Beckman Coulter, Inc. v Cplus Biotech Pty Ltd

[2025] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Beckman Coulter, Inc. to registration of trade mark application 2333593 (9,10) – CYTOPHEX – in the name of CPLUS BIOTECH PTY LTD.

Delegate:	Nicholas Smith
Representation:	Opponent: Davies Collison Cave Pty Ltd Applicant: Legalvision ILP Pty Ltd
Decision:	2025 ATMO 53 Trade Marks Act 1995 (Cth) - section 52 opposition: s 44 considered – ground established – registration refused

Background

1. This decision concerns an opposition brought by Beckman Coulter, Inc. (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of CPLUS BIOTECH PTY LTD (‘Applicant’): 

Application Number:	2333593
Filing Date[1]:	13 February 2023
Goods:	Class 9: Apparatus for laboratory use (other than medical); Biological safety cabinets; Bioreactor apparatus; Bioreactor instruments; Bioreactors for cell culturing for scientific research; Bioreactors for laboratory use; Bioreactors for research use; Cell culture apparatus for laboratory use; Cell culture instruments for laboratory use; Centrifuges for laboratory use; Cytometers; Incubators for bacteria culture; Incubators for laboratory use; Instruments for scientific research in laboratories; Insulated bottles (flasks) for laboratory use; Insulated vessels for laboratory use; Culture dishes; Culture plates; Laboratory articles (other than for medical use); Microplates (reagent testing apparatus), other than for medical use; Microscopes; Purification apparatus (laboratory, other than medical); Safety cabinets for scientific purposes; Apparatus for scientific research in laboratories; Research apparatus for scientific use; Scientific apparatus; Scientific apparatus for laboratory use (other than for medical diagnosis); Scientific equipment; Testing apparatus for diagnostic purposes (other than medical) Class 10: Biomedical testing apparatus; Cell counting units for medical use; Cell culture apparatus for medical use; Cell culture instruments for medical use; Centrifuges for medical use; Hemocytometers; Incubators for medical purposes; Apparatus for administering pharmaceuticals; Purification apparatus (medical); Medical apparatus and instruments; Medical diagnostic apparatus; Medical diagnostic apparatus for laboratory use; Medical diagnostic apparatus for sale in kit form; In-vitro diagnostic testing apparatus for medical use; Medical testing apparatus; Therapeutic apparatus (medical) (‘Applicant’s Goods’)
Trade Mark:	CYTOPHEX	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars (‘SGP’) on 13 October 2023.  The SGP raised grounds of opposition under ss 42(b), 44[2] and 60.  The Applicant filed a Notice of Intention to Defend on 23 November 2023. 

   [2] As the Opponent relied on a protected international trade mark application as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A of the Regulations rather than s 44 of the Act. However, as the terms are substantively identical for all relevant purposes and for ease of reading, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read reg 4.15A and the Opponent’s Trade Mark (as defined later in the decision) should be recognised as a protected international trade mark application.

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Hui Xu, Associate and Trade Marks Attorney with Davies Collison Cave Pty Ltd (‘Xu declaration’)	23 February 2024	HX-1 to HX-11
Evidence in answer
None filed
Evidence in reply
None filed

1. Once the time allowed for filing evidence had ended, the parties were given an opportunity to request an oral hearing or a hearing by written submissions.  On 19 July 2024 the Opponent requested a hearing by written submissions and paid the appropriate fee.  The matter was set down for a hearing on 18 February 2025.  In line with usual practice, a letter was sent to the parties on 12 December 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 2 February 2025 (‘Opponent’s Submissions’).  The Applicant did not file any submissions.

2. I am a delegate of the Registrar of Trade Marks (‘Registrar’) and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

3. The Opponent is an United States of America company that offers a range of diagnostic and life sciences products.  

4. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods
1856835	CytoFLEX	4 April 2017	Class 1: Reagents for scientific, laboratory and research use, namely, reagents used with flow cytometers for sample preparation and cell and particle analysis, detection and counting Class 9: Cytometers; precision measuring apparatus, namely, cytometers, and flow cytometers and flow-based analyzers providing cell and particle analysis, detection, or counting for scientific, laboratory, and research uses; computer software for use in analyzing biological cells for scientific, laboratory and research use

1. Given my finding that the ground of opposition has been established pursuant to s 44 of the Act (and the Applicant has not filed any evidence of use), it is not necessary to summarise the Xu declaration in any great detail. The Xu declaration (and annexures) states that the Opponent has used the Opponent’s Trade Mark in Australia since June 2015 and provides evidence of the Opponent’s reputation (though sales and promotion) in the Opponent’s Trade Mark.

   The Applicant

2. The Applicant has not filed any evidence and as such I have no information about it other than what is set out on the Register. 

   Grounds of Opposition, Onus and Standard of Proof

3. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 44. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

4. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[5]

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

   [4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

5. The relevant provisions of ss 44 and 10 are reproduced below:

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

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

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

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

   Note 1: For deceptively similar see section 10.
   Note 2: For similar goods see subsection 14(1).

   (2)…

   (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. 

   Note:  For limitations see section 6.

   (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.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
   Note 2: For predecessor in title see section 6.
   Note 3: For priority date see section 12.

   Section 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.

6. To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered or sought to be registered[6] by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

   [6] or an international registration designating Australia protected or sought to be protected

7. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, there are other circumstances which would make 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 mark. In the present case as the Applicant has provided no evidence of use prior to the relevant date or other circumstances that would make registration of the Trade Mark proper it is not necessary to consider these provisions.

8. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the priority date of the Trade Mark.  The Opponent’s Trade Mark is registered for cytometres and related goods.  The Trade Mark is sought to be registered for cytometres and other scientific measuring devices. As such I consider the third requirement is satisfied for most, if not all of the Applicant’s Goods.  It remains necessary to consider the second requirement.

   Substantially identical and/or deceptively similar

9. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark.  When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) 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.[7]

   [7] [1963] HCA 66, [12].

10. The Trade Mark and the Opponent’s Trade Mark are set out below:

    CYTOPHEX              CytoFLEX

11. On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Opponent’s Trade Mark and the Trade Mark, being the different suffixes ‘Phex’ and ‘Flex’.  I note that the difference in capitalisation is de minimus and has no bearing on the comparison either for the question of substantial identity or deceptive similarity.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark are deceptively similar.

12. The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. 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 [trade mark].[8]

    [8] Ibid [13].

13. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[9] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[10] as follows:

    [9] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (‘Self Care’).

    [10] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[11]

    [11] Self Care (n 9), [30] citing Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[12]

    [12] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ)

    (c)the marks should not be compared side by side;[13]

    (d)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 (or services), then similarities both of sound and of meaning may play an important part;[14]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[15]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[16]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[17]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [18]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[19]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[20]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[21] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[22]

    [13] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [14] Ibid.

    [15] Ibid.

    [16] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [70], [77]-[80] (Yates, Abraham and Rofe JJ).

    [17] Shell, [12].

    [18] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [19] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [20] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50(ii)] (‘Woolworths’) (French J) restating principles from Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-595 (Kitto J).

    [21] Australian Woollen Mills Ltd, 658.

    [22] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) (‘Hashtag Burgers’) citing Australian Woollen Mills, 657.

14. Furthermore the Court, in the same case, noted the following:[23]

    In considering the likelihood of confusion or deception, "the court is not looking to the totality of the conduct of the defendant in the same way as in a passing off suit"[24]. In addition to the degree of similarity between the marks, the assessment takes account of the effect of that similarity considered in relation to the alleged infringer's actual use of the mark[25], as well as the circumstances of the goods, the character of the likely customers, and the market covered by the monopoly attached to the registered trade mark[26]. Consideration of the context of those surrounding circumstances does not "open the door" for examination of the actual use of the registered mark, or, as will be explained, any consideration of the reputation associated with the mark.[27]

    [23] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [33] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [24] New South Wales Dairy Corporation v Murray-Goulburn Co‑operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (emphasis added) (Gummow J), approved in CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [44] (Ryan, Branson and Lehane JJ) (‘Henschke’), Hashtag Burgers,  [64], Combe International Ltd v Dr August Wolff GmbH & Co KG Arzneimittel [2021] FCAFC 8, [27], PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598, [97] (see also 626 [111]) and Swancom (2022) 168 IPR 42, [73].

    [25] Act, s 68.

    [26] New South Wales Dairy [1989] FCA 124; (1989) 86 ALR 549, 589.

    [27] Swancom (2022) 168 IPR 42, 59 [89]. See also Henschke (n 24), 62 [44].

1. As stated above, for the purposes of considering deceptive similarity, the reputation of the Opponent’s Trade Mark is not a relevant factor.[28]  Distinctiveness is a factor that can legitimately be taken into account when considering deceptive similarity.[29]

   [28]Ibid [93] and, albeit in the s120(1) context, Self Care  (n 9) [49] .

   [29] Stone & Wood Group Pty Ltd v Intellectual Property Development Corporation Pty Ltd (2018) 129 IPR 238, [66] (Allsop CJ, Nicholas, Katzmann JJ).

2. In the present case, there are two factors that would suggest that a greater degree of similarity in the respective trade marks would not prevent registration of the Trade Mark.  The first is that the goods for which the marks are registered/sought to be registered are specialist products purchased by sophisticated customers who may be less likely to be confused by the similarity in marks.  The second is that, in the context of the goods and services for which the Trade Mark and the Opponent’s Trade Mark are registered/sought to be registered, the element ‘cyto’ is somewhat descriptive and common to the trade being an obvious allusion to cytometres which are a significant portion of the Applicant’s Goods (though for other goods in the specification it is less descriptive and hence the shared element is more likely to cause confusion).[30]  In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar; noting the discussion by Justice Stephen[31] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[32]

   [30] See Deckers Outdoor Corporation v B&B McDougal [2006] ATMO 5, [34] (Hearing Officer Thompson).

   [31] Albeit in relation to trade practices.

   [32] 140 CLR 216, 229.

3. Notwithstanding the above two facts, I consider the two marks, when compared as a whole, are so similar that even given the sophistication of the customer base, confusion is likely. The marks are visually similar, both being eight-letter words starting with ‘cyto’ and finishing with ‘ex’. The ‘ph’ element in the Trade Mark has the same pronunciation as the ‘f’ in the Opponent’s Trade Mark and as such the marks are aurally very similar (though not identical – they would be pronounced as ‘cytoflex’ and ‘cytofex’ respectively). By reason of the ‘ph’ element being pronounced as an ‘f’ there is also a strong likelihood of conceptual similarity and general customer confusion; a customer with an imperfect recollection of the Opponent’s Trade Mark (for example, being unsure if the second syllable of the Opponent’s Trade Mark was pronounced as ‘flex’ or ‘fex’) could easily be caused to wonder whether an identical product branded with the Trade Mark is produced by the Opponent. I find that the second requirement is satisfied and hence the Opponent’s opposition under s 44 is successful.

   Resolution of Opposition

4. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[33]

   [33] [2014] FCA 1304, [232].

5. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established. I note that in  Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited, Murphy J stated:

   I consider the Court has power under s 65(7) of the Act to cut down the breadth of the application but I do not take that course when no party argued that the Court should do so, or identified a principled basis upon which the Court could approach such a task.[34]

   [34] [2014] FCA 373, [231].

6. I note the specification for the Trade Mark is broader than the Opponent’s Trade Mark, being in respect of a broader range of scientific apparatus other than the measuring apparatus of the Opponent’s Trade Mark. However, in the present case, as noted in paragraph 16 above, the section 44 ground has been established in respect of a very significant portion of the Applicant’s Goods. To the extent that any of the Applicant’s Goods are not related to the Opponent’s Goods (and I note that the Applicant has made no submissions to suggest that this is the case) neither party has raised the possibility of an amendment and in particular the Applicant has not suggested that I should offer an amendment nor identified a principled basis to allow the amendment of the Trade Mark to limit it to a particular subset of the Applicant’s Goods. There is no evidence before me of the Applicant ever having used the Trade Mark for anything other than cytometres or measuring apparatus, which are the goods the Opponent’s Trade Mark is registered for. In circumstances where the opposition has been established for a significant proportion of the Applicant’s Goods and there is no compelling evidence or submissions suggesting the need for an amendment, I do not consider it appropriate to offer an amendment in respect of the Trade Mark. If the Applicant wishes to register the Trade Mark for a more different range of goods it may make a separate application.

   Decision and Costs

7. I have found the Opponent has established the ground of opposition it raised pursuant to s 44. As the delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise, the disposition of this application should be in accordance with the Court’s orders or directions.

8. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith
   Hearing Officer
   Delegate of the Registrar of Trade Marks
   11 March 2025