Blue Zones, LLC v System Biologie Deutschland UG (haftungsbeschränkt)

[2025] ATMO 35

TRADE MARKS ACT 1995

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

Re:Opposition by Blue Zones, LLC to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2192875 (International Registration number 1601199) (classes 3, 5 and 42) - BlueZones - in the name of System Biologie Deutschland UG (haftungsbeschränkt)

Delegate:

Timothy Brown

Representation:

Opponent: Spruson and Ferguson

Holder: Rahul Shah of Sharon Givoni Consulting

Decision:

2025 ATMO 35

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – reg 4.15A considered – partially established – opportunity to amend – application amended – protection extended

Background

1. This decision concerns an opposition brought by Blue Zones, LLC (‘Opponent’) under regulation 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection of the following International Registration Designating Australia:

   [1] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).

Trade Mark Number	2192875
Internation Registration Number	1601199
Trade Mark	BlueZones (‘IRDA’)
Owner	System Biologie Deutschland UG (haftungsbeschränkt) (‘Holder’)
Filing Date	21 December 2020
Goods and Services	See Schedule A (‘Holder’s Goods and Services’)

1. The IRDA was examined and the decision to accept the IRDA was advertised on 20 December 2022.

2. The Opponent filed a Notice of Intention to Oppose the extension of protection on 20 January 2023. The Opponent subsequently filed a Statement of Grounds and Particulars (‘SGP’) on 20 February 2023. The Holder filed a Notice of Intention to Defend the opposition on 6 April 2023.

3. The Opponent did not file evidence in support of its opposition. The Holder filed evidence in answer consisting of a declaration by a Sharon Givoni, solicitor for the Holder, made on 20 October 2023 (‘Givoni’) with Exhibits SG1 to SG13. No evidence in reply was filed by the Opponent.

4. Following the end of the period for filing evidence, both parties requested to be heard. The matter was heard before me, a delegate of the Registrar of Trade Marks, on the 4 November 2024. The Opponent relied on written submissions filed on 21 October 2024 and prepared by Daniel Wilson of Spruson and Ferguson. The Holder was represented by Rahul Shah, accompanied by Sharon Givoni as an observer, both of Sharon Givoni Consulting. The Holder’s oral submissions were supported by written submissions filed prior to the hearing.

   Preliminary Matter

5. On 1 November 2024, the Holder sought to file new material consisting of a colour copy of an exhibit from Givoni that included the date 25 January 2019, which had been cropped out of the original exhibit. The Holder was informed that this material constituted new evidence and that it would need to pay the requite fee before the evidence could be considered for possible inclusion in the matter under regulation 21.15(4) or 21.19.[2]

   [2] See: Trade Mark Regulations 1995 (Cth) Sch 9, Item 9C.

6. On 13 November 2024, the Holder paid the fee and provided further reasons for consideration of the evidence. The Holder submitted that critical information, being the date, was truncated from Exhibit SG8 when it was printed. The Holder submits that this date is critical to the present matter as it demonstrates that:

   ·the Holder is a part of the Swiss BlueZone research group;

   ·the screenshot includes a tab for ‘pricing’;

   ·the screenshot shows the Holder ‘works closely with all major science hubs and universities worldwide’; and

   ·all this information was displayed on the Holder’s website as of 25 January 2019.

7. Regulation 21.19 affords the Registrar discretion to consider whether available information is relevant and whether it should be considered when making a decision. Regulation 21.15(4) provides that the Registrar ‘may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate’. Neither regulation is a substitute for the evidence stages of an opposition, and the party seeking admission of the evidence must make a compelling case for its inclusion.

8. Firstly, I note that all the information except for the date is discernible in the original exhibit. I acknowledge that the date is pertinent to any consideration of prior continuous use or honest concurrent use. However, I am not persuaded that the material should be allowed into the hearing at this stage of proceedings. Whilst relevant, for reasons that will become apparent, this material is not determinative to the outcome of these proceedings. Accordingly, I am not satisfied that it is appropriate in these circumstances to allow the new copy of Exhibit SG8 into these proceedings.

   Grounds, Onus and Relevant Date

9. Regulation 17A.34 provides that an extension of protection may be opposed on any of the grounds on which an International Registration Designating Australia may be rejected and on the grounds set out in ss 58 to 61 and 62A of the Act.

10. The nominated grounds of opposition are ss 42(b), 44, 58, 58A and 60. In the present matter, the Opponent has not filed any evidence in support of its opposition. Sections 58, 58A, 60 and 42(b) require documentary evidence to support the assertions made in the SGP. In its written submissions, the Opponent acknowledged that it had not filed any evidence in support and that the only ground of opposition to be decided in this matter is s 44. For completeness, I find that ss 58, 58A, 60 and 42(b) are not established.

11. The Opponent bears the onus of establishing the ground of opposition.[3] The required standard of proof is on the balance of probabilities.[4] The date at which the rights of the parties will be determined is 21 December 2020 (‘Relevant Date’), being the priority date of the IRDA.

    Evidence

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

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

    Holder

12. Ms Givoni asserts that the Holder is a member of the Swiss Bluezones Research Group (‘Swiss Bluezones’). Exhibited is a screenshot from the Holder’s website, (‘Holder’s Website’), which includes a summary of Swiss Bluezones’ services and the statement, ‘System Biologie AG is a member of the SWISS BLUEZONES RESEARCH GROUP’.[5]

    [5] Givoni Exhibit SG7.

13. Ms Givoni declares that she was instructed that Swiss Bluezones has been operating in the field of biogerontology, epigenetics and natural medicine since 1998, and that Swizz Bluezones has operated under the name ‘Swiss Bluzones gmbh’ since 2017. Exhibited to Givoni are screenshots of an article from ‘pressreader.com/austria’ describing some of Swiss Bluezone’s commercial activities. According to Givoni the IRDA was first coined by Michael Poulain and Giovani Pes in 2004.[6] Givoni exhibits an article entitled ‘Identification of a geographic area characterized by extreme longevity in the Sardina island: the AKEA study’ published online at dated 22 June 2004, which references a geographic area referred to as the ‘Blue Zone’.[7]

    [6] Ibid [14].

    [7] Ibid SG11.

14. Exhibited to Givoni is a screenshot of the Holder’s Website sourced from Wayback Machine.[8] Ms Givoni declares that the screenshot shows the Holder’s Website as it appeared at 25 January 2019. I note the screenshot included in the exhibit does not include a date.

    [8] Ibid SH8.

15. Ms Givoni declares that she reviewed the Opponent’s website, and observed that the Opponent sells a variety of tea, honey, books and clothing by reference to the trade mark BLUE ZONES.[9]

    [9] Ibid SG1.

16. Givoni exhibits the results of a domain name search conducted on 12 October 2023 for the domain names ‘thebluezonesstore.com.au’, ‘thebluezonesstore.au’ and ‘thebluezonestore.net.au’. The search showed that none of the domain names were registered by the Opponent. Also exhibited is a search conducted via Whois Lookup, another domain name search provider, for the domain ‘bluezones.com.au’. The search showed that the domain is owned by the company Founders Capital Australia. Ms Givoni opines that this company has not relationship to the Opponent.

    Discussion and Reasons

    Section 44

17. Section 44 relevantly provides:

    (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.

18. To succeed under this ground of opposition the Opponent must establish that the IRDA is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of person other than the Holder, in respect of goods or services that are similar, or closely related to the Holder’s Goods or Services.

19. The Opponent relies on the following Protected International Trade Mark[10]:

    [10] See: reg 17A.28(2)(c): the references to a trade mark registered by another person in ss 44(1)(a)(i) and 2(a)(i) include protected international trade marks.

Trade Mark	2073653
International Registration Number	1518696
Trade Mark	BLUE ZONES (‘Opponent’s Mark’)
Priority Date	29 March 2019
Goods and Services	See Schedule B (‘Opponent’s Goods and Services’)

1. The Opponent’s Mark has an earlier priority date than the IRDA and is held in the name of another person.

2. The parties agree that the trade marks are identical. For completeness, I am also satisfied that the trade marks, being ‘BlueZones’ and ‘BLUE ZONES’ rendered in plain text, are identical. Accordingly, the primary issue to be determined is whether any of the Holder’s Goods and Services are similar or closely related to the Opponent’s Goods and Services.

   Comparison of Goods and Services

3. Section 14 provides:

   (1)     For the purposes of this Act, goods are similar to other goods:

   (a)  if they are the same as the other goods; or

   (b)  if they are of the same description as that of the other goods.

   (2)     For the purposes of this Act, services are similar to other services:

   (a)  if they are the same as the other services; or

   (b)  if they are of the same description as that of the other services.

4. Whether goods are of the same description depends on ‘whether the goods belong to the same of different trades’[11]. This is determined through consideration of a number of factors, including the nature of the goods,[12] the purpose for which the goods will be used,[13] and the trade channels through which the goods are bought and sold.[14] In Reckitt and Colman (Australia) Limited v Boden, Dixon J stated:

   What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put.  Another is whether they are commonly dealt with in the same course of trade or business.[15]

   [11] Re an Application by Ladislas Jellinek for the Registration of a Trade Mark (1947) 63 RPC 59, 64 (Romer J).

   [12] Ibid.

   [13] Ibid.

   [14] Ibid; see also: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [5] (Kitto J).

   [15] (1954) 70 CLR 84, 94.

5. The Act does not define ‘closely related’ goods and services. Justice French noted in Registrar of Trade Marks v Woolworths:

   The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related” … it is a term of wider import than “similar” and can apply to the relationships between competing services as well as between goods and services.[16]

   [16] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [37] (French, Branson and Tamberlin JJ) (‘Woolworths’).

   Class 3

6. The Holder’s Goods in Class 3 consist of ‘cleaning and frangrancing preparations; essential oils and aromatic extracts; toiletries’. The Opponent submits that these goods are closely related to its health promotional services in Class 35 and its health care services in Class 44. The Opponent contends that the Holder’s Goods in Class 3 include personal products used on the hair or body for cosmetic or health purposes, and that these goods can also be sold by providers of health care and wellness services. By way of example, the Opponent refers to Aveda, a provider of cosmetic products and salon services.

7. It is not controversial to consider cosmetic goods closely related to cosmetic services.[17] However, the Opponent’s Services in Class 44 are not described as cosmetic, salon, spa or beauty services. The Opponent’s specifies a variety of what it describes as ‘wellness’ related services in Class 44, including ‘fitness evaluation’, ‘health counselling’, ‘wellness and health consulting’, ‘massage’ services, and, in general, services relating to providing information, advice and counselling on nutrition, health and fitness. The Opponent’s Services in Class 44 are also specified to be based ‘on research involving cultures on longevity and wellness’. The Opponent contends that there is an expectation from consumers that providers of health facilities and wellness services also provide ancillary goods, such as essential oils and toiletries.

   [17] See: Active Skin P/L v Yey P/L [2018] ATMO 194 (Delegate Cooper).

8. I am not persuaded that the relationship between goods and services under consideration in this matter are analogous to cosmetic goods and cosmetic services. The Opponent Services in Class 44 are not cosmetic, beauty or salon services. Rather, they can be characterised as health and well being services. Toiletries, essential oils and cleaning products may potentially be used in the course of providing these services, particularly for services such as aromatherapy. However, there is no evidence before me that the Holder’s Goods in Class 3 are typically provided by same traders as the Opponent’s Services in Class 44. In the absence of supporting material, I am not convinced that any of the Holder’s Goods in Class 3 are closely related to the Opponent’s well being or health services, or any of the Opponent’s promotional services in Class 35.

   Class 5

9. The Holder’s Goods in Class 5 consist of a wide variety of dental, medical and veterinary preparations, medicines, and dietary supplements. The Opponent contends that these goods are closely related to its services in Classes 35, 41 and 44. In its written submissions, the Opponent emphasised providers of health, fitness and nutrition services also provide health related goods. There is no evidence to support this contention, but I accept that nutritional and dietary products would be involved in the provision of the Opponent’s various well-being and nutritional courses/programs. The Opponent referred me to Christian v Société Des Produits Nestlé SA (No 2)[18], an infringement decision in which the Full Court affirmed the primary judge’s finding that instruction, education and information services in relation to human health and nutrition are closely related to dietary and nutritional supplements.[19] As is often the case in matters involving closely related goods and services, the relationship between goods and services will be ‘defined by the function of the services with respect to the goods’[20].

   [18] [2015] FCAFC 153 (Bennett, Katzmann and Davies JJ).

   [19] Ibid [93]-[94].

   [20] Woolworths (n 16) [38].

10. I agree that there is a nexus between the purpose of the goods related to traditional remedies, nutrition and dietary supplements and trace elements in Class 5 and the wellness and nutrition services specified in Classes 41 and 44 by the Opponent. The consumption of these goods will often be informed by health, fitness and nutrition service providers and in circumstances where those goods and services bear similar trade marks, it is likely to result in confusion.

11. Regarding the remainder of the Holder’s Goods in Class 5, I note that these goods are all for medical or veterinary purposes. I am less convinced that these goods are closely related to the Opponent’s Services, framed as they are in connection with ‘nutrition’, ‘wellness programs’, ‘fitness’, ‘cultures on longevity and wellness’. The Holder submits that these services originate, or otherwise derive from, cultures or societies known for long life spans. The Holder contends that services or programs derived from cultural habits or societal norms are distinct from goods that have their foundation in medical science. There is no evidence to support whether this is the case. However, there is also no evidence that indicates the Opponent’s Services provide or otherwise inform the purchase or consumption of the sort of medical goods specified by the Holder in Class 5. The Opponent’s Services are not medical or veterinary services, and in the absence of any supporting material, I am not convinced that the Holder’s medical and veterinary related goods are closely related to any of the Opponent’s Services.

    Class 42

12. The Holder’s Services in Class 42 consist of scientific and technological services, and a variety of medical, pharmacological and scientific research and analysis services. The Opponent contends that these services are similar to the Opponent’s Services in Classes 35, 41 and 44 on the basis that science and research services are also provided by business which provide health and wellness services.

13. I do not agree with the Opponent. No evidence has been provided to support its contention. More significantly, the Holder’s Services in Class 42 can be characterised as scientific, technological, research and analysis services. The nature and purpose of these services is clearly distinct from the Opponent’s promotional services in Class 41, the instructional services in Class 42, and the health and therapeutic services in Class 44. Although these services may relate to or be provided within the broad field of medicine, the specific purposes of the services are distinct.

14. The Opponent also submits that the Holder’s broad descriptions of some its services in Class 42 would notionally encompass the Opponent’s services. The Opponent specifically refers to the Holder’s ‘natural science services’, ‘preparation of reports relating to scientific research’, ‘provision of scientific information’, and ‘research services’. In my view, these services would not notionally encompass any of the Opponent’s Services. As outlined above, the Holder’s Services in Class 42 are, amongst other things, scientific and research services. It is not tenable to conclude that science and research services include counselling services, promotional services or the provision of health care services. Science and research may be conducted in those fields, but this is not the same as encompassing those services. For these reasons I am not satisfied that the Holder’s Services in Class 42 are similar to the Opponent’s Services or closely related to the Opponent’s Goods.

1. For completeness, I also do not consider any of the Opponent’s Goods in Classes 29, 30 or 32 to be similar or closely related to the Holder’s Goods and Services.

2. I am satisfied that there would be a real and tangible danger of confusion between the IRDA and the Opponent’s Mark. Accordingly, the ground of opposition under s 44 is established in relation to the following goods:

   Class 5: Dietary supplements and dietetic preparations; natural remedies; preparations for use in naturopathy; preparations of trace elements for human and animal use; trace element preparations for human use; trace element preparations for use by animals.

   Honest concurrent use, other circumstances and prior use

3. Section 44 relevantly provides:

   (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 the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitation may include that the use of the trade mark is to be restricted to that particular area.

   …

   (4)     If the Registrar 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 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 must not reject the application because of the existence of the other mark.

4. As an initial observation, I note that the Holder has not argued that there are any ‘other circumstances’ that would justify acceptance of the IRDA under reg 4.15A(3)(b).

5. The Holder submits that it has used the IRDA since 2017, well before the priority date of the Opponent’s Mark.  The Holder also notes that the Opponent, not having filed evidence, has not demonstrated any continuous use of the mark prior to 2017. According to Givoni, the Holder had been operating under the name ‘Bluezones Swiss GmbH’ since 2017. In support, the Holder emphasised the screenshot from the Holder’s Website sourced from the Wayback Machine.[21] Ms Givoni declares that this exhibit shows the website as it appeared on 25 January 2019. Givoni also includes another screenshot of the Holder’s Website which describes the Holder as a member of Swiss Bluezones.[22]

   [21] Givoni SG8.

   [22] Ibid SG7.

6. There are several deficiencies in the Holder’s evidence that preclude me from finding that it had used the IRDA in Australia since before the priority date of the Opponent’s Mark. Firstly, neither of the exhibits referenced by the Holder are dated. I understand from the Holder’s subsequent request to consider new evidence that this was due to a clerical error. Secondly, I am not satisfied that any use of the IRDA demonstrated in Givoni constitutes use in Australia or to Australian consumers. The Holder submits that the website would be accessible to the Australian public. However, merely using a trade mark online is not sufficient to demonstrate use of a trade mark in Australia. I refer to Ward Group Pty Limited v Brodie & Stone plc[23] where it was held, in the context of trade mark infringement, that use of a mark on the internet, uploaded onto that website outside of Australia, without more, is not sufficient to establish use of that mark in any particular jurisdiction where the mark is then downloaded (viewed).[24] Evidence of use that was “specifically intended to be made in, or directed or targeted at, a particular jurisdiction” is required. The screenshots exhibited to Givoni provide no indication of any intent to reach an Australia audience. Furthermore, no supporting information, such as traffic data indicating users from Australia has been provided. I note Exhibit SG8 indicates an intent to collaborate with ‘science hubs and Universities Worldwide’, but there is no further indication of which universities this might entail or if any collaboration has occurred.  In my view, no evidence provided by the Holder demonstrates Australian consumers have been exposed to the IRDA.

   [23] [2005] FCA 471 (Merkel J).

   [24] Ibid [43].

7. For these reasons, I am not satisfied that the Holder’s evidence in answer demonstrates prior continuous use of the IRDA. For the same reasons, I am also not satisfied that there has been honest concurrent use of the IRDA.

   Decision

8. Regulation 17A.34N(1) provides:

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

9. The Opponent has established a ground of opposition under s 44 in respect of some of the Holder’s Goods and Services. Accordingly, I wrote to the Holder on 4 February 2025 advising the Holder that I intend to refuse to extend protection to the IRDA unless the Holder agreed to amend the Holders Goods and Services to the following:

   Class 3: Cleaning and fragrancing preparations; essential oils and aromatic extracts; toiletries.

   Class 5: Dental preparations and articles, and medicated dentifrices; dietary supplements and dietetic preparations; pharmaceuticals and natural remedies; alcohol for pharmaceutical purposes; amino acid preparations for medical purposes; amino acid preparations for veterinary use; bacterial preparations for medical purposes; bacterial preparations for medical and veterinary use; bacterial preparations for veterinary purposes; bacteriological preparations for medical purposes; bacteriological preparations for veterinary purposes; bath salts for medical purposes; bath preparations for medical purposes; biochemical preparations for medical use; biochemical preparations for veterinary use; biological preparations for medical purposes; biological preparations for veterinary purposes; biological tissue cultures for medical purposes; biological tissue cultures for veterinary purposes; blood for medical purposes; blood protein fractions; breath refreshers for medical purposes; breath-freshening chewing gum for medicinal purposes; cachets for medicinal purposes; cachets for pharmaceutical purposes; capsules for medicines; cardiovascular agents for medical purposes; cellular function activating agents for medical purposes; cellulose esters for pharmaceutical purposes; cellulose ethers for pharmaceutical purposes; chemical preparations for medical purposes; chemical preparations for veterinary purposes; collagen for medical purposes; collodion for pharmaceutical purposes; dextrins for pharmaceutical use; drug delivery agents in the form of coatings for tablets that facilitate the delivery of pharmaceutical preparations; drug delivery agents in the form of dissolvable films that facilitate the delivery of pharmaceutical preparations; drug delivery agents that facilitate the delivery of pharmaceutical preparations; enzyme preparations for medical purposes; enzyme preparations for veterinary purposes; enzymes for medical purposes; enzymes for veterinary purposes; feed supplements for veterinary use; feeding stimulants for animals; gas mixtures for medical use; gases for medical purposes; gelatine for medical purposes; medical preparations; medical adhesives for binding internal tissue; medical adhesives for binding wounds; lubricants for medical use; lotions for veterinary purposes; greases for medical or veterinary purposes; mineral waters for medical purposes; mineral preparations for medical purposes; mineral food preparations for medical purposes; milk sugar for medical purposes [lactose]; medicinal healthcare preparations; medicated additives for animal foods; medicated shampoos for pets; medicated toiletry preparations; medicines for veterinary purposes; nutritional supplements for veterinary use; organotherapeutics; pain relief medication for veterinary purposes; panthenol preparations for medical use; pharmaceutical preparations for animals; pharmaceutical preparations for veterinary use; pheromones; preparations for use in naturopathy; preparations of trace elements for human and animal use; reagents for medical use; therapeutic preparations for the bath; trace element preparations for human use; trace element preparations for use by animals; vaccines; veterinary preparations; veterinary preparations and substances.

   Class 42: Scientific and technological services; medical and pharmacological research services; testing, authentication and quality control; natural science services; blood analysis services; blood analysis services for scientific research purposes; computer aided diagnostic testing services; computer aided scientific analysis services; computer aided scientific research services; development of testing methods; design and development of medical technology; cosmetic research; cosmetics research for others; advisory services relating to science; drug discovery services; laboratory research in the field of cosmetics; laboratory analysis in the field of cosmetics; laboratory testing services; laboratory research in the field of gene expression; laboratory services for analytical testing; preparation of scientific reports; preparation of reports relating to scientific research; product research; preparation of technological research reports; provision of scientific information; provision of research services; research and development in the field of biotechnology; research and development services in the field of antibodies; research services; scientific and industrial research; scientific laboratory services; scientific research; scientific research and analysis; scientific research for medical purposes; scientific research relating to cosmetics; scientific research relating to hair care preparations; scientific services and research relating thereto; scientific technological services; scientific testing services; services for the development of methods of testing; veterinary laboratory services.

10. The Holder responded on 14 February 2025 to the request to amend the Holder’s Goods and Services. Accordingly, I extend to extend protection to trade mark number 2192875. Should the Registrar be served with a notice of appeal before the extension of protection, I direct that the extension of protection of the IRDA not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

    Costs

11. Both parties sought an award of costs. As both parties have achieved a measure of success, I decline to award costs in this matter.

    Timothy Brown

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    20 February 2025

    Schedule A – Specification for the IRDA

    Class 3: Cleaning and fragrancing preparations; essential oils and aromatic extracts; toiletries.

    Class 5: Dental preparations and articles, and medicated dentifrices; dietary supplements and dietetic preparations; pharmaceuticals and natural remedies; alcohol for pharmaceutical purposes; amino acid preparations for medical purposes; amino acid preparations for veterinary use; bacterial preparations for medical purposes; bacterial preparations for medical and veterinary use; bacterial preparations for veterinary purposes; bacteriological preparations for medical purposes; bacteriological preparations for veterinary purposes; bath salts for medical purposes; bath preparations for medical purposes; biochemical preparations for medical use; biochemical preparations for veterinary use; biological preparations for medical purposes; biological preparations for veterinary purposes; biological tissue cultures for medical purposes; biological tissue cultures for veterinary purposes; blood for medical purposes; blood protein fractions; breath refreshers for medical purposes; breath-freshening chewing gum for medicinal purposes; cachets for medicinal purposes; cachets for pharmaceutical purposes; capsules for medicines; cardiovascular agents for medical purposes; cellular function activating agents for medical purposes; cellulose esters for pharmaceutical purposes; cellulose ethers for pharmaceutical purposes; chemical preparations for medical purposes; chemical preparations for veterinary purposes; collagen for medical purposes; collodion for pharmaceutical purposes; dextrins for pharmaceutical use; drug delivery agents in the form of coatings for tablets that facilitate the delivery of pharmaceutical preparations; drug delivery agents in the form of dissolvable films that facilitate the delivery of pharmaceutical preparations; drug delivery agents that facilitate the delivery of pharmaceutical preparations; enzyme preparations for medical purposes; enzyme preparations for veterinary purposes; enzymes for medical purposes; enzymes for veterinary purposes; feed supplements for veterinary use; feeding stimulants for animals; gas mixtures for medical use; gases for medical purposes; gelatine for medical purposes; medical preparations; medical adhesives for binding internal tissue; medical adhesives for binding wounds; lubricants for medical use; lotions for veterinary purposes; greases for medical or veterinary purposes; mineral waters for medical purposes; mineral preparations for medical purposes; mineral food preparations for medical purposes; milk sugar for medical purposes [lactose]; medicinal healthcare preparations; medicated additives for animal foods; medicated shampoos for pets; medicated toiletry preparations; medicines for veterinary purposes; nutritional supplements for veterinary use; organotherapeutics; pain relief medication for veterinary purposes; panthenol preparations for medical use; pharmaceutical preparations for animals; pharmaceutical preparations for veterinary use; pheromones; preparations for use in naturopathy; preparations of trace elements for human and animal use; reagents for medical use; therapeutic preparations for the bath; trace element preparations for human use; trace element preparations for use by animals; vaccines; veterinary preparations; veterinary preparations and substances.

    Class 42: Scientific and technological services; medical and pharmacological research services; testing, authentication and quality control; natural science services; blood analysis services; blood analysis services for scientific research purposes; computer aided diagnostic testing services; computer aided scientific analysis services; computer aided scientific research services; development of testing methods; design and development of medical technology; cosmetic research; cosmetics research for others; advisory services relating to science; drug discovery services; laboratory research in the field of cosmetics; laboratory analysis in the field of cosmetics; laboratory testing services; laboratory research in the field of gene expression; laboratory services for analytical testing; preparation of scientific reports; preparation of reports relating to scientific research; product research; preparation of technological research reports; provision of scientific information; provision of research services; research and development in the field of biotechnology; research and development services in the field of antibodies; research services; scientific and industrial research; scientific laboratory services; scientific research; scientific research and analysis; scientific research for medical purposes; scientific research relating to cosmetics; scientific research relating to hair care preparations; scientific services and research relating thereto; scientific technological services; scientific testing services; services for the development of methods of testing; veterinary laboratory services.

    Schedule B – specification for the Opponent’s Mark

    Class 29: Shelled, roasted, prepared, processed, salted and unsalted nuts; yogurt; soup; dried beans.

    Class 30: Coffee; honey; tea; flour; sauces; coconut flour, Ojoche flour; cornmeal; corn flour.

    Class 32: Bottled drinking water; drinking water; spring water; water beverages.

    Class 35: Promoting public awareness of practices to improve the health and longevity of communities through the organizing of public health projects; all of the foregoing services are based on research involving cultures of longevity and wellness; public health awareness programs in the nature of promoting health and wellness so people can lead healthier lives, all of the foregoing services are based on research involving cultures of longevity and wellness.

    Class 41: Public health and wellness programs in the nature of providing physical fitness classes and nutrition courses; exercise programs in the nature of providing physical fitness classes, all of the foregoing services are based on research involving cultures of longevity and wellness.

    Class 44: Public health initiatives, namely, planning, promoting, administering and managing wellness programs to improve the health and longevity of communities; all of the foregoing services are based on research involving cultures of longevity and wellness; counseling services in the fields of health, nutrition and lifestyle wellness; health care services, namely, wellness programs; providing information regarding healthy living and lifestyle wellness via a website; providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; wellness and health-related consulting services; providing assistance, fitness evaluation and consultation to corporate clients to help their employees make health, wellness and nutritional changes in their daily living to improve health; providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health; massage; establishing, developing and providing residential and commercial communities focused on health, wellness and longevity in the nature of providing health improvement services and facilities for health and wellness of the body and spirit; preventative health programs and community sponsored health programs in the nature of providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health; employer sponsored health programs in the nature of providing assistance, fitness evaluation and consultation to corporate clients to help their employees make health, wellness and nutritional changes in their daily living to improve health; wellness communities in the nature of providing health improvement services and facilities for health and wellness of the body and spirit, all of the foregoing services are based on research involving cultures of longevity and wellness.