Baybridge Lawyers Pty Ltd v LawBridge Legal and Mediation Services Pty Ltd

[2023] ATMO 26

TRADE MARKS ACT 1995

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

Re:Opposition by Baybridge Lawyers Pty Ltd to registration of trade mark application number 2087283 (45) – LawBridge – in the name of LawBridge Legal and Mediation Services Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Samuel Hallahan of Counsel instructed by Baybridge Lawyers

Applicant: Gilbert Tsang of Counsel instructed by LawBridge Lawyers & Consultants

Decision:

2023 ATMO 26

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds considered under ss 42(b), 44 and 60 – no ground established – trade mark to proceed to registration

Background

1. This matter concerns an opposition by Baybridge Lawyers Pty Ltd (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application (‘Application’) in the name of LawBridge Legal and Mediation Services Pty Ltd (‘Applicant’):

   Trade Mark Number:  2087283

   Trade Mark:  LawBridge (‘Trade Mark’)

   Filing Date:  10 May 2020

   Specification:  Class 45[1] (‘Applicant’s Services’)

   [1] See Annexure A to this decision for the specification details.

2. The Application was examined as required by s 31 of the Act and advertised as accepted for possible registration on 20 October 2020.

3. On 14 December 2020, the Opponent filed a Notice of Intention to Oppose, followed by its Statement of Grounds and Particulars (‘SGP’) on 13 March 2021. On 2 July 2021, the Applicant filed a Notice of Intention to Defend.

4. Thereafter the partied filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

5. Once time for filing evidence had ended both parties requested to be heard. As a delegate of the Registrar of Trade Marks, I heard the matter on 16 February 2023, by way of video conference.  Samuel Hallahan of Counsel instructed by Baybridge Lawyers appeared for the Opponent. Gilbert Tsang of Counsel instructed by LawBridge Lawyers & Consultants appeared for the Applicant. Oral submissions were supplemented by the parties’ written submissions filed prior to the hearing.

Grounds of Opposition, Relevant Date and Onus

1. In the SGP the Opponent nominated grounds of opposition under ss 44, 58, 60, 42 and 62A of the Act. In the Opponent’s written submissions it only pressed the grounds under ss 44, 60 and 42. The Opponent did not pursue the grounds of opposition under ss 58 and 62A, which I treat as abandoned and have not considered.

2. The date at which the rights of the parties are to be determined is the filing date 10 May 2020 (‘Relevant Date’) which is also the priority date for the purposes of ss 44 and 60.

3. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132] (Besanko, Jagot and Edelman JJ).

Evidence

Evidence in Support

• Statutory Declaration of Marwan Kojok, Managing Partner of the Opponent, made on 6 October 2021, with Exhibits MK-1 to MK-13 (‘Kojok’).

Evidence in Answer

• Statutory Declaration of Ramia Sultan, Director and Shareholder of the Applicant, made on 4 December 2022, with Exhibit RS1.

Evidence in Reply

• Statutory Declaration of Rita Khodeir, Litigation and Intellectual Property Partner of the Opponent, made on 10 March 2022, with Exhibits RK-1 to RK-10.

1. The Opponent is a legal practice that is engaged in the provision of legal services in New South Wales.

2. The Applicant is a legal practice that is engaged in the provision of legal services in New South Wales.

Discussion

Section 44

1. Section 44 of the Act provides:

   44  Identical etc. trade marks

   (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.

   (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.

   (3)  If the Registrar in either case is satisfied:

   (a)  that there has been honest concurrent use of the 2 trade marks; or

   (b)  that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   (4)  If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a)  beginning before the priority date for the registration of the other trade mark in respect of:

   (i)  the similar goods or closely related services; or

   (ii)  the similar services or closely related goods; and

   (b)  ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the           other trade mark.

2. In the SGP the Opponent particularises the s 44 ground of opposition as follows:

   1. The Applicant has applied to register trade mark 2087283, which consists or contains as a key element, the word BRIDGE.
   2. The Applicant’s trade mark LAWBRIDGE is deceptively similar with the Opponent’s trade marks BAYBRIDGE (968833) and BAYBRIDGE (1651154).
   3. The Applicant’s trade mark LAWBRIDGE is registered in respect of services that are similar to the services covered by the Opponent’s trade marks.

1. To satisfy the s 44 ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, and in respect of similar services or goods which are closely related to the Applicant’s Services.

2. In the event that each of these requirements is satisfied it may still be possible for me to accept the application (or allow it to proceed to registration) if I am satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make acceptance of the Application for registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon trade marks.

3. The SGP identified Australia trade mark registrations 968833 and 1651154 (collectively the ‘BAYBRIDGE trade marks’) which I have reproduced below, as underpinning this ground:

Trade Mark Number	968833	1651154
Trade Mark	BAYBRIDGE	Baybridge
Ownership Details	R & K Property Group Limited	R & K Property Group Limited
Priority Date	5 September 2003	8 October 2014
Specification	Class 42	Classes 35, 41, 45

1. The specification of each of the BAYBRIDGE trade marks is set out in full in Annexure B to this decision.

2. The trade marks relied on by the Opponent are registrations held by a person other than the Applicant and each has a priority date earlier than the Relevant Date.

Substantially identical

1. The Opponent does not argue that the BAYBRIDGE trade marks are substantially identical to the Trade Mark. However, I will briefly note that the test for substantial identity requires that the trade marks are considered side by side while having regard to the essential features of the trade marks.[4] Where a total impression of resemblance emerges from the comparison, the trade marks will be considered substantially identical.

   [4] The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited (1963) 109 CLR 407, 414 (Windeyer J).

2. For the purposes of comparison, I have reproduced the respective trade marks below:

BAYBRIDGE trade marks	Trade Mark
BAYBRIDGE Baybridge	LawBridge

1. On a side by side comparison there are clear differences between the respective trade marks. The BAYBRIDGE trade marks contain the words BAY and BRIDGE. In comparison the Trade Mark contains the words LAW and BRIDGE. While all the trade marks share the common element BRIDGE, the addition of the words BAY and LAW create clear visual differences between the respective trade marks. For these reasons, I find that none of the BAYBRIDGE trade marks are substantially identical with the Trade Mark. The total impression emerging from a side by side comparison is not one of similarity.  

2. I will now consider whether the Trade Mark is deceptively similar to the BAYBRIDGE trade marks.

Deceptively similar

1. The expression ‘deceptively similar’ is defined in s 10 of the Act:

   10  Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

2. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hy-line Chicks Pty Ltd, where Richardson J said:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.[5]

   [5] (1979) 96 RPC 410, 423 (citations omitted).

3. The approach for assessing whether trade marks are deceptively similar was outlined by Windeyer J in The Shell Company Australia Ltd v Esso Standard Oil (Australia) Limited:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[6]

   [6] [1963] HCA 66, [13].

1. Therefore, I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and the BAYBRIDGE trade marks. I must consider the look, sound, and idea conveyed[7] and all the surrounding circumstances.[8] In the end, however, what is being compared is the effect or impression of the trade marks as a whole.[9]

   [7] Ibid.

   [8] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [50] (French J).

   [9] Clark v Sharp (1898) 15 RPC 141, 146 (Byrne J).

2. The Opponent argues that the trade marks are conceptually, phonetically, visually similar.

3. However, I am not satisfied that the words LAW and BAY, when combined with the word BRIDGE, create composite wholes that are likely to be confused. The word BAY is a distinctive and equally important element of the BAYBRIDGE trade marks. While I agree with the Opponent that the word LAW in the Trade Mark has some descriptive qualities in relation to the Applicant’s Services, I do not agree with the Opponent’s submissions that the Trade Mark as a whole is likely to be viewed as BRIDGE. Nor does the test, which requires I estimate the impression of the whole of each trade mark, permit me to simply disregard the word LAW. The trade marks LAWBRIDGE and BAYBRIDGE in my view are more likely to be perceived and remembered by consumers in their entirety. Given the word BAY in the BAYBRIDGE trade marks and the word LAW in the Trade Mark are pronounced differently and are ordinary English words with clear visual differences, I consider it unlikely that these words would be mispronounced or incorrectly identified.

4. Conceptually, I consider the trade marks LAWBRIDGE and BAYBRIDGE can be considered as proper nouns, referring to different surnames. Alternatively, the Trade Mark could be considered in the abstract as a bridge connecting with the law, and the Opponent’s trade marks could be considered as a bridge spanning a bay.  

5. In determining whether there is a likelihood of deception or confusion I must consider all the surrounding circumstances including the circumstances in which the services are offered and the character of the probable acquirer of the services.[10]  The services in this matter are legal services which consists of the provision of legal advice, assistance or representation and can be of considerable expense, consequently they are typically engaged with a relatively high degree of care and attention. This heightened diligence further diminishes the likelihood of deception or confusion.

   [10] Register of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).

6. I note that the Opponent submits that its clients have ‘in fact’ been deceived or confused by the presence of the Trade Mark in the building that both the Applicant and Opponent occupy in the Sydney Central Business District (‘CBD’). In Kojok, Mr Kojok declares that in or about late 2020 his staff members informed him of numerous occasions where the Opponent’s clients had incorrectly attended the Applicant’s office. The Applicant is critical of this statement as the Opponent was aware of the Applicant and made no effort to document any of these alleged instances of confusion. In this matter, the fact that the parties have legal practices located in the same building would naturally be expected to cause some level of confusion, regardless of what trade marks the parties used, however such confusion would not necessarily be as a result of the Trade Mark.

7. Considering all the above, I am not satisfied that there is a real and tangible danger of deception or confusion, despite the alleged instances of confusion. I do not consider the overall impressions of the trade marks to be deceptively similar. There are sufficient visual, aural and conceptual differences such that the trade marks are distinguishable when considered in their entirety.

8. The Opponent has not established its ground of opposition under s 44 of the Act.

Section 60

1. Section 60 of the Act provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

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

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

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

1. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

   1. The Applicant has applied to register trade mark 2087283, which consists or contains as a key element, the word BRIDGE.
   2. The Applicant’s trade mark LAWBRIDGE is deceptively similar with the Opponent’s trade marks BAYBRIDGE (968833) and BAYBRIDGE (1651154).
   3. Both the Opponent’s trade marks BAYBRIDGE have acquired a reputation in Australia and have been in continuous use in relation to providing a wide range of commercial and corporate legal services since at least 2001.

1. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

2. In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[11] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…[12]

   [11] [2000] FCA 1335, [81].

   [12] [1992] FCA 159, [118].

3. Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[13]

   [13] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

4. What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltee provided some guidance:

   What is “significant” or “substantial” will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.F12F[14]

   [14] [2000] FCA 1587, [91], (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)), (emphasis in original).

5. Turning to the Opponent’s evidence in this matter, Mr Kojok declares that since 2003 the Opponent has provided legal and professional services under the BAYBRIDGE trade marks.

1. Mr Kojok declares that the Opponent has promoted the BAYBRIDGE trade marks in relation to the legal and professional services through its website, social media accounts and company stationery. Exhibit MK-3 to Kojok comprises extracts from the Internet Archive Wayback Machine (‘IAWM’) from the Opponent’s website dated between 2012 to 2018. The website prominently displays the BAYBRIDGE trade marks in relation to a wide range of legal and advisory services provided by the Opponent. Exhibit MK-4 to Kojok comprises undated screenshots from the Opponent’s LinkedIn page. Exhibit MK-5 to Kojok comprises undated screenshots from the Opponent’s Facebook page. The screenshots features the BAYBRIDGE trade marks in relation to franchising services and show that the Opponent’s page was created on 16 March 2012. Exhibit MK-6 to Kojok comprises undated copies of an email signature block and company letterhead featuring the BAYBRIDGE trade marks in relation to franchising, real estate, litigation and legal services.

2. Mr Kojok declares that the Opponent has acted for a number of emerging and well-established franchise systems and brands in Australia under the BAYBRIDGE trade marks including Audi Australia, Soccajoeys, Top Juice, Shingle Inn, Platinum Electricians, Soul Origin, Laing + Simmons, Coco Cubano and Total Tools. Exhibit MK-7 to Kojok comprises undated copies of testimonials from Audi Australia, Total Tools and Shingle Inn regarding the Opponent. Exhibit MK-8 to Kojok comprises third party online reviews of the Opponent.

3. Mr Kojok declares that since 2003 the Opponent has been a member of the Franchise Council of Australia (‘FCA’) and is listed in a supplier directory on the FCA website. Exhibit MK-9 to Kojok comprises an undated copy of an FCA Supplier Directory Search listing the Opponent.

4. Mr Kojok declares that the Opponent has won various awards. Exhibit MK-10 to Kojok comprises an extract from the Opponent’s website showing that the BAYBRIDGE team were named as the Runner-up for the Best Law Firm and a National Finalist in the Business Clients category of the NAB Professional Services Awards in 2017. Exhibit MK-10 to Kojok also comprises an extract from the 2018 Client Choice Awards Winners and lists BAYBRIDGE Lawyers as a Finalist in the Law Firm (Business Clients, <$30m) category.

5. Mr Kojok states that since 2003 team members from BAYBRIDGE Lawyers & Advisors have published pieces in franchise magazines in Australia and New Zealand which promote the franchising and legal services provided under the BAYBRIDGE trade marks. Exhibit MK-11 to Kojok comprises a copy of an article entitled ‘How franchising will supercharge your business’ published in ‘mybusiness’ on 25 July 2017, and a copy of an article entitled ‘Why branding is important in franchising’ published in ‘Inside Small Business’ on 14 March 2018.

6. In my assessment of the evidence before me, I find that while there is no evidence of sales or advertising expenditure, there is evidence, albeit limited, of the promotion of the BAYBRIDGE trade marks via the internet, social media, and published pieces in relation to franchising and legal services. In addition, the evidence shows that the Opponent has an established client base in relation to its franchising services which demonstrates that it has operated a successful business under the BAYBRIDGE trade marks since 2003. The Opponent’s success has also resulted in recognition awards from third parties. On the basis of the evidence, I am satisfied that the Opponent has demonstrated the existence of a reputation in Australia in respect of the BAYBRIDGE trade marks as at the Relevant Date in relation to franchising and legal services sufficient for the requirements of s 60(a) of the Act.

7. It is not sufficient that the Opponent merely establishes that the BAYBRIDGE trade marks have a reputation, the Registrar must also be satisfied that because of the use of the Trade Mark would be likely to deceive or cause confusion.[15]

   [15] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50] (French J).

8. However, even though I have found that the BAYBRIDGE trade marks have a reputation in Australia, I do not find that by reason of that reputation, any use of the Trade Mark would be likely to deceive or cause confusion. The visual, aural and conceptual differences I identified at paragraphs [27] to [31] are no less relevant here and I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion.   

9. The Opponent has not established the ground of opposition under s 60 of the Act.

Section 42(b)

1. Section 42(b) 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:

   [ …]

   (b)  its use would be contrary to law.

1. In the SGP the Opponent particularises the s 42(b) ground of opposition as follows:

   1. The Applicant has applied to register trade mark 2087283, which consists or contains as a key element, the word BRIDGE.
   2. The Applicant’s trade mark LAWBRIDGE is deceptively similar with the Opponent’s trade marks BAYBRIDGE (968833) and BAYBRIDGE (1651154).
   3. By using the trade mark LAWBRIDGE, the Applicant is likely to mislead or deceive consumers and thereby contravene section 18 of the Australian Consumer Law.

1. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on section 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[16]

   [16] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. Section 18 of the Australian Consumer Law[17] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the ACL imposes a more stringent test than that for deception or confusion under s 60 of the Act.[18] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60 of the Act. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

   [17] Competition and Consumer Act 2010 (Cth), sch 2.

   [18] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

3. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[19] nor will it constitutepassing off.[20]

   [19] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

   [20] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

4. The Opponent has not established the ground of opposition under s 42(b) of the Act.

Decision

1. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2087283 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the Application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought an award of costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 of the Act in line with Schedule 8 of the Regulations.

Louise Tuohy

Hearing Officer

Delegate of the Registrar of Trade Marks

28 February 2023

Annexure A

Trade Mark Number 2087283

Class 45: Association services providing legal representation or legal advice to members of the association; Bailiff services legal services; Certification of legal documents; Immigration agency services legal services; Information services relating to legal matters; Legal administration of licences; Legal advice; Legal advice in responding to calls for tenders; Legal advice in responding to requests for proposals RFPs; Legal advisory services relating to trade marks; Legal advocacy services; Legal aid services; Legal compliance auditing; Legal consultancy relating to patent mapping; Legal consultancy services; Legal document preparation services; Legal enquiry services; Legal information research services; Legal information services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal services in relation to the negotiation of contracts for others; Legal services in the field of immigration; Legal services relating to estates; Legal services relating to the negotiation of contracts for others; Legal services relating to wills; Legal support services; Legal watching services; Licensing legal services in the framework of software publishing; Licensing of computer software legal services; Monitoring intellectual property rights for legal advisory purposes; Personal advice services relating to matrimonial matters non-legal; Personal legal services; Professional legal consultations relating to franchising; Providing information, including online, about legal services; Provision of information relating to legal services; Provision of legal information; Provision of legal research; Provision of legal services; Registration services (legal); Consultancy services relating to the application of legislation; Crime prevention consultancy services; Intellectual property consultancy; Provision of information in relation to migration and immigration services; Identity theft and fraud prevention services; Identity verification; Advisory services relating to intellectual property rights; Enforcement of intellectual property rights; Establishment of intellectual property rights; Exploitation of intellectual property rights; Industrial property intellectual property consultation services; Industrial property intellectual property management; Intellectual property licensing services; Intellectual property watching services; Licensing of intellectual property; Prosecution of applications for intellectual property rights; Protection of intellectual property; Research relating to intellectual property; Advisory services relating to consumers rights; Advisory services relating to copyright; Advisory services relating to organising personal schedules; Advisory services relating to organising space in the home; Advisory services relating to patents; Advisory services relating to security; Advisory services relating to the law; Advisory services relating to the security of premises; Crime prevention advisory services; Professional advisory services relating to infringement of industrial property; Professional advisory services relating to infringement of patents; Professional advisory services relating to infringement of trade marks; Professional advisory services relating to licensing of patents; Professional advisory services relating to licensing of trade marks; Professional advisory services relating to registered designs; Professional advisory services relating to the licensing of industrial property; Security advisory services; Arbitration services; Dispute and conflict resolution arbitration services; Mediation services arbitration services; Barrister services; Charitable services, namely mentoring personal or spiritual; Conveyancing; Criminal investigations; Forensic advice for criminal investigations; Copyright management; Exploitation of copyrights; Licensing of copyright; Protection of copyright; Alternative dispute resolution services; Mediation services for marital disputes; Guardianship services; Provision of information in relation to migration and immigration services; Exploitation of industrial property rights; Prosecution of applications for industrial property rights; Protection of industrial property rights; Information services relating to consumer rights; Providing information regarding political issues; Provision of information in relation to migration and immigration services; Provision of information relating to security; Provision of judicial information; Provision of security information; Judicial advocacy services; Judicial inquiry services; Legislative advocacy services; Computer licensing; Issue of licensing rights relating to audio productions; Issue of licensing rights relating to films; Issue of licensing rights relating to television productions; Issue of licensing rights relating to video productions; Licensing authority services; Licensing of computer firmware; Licensing of computer programs; Licensing of patents; Licensing of photographs; Licensing of registered designs; Licensing of rights to photographic prints and transparencies; Licensing of software; Licensing of stage plays; Licensing of technology; Licensing of trade marks; Licensing services; Licensing services relating to music publishing; Licensing services relating to performance rights; Licensing services relating to the manufacture of goods; Music publisher services licensing of music; Patent licensing; Licensing of research and development; Lobbying services relating to legislation and regulation; Management of patents; Management of trademarks; Marriage agencies; Marriage guidance counselling; Mediation; Notarial services; Exploitation of patents; Patent agency services; Patent attorney services; Preparation and creation of curricula vitae; Preparation of regulations; Prosecution of applications for trade marks; Prosecution of registered designs; Security services for the protection of property and individuals; Services for the protection of property and individuals; Providing information relating to the application of legislation; Providing information, including online, about personal and social services meeting the needs of individuals; Providing information, including online, about security; Providing non-medical assisted living services for personal purposes; Providing user authentication services in e-commerce transactions; Provision of background check services; Provision of information in relation to migration and immigration services; Company registration services; Registration of domain names; Registration services for notification of loss; Religious services; Spiritual or religious counselling; Political research and analysis services; Solicitors' services; Enforcement of trade mark rights; Searching of trade marks; Trade mark attorney services; Trade marks exploitation

Annexure B

Trade Mark Number 968833

Class 42: Legal services

Trade Mark Number 1651154

Class 35: Administration of the business affairs of franchises; Advice relating to business organisation; Advice relating to the acquisition of businesses; Advice relating to the sale of businesses; Advisory services relating to business acquisitions; Advisory services relating to business management; Advisory services relating to business organisation; Advisory services relating to business planning; Business acquisitions consulting services; Business administration; Business administration consultancy; Business advertising services relating to franchising; Business advice; Business advice relating to franchising; Business advisory services; Business advisory services relating to the establishment of franchises; Business advisory services relating to the operation of franchises; Business assistance relating to franchising; Business assistance relating to the establishment of franchises; Business auditing; Business consultancy; Business consultancy relating to franchising; Business consultation services relating to franchising; Business management; Business management advice; Consultancy relating to business organisation; Consultancy relating to the establishment and running of businesses; Franchising consultancy and business support services; Management advisory services for businesses; Preparation of documents relating to business; Provision of assistance (business) in the establishment of franchises; Provision of assistance (business) in the operation of franchises; Provision of business advice relating to franchising; Provision of business assistance; Provision of business information relating to franchising; Research services relating to business; Franchising services (group purchasing, group advertising); Management advisory services related to franchising; Document preparation; Reproduction of documents; Advice relating to commercial management; Computerised file management; Tax advice (accountancy); Data management; Database management

Class 41:  Legal education services; Business educational services; Education services; Business training services; Commercial training services; Training; Publishing of documents; Management of educational events

Class 45:  Administration services (legal) for businesses; Compilation of legal information; Information services relating to legal matters; Legal advice; Legal advocacy services; Legal consultancy services; Legal enquiry services; Legal information research services; Legal information services; Legal lobbying services; Legal mediation services; Legal research; Legal services; Legal support services; Licensing of computer software (legal services); Monitoring intellectual property rights for legal advisory purposes; Professional legal consultations relating to franchising; Providing information, including online, about legal services; Provision of information relating to legal services; Provision of legal information; Provision of legal research; Provision of legal services; Registration services (legal); Copyright management; Industrial property (intellectual property) management; Management of patents; Management of trademarks; Advisory services relating to intellectual property rights; Enforcement of intellectual property rights; Industrial property (intellectual property) consultation services; Intellectual property consultancy; Intellectual property watching services; Protection of intellectual property; Research relating to intellectual property; Alternative dispute resolution services; Advisory services relating to trade marks; Professional advisory services relating to infringement of trade marks; Professional advisory services relating to licensing of trade marks