Find Pty Ltd v Guangdong Oppo Mobile Telecommunications Corp Ltd

[2022] ATMO 73

TRADE MARKS ACT 1995

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

Re:Opposition by Find Pty Ltd to applications under section 92 of the Trade Marks Act 1995 (Cth) by GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD. for removal of trade mark number 1211190 (16, 35, 38) – Find and 1298039 (35) – FIND (Figurative) – in the name of Find Pty Ltd

Delegate:	Nicholas Smith
Representation:	Opponent: Self-represented Applicant: A.P.T. Patent and Trade Mark Attorneys
Decision:	2022 ATMO 73 Trade Marks Act 1995 (Cth) - section 96 opposition: s 92(4)(b) applications for removal - Removal Opponent’s evidence does not show use of the Trade Marks during the relevant period or obstacle to use – exercise of Registrar’s discretion not appropriate – Trade Marks to be removed from the Register

Background

1. This decision is pursuant to applications made on 21 March 2021 under ss 92(4)(b) of the Trade Marks Act 1995 (‘Act’) by GUANGDONG OPPO MOBILE TELECOMMUNICATIONS CORP., LTD. (‘Applicant’) to remove the trade marks detailed below (collectively ‘Trade Marks’) from the Register of Trade Marks. 

Registration No.	1211190
Lodgement date	28 November 2007
Goods and Services	Class 16: Adhesive printed matter; advertisements (printed matter); advertising material being printed matter; business forms being printed matter; computer listings in the form of printed matter; listings (printed matter) for computers; lists (printed matter); manuals (printed matter); printed matter; printed matter for advertising purposes; printed matter relating to banking; printed matter relating to banking services; printed matter relating to finance; printed matter relating to financial services; printed matter relating to health education; printed matter relating to information technology; printed matter relating to insurance; printed matter relating to investments; printed matter relating to medical matters; published printed matter relating to telecommunications; registers (printed matter); segmented computer files (printed matter); supplements (printed matter) Class 35: Advertising; advertising services provided over the Internet; advertising services provided via a data base; classified advertising; on-line advertising on a computer network; production of advertising material; promotion (advertising) of businesses; provision of advertising space; rental of advertising space on the Internet; compilation of on-line directories; compilation of advertisements for use as web pages on the Internet; data storage (other than physical storage); rental of advertising space on the Internet; compilation of directories for publishing on the Internet; the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from the Internet website; enabling suppliers to advertise their goods and services via the internet including goods and services in the fields of, but not limited too, takeaway industry, food industry including restaurants and cafes, auto industry, accommodation and tourism industry, bridal industry, financial industry, computer industry, health industry, natural therapy industry, clothing industry, employment industry; advertising services including classified advertising services on the internet; business intermediary services in relation to the provision of telecommunications including facilitating services for the aforesaid; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the Internet or other computer networks; provision of online advertising space for use by others to advertise products and services; compilation of business information into computer databases; compilation of user inputted data regarding businesses into computer databases; computerized ranking systems for businesses; computerized advertising and promotion services and information services relating thereto; compilation of business advertisements for use as web pages on the internet; provision of space on web sites for advertising goods and services; data processing; including for the aforesaid, sales, leasing and rental; retailing, wholesaling and trading services; facilitating retailing, wholesaling and trading services; marketing services; publicity services; auctioneering services; dissemination of advertising matter; rental of advertising space (including on-line advertising space); on-line promotion on a computer network; procurement services, (including the foregoing provided on-line, through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); business accounts services; business advice, assistance and development; home shopping services; business and advertising services of a magazine club; business administration services; arranging the provision by third parties of discounts, complimentary goods and complimentary services; product and service promotion; customer loyalty and incentive programs and schemes; supply of benefits in connection with loyalty and incentive programs and schemes; operation and administration of loyalty marketing and other sales and promotional incentive and loyalty schemes; sales promotion including through frequent buyer incentive programs and customer loyalty programs; information services (including on-line information services) in relation to business, the economy, the sale of goods and the provision of business services including the aforesaid services; dissemination of information in relation to the foregoing and in relation to business, advertising, office, business administration and commercial services; information, support, assistance, consultancy and advisory services in relation to the foregoing Class 38: Communication services for the purpose of e-commerce; transmission services (regardless of the technological means of transmission); communications and transmissions between mobile telephones and computers, including over 3G networks; communications and transmissions between mobile telephones and mobile telephones, including over 3G networks; communications and transmissions with mobile telephones, including over 3G networks; receiving communications and transmissions including email, text, audio, images and audio-visual material; computer aided transmission of messages and images, including over 3G networks; communications and transmissions with 3G devices and between 3G devices; computer aided receiving of messages and images, including from 3G devices and over 3G networks; facsimile transmission services; information and message receiving and sending services including telephone information services and 3G services; communications via telephone and facsimile; communication by computer via global computer networks including the Internet; dissemination of information in aforesaid fields, telecommunications and news via online services and mobile services, including SMS, MMS and 3G services; on-line visual, audio and audio-visual transmission services; e- mail services; SMS and text message services, including SMS and text alert services; MMS telephony services; 3G mobile services, including 3G message sending services; mobile telephone services; chat room services; communication by and between computers, including via global computer networks including the Internet; communication by electronic mail systems; communication by electronic means or provided electronically; electronic transmission of streamed and downloadable files, including audio and video files, via computer and other communications networks; providing on-line chat rooms, bulletin boards and community forums for the transmission of messages among computer users; web casting services; delivery of messages by electronic transmission; provision of connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; dial-up and broadband delivery of customer content; music, video, audio, television and data streaming services; communication of data and information by telecommunications, computer, cable, satellite, television, video, radio, broadcast, telephony or electronic means; delivery of music, audio, video and audiovisual content by telecommunications; interactive services for facilitating the viewing, download, and recording of television programs and television content; Internet portal services; Internet services provider services; netcasting; news agencies; news broadcasting; operation of cable television networks and systems; operation of cellular communications systems; operation of telecommunications apparatus and systems; operation of wide-band telecommunications networks; provision of access to television, including via decoding apparatus; provision of telecommunication facilities; provision of user access to the Internet; transmission of data, documents, messages, television programs, radio programs and information, including by audio-visual apparatus, cable, computer, television, telephone, radio and microwave, and by electronic means; broadcasting of information on a wide range of topics; transmission of information on a wide range of topics, including via on- line services (including online, interactive, digital and datacasting information services) and via mobile services including SMS, MMS and 3G services; transmission of information on a wide range of topics, including on-line and over a global computer network; transmission of information on a wide range of topics by means of electronic communications networks including global computer networks and mobile services, including SMS, MMS and 3G services; transmission of news; video communication and transmission services; videotext services; webcasting; wireless communication and telephone services; information, support, assistance, consultancy and advisory services in relation to the foregoing
Owner	Find Pty Ltd
Trade Mark	Find (‘Word Mark’)

Registration No.	1298039
Lodgement date	14 May 2009
Services	Class 35: Advertising; advertising services provided over the Internet; advertising services provided via a data base; classified advertising; on-line advertising on a computer network; production of advertising material; promotion (advertising) of businesses; provision of advertising space; rental of advertising space on the Internet; compilation of on-line directories; compilation of advertisements for use as web pages on the Internet; data storage (other than physical storage); rental of advertising space on the Internet; compilation of directories for publishing on the Internet; the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to conveniently view and purchase those goods and services from the Internet website; enabling suppliers to advertise their goods and services via the internet including goods and services in the fields of, but not limited too, takeaway industry, food industry including restaurants and cafes, auto industry, accommodation and tourism industry, bridal industry, financial industry, computer industry, health industry, natural therapy industry, clothing industry, employment industry; advertising services including classified advertising services on the internet; business intermediary services in relation to the provision of telecommunications including facilitating services for the aforesaid; information, advice and consultancy in relation to all the aforesaid; provision of all the aforesaid online via the Internet or other computer networks; provision of online advertising space for use by others to advertise products and services; compilation of business information into computer databases; compilation of user inputted data regarding businesses into computer databases; computerized ranking systems for businesses; computerized advertising and promotion services and information services relating thereto; compilation of business advertisements for use as web pages on the internet; provision of space on web sites for advertising goods and services; data processing; including for the aforesaid, sales, leasing and rental; retailing, wholesaling and trading services; facilitating retailing, wholesaling and trading services; marketing services; publicity services; auctioneering services; dissemination of advertising matter; rental of advertising space (including on-line advertising space); on-line promotion on a computer network; procurement services, (including the foregoing provided on-line, through publications, electronic publications, catalogues, newsletters, direct mail and mail order or otherwise); business accounts services; business advice, assistance and development; home shopping services; business and advertising services of a magazine club; business administration services; arranging the provision by third parties of discounts, complimentary goods and complimentary services; product and service promotion; customer loyalty and incentive programs and schemes; supply of benefits in connection with loyalty and incentive programs and schemes; operation and administration of loyalty marketing and other sales and promotional incentive and loyalty schemes; sales promotion including through frequent buyer incentive programs and customer loyalty programs; information services (including on-line information services) in relation to business, the economy, the sale of goods and the provision of business services including the aforesaid services; dissemination of information in relation to the foregoing and in relation to business, advertising, office, business administration and commercial services; information, support, assistance, consultancy and advisory services in relation to the foregoing
Owner	Find Pty Ltd
Trade Mark	(‘Device Mark’)

1. The applications are for the complete removal of the Device Mark and the removal of the Word Mark for the services listed in class 35 and 38 below (‘Registered Services’) but not for the goods in class 16.

2. Find Pty Ltd (‘Opponent’) has opposed the application to remove the Trade Marks, filing a Notice of Intention to Oppose removal on 12 May 2021 and a Statement of Grounds and Particulars (‘SGP’) on 29 May 2021.  The Applicant filed a Notice of Intention to Defend on 8 August 2021.

3. The Opponent subsequently filed evidence in support of its opposition to removal (‘EIS’) which will be discussed in more detail below.  The Applicant chose not to file evidence in answer.

4. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 3 December 2021 the Applicant requested a hearing by submissions and paid the appropriate fee.  The Opponent did the same on 8 March 2022.  I was allocated to decide the matter as a delegate of the Registrar of Trade Marks.  In line with usual practice, a letter was sent to the parties on 25 February 2022 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 11 March 2022 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 18 March 2022 (‘Applicant’s Submissions’). 

5. I am a delegate of the Registrar and the matter has been allocated to me to decide, which I have done, on the basis of the following relevant material and the evidence listed below:

   ·The Application for Removal;

   ·The Notice of Intention to Oppose and SGP;

   ·The Opponent’s Submissions (but not any evidentiary material attached to the Opponent’s Submissions not already in evidence);

   ·The Applicant’s Submissions. 

   Evidence in Support

   • Declaration by Warrem Strybosch, Founding Director of the Opponent, dated 4 September 2021 (‘Strybosch Declaration’) together with a bundle of documents annexed to the declaration that were provided to this office on 30 August 2021

   The Relevant Provisions

6. Part 9 of the Act deals with removal of trade marks from the Register on account of non-use. In respect of this matter s 92 of the Act relevantly provides:

   92  Application for removal of trade mark from Register etc.

   (4)An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:

      (a)  …

   (b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:

   (i)used the trade mark in Australia; or

   (ii)used the trade mark in good faith in Australia;

   in relation to the goods and/or services to which the application relates.

   Note 1:For file and month see section 6.

   Note 2:If non‑use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under section 102 on the registration of the trade mark so that its registration does not extend to that place or export market.

7. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 21 February 2021 (‘Relevant Period’).

8. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application,[1] and I confirm that five years since filing the application have in fact passed with respect of each of the Trade Marks.

   [1] Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 as applies in the present matter. The updated s 93(2) of the Act applies to Trade Marks filed from 29 February 2019 onwards.

9. The onus of rebutting an allegation of non-use lies with the Opponent. This onus is articulated in s 100 of the Act which provides, relevantly to this matter:

   100  Burden on opponent to establish use of trade mark etc.

   (1) In any proceedings relating to an opposed application, it is for the opponent to rebut:

   (a) …
   (b)  any allegation made under paragraph 92(4)(a) that the trade mark has not, at any time before the period of one month ending on the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services; or
   (c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at any time during the period of 3 years ending one month before the day on which the opposed application was filed, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services.

   […]

   (3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted the allegation that the trade mark has not, at any time during the period referred to in that paragraph, been used, or been used in good faith, by its registered owner in relation to the relevant goods and/or services if:

   (a) the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by its registered owner in relation to those goods or services during that period; or
    (b)  in a case where the trade mark has been assigned but a record of the assignment has not been entered in the Register:

   (i)  the opponent has established that the trade mark, or the trade mark with additions or alterations not substantially affecting its identity, was used in good faith by the assignee of the trade mark in relation to those goods or services during that period and that that use was in accordance with the terms of the assignment; and
   (ii)  the Registrar or the court is of the opinion that it is reasonable, having regard to all the circumstances of the case, to treat the use of the trade mark by the assignee during that period as having been a use of the trade mark in relation to those goods or services by the registered owner; or

   (c) the opponent has established that the trade mark was not used by its registered owner in relation to those goods and/or services during that period because of circumstances (whether affecting traders generally or only the registered owner of the trade mark) that were an obstacle to the use of the trade mark during that period.

1. I proceed on the basis that the standard of proof is the ordinary civil standard being on the balance of probabilities.[2]

   [2] Pfizer Products Inc. v Karam [2006] FCA 1663 (Gyles J) and more recently: Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

2. In accordance with s 101, I may decide to remove the Trade Marks from the Register for all or some of the services identified in the application for removal, or if satisfied it is reasonable to do so, decide not to remove the Trade Marks even if the grounds under which the application for removal was made are established.

3. I further note that a single bona fide use of either the Word Mark or the Device in the course of trade during the relevant period may be sufficient to rebut the allegation under s 92(4)(b) with respect to that mark,[3] but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’.[4] Use of the Trade Marks by an authorised user (as defined by s 8 of the Act) is taken to be use of the Trade Marks by the Opponent.[5] 

   [3] Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261, [17] (Drummond J).

   [4] Nodoz Trade Mark (1962) RPC 1, 7 (Wilberforce J).

   [5] Act s 7(3).

   Discussion

4. To successfully oppose the application the Opponent must establish that it has used the Trade Marks (or a substantially identical trade mark[6]) pursuant to s 100 of the Act (either through use or circumstances that were an obstacle to use in the relevant period). If the Opponent fails to establish such use, I have discretion under s 101(3) to decide that the Trade Marks should not be removed from the Register.

   [6] AgCare Biotech Pty Ltd v Crop Smart Pty Ltd [2009] ATMO 41, [10]-[21] (Hearing Officer Kirov).

   Use of the Trade Marks in the relevant period

5. The Opponent’s evidence in this matter consists of the Strybosch Declaration. In this declaration Mr Strybosch initially submits that by reason of applying to use the Trade Marks and renewing the Trade Marks, the Opponent has shown an intention to use the marks in good faith and the opposition must fail. As noted in paragraph 9 above, the obligation placed on the Opponent is to show use in the Relevant Period; an intention to use is only relevant in the event that the mark is sought to be removed on the basis of s92(4)(a), which is not the case here.

6. I note that much of the evidence in the Strybosch Declaration consists of a series of links provided in the declaration. I cannot have regard to a series of links in a document (and not annexed to evidence) to show use of a trade mark during a particular period, as the content of the particular page may have changed from both the Relevant Period and the time the evidence was provided to the time the evidence is read.

7. The Declarant then gives evidence that:

   -it owns a business name called ‘Find;

   -it owns a number of other companies with the word ‘Find’ in their names;

   -it has registered a series of trade marks containing the word ‘Find’;

   -that it was successful in an opposition to a non-use proceeding for a different trade mark (1770718) in 2019;

   -it is the administrator of several Facebook pages containing the word ‘Find’.  The evidence in support of this appears to be photos of the Facebook pages but it is not clear whether the pages are operated by the Declarant or the Opponent;

   I note that the mere ownership of a business name, a company name, a Facebook page or another trade mark is not evidence of use of the Trade Marks in respect of particular goods or services, in this case the Registered Services.  This evidence does not assist the Opponent.  Furthermore the use of the Trade Marks must be by the Opponent (or an entity authorised by the Opponent).  The Strybosch Declaration does not establish that the above activities (or indeed any of the activities set out in the declaration) are conducted by the Opponent and not the declarant in his personal capacity, or that the declarant is using the trade mark as authorised by the Opponent (while Mr Strybosch is the Founding Director of the Opponent, it is unclear if he is the only director and/or authorised by the Opponent to act on its behalf).

8. The Declarant also gives evidence that;

   -after the Relevant Period, it (as noted above it is difficult to be certain whether this evidence refers to activities conducted by the Declarant or the Opponent or buy another entity connected to the Declarant) registered a not-for-profit company called Find Foundation Limited;

   -it distributed 40,000 brochures from 2012 to 2015 in Melbourne;

   -it has just published 22,000 Find Cards to be distributed to primary schools across Victoria;

   -it owns a series of domain names containing the word ‘Find’.  The evidence in support of this amounts to a screenshot of a domain name owned by the declarant and an entity with a different ABN (not the Opponent).  In any it appears that the ownership of this domain name had expired before the relevant period commenced in 2018;

   None of the evidence above shows use of the Trade Marks in the Relevant Period as it occurred either before or after the Relevant Period.  Furthermore there is no documentary evidence to support either the second or third statement above.

9. The Declarant gives evidence that:

   -It set up a series of online community portals in 2019 and writes articles for those community portals;

   -It has been nominated for an award as a financial advisor in August 2021; and

   -It has a business known as Find Wealth Pty Ltd

   The first and second statements above are not supported by documentary evidence, rather links are provided, which, for the reasons set out in paragraph 16 above I cannot have regard to.  The third statement is not relevant as it does not show use by the Opponent or establish that any use by Find Wealth Pty Ltd is authorised by the Opponent. 

10. Finally the Declarant provides an undated photo of a series of promotional material said to be produced over ‘the last few years’ bearing the Trade Marks. An undated photo of material produced after the relevant period does not establish use of the Trade Marks in the relevant period for the Registered Services.  The Opponent does not provide a single dated invoice, or verified and dated marketing material, or indeed any business record showing the provision of the Registered Services, in the relevant period, by the Opponent (or a user authorised by the Opponent).  I am not satisfied that the Strybosch Declaration shows evidence of use of the Trade Marks for the Registered Services in the relevant period.

11. I note that the Opponent, in its submissions, makes much of communications made by the Applicant during the proceedings in which the Applicant sought to obtain a letter of consent from the Opponent for the registration of a series of trade mark applications sought to be registered by the Applicant for marks containing or consisting of the word ‘find’.  It is submitted that the Applicant has conceded that the Opponent uses the Trade Marks for services in class 35.  I note that such communications are not in evidence, that the Applicant, in requesting a letter of consent, is not in a position to know the Opponent’s use of the Trade Marks and even if so, a bare statement of use is insufficient to show use of the Trade Marks across the breadth of the Registered Services.  This submission is rejected.  In addition, to the extent the Applicant’s Submissions attach material not included in the Strybosch Declaration, such material shall not be considered.

    Obstacles to use

12. The Opponent does not formally submit that there have been any matters that amount to an obstacle to the use of the Trade Marks for the Registered Services in the Relevant Period, pursuant to s 100(3)(c) of the Act and in the interests of completeness I note that I have been unable to identify any such obstacles. As there is no obstacle to use of the Trade Marks, it is therefore necessary to consider whether I should exercise the discretion to allow the Trade Marks to remain on the Register for any of the Registered Services.

    Registrar’s Discretion

13. As noted in Shanahan’s Australian Law of Trade Marks and Passing Off the policy of the Act is to facilitate the removal of an unused trade mark, and the public interest of the integrity of the Register will generally demand the removal of an unused trade mark.[7] However, as indicated at paragraph 11, above, s 101(3) provides the Registrar with a discretion, which, in the words of Bennett J, is:

    a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court [or Registrar] is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.[8]

    Her Honour also noted:

    By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. …

    There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account.[9]

    [7] M Davison, I Horak Shanahan’s Australian Law of Trade Marks and Passing Off online edition, 2016 Thomson Reuters, [70.2505].

    [8] Pioneer Computers Australia Pty Limited v Pioneer KK [2009] FCA 135, [167].

    [9] Ibid [171]-[172].

14. While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited Flick J stated:

    Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[10] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[11] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[12]

    [10] Kowa Co Ltd v Organon [2005] FCA 1282, [92].

    [11] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

    [12] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210].

15. Factors that have been found relevant to the consideration of whether to exercise the discretion include:

    ·There had been no abandonment of the trade mark;

    ·The registered proprietor of the mark still had a residual reputation in the mark;

    ·There had been sales by the registered proprietor of goods for which removal was sought since the relevant period ended;

    ·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

    ·The registered proprietor was not aware of the applicant’s sales under the mark.[13]

    [13] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135 at [169] citing E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005 [202]-[203].

16. In the present case, the documentary evidence of use prior and subsequent to the Relevant Period by the Opponent is very limited, and certainly limited given the breadth of the Registered Services.  Given that, I am unpersuaded that the removal of the Trade Marks for the Registered Services would result in consumer confusion or practically impact on the interests of the Opponent in any way.  Given the importance of the integrity of the Register, I do not consider it appropriate to exercise my discretion not to remove the Trade Marks in respect of any of the Registered Services.

    Decision

17. The Opponent has not established its opposition to the removal applications. Accordingly, I direct that registration 1211190 be amended one month from the date of this decision below to remove the Registered Services.  The Word Mark shall remain registered for the class 16 goods. I also direct that registration 1298039 be removed from the Register in respect of all the services for which it is registered one month from the date of the Decision.  If the Registrar is served with a notice of appeal before then I direct that removal shall not occur until the appeal has either been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Costs

18. The Applicant has been successful in relation to the application for removal of the Trade Marks and has requested its costs. I accordingly award costs in respect of trade mark number 1211190 against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations. In respect of trade mark number 1298039 I award reduced costs against the Opponent in the same manner as indicated in Hume Industries (Malaysia) Berhad v James Hardie & Coy Pty Ltd[14].

    [14] [2001] ATMO 78

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    10 May 2022