Diageo Brands B.V. v Australian Vintage Limited

[2024] ATMO 142

TRADE MARKS ACT 1995

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

Re:Opposition by Diageo Brands B.V. to registration of trade mark application 2226227 (33) – BLACK LABEL (Fancy) – in the name of Australian Vintage Limited

Delegate:

Nicholas Smith

Representation:

Opponent: Marcus Fleming of Counsel instructed by Clayton Utz

Applicant: Natalie Hickey of Counsel instructed by Patent Attorney Services

Decision:

2024 ATMO 142

Trade Marks Act 1995 (Cth) - section 52 opposition: s 60 established – registration refused

Background

1. This decision concerns an opposition brought by Diageo Brands B.V. (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Australian Vintage Limited (‘Applicant’): 

Application Number:

2226227

Filing Date[1]:

8 November 2021

Goods:

Class 33: Sparkling wines; Wine; table wines; wine-based alcoholic beverages

(‘Applicant’s Goods’)

Trade Mark:

(‘Trade Mark’)

Endorsements:

Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied

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

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

3.  Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 8 July 2022 (‘SGP’).  The SGP raised grounds of opposition under ss 42(b), 44, 58 and 60.  The Applicant filed a Notice of Intention to Defend on 17 August 2022. 

Evidence

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

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Chong Eng Lee, IP Counsel, Diageo group of companies (‘Chong 1’)	17 November 2022	CEL-1 to CEL-41
Evidence in answer
Alyssa Kane, Brand Manager McGuigan, employed by the Applicant (‘Kane declaration’)	23 February 2023	AK-1 to AK-7
Michael John Grant, Patent and Trade Mark attorney with Patent Attorney Services (‘Grant declaration’)	23 February 2023	MG-1 to MG-6
Evidence in reply
Eng Lee Chong (‘Chong 2’)	5 May 2023	CEL-42 to CEL-49

5.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  On 15 June 2023 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 2 July 2024 and the matter was allocated to me.  In line with usual practice, a notice was sent to the parties on 29 April 2024 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 17 June 2024 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 25 June 2024 (‘Applicant’s Submissions’).  At the hearing Marcus Fleming of Counsel instructed by Brett Doyle and Vivian Tran of Clayton Utz represented the Opponent and Natalie Hickey of Counsel instructed by Michael Grant of Patent Attorney Services represented the Applicant.

1. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A the Registrar must, at the end, decide:

   (a)to refuse to register the trade mark; or

   (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the   application was opposed has been established. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs and any oral submissions made by the parties.

   The Opponent

2. The Opponent is a wholly owned subsidiary of Diageo Plc, the parent entity of the Diageo group, a global alcoholic beverage company that amongst other things, offers Scotch whisky under the Johnnie Walker label.  One of the most well-known Johnnie Walker Scotch whisky products is its Black Label whisky.  

3. The Opponent is the owner of the trade mark listed below (‘Opponent’s Trade Mark’).  The goods for which the Opponent’s Trade Mark is registered are collectively referred to as the ‘Opponent’s Goods’.  The Opponent provides evidence of ownership of additional trade marks however these trade marks, not being registered in Australia, have little or no relevance to the present proceeding.

Number	Trade Mark	Priority Date	Goods or Services
92069	BLACK LABEL	22 July 1947	Class 33: Whisky

1. Much of the material in Chong 1 consists of justifications of the Opponent’s decision to oppose the Trade Mark and submissions about the similarity and difference between the Trade Mark and the Earlier Mark (defined below).  They are not necessary to summarise in any detail, noting that a party does not need to establish standing in order to oppose an application.  The relevant claims/statements in Chong 1 and 2 can be summarised as follows:

   ·     The Diageo group is the world’s largest producer of Scotch whisky, with its bestselling brand being Johnnie Walker.  In 2021 the Opponent sold in excess of 725,000 x 9 litre cases of Johnnie Walker whisky with a value of over $300 million.

   ·     The Johnnie Walker brand was established in 1820 and in 1909 established its Black Label product and brand.  Johnnie Walker Black Label has been promoted in Australia since the 1940s and is the best-selling ‘premium’ Scotch Whisky globally and in Australia, it is sold throughout the country in every major liquor store chain and online.  It has been extensively advertised and the subject of significant third-party recognition and is held in considerable esteem, having won numerous awards in Australia and internationally.

   ·     Wine and Whisky are often sold through the same online and offline retail settings and sometimes in close proximity to one another.  It is common for alcohol brands to expand beverage ranges under the same brands and indeed the Opponent sells a range of alcoholic beverages, including wine.  The Opponent’s reputation in the Opponent’s Trade Mark is so strong that any use of a similar mark by another trader for any kind of alcoholic beverage is likely to deceive or confuse consumers.  This is particularly the case for any pre-mix product which falls within the Applicant’s Goods.

   ·     There is no current, removed or lapsed Australian trade mark application or registration for the stylised words ‘Black Label’ only.  All other marks, including those held by the Applicant, consist of ‘Black Label’ alongside other distinguishing features.

   10.     The annexures to Chong 1 and 2 display various marketing material that use the Opponent’s Trade Mark, in various formats as well as more detailed evidence about the Opponent’s sales and marketing activities.  I note that the much of the evidence of advertising is of the Johnnie Walker brand and there are only relatively isolated instances of the Opponent’s Trade Mark being referred to absent the Johnnie Walker brand.  Nevertheless, the level of advertising and sales and third party recognition over a long period of time clearly indicate that the Opponent’s Trade Mark to be very well-known in the market for Scotch whisky in Australia.  I note that there appears to be no evidence of confusion arising out of the use of the Earlier Mark (discussed below) or any other use of the term ‘Black Label’ by the Applicant.

   The Applicant

2. The Applicant is the owner of the trade mark listed below (‘Earlier Mark’) registered for the Applicant’s Goods. 

Number	Trade Mark	Priority Date	Goods or Services
999353	27 April 2004	Class 33: Wines, table wines; sparkling wines; wine-based alcoholic beverages

1. The relevant claims/statements in the Kane declaration can be summarised as follows:

   ·     The Applicant is an Australian wine company that holds numerous well-known Australian wine brands.  The ‘Black Label’ brand was first coined in 1994 and has been applied to millions of cases of wine sold in Australia and internationally and has been the subject of significant promotion.  While the label design has changed over the years the presence of the Black Label element has been constant.  The Applicant has, in addition to the Earlier Mark, registered various other trade marks in Australia that contain the ‘Black Label’ element.

   ·     Consumers in the alcoholic beverage market clearly and constantly distinguish between wine and whisky.  The products sit in different sections of the stores, often have separate service teams, are at different price points and are clearly labelled differently.  The declarant is not aware of any instance whatsoever of consumer confusion between the Applicant’s products bearing the ‘Black Label’ brand and the Opponent’s products.

2. The annexures to the Kane declaration display various marketing material and bottle labels that feature the ‘Black Label’ brand in various formats as well as more detailed evidence about the Applicant’s sales and marketing activities.   I am satisfied from the confidential evidence that the Applicant’s sales of wine under marks that feature the ‘Black Label’ element are significant and that this has been the case for a considerable period of time.  However, the Applicant’s evidence of its wine bottle labels and advertising materials appears to indicate that any use of the term ‘Black Label’, including the Trade Mark and Earlier Mark is accompanied by the McGuigan name – i.e ‘McGuigan’s Black Label’ or ‘McGuigan’s’ and ‘Black Label’ in close proximity and sometimes other device elements, which further distinguish the trade mark(s) used by the Applicant from the Opponent’s Trade Mark.

3. The Grant declaration contains extensive evidence of communications between the parties involved in negotiating the scope of the goods covered by the Earlier Mark as well as examples of other marks applied for and used by the Applicant featuring the ‘Black Label’ element.  These other wines also use the term ‘Black Label’ alongside or in close proximity to other marks owned by the Applicant.  The Grant declaration also provides evidence of other registrations of marks featuring the ‘Black Label’ element.

   Grounds of Opposition, Onus and Standard of Proof

4. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 58 and 60. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds of opposition. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   16.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]

   Discussion

   Section 60

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

5. Section 60 is reproduced below:

   Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

   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.

6. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

7. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

   The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

   The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[5]

   [5] [2023] FCA 487, [20]-[21] (Kennett J)

8. I do not extract the approximately 13 pages of particulars the Opponent has provided in respect of the ss 42 and 60 grounds, other than to note the Opponent relies on the use of and reputation in the Opponent’s Trade Mark for alcoholic beverage products.  Given the exceptional level of sales, marketing and industry and consumer reputation I am satisfied that the Opponent’s Trade Mark had, before the relevant date, acquired a very significant reputation in Australia for Scotch whisky, sufficient for the requirements under s 60(a).  I do not consider that this reputation extends to all alcoholic beverage products as a whole; the evidence of use in respect of any other product (such as the RTD product launched 6 months before the relevant date) is limited.

9. The Applicant submits that the use of the Opponent’s Trade Mark is always in conjunction with the Johnnie Walker brand and hence the Opponent has not established an independent reputation in the Opponent’s Trade Mark.  The Opponent submits that the Opponent’s Trade Mark has such an independent reputation as it is consistently used to identify a particular and very well-known product produced by the Opponent.  While the Applicant’s submissions do have some force, the sheer weight of the use of the Opponent’s Trade Mark and its placement as the largest and most prominent mark on the bottle labels used by the Opponent, on balance satisfies me that the Opponent’s Trade Mark has established an independent reputation separate from the Johnnie Walker brand. To put it another way – I am satisfied that if consumers of Scotch whisky in Australia heard the words ‘Black Label whisky’, they would associate it with the Opponent and its iconic product.

10. It is not sufficient that the Opponent merely establish that its trade mark had a reputation; I must also be satisfied that, because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.  Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning trade mark infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    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 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.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.[6]

    [6] (1937) 58 CLR 641, 658.

11. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    (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.[7]

    [7] [1999] FCA 1020, [25]. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

12. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[8]

    [8] [2012] ATMO 124, [40] (Hearing Officer Thompson).

13. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[9]

    [9] [2016] FCA 729, [142] (Yates J).

1. Finally I note that in considering whether there is a likelihood of confusion, I must consider the notional use of the Trade Mark by the Applicant, rather than actual use or any reputation in the Trade Mark held by the Applicant.[10]  Nor is the existence of the Earlier Mark on the Register of any relevance, save to whether there is an evidence (or absence of evidence) of actual confusion arising from the Applicant’s use of the Earlier Mark (or any other mark containing ‘black label’) on the Applicant’s Goods.

   [10] See, for example, McCormick & Company Inc v McCormick [2000] FCA 1335 where it was established that the fact that the Applicant might have been an honest concurrent user is not relevant to the operation of section 60.

2. In the present case, the trade marks are undoubtedly similar being the words BLACK LABEL with or without minor stylisation.  The Applicant’s submissions that confusion is unlikely to occur fall into three broad categories namely a) The reputation in the Opponent’s Trade Mark is linked to Scotch whisky, which is a different good to the Applicant’s Goods b) The reputation in the Opponent’s Trade Mark is linked to the Johnnie Walker mark, with the term ‘black label’ in common use in the alcohol industry to demonstrate a product of quality and c) the Applicant has used the Black Label brand for its wine for over 30 years, and has developed a considerable reputation in the brand and there is no evidence of any practical confusion arising from its use.

3. With respect to the third submission, I first note that I must consider the notional use of the Trade Mark by the Applicant, rather than any actual use or reputation held in the mark by the Applicant.  At the same time, to the extent that the Applicant is using the Trade Mark, the Earlier Mark or a similar mark for the Applicant’s Goods, the absence of evidence of practical confusion is obviously relevant, through not determinative, in determining the likelihood of confusion arising by reason of the use of the Trade Mark.  While the Applicant’s sales of wine bearing the Black Label element are extensive and long standing and the sales since 2020 of the Applicant’s wine bearing the Trade Mark are significant, the issue facing the Applicant is that all of its use of  the Black Label brand is use that features the prominent mark ‘McGuigan’ (and various other device elements and stylisation) which as a distinctive mark of its own, is likely to reduce the prospect of confusion in a manner that would not occur in the event of the notional use of the Trade Mark.  Consumers seeing a wine product branded (for example) McGuigan Black Label are much less likely to be confused then those who see a wine product branded solely with the Trade Mark.   Furthermore, the Applicant and Opponent’s ‘Black Label’ products are offered at very different price points and clearly target different sectors of the market for alcoholic beverages which would further reduce the practical possibility of evidence of confusion arising (noting I must consider the risk of confusion arising from notional use, not the actual past use of similar marks).  Nevertheless, given the use of the Earlier Mark and the Trade Mark, the absence of evidence of confusion is a relevant though limited factor in determining the likelihood of confusion arising from the notional use of the Trade Mark for the Applicant’s Goods.

4. A related submission made by the Applicant was the presence of other marks on the Register containing the ‘black label’ element had essentially educated consumers to regard ‘black label’ as a measurement of quality and not to regard the term as an indicator of source in the market for alcoholic beverages.  I do not accept this submission for the reasons outlined by the Opponent; namely the presence of a mark on the Register does not indicate any particular level of presence in the market and each of the marks registered for alcoholic beverages (other than the Earlier Mark) consisted of ‘black label’ alongside significant distinguishing elements.

5. With respect to the second submission, while I accept that the Opponent’s Trade Mark is commonly used alongside the Johnnie Walker brand (and the ‘walking man’ device), I am satisfied that, with respect to Scotch whisky, the Opponent’s use of the Opponent’s Trade Mark is so significant, over such a period of time, that it holds a reputation separate from the Johnnie Walker brand, in the same way that the marks BIG MAC and MCCHICKEN being product marks, have an independent reputation to the MCDONALDS mark notwithstanding their use alongside one another.  I do not consider that a consumer, when faced with Scotch whisky bearing the words ‘black label’ would think that the words denoted Scotch whisky of a particular standard or quality; rather they would inevitably assume the words connected to the whisky produced by the Opponent.  To repeat my earlier point – I am not satisfied that a consumer that refers to ‘black label whisky’ is referring to a whisky product of a particular quality; rather they would be referring to the Opponent’s premium whisky product.  I also do not accept the Applicant’s submission that the Opponent’s Trade Mark has such a level of fame or reputation associated with whisky that it would reduce the risk of confusion and nor do I accept that a consumer, when seeing wine branded with the Trade Mark solus would not be confused as to the source of trade origin merely because the Opponent’s Trade Mark is well-known in connection with Scotch whisky.

6. The final submission relates to the likelihood that confusion would not occur because the goods for which the Opponent’s Trade Mark have a reputation, namely Scotch whisky, are different to the Applicant’s Goods.  Both parties include significant evidence and make significant submissions on this matter, referring to various factors including (from the Opponent), that the products are both alcoholic beverages, sold from the same stores from similar producers and (from the Applicant) that the products are not substitutable, are sold from different sections of the same store often by different teams, serve different needs and are regulated and consumed in a different manner and sometimes at a different price point.

7. While the Applicant’s arguments have some force, this issue has been considered before by this office and in Jack Daniel's Properties Inc v Warren Scott Harvey[11] (‘Jack Daniel’s’) this office found, in the s 44 context, that wine and whisky were similar goods.  The Delegate in that case, after considering previous cases, found that a substantial number of consumers seeing the subject mark, being a mark consisting of a mildly stylised form of the word JACK DOOLAN’S (along with additional descriptive terms) used for whisky would be caused to wonder whether that whisky comes from the same trade source as the wine being produced under the word mark JACK DOOLAN.  This also reflects the statements made by the Full Court in E & J Gallo Winery v Lion Nathan Australia Pty Limited[12] which noted at [73] (in connection with the similarity between beer and wine) that while the manner in which the goods are produced and sold is relevant, what is particularly relevant is the question of whether consumers might see the goods as having the same origin.  In the alcoholic beverages market it is common for producers of alcoholic beverages to produce a range of goods and hence the fact that wine might be sold in a slightly different way to whisky would not be of significance to the consuming public when considering the trade origin of the goods.  

   [11] [2010] ATMO 47, (Hearing Officer O’Brien)

   [12] 2009] FCAFC 27 (Moore, Edmonds and Gilmour JJ)

8. There is no evidence before me that the state of the market has changed since the Jack Daniel’s decision was issued, indeed the evidence suggests that brand expansion has become more common.  While I accept the absence of evidence of confusion is a factor in this case (though a limited factor given the manner in which the Applicant’s Goods bearing the Black Label brand were actually sold), given the very significant reputation of the Opponent’s Trade Mark (and my conclusion that this reputation exists separate to the Johnnie Walker mark for Scotch whisky), the fact that the Trade Mark and the Opponent’s Trade Mark are almost identical and the obvious connections between Scotch whisky and the Applicant’s Goods recognised in the Jack Daniel’s above, I consider it likely that consumers familiar with the Opponent’s Trade Mark would see the Trade Mark used for the Applicant’s Goods and be caused to wonder whether it might not be the case that goods bearing the Trade Mark come from the same trade source as Scotch whisky bearing the Opponent’s Trade Mark or that the Applicant’s Goods were marketed under the license of the Opponent.

9. I find that the Opponent has established the ground of opposition pursuant to s 60.

   Decision and Costs

   35.     I have found the Opponent has established the ground of opposition it raised pursuant to s 60.  As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

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

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    5 August 2024