second Duong declaration, Annexure 12.5).

7. Comparing these facts to those in Buying Systems (above paragraph [30]), there is simply no analogy which can be drawn. As mentioned previously, registration of a domain name and a business name are not evidence of trade mark use, and serve only to corroborate a general intention to use WAGGING TAILS at an undefined point in the future. Use of WAGGING TAILS in connection with purchasing goods is similarly inconclusive. These actions are not the same as the sales of advertising space in Buying Systems. Rather the purchases presently in evidence would be more akin to purchasing the paper on which a magazine may have eventually been printed. Unlike the situation in Buying Systems, there is no evidence of any ‘advantageous commercial activity’ associated with projecting the goods and/or services onto the market.[22] Similarly, whereas the business cards and stationary were being distributed before the priority date in Buying Systems, the evidence before me suggests that, in this case, they were not even printed.

   [22] Gregory Fendis v Deutsche Telecom AG [2007] ATMO 56, [18] (Hearing Officer Thompson).

8. On the basis of this evidence, the opponent has not established that its intention to use the WAGGING TAILS trade mark had developed so far that it could be said to have, at 1 September 2004, gone beyond making preliminary arrangements regarding use of WAGGING TAILS. The applicant has established a prima facie claim to ownership of the ‘Wagging Tails’ trade mark by filing its application on 1 September 2004. Displacing that claim based upon an existing intention to offer or supply the goods or services requires a significant evidentiary burden to be discharged.

9. Evidence supporting the existence of a subjective intention to use the trade mark, such as the evidence presently observable, is simply insufficient. The opponent must demonstrate more than a subjective intention to use the trade mark in the future. It must show that it was — by the priority date — objectively committed to the commercialisation of the trade mark. In other words, it must be able to show that before the filing date of the applicant’s trade mark it can objectively be seen to be carrying its intention to use the trade mark into effect. 

10. The opponent has not demonstrated prior use of the trade mark in any manner sufficient to make good its claim to ownership of the WAGGING TAILS trade mark. As the opponent cannot establish prior use of any relevant trade mark it is unnecessary to consider exactly which trade mark was ‘used’ by the opponent; whether that trade mark is substantially identical to the applicant’s trade mark; and whether the opponent ‘used’ this trade mark in relation to the ‘same kind of thing’ as the applicant’s goods and services. The ground of opposition under section 58 of the Trade Marks Act has not been established.

    Decision

11. Section 55 of the Trade Marks Act provides:

    55       Decision
    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.

12. The opponent has not established any ground of opposition with respect to trade mark application 1018113 WAGGING TAILS. Trade mark application number 1018113 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until either the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to that order.

    Costs

13. Both parties sought their costs in relation to this opposition. The applicant, having been successful in relation to this opposition, is entitled to its costs, which I award against the opponent.

    Nick Conway
    Hearing Officer
    Trade Marks Hearings
    31 March 2008