Cash Converters Pty Ltd v Margo Chaille Webber
[2013] ATMO 101
•10 December 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Cash Converters Pty Ltd to registration of trade mark application 1452905 (35; 36) - CASH EEZ Logo - filed in the name of Margo Chaille Webber.
Delegate: | Heath Wilson |
Representation: | Opponent: David Stewart of counsel instructed by Wrays Intellectual Property Lawyers. Applicant: Written submissions prepared by Cullens Patent and Trade Mark Attorneys. |
Decision: | 2013 ATMO 101 Opposition to registration of trade mark – sections 43, 44, 60 and 62A pressed – section 44 established – trade mark refused registration. |
Background
On 10 October 2011, Margo Chaille Webber (‘the Applicant’) filed an application for the registration of a trade mark (‘the Trade Mark’) and the current details of that application are set out below:
Trade Mark No: 1452905
Trade Mark:
Goods and Services:
Class 35: Retail and wholesale services, including sale and purchase of new, second hand and used goods
Class 36: Financial services including personal loans and collecting personal loan repayments; pawnbrokerage
The trade mark application was subsequently examined. No grounds for rejection were identified at the time of examination and the Trade Mark was advertised as accepted in the Australian Official Journal of Trade Marks on 16 February 2012. On 12 March 2012, Cash Converters Pty Ltd (‘the Opponent’) filed a notice of opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) nominating grounds of opposition under sections 43, 44, 58, 58A, 60 and 62A.
On 28 May 2013, Hearing Officer McDonagh issued a decision involving the same parties, in relation to an identical logo trade mark of the Applicant (namely, no. 1336459: CASH EEZ Logo) for identical services in classes 35 and 36.[1] The Opponent pressed a number of grounds of opposition, but the Hearing Officer ultimately decided that the Applicant’s CSH EEZ logo was deceptively similar to the CASHIES trade mark (registration 1075309) and that each trade mark covered similar services. The opposition was accordingly successful and the Applicant did not appeal the decision.
[1] Cash Converters Pty Ltd v Margo Chaille Webber [2013] ATMO 34.
The following evidence (which largely mirrors the evidence before the Hearing Officer in the prior opposition) was filed and served for the current opposition proceedings:
Evidence
Evidence in Support
Statutory Declaration of Michael Ian Cooke dated 11 June 2012 with annexures MIC-1 to MIC-7 enclosing the:
ØStatutory Declaration of Michael Ian Cooke dated 18 November 2010 with annexures MIC-1 to MIC-18.
ØStatutory Declaration of Michael Ian Cooke dated 28 July 2011.
ØStatutory Declaration of Michael Ian Cooke dated 16 February 2012 with annexures MIC-1 to MIC-11.
- Statutory Declaration of Michael Ian Cooke dated 21 June 2012 with Annexures MIC-1 to MIC-7.
Evidence in Answer
Statutory Declaration of Margo Chaille Webber dated 18 May 2011 with exhibits 1 to 8.
Statutory Declaration of Angela Dahlke dated 21 December 2011 with exhibits AD-1 to AD-3 including, inter alia:
ØStatutory Declaration of Geoffrey Andrew Webber dated 21 October 2011 with exhibits GAW-1 to GAW-2.
Statutory Declaration of Margo Chaille Webber dated 20 December 2012 with exhibits MW-1 to MW-4.
- Statutory Declaration of Margo Chaille Webber dated 24 March 2013 with exhibits MW-1 to MW-5.
- Statutory Declaration of Geoffrey Andrew Webber dated 27 June 2013 with exhibits GW-1 and GW-2.
On 7 November 2013, I conducted the hearing of the opposition in Canberra in my role as a delegate of the Registrar of Trade Marks. David Stewart of counsel appeared on behalf of the Opponent instructed by Laura Tatchell of Wrays Intellectual Property Lawyers. There was no appearance by the Applicant, but written submissions had been previously filed by Cullens, Patent and Trade Mark Attorneys.
The Opponent bears the onus of proof and the relevant standard to which it must establish a ground is the civil standard of the balance of probabilities.[2] The Opponent pursued grounds of opposition under sections 44, 60, 62A and 43 of the Act. However, given that section 44 of the Act had previously been established for identical trade marks earlier this year, that ground of opposition generated the most discussion. I will therefore address it at the outset.
[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
Res Judicata and Issue Estoppel
Relying upon the outcome of the earlier decision made this year, Mr Stewart initially made submissions regarding the desirability for consistency in decision making within the Trade Marks Office. However, his supplementary submissions took the matter further and argued that the legal principle of res judicata applied on the current facts. Res judicata is essentially the principle for a judicial decision to be treated as conclusive between the parties. In Carl Zeiss Stiftung v. Rayner & Keeler Ltd. (No. 2)[3] Lord Guest said:
[3] Carl Zeiss Stiftung v. Rayner & Keeler Ltd. (No. 2) (1967) 1 AC 853 at p 933.
The rule of estoppel by res judicata, which is a rule of
evidence, is that where a final decision has been pronounced
by a judicial tribunal of competent jurisdiction over the parties
to and the subject-matter of the litigation, any party or privy
to such litigation as against any other party or privy is estopped
in any subsequent litigation from disputing or questioning such
decision on the merits (Spencer Bower on Res Judicata, p. 3).
In Blair v Curran[4] Dixon J distinguished between res judicata and issue estoppel:
The distinction between res judicata and issue estoppel is that in the first the very right or cause of action claimed or put in suit has in the former proceedings passed into judgment, so that it is merged and has no longer an independent existence, while in the second, for the purpose of some other claim or cause of action, a state of fact or law is alleged or denied the existence of which is a matter necessarily decided by the prior judgment, decreed or ordered.
[4] Blair v Curran (1939) 62 CLR 464 at p 531- 532.
The issue in this case is whether the Registrar of Trade Marks is estopped from considering the same issue previously made by the same administrative tribunal. I would firstly note that the powers given to and exercised by the Registrar under the Act are not essentially judicial in nature, but rather they are administrative.[5]
[5] See R v Quinn; Ex parte Consolidated Food Corporation [1977] HCA 62; (1977) 138 CLR 1.
While it may be arguable whether res judicata applies in proceedings before the Registrar, Mr Stewart referred to two cases in this regard, one from the High Court: Administration of the Territory of Papua and New Guinea v Guba[6] and one from the Administrative Appeals Tribunal (‘AAT’): Re Maxwell Wallace Hopper and Australian Meat and Live-Stock Research and Development Corporation[7].
[6] Administration of the Territory of Papua and New Guinea v Guba (1973) 130 CLR 353 at 453; 47 ALJR 621.
[7] Re Maxwell Wallace Hopper and Australian Meat and Live-Stock Research and Development Corporation [1990] AATA 42 at [11].
The Courts have also decided that the “earlier judgment relied on must have been a final judgment, and that there must be an identity of parties and of subject matter in the former and in the present litigation.”[8] The decision in Papua New Guinea v Guba indicated that it was not important whether the tribunal was judicial or administrative in nature or even whether an appeal to a court lay from the administrative decision. Gibbs J (Menzies and Stephen JJ concurring) in the above case held:[9]
The doctrine of estoppel extends to the decision of any tribunal which has jurisdiction to decide finally a question arising between parties, even if it is not called a court, and its jurisdiction is derived from statute or from the submission of parties, and it only has temporary authority to decide a matter ad hoc…
[8] Carl Zeiss Stiftung (supra), at pp 909-910.
[9] (Supra) at 453.
In Bogaards v McMahon [1988] FCA 161 Pincus J referred to the above words from Papua New Guinea v Guba and concluded that “[S]tatutory tribunals’ decisions, although not made in the exercise of judicial power in the constitutional sense, may create estoppels” but that “It leaves open, however, the question whether an issue estoppel may arise from such a decision”[10].
[10] Bogaards v McMahon [1988] FCA 161; (1988) 80 ALR 342 per Pincus J at [45].
There may be instances where decisions from delegates of the Registrar are final, involving identical parties and issues and thus where estoppel by res judicata would apply, effectively rendering the latter decision maker functus officio. In the current matter, I find that the Registrar of Trade Marks is functus officio as regards Hearing Officer McDonagh’s finding, but there remain issues she has yet to determine in relation to the opposition to the Trade Mark. Where I find that certain facts differ or there is new material not previously considered (and it is necessary to discuss it in order to reach a decision), I will address those issues. If I am wrong and res judicata does not apply to the current proceedings, I find that it would make no overall difference to the outcome of this opposition.
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(1)…
(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.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
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.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2:For predecessor in title see section 6.
Note 3:For priority date see section 12.
For the section 44 ground of opposition, the Opponent once again relies on its prior trade mark registration (no. 1075309) for the word CASHIES in classes 35, 36 and 42. That trade mark was registered on 13 September 2005, which pre-dates the filing of the Trade Mark.
As mentioned earlier, the question of deceptive similarity between the trade marks has already recently been determined, in relation to identical trade marks owned by the same parties, and for the same services. The difference in priority dates here does not affect the initial determination under section 44. With regard to the issue of the similarity between the trade marks, the Hearing Officer previously found:[11]
Although the Applicant’s trade mark consists of two words, I consider that those two words would be pronounced as “cash” and “ease”. I do not think that the “Z” in the second word would take on an American pronunciation such as to render it “easy”. Therefore, I consider that the pronunciation of CASH EEZ and CASHIES would be virtually identical.
I further consider that a consumer seeing the Applicant’s trade mark is likely to recall such verbal or aural advertising the Opponent might have commissioned on radio or television in relation to its services of wholesaling or pawnbrokerage.
Further, I concur with the Opponent’s submission that there is no requirement to establish actual confusion or deception; see for example, Sydneywide Distributors Pty Ltd v Red Bull (Aust) Pty Ltd [8].
Consequently, I am satisfied that section 44(2) of the Act has been established.
[11] Cash Converters Pty Ltd v Margo Chaille Webber (supra) at [23] to [26].
I accordingly find that the Trade Mark and the Opponent’s trade mark are deceptively similar. However, that is not the end of the matter. The Applicant’s attorney argued that while the issue of prior use (s44(4)) was mentioned in the previous decision, the provisions of honest concurrent use (s44(3)(a)) were not. The Hearing Officer made the following finding:[12]
The Applicant did not provide evidence of use of the trade mark before the priority date (10 December 2009) and as a result, the provisions relating to prior use under section 44(4) of the Act are not applicable.
[12] Supra at [27].
The Hearing Officer was referring to the priority date of the Applicant’s then trade mark application (10 December 2009) rather than that of the Opponent’s trade mark (13 September 2005). So while the Hearing Officer only specifically referred to section 44(4) of the Act, it could also be argued that a lack of evidence of trade mark use before the Applicant’s priority date meant the provisions of honest concurrent use could not be satisfied either.
For the current matter, to establish prior use under section 44(4) of the Act, the Applicant must demonstrate use of the Trade Mark occurring before the Opponent’s priority date of 13 September 2005. The Opponent did not accomplish the task for the previous opposition and my decision would only differ if there is new evidence before me pre-dating the filing date of the Opponent’s trade mark. However, there is not and I find that section 44(4) cannot be established.
As mentioned, the Trade Mark before me has a different priority date, and I will now turn to consider the provisions of honest concurrent use and other circumstances.
Section 44(3)(a): Honest Concurrent Use
It is for the Applicant to establish a prima facie case of honest concurrent use of the Trade Mark under section 44(3)(a). The date at which this use should be assessed, was articulated in Hills Industries Limited v Bitek Pty Ltd[13] by Lander J:
In my opinion, evidence of concurrent use after the priority date is not relevant in regard to an application under s 44(3)(a). Section 44(3)(a) is only engaged if a finding has been made under s 44(1). It is agreed that the evidence relevant to an opposition under s 44(1) for the registration of a trade mark is evidence prior to the priority date. It would be most unusual if, having determined that the applicant’s trade mark was deceptively similar to the trade mark registered by another person in respect of similar goods at a particular time, the Registrar or the Court, as in this case, is entitled to exercise its discretion in favour of the applicant having regard to use of that mark at a different time.
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.
[13] Hills Industries Limited v Bitek Pty Ltd (2011) 90 IPR 337; [2011] FCA 94 at [163]-[165].
The above approach was confirmed in the decision of Tivo Inc v Vivo International Corporation Pty Ltd.[14] As a result I will consider the use of the Trade Mark from its commencement around December 2009 until the filing date of 10 October 2011. Kenny J in the McCormick case[15] summarized the considerations for s44(3) 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.
[14] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 25 at [244] per Dodds-Streeton J.
[15] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38,192 at [30].
The Applicant is a director and company secretary of Cash Eez Pty Ltd and also director of Insignia Holdings Pty Ltd (‘Insignia’). Insignia and Geoffrey and Margo Webber became parties to an existing franchise agreement with the Opponent on 17 December 2003. I note that a restraint of trade obligation included in the franchise agreement is couched in broad terms. The relevant clause (cl 17.1) provides that for two years after the termination of the agreement the parties must not be directly or indirectly engaged in a business which buys and sells secondhand goods within a certain geographical area within Australia.
The franchise agreement was terminated on or around 27 April 2009 and the restraint of trade obligation would have expired on 27 April 2011. If that agreement was valid and binding (and despite the Applicant’s more recent objections, there is no reason to believe that it is not) then the length of Trade Mark use by the Applicant before the priority date would at most amount to approximately six months. These circumstances inform not only the length of use, but whether any use occurring within the two year restraint period can be defined as ‘honest’ from a commercial point of view.
Cash Eez Pty Ltd was established in 2009. On 10 December 2009, the Applicant applied to register trade mark no. 1336459. At the time of applying for that trade mark, the Applicant was aware of the Opponent’s trade mark ‘CASHIES’ on the Register. She also believed (based on her knowledge as former director of a franchisee of the Opponent) that the Opponent had chosen not to use CASHIES as a trade mark in the 53 month period since it was first registered. To avoid doubt, I note that the Opponent began formally promoting ‘CASHIES’ as a trade mark on 14 February 2010.
Honesty of the Use
There is judicial precedent which states that the most important factor for the application of section 44(3)(a) is the honesty of the concurrent trade mark use. Honesty in this context means “commercial honesty, which differs not from common honesty”. Also in Re Parkington & Co Ltd's Application[16] Romer J said:
[T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.
[16] Re Parkington & Co Ltd's Application (1946) 63 RPC 171 per Romer J at 181-182.
When the Trade Mark was filed on 10 October 2011, the bulk of the evidence for the previous opposition had already been served and filed and the Opponent had paid its fee for that hearing. While the Applicant’s legal representative strongly denies any allegation that the filing of the Trade Mark was vexatious or that it was an attempt to (in Mr Stewart’s submission) bypass “the proper determination of rights”, I note that an explanation for the filing of an identical Trade Mark at this time has not been forthcoming. It is implied that in filing the Trade Mark, the Applicant was seeking to rely on a longer period of honest concurrent use. However, the outcome of the opposition to the Applicant’s earlier trade mark was unknown at the time of filing the Trade Mark, and it was therefore unknown whether evidence of honest concurrent use would have been of any assistance at all to the Applicant.
The Opponent sent a letter of demand objecting to the Applicant’s proposed use of the Trade Mark as early as 24 December 2009, around the time the Applicant’s store first opened. It is clear that the adoption of the Trade Mark and any subsequent “concurrent” use occurred at a time when the Applicant was aware of the Opponent’s trade mark and of the Opponent’s objection to use and registration of CASH EEZ as a trade mark. However, knowledge of the Opponent’s trade mark is not necessarily sufficient by itself to demonstrate that the use of a trade mark was not honest in a commercial sense.[17]
[17] Baume & Co Ltd v Moore (A H) Ltd [1958] RPC 226 at 236; [1958] Ch 907 at 921.
While the use of the Trade Mark has not been surreptitious, the Applicant was a former franchisee of the Opponent and aware of its internal policies. The Applicant may have held the honest belief that no confusion would arise or that business would be diverted by the use of the Trade Mark but the evidence makes it clear that the Applicant had particular knowledge of the Opponent (including that it had not used the trade mark ‘CASHIES’ until February 2010).
I do not consider that use of the Trade Mark after Hearing Officer McDonagh’s decision in May 2013 finding the trade marks deceptively similar (which was not appealed) would be “honest” in the sense required under s 44(3)(a) of the Act. Prior to that date, I find that there is some doubt surrounding whether the adoption and subsequent use of the Trade Mark was honest from a commercial standpoint.
Length and Extent of Use
On 10 December 2009, the Applicant’s first CASH EEZ branch opened for trade in Wynnum, Queensland. It began trading in relation to the services claimed in classes 35 and 36. Assuming continuous use up until the date of filing, there is approximately 22 months of use of the Trade Mark. In terms of the geographical reach of that use, I note that the Applicant’s trading appears to be confined to South East Queensland, with two additional stores later opening in Victoria Point and Logan Central.
In Ms Webber’s most recent statutory declaration, there are examples of the Applicant’s website at ‘ as it appeared on 19 December 2012. It prominently features the Trade Mark with some minor variations in appearance. The Applicant has also supplied examples of loan application forms from December 2012, along with tax invoices and pawn tickets dated from December 2012. This evidence dates well after the priority date of the Trade Mark and has no relevance for the purposes of section 44(3)(a) of the Act.
The final two declarations of Margo and Geoffrey Webber contain the evidence of the Applicant that was not considered in the prior proceedings. There is evidence of radio advertising for the Trade Mark (on station 4KQ) which was broadcast over July/August in 2011. It is difficult to assess the impact of the radio advertising, despite the Applicant’s efforts to do so. The graphs provided by the Applicant attempt to indicate an increase in the number of loans, but do not show specific figures of the loans or the number of loans prior to the radio advertising. I find that I cannot give that evidence much weight.
The examples in attachments 2 to 4 of the first declaration of Ms Webber display the Applicant’s and the Opponent’s advertisements appearing in the same print publication and on the same page. In one instance, the pylon signage for the Applicant’s store (‘CASH EEZ .com.au’) appears directly below the signage for the Opponent’s ‘CASH CONVERTERS’ store. The Applicant has supplied evidence of use on its website, on billboards, bus signage, store signage and in store advertising. In addition, there have apparently been advertisements appearing on the YouTube website.
The Applicant only provides vague indications of expenditure on advertising and promotions before the priority date and there is no indication of the amount of sales before the priority date.
While there has clearly been some use of the Trade Mark via advertising and sales, I find that the evidence of use before 10 October 2011 is minimal and mainly limited to a certain geographical area. Where such evidence before me has a date, more often than not, it occurs well after the priority date of the Trade Mark.
No Instances of Confusion
If instances of confusion between the trade marks can be shown they will of course be given due weight, but the absence of evidence of confusion is not determinative. In other words, while evidence of actual deception or confusion (if forthcoming) would generally be given great weight[18], conversely the inability to produce evidence of actual consumer confusion in most cases carries little weight.[19]
[18] See Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ.
[19] NEC Corporation v Punch Video (S) Pte Limited [2005] FCA 1126.
Much of the Applicant’s more recent evidence refers to the lack of confusion between the CASH EEZ and CASH CONVERTERS brands. While there is no doubt that the Opponent’s primary brand is CASH CONVERTERS; that is not the question before me. The final statutory declaration of Mr Webber reiterates points that had been made elsewhere in the evidence and focuses on the Opponent’s use of CASH CONVERTERS as opposed to its use of CASHIES. I find that its contents do not materially add to my consideration of honest concurrent use of the Trade Mark.
The Applicant asked the Credit Ombudsman Service Limited whether there had been any complaints or enquiries regarding consumer confusion over the Applicant’s trading name. As at 14 March 2013, there had not been any such instances.
I find that there would be minimal detriment to the Applicant if the Trade Mark were refused. In the first place this trade mark has, effectively already been refused in May of this year. Accordingly, it appears that the Applicant has already taken steps to rebrand on the basis of the previous decision. For example, I note that the Applicant is not currently using the Trade Mark on its website and has commenced use of a different trade mark being ‘CASH EEZi’. The Applicant has also registered that trade mark (no. 1549398) in classes 35 and 36. Any financial inconvenience or loss caused by the refusal of the Trade Mark has therefore already been incurred.
Conclusion on s 44(3)(a)
On the one hand, there have been no actual instances of confusion between the trade marks and there has been some concurrent use of the Trade Mark. Conversely, the demonstrated use has been short-lived, confined in scope and I have some hesitation in finding the adoption and use of the Trade Mark was commercially honest. In addition, the detriment to the Opponent should the Trade Mark become registered outweighs the detriment to the Applicant should the Trade Mark be refused. On the balance of all the considerations referred to above, the provisions of section 44(3)(a) of the Act have not been made out.
Section 44(3)(b) of the Act: Other Circumstances
While section 44 should be assessed as at the priority date of an application, the courts are less conclusive on the issue of whether evidence occurring after the priority date can be taken into account for section 44(3)(b) of the Act.[20]
[20] See for example, Tivo at [295] and [299].
Regardless, the Applicant has not provided me with convincing evidence or submissions that the Trade Mark should be accepted under the provisions of section 44(3)(b). The Applicant’s arguments predominantly addressed honest concurrent use - which I have addressed above. I find that the Trade Mark does not qualify for acceptance under the provisions of section 44(3)(b).
I find that the ground of opposition under section 44(2) of the Act has been established and that a case for the application of s44(3)(a) or (b) of the Act has not been made out. It is not necessary to consider the merits of the remaining grounds argued by the Opponent. I do note, however, that those grounds of opposition (and others under the Act) would be available to the Opponent should this decision be appealed.
Decision
Section 55 (1) of the Act provided:
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has established a ground of opposition under the Act. I refuse to register trade mark application no. 1452905: CASH EEZ.
Costs
The Opponent has been successful and I award costs against the Applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.
Heath Wilson
Hearing Officer
Trade Marks Hearings
10 December 2013
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