Earl of Sandwich FamilyCo AG v John Montagu Pty Ltd

[2018] ATMO 37

TRADE MARKS ACT 1995

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

Re:Opposition by Earl of Sandwich (FamilyCo) AG to registration of trade mark application 1660001(43) – JOHN MONTAGU. (fancy) – filed in the name of John Montagu Pty Ltd.

Delegate:

Adrian Richards

Representation:

Opponent: Ashurst Australia

Applicant: Sweeny Tiggemann

Decision:

2018 ATMO 37

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under sections 42(b), 43, 44, 58, 60 and 62A – no grounds of opposition established – trade mark to be registered

Background

1. This decision on the written record concerns an opposition to registration under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) of the following trade mark:

   Application number:                 1660001

   Trade mark:   (‘the Trade Mark’)

   Specification of services:         Class 43: Cafes (‘the Applicant’s Services’)

   Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied

   Filing date:25 November 2014 (‘the Relevant Date’)

   Applicant:John Montagu Pty Ltd (‘the Applicant’)

2. The Trade Mark was examined and accepted for possible registration on 9 December 2014. On 18 March 2015, Earl of Sandwich (FamilyCo) AG (‘the Opponent’) wrote to this office requesting revocation of acceptance of the Trade Mark. The request was based on the existence of a trade mark application with an earlier priority date, which has since been registered. Relevant details of that application appear below:

   Application number:                 1680366 (international registration number 1238486)

   Trade mark:  MONTAGU (‘the Opponent’s Trade Mark’)

   Specification of goods and services:

   Class 30:Cereal-based preparations; bread; pastry; sandwiches; bread rolls; pizzas; cakes; buns; coffee; tea; cocoa; chocolate; salt; spices; mustard; vinegar; sauces; salad dressings; savory sauces; edible ices; wraps (sandwiches); pita bread

   Class 35:Ordering services for all the services in class 43, including services provided online or via the Internet or Extranet

   Class 43:Services provided by restaurants, canteens, cafeterias, sandwich bars, snack bars and coffee shops; food and drink catering; information and advisory services for all the aforesaid services, including such services provided online or via the Internet or Extranets

   Priority date:  17 September 2014

   Notification date:  12 March 2015

3. This office sent a letter to the Applicant on 7 April 2015 proposing to revoke the acceptance of the Trade Mark. In response, the Applicant filed a declaration of Narada Zhi Qiang Kudinar-Kwee director of the Applicant, made 24 April 2015, with Annexures A to Z and Annexure ZZ (‘Kudinar-Kwee 1’). The proposal to revoke acceptance appears to be have been withdrawn on the strength of Kudinar-Kwee 1, since this office sent the Opponent a letter on 7 May 2015 stating that acceptance of the Trade Mark would be advertised ‘soon’.

4. The Trade Mark had in fact already been advertised as having been accepted for possible registration on 16 April 2015. This advertisement began the two month opposition period prescribed by reg 5.6(1) of the Trade Marks Regulations 1995 (Cth) (‘the Regulations’).

5. The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 15 June 2015, a Statement of Grounds and Particulars (‘the SGP’) on 15 July 2015 and evidence in support on 27 November 2015. The Applicant filed evidence in answer on 26 February 2016. This office invited the Opponent to file evidence in reply but it did not do so within the two months allowed by reg 5.14(6) of the Regulations.

6. The statutory evidence stages having ended, this office wrote to the parties on 20 May 2016 to inform them that the opposition was ready to be heard, and to invite them to request an oral hearing. This office received no response from either party, and so issued another letter on 11 July 2016 informing the parties that the opposition would be decided on the papers, and asking them to file any written submissions to be taken into account when deciding the matter within a month of the letter. Inside of that month, the parties submitted a joint application for a six month cooling-off period under reg 5.16 of the Regulations. This was later extended to twelve months, which is the maximum time allowed.

7. Around twelve months later, on 14 August 2017, this office wrote to the parties again asking them to file any written submissions to be considered by the delegate when deciding the opposition. The Applicant filed written submissions, and the Opponent did not. I was recently given this opposition to decide in my capacity as a delegate of the Registrar of Trade Marks.

Evidence

1. The following documents were filed as evidence during this opposition:

   Evidence in support

   Declaration of Lord John Edward Hollister Montagu, the eleventh and current Earl of Sandwich , founder and shareholder of the Opponent, made on 25 November 2015, with annexures A to M (‘Montagu’).

   Declaration of Mary Katina Papadopoulos, senior associate at Ashurst Australia, made on 27 November 2015, with annexures A to D (‘Papadopoulos’).

   Evidence in answer

   Declaration of Aleks Attwood, head barista at the Applicant, made 25 February 2016.

   Declaration of Michelle De Gabrielle, floor manager at the Applicant, made 25 February 2016.

   Declaration of Narada Zhi Qiang Kudinar-Kwee, director of the Applicant, made 26 February 2016, with annexures A to E (‘Kudinar-Kwee 2’).

   Declaration of Sie Nam Raymond Lim, director of the Applicant, made 26 February 2016, with annexures A to C (‘Lim’).

2. Montagu explains that the noble title of Earl of Sandwich was created in 1660 for Admiral Sir Edward Montagu. By virtue of the Peerage of England, this title has passed down to the declarant. A notable event in the passage of this noble title through the generations involved his namesake, Lord John Montagu, who was the fourth Earl of Sandwich. Contemporaneous sources referred to in annexures to the Opponent’s evidence report that in 1762, while playing cribbage at the exclusive London Beef Steak Club, the fourth Earl of Sandwich ordered his valet to fetch him some salt beef tucked between two slices of toasted bread. Why this was so noteworthy bears explanation. At the time, eating with cutlery whilst in polite company was de rigueur,[1] and meals taken by those of the Earl’s social stratum were also as a rule served up at a table by a number of servants with a great degree of ritual. After this audacious order had been fulfilled, fellow card players began to see the advantage of taking their sustenance in this form while in the middle of a game—the bread kept the hands free from grease without need for bothersome implements. At the time this dish was probably known in plainer terms such as ‘meat and bread’ but following this incident, people instead began to ask for ‘the same as Sandwich’ or simply ‘a Sandwich’. As this practice spread the familiar contemporary term for this food found its way into popular usage.

   [1] This is not to imply that standards have slipped dramatically in the last couple of couple of centuries, but merely to observe that nobility can today handle certain foods (cucumber sandwiches comes to mind) without anyone so much as raising an eyebrow.

3. Stepping forward in time now, Montagu also outlines the commercial interests of the Opponent. Ld Montagu declares that the Opponent operates a chain of ten restaurants in the United States of America, had also run one in the United Kingdom between 2011 and 2014, is the franchisor of a further seventeen restaurants in the United States of America and one in Disneyland Paris, France. All of those restaurants operate ‘under the name and trade mark EARL OF SANDWICH’. Those businesses offer sandwiches and other convenience foods under a variety of names, some of which allude to the history of the sandwich such as ‘The Earl’s Club’ and ‘The Original 1762’. The most relevant to the present opposition is ‘The Full Montagu’, for which separate revenue figures (in the context of overall takings for each outlet) have been provided for the years 2004 to 2015. Supporting those business endeavours is the Opponent’s presence on several of the more commonly used social media platforms, as well as its websites which are directed at audiences in France, the United Kingdom and the United States of America. The Opponent also owns registered trade marks in several jurisdictions, including Australia.

4. Papadopoulos is decidedly more prosaic than Montagu. The former simply reads into evidence its four annexures. Annexure A is a copy of a freedom of information request made to IP Australia for a copy of the official trade mark file for the present application. Annexure B consists of the documents released pursuant to the freedom of information request, and some associated correspondence. The only document of any importance in Annexure B is a redacted version of Kudinar-Kwee 1. Annexure C is a report from the Department of Commerce of the United States of America titled 2014 Market Profile: Australia. Annexure D is a series of overhead slides prepared by Euro Disney S.C.A titled Annual Results Presentation Fiscal Year 2013.

5. All four of the declarations in the Applicant’s evidence in answer seek to make a few of the same points. They each assert, sometimes with supporting documentation, that the Applicant has offered the Applicant’s Services under the Trade Mark from 2013 or 2014 (depending on when each declarant began working for the Applicant). They each seek to show that in the minds of the Applicant’s staff, customers and even some passers-by there has been no ready association between the Trade Mark and the dining exploits of the fourth Earl of Sandwich. Finally, they each observe that they have not noticed any confusion between the Applicant and the Opponent while plying their trade. The last two points are illustrated most dramatically in Kudinar-Kwee 2. It recounts an unnamed customer from mid to late 2014 who asked the declarant “who is John?” The declarant dutifully explained the story of the ‘invention’ of the sandwich in the 18^th century, to which the customer remarked that he always goes for lunch at the (Opponent’s) Earl of Sandwich restaurant in Planet Hollywood in Las Vegas, but he never realised that the Earl’s name was John Montagu.

6. Messrs Lim and Kudinar-Kwee are business partners. Both declare that they began to plan to open a restaurant together in around September or October 2013. Mr Lim had the idea of naming the nascent business after the person that ‘invented’ the sandwich. The partners searched the term ‘John Montagu’ in a number of places, including the Australian Business Register. Having concluded that it was not in use, the Applicant began to offer its services under the Trade Mark in November 2013. Besides that, Lim offers an account of the Applicant’s social media presence, while Kudinar-Kwee 2 provides examples of use of the Trade Mark on the Applicant’s website, at its business premises and on its take-away food and drink packaging.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42(b), 43, 44, 58, 60 and 62A of the Act. The onus is on the Opponent[2] to satisfy me on the balance of probabilities that it has established one of those nominated grounds of opposition. The rights of the parties are to be determined as they were at the Relevant Date.[3]

Reasons

[2] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 44

1. It is convenient to begin with s 44 of the Act. The parts of that section relevant to my discussion appear below:

   44 Identical etc. trade marks

   (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)    …

   (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.

1. The SGP nominates the Opponent’s Trade Mark as forming the basis for this ground of opposition. The Opponent’s Trade Mark has an earlier priority date than the Trade Mark, and the claims in class 43 to ‘[s]ervices provided by restaurants, canteens, cafeterias, sandwich bars, snack bars and coffee shops’ are the same as the Applicant’s Services. Two of the elements of s 44(2) are therefore readily satisfied. The only element of any contention under this ground of opposition is whether the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Trade Mark.

2. Starting with whether the marks are substantially identical, the often quoted test is as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it". Whether there is substantial identity is a question of fact.[4]

   [4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407, 414.

3. I have reproduced both trade marks below to assist the side by side comparison that follows:

   MONTAGU         

4. Both trade marks have in common the word MONTAGU. The Trade Mark differs from the Opponent’s Trade Mark in three ways: the word JOHN appears before the word MONTAGU, a period appears after it and the Trade Mark has been executed in a fancy script. While the particular choice of font and the inclusion of a punctuation mark might possibly be taken to be non-essential features, or as not presenting a different total impression, it would be impossible to view the word JOHN in that way. The inclusion of this extra word alone provides a total impression of dissimilarity between these trade marks—they are not substantially identical.

5. Turning to whether the trade marks are deceptively similar, the test is not based upon a side by side comparison, but on ‘impression based on recollection of the [Opponent’s Trade Mark] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from [the Trade Mark].’[5] There are several factors that can assist in making such an assessment, but it is unnecessary to go through them here. Assuming for present purposes that these trade marks are deceptively similar, this ultimately would not prevent registration of the Trade Mark.

   [5] Ibid, 415.

6. As briefly touched on above, the Opponent filed a redacted copy of Kudinar-Kwee 1 in its evidence in support. The redacted version is therefore in evidence in this opposition proceeding, and the original is not. To avoid the error of referring to material that was not properly filed in this opposition, I have referred below only to its redacted version.

7. Examples of use of the Trade Mark in the redacted version of Kudinar-Kwee 1 start with the Applicant’s ‘Facebook’ account update from 12 November 2013 advertising that the café would be opening soon. This is closely followed on 27 November 2013 with an image posted on the same social media platform showing the café open for business. Several food blogs discussing the café are also reproduced, most of which are dated, and those dates are evenly spread from December 2013 extending up to the Relevant Date, from which I infer that use of the Trade Mark was continuous during that time. Other relevant evidence includes the Applicant’s entry in the Sydney Morning Herald Good Café Guide from mid-2014 (complete with congratulatory letter from the publisher). Given all of this, s 44(4) of the Act has been satisfied comprehensively, and as a consequence the Opponent is unable to establish a ground of opposition under s 44 of the Act.

Section 58

1. This section of the Act is set out below:

   58 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.

2. The SGP reveals that the Opponent founds this ground of opposition on its use of the Opponent’s Trade Mark from before the Relevant Date. In such circumstances, in order to establish this ground of opposition the Opponent would need to demonstrate that someone other than the Applicant was the first to use the Trade Mark, or a substantially identical trade mark, in Australia.[6] Since I have already found above that the Opponent’s Trade Mark is not substantially identical to the Trade Mark, the Opponent is also unable to establish this ground of opposition. It is unnecessary to explore any further issues which might have arisen under this ground of opposition, such as whether the Opponent’s claim to earlier use was ‘public use in Australia of the mark as a trade mark’.[7]

   [6] Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375.

   [7] Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 432 (Deane J).

Section 60

1. Section 60 of the Act appears below:

   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.

   Note:    For priority date see section 12.

2. The SGP is vague as to what trade mark(s) the Opponent seeks to rely upon for the purposes of this ground of opposition. It variously refers to the Opponent’s Trade Mark, the Opponent’s use of ‘the JOHN MONTAGU / MONTAGU names’, and finally, in a particularly unclear formulation, what it describes as ‘the inextricable link between the Montagu name, the Opponent and the “Earl of Sandwich” title’.

1. In any case, in order to satisfy s 60(a) the earlier trade mark’s reputation needs to be amongst a significant section of the relevant market.[8] Reputation cannot be assumed, it is a question of fact.[9] In other words, the Opponent’s evidence needs to show that this reputation existed at the Relevant Date. ‘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’.[10] The Opponent has not attempted to provide ‘direct evidence of consumer appreciation’ amongst consumers of café services in Australia, nor has it offered any evidence of its ‘sales, advertising or other promotions’ in Australia. Instead in evidence are records of the Opponent’s sales and promotions mostly in the United States of America, and to a lesser extent in the United Kingdom and France. I take it from the inclusion of Annexure C to Papadopoulos that the Opponent may have been planning a circuitous approach to reputation. This probably involved referring to the annual numbers of travellers from Australia to the United Stated of America, and seeking to infer from this that a significant section of consumers of café services in Australia would be aware of the Opponent. While this strikes as farfetched, given the lack of any submissions from the Opponent on this point (or, for that matter, on any point), I am left to wonder whether such an argument might have had any merit.

   [8] Re Smith Hayden & Co Ltd's Application (1946) 63 RPC 97 (Ch D).

   [9] Sara Lee Corporation v Bali Blue Pty Ltd (2003) 59 IPR 619, 624.

   [10] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86].

2. The Opponent has not satisfied me that any of the trade marks it mentions in the SGP had a reputation in Australia at the Relevant Date, and so it is unnecessary to turn to the second limb found in s 60(b) of the Act. The Opponent has failed to establish this ground of opposition.

Section 42(b)

1. The relevant part of this section appears in the Act in the following terms:

   42 Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) …

   (b) its use would be contrary to law.

2. In the SGP the Opponent claims that use of the Trade Mark would be contrary to ss 18 and 29(1) of the Australian Consumer Law,[11] and the common law tort of passing off.

   [11] Competition and Consumer Act 2010 (Cth) sch 2 (‘ACL’).

3. The Opponent has particularised this ground of opposition in such a way that, in relation to both ss 18 and 29(1) of the ACL, it seeks to rely on reputation in some earlier trade mark. But in my discussion above in relation to s 60 of the Act, I found that the Opponent had failed to establish that an earlier trade mark had a reputation in Australia at the Relevant Date. Also relevant is my finding above in relation to s 44(4) of the Act that the Applicant has established prior and continuous use of the Trade Mark. With that in mind, the following excerpt is instructive (noting that the various references below to ‘s 52’ are to s 52 of the Trade Practices Act 1974 (Cth), which was the equivalent of s 18 of the ACL):

   While I am required to take into account the reputation of the party who claims that s. 52 will be breached, this does not mean that I am unable to take into account the reputation of the alleged infringer at the relevant time and circumstances. It may be that the alleged infringer has an even higher reputation in the goods in question…In light of the competing reputations, I am not satisfied that a s. 52 case could, let alone would, be made out.[12]

   [12] Time Warner Entertainment Company, LP v Stepsam Investments Pty Ltd [2002] ATMO 93.

4. Accordingly, the Opponent has not satisfied me that use of the Trade Mark would be contrary to ss 18 or 29(1) of the ACL. With that in mind, I turn now to passing off, for which the following observations are to the point:

   Section 52 of the Trade Practices Act is concerned with misleading or deceptive conduct by a corporation, in trade or commerce. Typically, although not necessarily, that conduct will take the form of a misrepresentation; sometimes that misrepresentation may concern the provenance of goods offered for sale by the misrepresenter. The law of passing off is concerned with representations made by a trader by which the trader suggests, expressly or by implication, that goods offered by him for sale are the goods produced or offered for sale by another person or that they are the same as other goods, the source of the latter goods being unidentified. It is obvious that, in some fact situations, the inquiry will be the same, whether the case is considered under s 52 or under the law of passing off: did the respondent represent that the goods offered by it were goods produced, or offered, by the applicant or were the same as other goods, being the applicant's goods? This is such a case. As it seems to us, both the s 52 claim and the passing off claim stand or fall according to the manner in which that question is answered.[13]

   [13] Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 89 ALR 48, 67 (citations omitted).

5. The Opponent’s position in relation to passing off relies on the same facts as its claim in relation to s 18 of the ACL. Thus, ‘no distinction needs to be made between the [Opponent’s s 18] claim and its passing off claim.’[14] The Opponent has failed to establish this ground of opposition.

   [14] Ibid.

Section 43

1. The provision is set out below:

   43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

2. Central to this ground of opposition is the word ‘connotation’:

   “Connotation” is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks.[15]

   [15] Pfizer Products Inc v Karam (2006) 219 FCR 585, 599 [53].

3. As to what connotation might be found within the Trade Mark, the SGP repeats the now familiar tale of the Opponent’s reputation in the name John Montagu or similar. In keeping with my findings above, the Opponent has not dispensed with its burden to satisfy me that the relevant consumer would, upon reading the Trade Mark or hearing it uttered, perceive within it a connotation of the fourth Earl of Sandwich (in whose honour the Trade Mark was supposedly named), let alone the eleventh and current Earl of Sandwich or, for that matter, the Opponent. For this reason, the Opponent has not established this ground of opposition.

Section 62A

1. Section 62A of the Act reads:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

2. An application will have been made in bad faith when ‘in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.’[16] I am to take account of the Applicant’s subjective knowledge at the Relevant Date, and with that in mind assess the Applicant’s act of filing the present application against the objective notion of ‘persons adopting proper standards.’

   [16] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 201 FCR 565, 598 [167].

3. The Applicant’s submissions on this ground of opposition recount the evidence of Messrs Lim and Kudinar-Kwee as to their brainstorming for a name for their planned café, their various searches for the term ‘John Montagu’, and their reasons for ultimately adopting the Trade Mark. At the time the Trade Mark was adopted, nobody at the Applicant knew the name of the eleventh and current Earl of Sandwich, that there was a chain of restaurants named Earl of Sandwich, or that the Opponent held a number of overseas trade marks. This state of mind persisted until the Applicant, having traded under the Trade Mark for almost a year, received a letter from the Opponent. This letter meant that at the Relevant Date, the Applicant had recently become aware that the name of the eleventh and current Earl of Sandwich was John Montagu, that the Opponent was conducting businesses overseas under the name ‘Earl of Sandwich’, that those businesses referred to one of their sandwiches as ‘The Full Montagu’, and that the Opponent held a registered trade mark in Switzerland for the plain word ‘MONTAGU’ in relation to the same services as the Applicant’s Services.

4. Confronted with the Opponent’s letter, the Applicant sought legal advice. Having received that advice, the Applicant then filed the application. The Applicant’s submissions characterise the act of filing the application as reflecting a desire ‘to protect the reputation and good will the Applicant had created in the Trade Mark’. In the circumstances, this strikes me as an accurate summation. The Applicant had been trading under the Trade Mark quite successfully since November 2013, the Opponent’s MONTAGU trade mark had priority from only September 2014, and the Opponent had never offered ‘The Full Montagu’ (or, for that matter, any other goods and services) in Australia. In the circumstances, moving to protect the Applicant’s goodwill and reputation in the Trade Mark by filing the application was an appropriate response to what I assume was astute legal advice. The Opponent has not satisfied me that this ground for opposition has been established.

Decision and costs

1. Section 55 of the Act relevantly provides:

   55 Decision

   (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.

2. The Opponent has not established a ground of opposition, so I have decided to register the Trade Mark. The trade mark application may proceed to registration one month from the date of this decision with the current endorsement ‘Provisions of subsection s44(4) and/or Reg 4.15A(5) applied’. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

3. The Applicant has requested an award of costs. The normal course is for costs to follow the event, and the present circumstances do not give me a reason to depart from this. I award costs against the Opponent in the applicable amounts set out in schedule 8 of the Trade Marks Regulations 1995 (Cth).

Adrian Richards

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

14 March 2018