Bugatti GmbH v Bugatchi Uomo Apparel, Inc
[2013] ATMO 102
•17 December 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by BUGATTI GMBH to extension of protection to International Registration Designating Australia 1373275 (IR No. 974226) (25) - BUGATCHI UOMO - filed in the name of BUGATCHI UOMO APPAREL, INC.
Delegate: | Heath Wilson |
Representation: | Opponent: Ed Heerey of counsel instructed by Davies Collison Cave. Holder: Ian Horak of counsel instructed by Actuate IP. |
Decision: | 2013 ATMO 102 Opposition under Regulation 17A.34 – grounds pressed under sections 42(b), 44, 58 and 60 of the Trade Marks Act 1995 – s44(2) established -extension of protection to Australia refused. |
Background
Bugatchi Uomo Apparel, Inc (‘the Holder’ in this matter) applied for an extension of protection to Australia for the following International Registration Designating Australia (‘the IRDA’):
IRDA No. 1373275
International Registration No. 974226
Filing Date: 2 June 2010
Trade Mark: BUGATCHI UOMO (‘the opposed trade mark’)
Goods: Class 25: Clothing, namely, pants, suits, shirts, vests, shorts, coats, T-shirts, sweatshirts, sports shirts, jeans, blazers, knit tops, ties, dress shirts, golf shirts, jogging suits, sweaters, sports coats, outerwear, namely, overcoats, raincoats, and trench coats, and active wear, namely, sweat suits
Endorsements: The applicant has advised that the Italian word UOMO appearing in the trade mark may be translated into English as MAN.Following examination of the IRDA, its acceptance for possible protection in Australia was advertised in the Australian Official Journal of Trade Marks on 7 October 2010.
On 5 January 2011, F.W. Brinkmann GmbH filed a notice of opposition to protection of the IRDA setting out grounds of opposition under the Trade Marks Act 1995 (‘the Act’). In June 2012, F.W. Brinkmann GmbH informed IP Australia that the name of the opponent had changed to Bugatti GmbH (hereafter ‘the Opponent’). Reg 17A.31 of the Trade Marks Regulations 1995 (‘the Regulations’) relevantly provides that protection of an IRDA may be opposed on any of the grounds on which a domestic application may be rejected (s39 to 44) and also on the grounds of opposition set out under sections 58 to 61 and 62A of the Act. A notice of provisional refusal of protection based on the opposition was issued on 11 January 2011.
The evidence served and filed by the parties comprises:
Evidence in Support
Statutory declaration of Klaus Brinkmann (Managing Partner of the Opponent) made 17 October 2011.
Statutory declaration of Mark Cook (General Manager of Arcade Investments Pty Ltd) made 10 November 2011.
Evidence in Answer
Statutory declaration of Cecile Revah (President and Chief Executive Officer of the Holder) made 3 September 2012.
Statutory declaration of Isaac Mizrahi (Director and Chief Executive Officer of Shine Forever Men Pty Ltd).
Evidence in Reply
Statutory declaration of Darron Saltzman (Partner of Davies Collison Cave) made 17 April 2013 annexing the affidavits of Elizabeth Lawson, Craig Douglas, Louise Boudrie, Marco Revah and Klaus Brinkmann.[1]
[1] Those affidavits were filed in the Federal Court proceedings mentioned below.
On 9 September 2013, I heard the opposition in Melbourne as a delegate of the Registrar of Trade Marks. Ian Horak of counsel appeared on behalf of the Holder instructed by Actuate IP, Patent and Trade Marks Attorneys, and Ed Heerey of counsel appeared for the Opponent under instruction from Davies Collison Cave, Patent and Trade Marks Attorneys. The Opponent pressed the nominated grounds of opposition under sections 42(b), 44, 58 and 60 of the Act.
On 31 October 2013, shortly after the hearing of the current matter, a proceeding in the Federal Court was decided (Bugatti GmbH v Shine Forever Men Pty Ltd [2013] FCA 1116) (‘Bugatti’) involving the Opponent and the Holder’s Australian distributor Shine Forever Men Pty Ltd. In that case, Tracey J ruled on an allegation of trade mark infringement under section 120 of the Act. In doing so he found that in the context of clothing in class 25 both BUGATCHI UOMO (the opposed trade mark) and BUGATCHI alone were deceptively similar to the Opponent’s BUGATTI trade marks. I therefore postponed the issuing of my decision and invited written submissions on the relevance of the judgment to the matter before me. Both parties availed themselves of this opportunity, and I have considered those submissions.
The Opponent bears the onus of establishing one or more of the grounds of opposition. The relevant standard to which it must establish a ground is the civil standard of the balance of probabilities.[2] I note the comments from the Holder that certain decisions from delegates of the Registrar have indicated that a higher standard (i.e. ‘clearly not be registered’) has not been rejected outright by the Full Bench of the Federal Court of Australia. As a general statement, that is accurate, but each of those decisions from the Registrar (and also the cases cited above from the Federal Court) clearly apply the ‘balance of probabilities’ standard. I find no compelling reason to do otherwise for the current opposition.
[2] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051.
Discussion
Section 58 of the Act provides:
Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
Under section 58 of the Act, the first person to apply to register a trade mark will, in most cases, be entitled to claim to be the owner in relation to the goods/services of the application and also goods/services constituting the “the same kind of thing”.[3] An exception to this general statement is if the trade mark has been used before the filing date (in this case 2 June 2010). In that event, and in the absence of fraud, the owner of a trade mark in Australia for the relevant goods or services is taken to be the first person to use it (“first user”) in the course of trade in Australia in relation to those goods or services. The first user need not have invented or first thought of the trade mark[4], but if it is the first party to use it as a trade mark in Australia, it is the owner.
[3] Re Hicks' Trade Mark (1897) 22 VLR 636.
[4] Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 399 per Fullagar J.
In pursuing the section 58 ground, Mr Heerey did not argue that the Opponent was the owner of the Trade Mark but instead that the joint owners are the companies H & M Investments Pty Ltd and Abbeycorp Pty Ltd. In support of that proposition he cited an earlier trade mark application for BUGATCHI UOMO (no. 562187) made by those companies and argued that they, and not the Holder, have prima facie ownership of BUGATCHI UOMO.
Trade mark application 562187 was filed on 23 August 1991 for ‘all articles of clothing in class 25’. It was not accepted for registration and was advertised as lapsed in the Journal on 9 June 1994, sixteen years before the IRDA was filed. As a result, any statutory rights H & M Investments Pty Ltd and Abbeycorp Pty Ltd may have enjoyed in the BUGATCHI UOMO trade mark application were, at best, inchoate. In Shell Co (Aust) Ltd v Rohm & Haas Co[5] Latham CJ said:
But, in my opinion, the application for registration in itself gives no rights to the applicant against any other person. If the application is successful, he obtains the rights of a registered proprietor, but not otherwise. His application may be abandoned or refused or successfully opposed. Until he succeeds in obtaining registration he is only a person "claiming" to be the proprietor of a mark. When and if he obtains registration, he acquires rights which date back to the date of his application (s. 47) but until he obtains registration he is, if he has not already used his trade mark and thereby acquired rights, in the same position with respect to the mark as any other member of the public. But it is the granting of registration, and not the making of the application, which gives him for the first time a right to the exclusive use of the previously unused mark.
[5] Shell Co (Aust) Ltd v Rohm & Haas Co [1948] HCA 27; (1949) 78 CLR 601 per Latham CJ at p619; See also Takata Corp v Britax Child-Care Products Pty Ltd (1999) 44 IPR 425.
Any putative statutory rights that the applicants could be said to have had in an unaccepted trade mark application expired following its subsequent lapsing. Accordingly, I do not find it necessary, as Mr Heerey submitted, to address whether the Holder is required to establish that those companies abandoned their trade mark. The Opponent’s arguments may have had more force if the trade mark was accepted, granted registration and subsequently expired or was removed because it was not renewed.
The mere fact of filing a trade mark application does not grant the applicant perpetual rights in it. Use of the trade mark is the paramount consideration in cases such as these. The Opponent also relies on statements made in the statutory declaration of Cecile Revah where she declares:[6]
In or around September 1991 … the Applicant entered into an agreement with H&M Investments Pty Ltd (H&M Investments) to introduce BUGATCHI UOMO into the Australian market. Under this agreement, H & M Investments were appointed by the Applicant as a distributor and reseller of BUGATCHI UOMO clothing. Shortly afterwards, H&M Investments stocked BUGATCHI UOMO clothing in their “Ultimo Menswear” store located in Caulfield, Melbourne.
[6] Cecile Revah declaration, paragraph 12.
Mr Heerey questioned the existence of any agreement between the parties (because ‘the Holder did not exist at that time’[7]), that there was no evidence of assignment of the trade mark and there was no evidence of abandonment by the previous “owners”.
[7] According to the declaration of Darron Saltzmann (Annexure DSS-9) the Holder was not incorporated in the United States until 13 December 1996.
Even if there was no agreement between the Holder and H & M Investments and Abbeycorp (and the agreement instead involved a predecessor in title of the Holder) - it is clear from Ms Revah’s declaration and affidavit of Marco Revah that H & M Investments and Abbeycorp were intended to be the distributors of the BUGATCHI UOMO products in Australia. In any event, all of the Opponent’s submissions gloss over the crucial issue, which is whether the Holder’s prima facie case for ownership of the opposed trade mark arising from the act of filing has been displaced by the earlier use of a substantially identical trade mark.
It is for the Opponent to satisfy me of the earlier trade mark use by another party, and it has not. It has claimed that there was such use but there is nothing in the evidence to substantiate that claim. Ultimately, the Opponent has not established any use of a trade mark prior to 2 June 2010 by a party other than the Holder. It follows that the Opponent has not discharged the onus upon it and the ground of opposition under section 58 has not been established.
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2)…
(3) If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
The Opponent is relying on the following trade mark registrations in support of this ground:
| TM No. | Trade Mark | Filing Date | Class / Statement of Goods |
| 503207 | BUGATTI | 18.1.89 | Class 25: Clothing, excluding boots, shoes and slippers |
| 1151896 | BUGATTI | 13.12.06 | Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18); trunks, travelling bags and handbags, briefcases; wallets; umbrellas, parasols and walking sticks; animal skins, hides; leather shoulder straps; bags of all kinds in this class
|
| 1054553 | BUGATTI | 17.2.05 | Class 25: Outer clothing Endorsements: Provisions of paragraph s44(3)(b) applied. |
These registrations are in respect of the same trade mark. The earliest registration is for “clothing” which is similar to the goods listed in the IRDA. I also note that trade mark registration no. 503207 has the earliest priority date being from 18 January 1989. In the first place, the Opponent has conceded that, on a side by side comparison, the opposed trade mark and the Opponent’s trade marks are not substantially identical. I agree with that conclusion.
Turning to the assessment of whether two trade marks are deceptively similar, the following considerations were propounded by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd:[8]
[T]he marks ought not … 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 … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
[8] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658).
The issue is whether ‘BUGATCHI UOMO’ “so nearly resembles”[9] ‘BUGATTI’ that the use of the opposed trade mark on the designated goods would be likely to deceive or cause confusion in the Australian marketplace. In Bugatti, Tracey J found that the trade marks were deceptively similar when used in relation to clothing and I am bound by that finding. Tracey J stated, inter alia:[10]
Given the material similarity between the first two words, the addition of the Italian word “UOMO” in the impugned mark will not serve to dissolve any confusion which might otherwise arise.
[9] Section 10 of the Act.
[10] Bugatti at [41].
The visual similarities between the words ‘BUGATCHI’ and ‘BUGATTI’ are evident. The prefixes of the two trade marks (‘BUGAT-’) are identical and it has often been commented that in London Lubricants (1920) Ltd’s Appn Sargant LJ noted:[11]
[T]he tendency of persons using the English language to slur the termination of words…has the effect necessarily that the beginning of words is accentuated in comparison, and… the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
[11] London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279 (CA UK):
From an aural perspective, I find it likely that the suffixes ‘-TTI’ and ‘-TCHI’ would be slurred or reasonably mistaken for the other in ordinary pronunciation by Australian consumers of clothing items. Both BUGATTI and BUGATCHI appear to be invented words (or names) with no particular dictionary meaning to differentiate between them. It is evident that there is intent for the trade marks to appear as Italian names to the relevant consumer. Mr Brinkmann declares that ‘Bugatti’ was selected by the Opponent from a telephone directory in Milan, Italy as it wanted an Italian sounding name for its new fashion range.[12] Ms Revah says that “Bugatchi Uomo” was invented during a brainstorming session with her family[13] and that “Uomo” (which means ‘man’ in Italian) was added to emphasise the brand’s focus on men’s fashion.
[12] Klaus Brinkmann declaration at paragraph 7.
[13] Cecile Revah declaration at paragraph 9.
The Opponent argued that little weight can be given to the word “UOMO” as in Italian it refers to the character of the products being sold as men’s clothes. The purpose of the endorsement in the IRDA is not to disclaim right to exclusive use of the term “Uomo” but to adequately define the opposed trade mark.
An element of a trade mark that is descriptive or common to the trade should be to some extent discounted in a comparison[14] but it should not be treated as if it were not there at all.[15] Ultimately, I must accord due weight to the word “Uomo” as it appears in the opposed trade mark and as in Clark v Sharp[16]:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.
[14] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (FC): (‘Cranberry Classic’ and ‘Classic’ with device).
[15] See Broadhead’s Application (1950) 67 RPC 209 (at 215).
[16] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch. D).
While I accept that high fashion items of clothing are more likely to be carefully inspected by the consumer, one must be careful not to afford a higher standard of comparison to that proposition. The consideration does not become a side by side comparison of the trade marks due to the nature of the goods. In any event, the test is what an applicant can do should registration be obtained, and a notional consideration of these designated goods shows that they are not limited to high fashion but include all “pants, suits, shirts, vests, shorts, coats, T-shirts, sweatshirts, sports shirts, jeans, blazers, knit tops, ties, dress shirts, golf shirts, jogging suits, sweaters, sports coats, outerwear, namely, overcoats, raincoats, and trench coats, and active wear.”
In accordance with the finding in Bugatti, I find that the opposed trade mark and the Opponent’s trade mark are deceptively similar.
As there is no evidence of use of the opposed trade mark prior to 1989, the provisions of subsection 44(4) cannot apply. I must now consider the provisions of honest concurrent use (s44(3)(a)) and other circumstances (s44(3)(b)) in deciding whether the IRDA should be refused protection under this ground of opposition.
Section 44(3)(a): Honest Concurrent Use
Kenny J in the McCormick[17] case summarized the considerations for s44(3)(a) of the Act as follows:
(a) the honesty of the concurrent use;
(b) the extent of the use in terms of time, geographic area and volume of sales;
(c) the degree of confusion likely to ensue between the marks in question;
(d) whether any instances of confusion have been proved; and
(e) the relevant (sic) inconvenience that would ensue to the parties if registration were to be permitted.
[17] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38,192 at [30].
The date at which the honest concurrent use should be assessed is the priority date of the application (in this case 2 June 2010). This principle was articulated by Lander J in the decision of Hills Industries Limited v Bitek Pty Ltd[18] who said:
It seems to me that s 44(3)(a), which allows the exercise of discretion if there has been an honest concurrent use of the two trade marks, is speaking of the same time as s 44(1), ie., before the priority date. Such a conclusion is consistent with Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 and the assumption made by Kenny J in McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102 at 111 who when addressing s 44(3)(a) and citing decisions of the Registrar said that the rights of the parties are to be determined as at the date of the application for registration.
In those circumstances, I reject the evidence tendered by Bitek in relation to the honest concurrent use of the mark and if the question had arisen would have declined to exercise my discretion in favour of Bitek under s 44(3)(a) because of an absence of evidence in relation to an honest concurrent use prior to the priority date.
[18] Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 at [164-165].
The opposed trade mark was first used in Canada in 1976 in relation to clothing products and in 1983, the business expanded into the United States including participation in various fashion exhibitions. I find that much of the Holder’s evidence is that arising from the North American promotions and retail outlets from the 1970s up to 2009. That said, there are a range of advertisements[19] which purport to include promotions in Australia. However, those catalogues and advertisements only list American and Canadian stores. Other promotions in the evidence are described as distributed worldwide, but I cannot determine whether ‘worldwide’ includes Australia and there is nothing in the exhibits[20] to lead me to believe that they are.
[19] Cecile Revah declaration at exhibit CR-6.
[20] Revah declaration, exhibit CR-7.
I find that the adoption and use of the opposed trade mark by the Holder has been honest.
The Holder declares that prior to the filing date of the IRDA on 2 June 2010 it had been using BUGATCHI UOMO within Australia as a trade mark for clothing. In September 1991, the Holder apparently entered into negotiations with H & M Investments Pty Ltd in Australia. According to the Holder H & M Investments later stocked the Holder’s clothing in its ‘Ultimo Menswear’ store in Caulfield, Melbourne and I also note that Tracey J in Bugatti observed “Clothing and accessories bearing the mark were first sold in Australia in 1991.”[21] However, in the aforementioned case nothing turned on that statement. On the evidence I have before me, I can find nothing apart from these bare assertions by the Holder, to demonstrate use of the opposed trade mark in Australia from 1991.
[21] Bugatti GmbH v Shine Forever Men Pty Ltd [2013] FCA 1116 at [9].
Ms Revah has produced evidence of clothing labels used on products and declares that they have been offered for sale within Australia since 2005.[22] Once again, there is nothing further to substantiate this alleged use. Ms Revah provides worldwide expenditure on advertising and worldwide sales figures since 2007. Even then, the amount that may relate to Australian promotions and sales is unstated.
[22] Statutory declaration of Cecile Revah at paragraph 25.
The evidence of use of the opposed trade mark in Australia is predominantly contained in the declaration of Isaac Mizrahi. On 30 May 2010, the Holder entered into a license agreement with RSB Ventures, Inc. which later stocked the Holder’s clothing in its ‘4EverMen’ store in Docklands, Melbourne. The store is owned by Shine Forever Men Pty Ltd which has been a distributor of the Holder’s goods via its stores since 1 December 2011. The majority of use in Australia has occurred since that date, which is well after the priority date. The Holder’s goods have since been stocked by other menswear retailers in Perth, Wollongong and on the Gold Coast.[23]
[23] Statutory declaration of Cecile Revah at paragraph 15.
While the Holder’s website has apparently been publicly accessible since April 2004, the existence of this website is not sufficient by itself to establish honest concurrent use in Australia from that date. I am, however, satisfied from the evidence before me that there has been concurrent use of the two trade marks since May 2010, but any concurrent use of the opposed trade mark that could be said to occur before the priority date (2 June 2010) is extremely limited. Both Opponent and Holder have been operating concurrently in the international sphere for some time, but the Holder’s presence in the Australian marketplace prior to filing has been minimal. While it is clear that there was some expenditure on promotional material around December 2011, that expenditure is not relevant for the purposes of section 44(3)(a) of the Act.
It is also unsurprising, given the particularly short period of concurrent use demonstrated in Australia, that the Opponent has not supplied actual instances of consumer confusion between the trade marks prior to June 2010.
I find that there is not sufficient evidence of concurrent trade mark use occurring in Australia, before 2 June 2010, such that the provisions of section 44(3)(a) ought to be applied.
Section 44(3)(b): Other Circumstances
With respect to the “other circumstances” provision, Mr Horak made submissions that included the following points:
The IRDA has been used significantly outside Australia;
The Holder’s goods are high priced luxury items which should mitigate any confusion between the trade marks;
There is a lack of evidence of deception or confusion prior to 2 June 2010;
The limited reputation of the Opponent as at June 2010; and that
Two of the Opponent’s trade marks were accepted under section 44(3) of the Act.
The Opponent’s evidence indicates that the Opponent (like the Holder) has used its trade marks extensively outside Australia and I note that the Opponent’s clothing products are also sold in a number of countries worldwide.
On 7 August 2007, the first Australian BUGATTI retail outlet opened in Canberra.[24] The Opponent’s Australian distributor has since advertised the BUGATTI brand in Canberra in magazines, cinema and television advertising, though involvement in fashion parades and via brochures, mail outs and SMS marketing. Prior to June 2010, accordingly, any reputation in the Opponent’s trade mark BUGATTI would (on the face of it) be confined to the Canberra region.
[24] Statutory declaration of Mark Cook at paragraph 6.
While the lack of evidence of confusion before the filing date of the IRDA is understandable, Mark Cook (General Manager of the Opponent’s Australian Distributor) does attest to an instance of confusion involving one of his Melbourne based customers in September 2011. The customer was provided with an offer to sell clothing bearing the trade mark subject of the IRDA. The customer was confused and called the Opponent’s Victorian distributor to check whether the merchandise was the same as BUGATTI.[25]
[25] Statutory declaration of Mark Cook at paragraph 17.
I find that none of the above circumstances advanced by the Holder (either alone or in combination) is sufficient to satisfy me it is proper for the discretion under section 44(3)(b) of the Act to be applied.
The decision in Bugatti did not address the issue of honest concurrent use (s44(3)(a)) or other circumstances (s44(3)(b)) because those issues were not before the court. However, on the strength of the evidence before me, I do not find that either of those exceptions has been made out. Accordingly, I find that the IRDA should be refused protection in Australia under this ground of opposition.
As a result of the above finding, I do not need to consider the remaining grounds, noting that should this decision be appealed, those grounds (and others under the Act) will be available to the Opponent.
Decision
Regulation 17A.34 stated:
Decision 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.
The Opponent has established a ground of opposition under the Act. I refuse to extend the protection of the IRDA no. 1373275 to Australia.
Costs
The Opponent has been successful in this opposition matter. I award costs against the Holder to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearing Officer
Trade Marks Hearings
17 December 2013
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