Bose Corporation v Heino Buse MX Import GmbH

[2014] ATMO 110

TRADE MARKS ACT 1995

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

Re:Opposition by Bose Corporation to protection of International Registration Designating Australia 1518222 (IR 888605) (9, 12, 18, 25, 28) - BUSE - filed in the name of Heino Buse MX Import GmbH.

Delegate:

Jock McDonagh

Representation:

Opponent: Gabriella Rubagotti, of Counsel, instructed by Baker & McKenzie Lawyers

Holder: Ian Horak of Counsel, instructed by Actuate IP

Decision:

14 ATMO 110

Reg. 17A.29 opposition – Grounds pursued under sections 44 and 60 not established – IRDA granted protection.

Regulation 5.15: Permission to serve further evidence denied.

Background

1. Application 1518222 is an international registration designating Australia (“IRDA”).  It was filed in the name of Heino Buse MX Import GmbH (“the Holder”) under the Madrid Protocol on 13 June 2012.

2. Section 189A of the Trade Marks Act 1995 (“the Act”) governs the consideration of IRDAs. This section makes provision for the Trade Marks Regulations (“the Regulations”) to “provide for such matters as are necessary to enable the performance of the obligations of Australia, or to obtain for Australia any advantage or benefit, under the Madrid Protocol.” 

3. Details of the IRDA are as follows:

Trade mark:       

Trade mark application:

International Registration:

1518222

888605

Filing Date:

13 June 2012

Specifications :

Class 9: Starter cables for motors; batteries for lighting; anti-dazzle shades; anti-glare visors; flashing lights (luminous signals); blinkers (signalling lights); anti-glare glasses; theft prevention installations, electric; anti-theft warning apparatus; cables, electric; speed checking apparatus for vehicles; protective helmets; protective helmets for sports; protective masks; goggles for sports; gloves for protection against accidents

Class 12: Vehicle covers (shaped); transmission chains for land vehicles; saddle covers for bicycles or motorcycles; anti-dazzle devices for vehicles; anti-glare devices for vehicles; brake segments for vehicles; brake linings for vehicles; brakes for vehicles; brake shoes for vehicles; vehicle chassis; automobile chassis; anti-theft devices for vehicles; anti-theft alarms for vehicles; direction signals for vehicles; turn signals for vehicles; bodies for vehicles; vehicle seats; crankcases for land vehicle components (other than for engines); luggage nets for vehicles; panniers adapted for cycles; luggage carriers for vehicles; horns for vehicles; automobile bodies; automobile chains; mudguards; automobiles; mopeds; hoods for vehicle engines; motorcycles; gearing for land vehicles; rearview mirrors; saddles for bicycles, cycles or motorcycles; clutches for land vehicles; mudguards; steering wheels for vehicles; suspension shock absorbers for vehicles; shock absorbers for automobiles; shock absorbing springs for vehicles; vehicle suspension springs; driving chains for land vehicles; transmissions, for land vehicles; windscreens; windshields; brakes for bicycles, cycles; cycle stands

Class 18: Imitation leather; travelling bags; wheeled shopping bags; tool bags of leather (empty)

Class 25: Heelpieces for boots and shoes; clothing of leather; clothing of imitations of leather; motorists' clothing; clothing; scarves; scarfs; gloves (clothing); jumpers (shirt fronts); chemisettes (shirt fronts); shirts; hats; jackets (clothing); pockets for clothing; ready-made clothing; sweat-absorbent underclothing (underwear); underclothing (anti-sweat); underwear (anti-sweat); outerclothing; lace boots; fittings of metal for shoes and boots; iron fittings for shoes; iron fittings for boots; shoes; soles for footwear; boots for sports; sports shoes; boots; stockings (sweat-absorbent); underwear; linen (body) (garments); underclothing

Class 28: Elbow guards (sports articles); knee guards (sports articles); shin guards (sports articles); protective paddings (parts of sports suits)

Endorsements: Colour Claimed: RED and GREY.*

1. Following examination of the IRDA, IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 29 November 2012.

2. On 27 February 2013 Bose Corporation (“the Opponent”) filed a Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia pursuant to Reg 17A.29 of the Regulations.

3. Thereafter the parties filed the following evidence:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Neville Ross Hart	Financial Controller and Company Secretary of Opponent	21.08.13 “Hart 1”	NH-1 to NH-50
Roderick Macleod	Manager Consumer Research and Marketplace Analytics of Opponent	7.08.13 “Macleod”	A and B
Evidence in Answer
Heino Buse	Holder	2.01.14 “Buse”	HB1 to HB4
Evidence in Reply
Neville Ross Hart	Financial Controller and Company Secretary of Opponent	8.04.14 “Hart 2”	NH-1 to NH-3

1. On14 August 2014, the Opponent’s legal representatives sought permission to serve a copy of further evidence in the Opposition proceedings. I advised the parties that I would hear submissions on this application as a preliminary matter to the substantive hearing.

2. I heard the matter in Canberra as a delegate of the Registrar of Trade Marks on 26 August 2014. Gabriella Rubagotti, of Counsel, instructed by Baker & McKenzie Lawyers, appeared on behalf of the Opponent. Ian Horak of Counsel, instructed by Actuate IP, appeared on behalf of the Holder.

Grounds of Opposition

1. The Notice nominated most grounds of opposition available under the Trade Marks Act 1995 (“the Act”). Prior to the hearing the Opponent advised that it would only press the following  two grounds:

   • Prior substantially identical or deceptively similar trade mark (Section 44)
   • Reputation (Section 60)

2. To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds. 

3. None of the evidence served and filed by the Opponent appears to go to the grounds in the Notice that were not pressed and for the sake of completeness I find that these grounds have not been established.

Standard of Proof

1. The relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

Preliminary matter – Further Evidence

1. These proceedings commenced before 15 April 2013; accordingly, applications and permissions for further evidence remain available under the now repealed regulation 5.15.  Regulation 5.15 was the relevant provision::

   5.15    Extension of period to serve evidence and service of further evidence

   (1)A party to the opposition proceedings may apply to the Registrar:

   (a)    for an extension of the period for serving a copy of the evidence under regulation 5.7, 5.10 or 5.12; or

   (b)    for permission to serve a copy of further evidence on the other party.

   (2)The Registrar may grant an application on reasonable terms specified by the Registrar.

   (3)The Registrar must not grant an application unless the Registrar:

   (a)    is reasonably satisfied that the applicant has served a copy of the application, and of any documents accompanying the application, on the other party; and

   (b)    has given the parties a reasonable opportunity to make representations concerning the application; and

   (c)     is reasonably satisfied that:

   (i)in the case of an application to which paragraph (1) (a) applies — the extension of the period for serving a copy of the evidence; and

   (d)    (ii)      in the case of an application to which paragraph (1) (b) applies — permission to serve a copy of further evidence;

   (e)    is appropriate.

   (4)For the purposes of paragraph (3) (b), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

2. Therefore, I must not grant the extension unless:

• I am reasonably satisfied that the applicant has served a copy of the application, and any documents accompanying the application, on the other party; and

• the parties have been given a reasonable opportunity to make representations; and

• I am reasonably satisfied that the extension of time is appropriate.

1. I am satisfied that the first two matters above have been complied with. 

2. In considering whether it is appropriate to grant an application to file further evidence, the Registrar requires that the party seeking permission sets out, in declaratory form, the reasons for wishing to do so and the nature of that evidence. In coming to a decision in the matter, I also consider the threefold test for the admission of further evidence developed from Lord Denning's judgment in Ladd v Marshall (1954) 1 WLR 1489:

• it should be shown that, with reasonable diligence, the evidence could not have been obtained earlier;

• it should be shown that the evidence is likely to have an important effect on the outcome; and

• the evidence should be credible.

1. However, in Studio SrL v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858, the Registrar's delegate pointed to differences between the British and Australian provisions and made these comments in relation to the Australian law:

   [I]t is well established that an "appeal" from the Registrar is not an appeal in the strict sense at all but within the original jurisdiction of the court: Jafferjee v Scarlett (1937) 57 CLR 115. The appeal is a hearing de novo and the court will not exclude further evidence or additional grounds...

   The effect of refusing an application for special leave may therefore be to force an unsuccessful party to the opposition before the Registrar into an appeal to the court where the evidence, if admissible, would not be excluded. Obviously it would be preferable for the matter to be finally decided by the Registrar if the admission of further evidence would allow this to be done.

2. The delegate went on to refer to the findings of Richardson J in Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd (1979) RPC 410, where, in relation to a matter of deception and confusion, his Honour said:

   Within reasonable limits it furthers [the] public interest to allow consideration of any available evidence that will assist in providing a clearer picture of the awareness of rival marks as affecting the likelihood of deception and confusion. Second, the evidence sought to be adduced is evidence that would assist in resolving ambiguities in material furnished to the Assistant Commissioner. Except for the evidence of Mr Waymouth, it does not attempt to break new ground and Mr Waymouth's evidence provides, from official sources, relevant information as to the size of the market ... And as put by Ungoed-Thomas J in Bali Trade Mark (1966) RPC 387 393:

   ... [T]he proper course is to attach the main weight to the desirability of having the substantial issue satisfactorily and fully investigated.

1. Counsel for the Opponent submitted that the further evidence is relevant to the Opponent’s use of its BOSE trade mark on sound systems for automobiles, being relevant to the likelihood of confusion under section 60 of the Act.

2. Counsel for the Opponent further submitted that the evidence was not entirely new, being explanatory of earlier evidence already filed in the proceedings. Further, it was unlikely to cause any prejudice to the Holder; indeed the Opponent submitted that the Holder had not objected to the application and dealt with the merits of the evidence in its written submissions prior to the hearing.

3. The Holder’s counsel opposed the application for the following reasons:

• The Opponent had not shown that the evidence could not, with reasonable diligence, have been obtained earlier.

• The further evidence is material that could have been produced and tendered in evidence in support.

• The evidence does not indicate that consumers bought BOSE audio systems, rather such systems were included in motor vehicles purchased in Australia.

• The evidence does not assist the Opponent in establishing the requisite reputation in Australia.

1. I am not satisfied that the proposed further evidence could not have been obtained earlier. The information was always within the knowledge of the Opponent, as was the knowledge that the Holder’s goods were involved in the automotive industry.

2. Further, the absence or presence of the evidence has no effect on the decision I have made. Therefore I refuse permission for the Opponent to serve further evidence.

Discussion - Section 44 ground of opposition

1. Section 44 of the Act relevantly provides:

   44Identical 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.

Note 1:For deceptively similar see section 10.

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

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. In order to establish a ground of opposition under subsection 44(1), an opponent thus must demonstrate the existence of one or more registered or pending trade marks owned by a person other than the applicant:

   ·With an earlier priority date (or dates) than that of the opposed trade mark; which has

   ·Similar goods to those of the opposed trade mark; and

   ·A trade mark (or trade marks) which are deceptively similar.

2. The Opponent cited is the owner of a number of prior registered Australian trade marks, the details of which are as follows

Regn No.	Priority Date	Trade Mark	Class & Specification
287239	14.05.75	BOSE	Class: 9 Loudspeaker systems and amplifiers
681413	20.12.95	Class: 9 Acoustical transducer systems for reproducing sound; loudspeaker systems; electric power processors - namely power amplifiers, inverters, and battery chargers
962575	7.02.97	BOSE	Class: 9 Music systems; acoustical transducer systems for reproducing sound including headsets; loudspeaker systems; electric power processors - namely power amplifiers, inverters and battery chargers
727431	7.02.97	Class: 9 Music systems; acoustical transducer systems for reproducing sound including headsets; loudspeaker systems; electric power processors - namely power amplifiers, inverters and battery chargers
956994	10.06.03	BOSE	Class: 35 Retail services; retail, wholesale and promotion of electric and electronic apparatus, instruments and equipment, of apparatus for recording, transmission and reproduction of sound or images, of loudspeakers, amplifiers and loudspeaker systems, of music systems, of sound systems and controllers for sound systems, of radios, of electric power processors, of computer hardware and software, of network products, of headsets and of parts and accessories for all the foregoing goods; advertising services; business services provided in assisting with the purchase of goods; provision of information on-line in regard to the purchase of the aforementioned goods; business management and advisory services; organisation of exhibitions and trade fairs Class: 37 Installation, maintenance and repair services; installation, maintenance and repair of electric and electronic apparatus, instruments and equipment, of apparatus for recording, transmission and reproduction of sound or images, of loudspeakers, amplifiers and loudspeaker systems, of music systems, of sound systems and controllers for sound systems, of radios, of electric power processors, and of computer hardware
957000	10.06.03	As above
1122623	7.07.06	BOSE	Class: 9 Apparatus for recording, transmission or reproduction of sound or images; sound systems; home theatre systems; digital audio players and recorders; digital image players and recorders; loudspeakers; loudspeaker systems; amplifiers; mixers; microphones; headphones and headsets; vehicle audio systems; audio testing and measurement equipment; computer hardware and software, including computer hardware and software for adjusting the characteristics of a sound system based on the properties of the location where the sound system is located; computer software for the control and improvement of sound quality; computer software for the storage, reproduction, transmission and editing of sound, data, text, images and video; parts and accessories for all the aforesaid goods
1379566 (IR 1046130)	30.06.10	BOSE RIDE	Class: 12 Suspension systems for vehicle seats; vehicle seats Endorsements: Convention priority claimed: 28 January 2010, United States of America, No. 77922072 in respect of SUSPENSION SYSTEMS FOR VEHICLE SEATS; VEHICLE SEATS in class 12.*

1. The Opponent relies upon registrations 1122623 BOSE and 1379566 BOSE RIDE for this ground of opposition. Both registrations have earlier priority dates than the Holder’s IRDA.

2. When one compares the goods specified for the Holder’s IRDA and each of the Opponent’s cited registrations, there is little similarity. However, are the the exceptions of the Holder’s Class 9 claim for “cables, electric” when compared to 1122623 BOSE, and its Class 12 claims for “vehicle seats”, “saddles for bicycles, cycles or motorcycles”, and “shock absorbers for vehicles” when compared to 1379566 BOSE RIDE.

3. While “cables electric” are literally similar to the Opponent’s Class 9 goods, it is obvious that the Opponent’s specification is in the context of audio equipment, which would be sold through different trade channels and have different uses.

4. Again, while there is similarity between the Class 12 goods, especially “vehicle seats”, the discussion below regarding the deceptive similarity of the relevant trade marks overcomes this limb.

5. I note, also, the fact that the Opponent’s goods are not the sort of goods purchased casually or without attention: Stuart Alexander & Co (Interstate) Pty Ltd v Blenders Pty Ltd (1981) 37 ALR 161.

6. The Opponent did not suggest that the IRDA was substantially identical with the cited registrations and I find that they are not substantially identical and will proceed on the basis that the Opponent is asserting deceptive similarity.

7. Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at paragraph 13 per Windeyer J:

   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 television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two  marks  side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the  marks  clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106 . And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658

1. I am to estimate the effect on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods.  This contextual comparison was stressed in In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380; 23 RPC 774 at 777, above, where Parker J said:

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

2. The standard which is applied to the assessment of whether the trade marks are deceptively similar is that specified in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at paragraph 50 by French J who said:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

3. There are certainly similarities between the various marks. The primary difference is the second letter of BOSE and BÜSE.

4. The inclusion of the Ü in the Holder’s mark, being an unfamiliar character not contained in the standard Latin alphabet with which most Australian consumers would be familiar, constitutes a significant point of differentiation between the trade marks, and is not something that is likely to be ignored or elided from the word. It also significantly alters the pronunciation of the Holder’s mark (similar to “muse”) as compared with BOSE (similar to “rose”).

5. I find that the marks are sufficiently different in sound and appearance that there is no real tangible danger of deception or confusion occurring in the marketplace. This ground of opposition has not been established.

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

   60. 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.

2. To satisfy section 60 the Opponent must establish:

• that another trade mark had, before 1 September 2008, acquired a reputation in Australia in respect of particular goods/services; and

• because of the reputation of that other trade mark, the use of the Holder’s trade mark would be likely to deceive or cause confusion.

1. It is not necessary to show under section 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.

2. As I stated above, there are some similarities in the word elements of the various marks, and the devices shown in the table above (paragraph 26) show both the Opponent’s and Holder’s devices using slanted block letters.

3. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick (2000) 51 IPR 102, by Kenny J at [81] – [82]:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

   Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

4. Further, at [86] , Kenny J said:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

5. The Opponent’s evidence establishes that it has a significant and long term use of BOSE in relation to high-end audio products and home entertainment products. There is also evidence (other than that refused permission) of audio systems installed in motor vehicles in Australia.

6. However, the type of reputation that the Opponent must establish is that of a nature such that the reputation was of a kind and extent that would create a real and tangible danger of deception or confusion amongst consumers of the goods claimed in the Holder’s IRDA. I do not consider that the Opponent has established this limb of the ground of opposition.

7. This is mainly because of the Opponent’s reputation being in audio visual goods at the high end of the market. Even where such goods are installed in motor vehicles, I do not consider that consumers would expect audio goods to be from the same source as the various motor vehicle components and accessories dealt with by the Holder.

8. The goods sold by both parties are technical and specialized goods that would warrant careful care and consideration. Such goods are often sold in specialist retailers or sections of large department stores. This would likely lessen the prospects of deception or confusion.

9. The goods sold by the Opponent are expensive and would suggest that consumers would take care in purchasing the relevant goods.

10. The Opponent’s marks are sufficiently different to that of the Holder to avoid deception or confusion amongst the relevant marketplace.

11. There is also no evidence provided that there has been any deception or confusion within Australia, or elsewhere, in the 30 odd years of its existence worldwide or the two or three years it has been used in Australia.

12. I am not satisfied that this ground of opposition has been established.

Decision

1. Regulation 17A.34 provides:

17A.34Decision on opposition

(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 any ground on which the IRDA was opposed has been established.

(2)The Registrar must tell the International Bureau of his or her decision.

1. I find that the Opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1518222 be extended in respect of all the listed goods.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Regulations, against the Opponent.

Jock McDonagh

Hearings Officer

Trade Marks Hearings

18 November 2014