First National Group of Independent Real Estate Agents Limited v REA Group Ltd
[2016] ATMO 102
•14 November 2016
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by First National Group of Independent Real Estate Agents Limited to registration of trade mark application 1486181(35, 36) - REALESTATE.COM.AU - filed in the name of REA Group Ltd.
| Delegate: | Jock McDonagh |
| Representation: | Opponent: No appearance or written submissions Applicant: Natalie Hickey of counsel instructed by King & Wood Mallesons |
| Decision: | 2016 ATMO 102 Section 52 opposition: sections 41 and 44 pressed – ss41(6) and 44(4) applicable – neither ground of opposition established – subject to pending oppositions, trade mark to proceed to registration. |
Background
This matter relates to an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of a trade mark filed by REA Group Ltd (‘the Applicant’). Relevant details of the application are set out below.
Trade mark: REALESTATE.COM.AU (‘the Trade Mark’)
Trade mark application no: 1486181
Filing Date: 18 April 2012
Specifications: Class 35: Advertising of real estate property services provided through a web portal
Class 36: Real estate property services provided through a web portal
During the course of examination, the Applicant restricted its specifications to the services detailed above, and the Trade Mark was accepted under the provisions of section 41(6) applicable at the time.
Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks dated 26 June 2014. Subsequently First National Group of Independent Real Estate Agents Limited (‘the Opponent’) filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘the Statement’).
The Applicant then filed its Notice of Intention to Defend. Thereafter the Opponent has filed no evidence, while the Applicant has filed evidence in answer in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’) and subsequently requested to be heard.
I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 9 June 2016. The Opponent was not represented at the hearing and did not file written submission. The Applicant was represented by Ms Natalie Hickey of counsel, instructed by King & Wood Mallesons. Ms Hickey made oral and written submissions.
Grounds of Opposition
The Statement nominated two grounds of opposition under the Act. Both of those grounds being under ss 41 and 44 were addressed at the hearing. The onus is upon the Opponent to establish one or both of its grounds of opposition. The standard of proof required in these matters is the ordinary civil standard based on the balance of probabilities.[1]
[1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663, [26].
Evidence
The evidence in these proceedings consists of the following declarations:
Evidence in Answer
Declaration of Bill Ladas (‘Ladas 1’) made on 22 April 2015 with Exhibits BL-1 to BL-9; and
Declaration of Bill Ladas (‘Ladas 2’) made on 23 April 2015 with Exhibits BL-10 to BL-15.
Opponent’s Case
The Opponent’s case is provided in the Statement (I shall repeat the particulars below).
Ground 1: Section 41 - Trade mark not distinguishing applicant’s goods or services
Particular 1 – The Opponent alleges that the opposed mark has no inherent adaptation to distinguish the designated services from the goods or services of other persons. There is an extremely high likelihood that other persons, trading in services of the relevant kind and being actuated only by proper motives, in the exercise of the common right of the public to make use of honest words forming part of the common heritage, will want to use the words realestate.com.au for the sake of the signification which they ordinarily possess.
Particular 2 – The term “real estate” is, and has been for many centuries, a term commonly used to describe land and related rights, and services relating to such land and related rights.
Particular 3 – The term “.com.au” is a generic top-level domain name, descriptive of the delivery of goods and/or services via the internet.
Particular 4 – The use of “realestate.com.au” in relation to internet based real estate services is, and was at the filing date, extremely common.
Particular 5 – The Applicant has not used the opposed mark before the filing date to such an extent and in such a manner that the opposed mark does in fact distinguish the designated services as being those of the Applicant as required by subsections 41(5) and/or (6) of the Act.
Particular 6 – The opposed mark has been predominantly used by the Applicant in the following manner:
(a) The name “realestate.com.au” in lower case sans serif font; in conjunction with
(b) The silhouette of a house inside a button on a red background; and/or
(c) The colour red; and/or
(d) The use of a tagline such as “Australia’s No 1 property site”.
Particular 7 – Any use by the Applicant of the opposed mark on its own is incapable of making it distinctive in fact. Because the opposed mark is comprised only of a pure description of internet based real estate services, and despite any reputation the Applicant’s opposed mark might have acquired or will acquire in Australia, it is incapable of distinguishing the designated services from those of other traders who may be using it in its descriptive sense.
Ground 2: Section 44 – Identical etc. trade marks
The Opponent relied on the following registrations under section 44:
| Trade Mark No. | Class(es) | Priority Date | Trade Mark |
| 1049830 | 35, 36 | Removed from Register | |
| 1361989 | 36 | 31.05.2010 | |
| 1455362 | 35, 36 | 24.10.2011 |
None of the above trade mark registrations are owned by the Opponent. Trade Mark number 1049830 has been removed from the register, so I consider that it cannot be relied upon for this ground of opposition. Registration numbers 1361989 and 1455362 have earlier priority dates and are considered below in my discussion of the s 44 ground of opposition.
Applicant’s Evidence
Ladas 1 exhibits evidence (with the exception of BL-9) adduced in REA Group Ltd v Real Estate 1 Ltd[2]. Exhibit BL-9 is the Notice to Admit filed by the Applicant in REA1.
[2] (2013) 217 FCR 327 (‘REA1’).
Exhibit BL-11 of Ladas 2 exhibits audio files and scripts of radio advertisements produced in relation to the Trade Mark and aired in 2012.
Exhibit BL-12 of Ladas 2 exhibits television advertisements produced in relation to the Trade Mark and aired in 2012.
Exhibit BL-13 of Ladas 2 exhibits a schedule showing booking and airing times for the radio and television advertisements described above.
Exhibit BL-14 of Ladas 2 exhibits is Applicant’s 2012 Annual Report.
And Exhibit BL-15 of Ladas 2 exhibits a current ASIC company extract for realestate.com.au Pty Ltd.
Discussion
Section 41 - Trade mark not distinguishing applicant’s goods or services
Section 41 of the Act relevant at the filing date provided:
41Trade mark not distinguishing applicant’s goods or services
(1) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1:For applicant and predecessor in title see section 6.
Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.
Note:For goods of a person and services of a person see section 6.
(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.
(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.
(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:
(a) the Registrar is to consider whether, because of the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances;
the trade mark does or will distinguish the designated goods or services as being those of the applicant; and
(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and
(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.
Note 1:For goods of a person and services of a person see section 6.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:
(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;
(b) in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).
Section 41 of the Act deals with a trade mark’s capacity to distinguish an applicant’s goods or services. It provides a scheme for the assessment of the capacity of a trade mark to distinguish the goods or services of one trader from the similar goods or services of another trader. However, as for any other ground of opposition the onus is on the Opponent to make its case under section 41. Therefore, the Opponent must establish that the Trade Mark is not capable of distinguishing the services in question. If the Trade Mark is found to lack inherent capacity to distinguish, section 41(6) requires a demonstration that the trade mark (at the priority date) distinguishes the goods.
As was discussed in detail by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440:
Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:
(a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or
(b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or
(c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.
The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.
If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.
If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).
If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).
The above examination of subsections (3) to (6) of s 41 of the Act demonstrates that the section limits the scope of operation of s 33(1) of the Act so far as the question of capacity to distinguish is concerned. Subsection (4) has the effect that unless the Registrar, having taken into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons, is able to answer positively the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, then he or she must apply the provisions of either subsection (5) or (6). Subsection (5) has the effect that an application must be rejected pursuant to s 41(2) unless the Registrar is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant. Subsection (6) has the effect that an application must be rejected pursuant to s 41(2) unless the applicant establishes that because of its use of the trade mark, the trade mark does distinguish the designated goods or services as being those of the applicant. The applicant will so “establish” by placing before the decision maker material upon which he or she is persuaded, on the balance of probabilities, that, because of its use of the trade mark, the trade mark does distinguish its goods and services from those of other persons.
It is thus not the case, as might otherwise be concluded from the terms of s 33(1), that if the Registrar is uncertain whether a trade mark is capable of distinguishing the applicant’s goods or services from the goods or services of other persons then he or she must accept the application. The question of whether or not a trade mark is to be taken for the purposes of s 41(2) as capable or not capable of distinguishing the designated goods or services from the goods or services of other persons is governed entirely by s 41(3) to (6). The effect of such subsections is that a trade mark is not to be taken as capable of distinguishing the goods or services of an applicant from the goods or services of other persons unless the Registrar is satisfied of certain matters or the applicant establishes a certain matter, in the sense discussed above.
The Trade Mark was accepted by application of section 41(6)(a) of the Act, with the examiner noting that in REA1, Bromberg J assessed the Applicant’s evidence and stated at [110] and [111]:
The manner in which consumers reach REA’s websites also strongly favours a finding that REA’s domain names are distinctive of its property portal businesses because those names are utilised by consumers when trying to locate those businesses. Analytical tools capable of tracking and recording the source of traffic coming to a website have been utilised by REA to show the source of internet traffic to REA’s websites. In the first six months of 2011, some 53% of visits to the realestate.com.au website came from direct traffic. Direct traffic refers to those visits made to a website when an internet user has typed the web address for the website into the user’s web browser, or has clicked a saved link to that web address (for example, a link saved as a ‘favourite’ link). Access through a saved link does not evidence name recognition but other access via a web browser does. Whilst no breakdown was available which identified the proportion of direct traffic that arrived directly from a web browser, I would infer that a very significant number of consumers have gained access in that way. Given the very substantial numbers overall, there must be many hundreds of thousands of consumers in that category.
More specific evidence was produced that suggests very substantial consumer familiarity with the term “realestate.com.au”. In July 2010, the most popular search term driving traffic to the realestate.com.au website from organic search results was the term “realestate.com.au”. Some 6% of all traffic arriving at the realestate.com.au website arrived as a result of a searcher using that keyword phrase. Between 9 November 2011 and 9 December 2011, on about 1 million occasions, consumers came to the realestate.com.au website having clicked on an organic search result that was displayed because the consumer used “realestate.com.au” as the keyword search term. In the same period, on about 110,000 occasions, consumers arrived through a similar path having used “ as a keyword search term.
I am satisfied that while the Trade Mark does not possess inherent distinctiveness, I adopt Bromberg J’s assessment that the evidence establishes trade mark use to such an extent as now to be distinctive for the specified services. I am satisfied that the provisions of section 41(6)(a) apply. As a result, the Opponent has not established this ground of opposition.
Section 44 – Identical etc. trade marks
Section 44 of the Act relevantly states:
(1) …
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1: For deceptively similarsee section 10.
Note 2: For similar servicessee subsection 14(2).
Note 3: For priority datesee section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitationssee section 6.
(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in titlesee section 6.
Note 3: For priority datesee section 12.
Thus to found its ground under subsection 44(2) the Opponent relevantly has to establish to my satisfaction the existence of at least one trade mark registration or application for registration of a trade mark that is owned by a person other than the Applicant and which:
· has a priority date earlier than that of the Trade Mark; and
·is registered or made in respect of the same or similar services or closely related goods; and
·is a trade mark substantially identical or deceptively similar to the Trade Mark.
The term ‘deceptively similar’ is defined in section 10 of the Act as follows:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
Deceptive similarity is to be assessed according to the tests set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at paragraph 13 per Windeyer J:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
I am to estimate the effect of the trade marks on the minds of potential customers – in other words, the assessment is to take place in the context of the marketplace for the goods. This contextual comparison was stressed in Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, where Parker J said:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
The standard which is applied to the assessment of whether trade marks are deceptively similar was stated by French J in Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 45 IPR 411 at paragraph 50:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(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.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:
“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."
The Statement did not specify which of substantial identity or deceptive similarity applied, merely that ‘confusion will arise during the search process’. A cursory glance at the cited marks shown in [16], above, show that they are not substantially identical, nor fit the requirements of deceptive similarity under section 10 of the Act.
Taking into account the descriptive nature of the Trade Mark, along with the doctrine of imperfect recollection, the non-descriptive elements would be accentuated in any comparison.
In any event, REA1 and Ladas 1 establish that the Trade Mark has been continuously used as a trade mark upon or in relation to the specified services since 1998. Therefore, section 44(4) provides that the Registrar cannot reject the application because of the earlier registered trade marks.
In either event, this ground of opposition has not been established.
Decision
Section 55 (1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
The Opponent has not established a ground of opposition under the Act. I direct that, subject to the outcomes of any other opposition proceedings on this trade mark, trade mark application 1486181 may proceed to registration after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.
Costs
Both parties sought their costs. The Applicant has been successful and I find that it is entitled to an award of costs. I award costs against the Opponent in accordance with Schedule 8 of the Trade Mark Regulations 1995.
Jock McDonagh
Hearings Officer
Trade Marks Hearings
14 November 2016
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