FremantleMedia Limited and 19 TV Limited v Michael Lohmann

[2010] ATMO 44

TRADE MARKS ACT 1995

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

Re:Opposition by FremantleMedia Limited and 19 TV Limited to registration of trade mark application 1241652(41) - SHOWER IDOLS - filed in the name of Michael Lohmann.

Delegate:

Alison Windsor

Representation:

Opponent:  Sue Chrysanthou of counsel instructed by Hodgkinson McInnes Patents

Applicant:  Did not appear or provide written submissions

Decision:

2010 ATMO 44

S52 opposition: Grounds pursued under ss42, 43, 44, 58, 59, 60 and 62A. Section 44 discussed, but ground not established - Section 59 – onus moved to applicant to establish intention to use trade mark – section 59 established – no award of costs made.

Background

1. Michael Lohmann (“the applicant”) filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (“the Act”), current details of which appear below:

Trade Mark number:     1241652

Filed on:  21 May 2008

Services claimed:  Class 41:  Academies (education); adult education; adult education services; arranging of entertainment; arranging of musical entertainment; booking of entertainment; cruise ship entertainment services; dissemination of entertainment material; education academy services; education advisory services; education information; education services; entertainment; entertainment information; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; entertainment, cultural or sporting event booking or reservation services provided in relation to a frequent flyer scheme; event management services (organization of educational,         entertainment, sporting or cultural events); fan club services (entertainment); higher education services; holiday camp services (entertainment); holiday centre entertainment services; information relating to education; information services relating to education; information services relating to entertainment; live entertainment; live entertainment production services; management of education services; management of entertainment events; management of entertainment services; mentoring (education and training); musical education services; musical entertainment services; organisation and conducting of dance, music and other entertainment festivals; organisation of competitions (education or entertainment); organisation of contests (education or entertainment); organisation of entertainment events; organisation of entertainment for wedding celebrations; organisation of exhibitions for entertainment purposes; organisation of fairs for entertainment purposes; organising events for entertainment purposes; organising of entertainment; organising of entertainment and social events; party planning (entertainment); pay television entertainment; production of audio entertainment; production of live entertainment; providing facilities for entertainment; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of club entertainment services; provision of education courses; provision of education services via an online forum; provision of entertainment facilities; provision of entertainment services via an online forum; provision of entertainment, sporting or cultural services from customer loyalty and frequent buyer schemes; provision of entertainment, sporting or cultural services from frequent flyer schemes; provision of facilities for education; provision of information relating to education; provision of live entertainment; radio entertainment; singing and novelty telegrams (entertainment); social club services (entertainment, sporting and cultural services); television entertainment; theatre restaurants (entertainment); video entertainment services; vocational education; vocational guidance (education or training advice)

Trade Mark:  shower idols

(“the trade mark”)

1. The application was examined as required by section 31 of the Act, and was subsequently advertised as accepted for possible registration on 18 September 2008 in the Australian Official Journal of Trade Marks.

2. After having been granted an extension of time for the purpose, FremantleMedia Limited and 19 TV Limited (“the opponent”) filed notice of opposition (“the notice”) to the registration of the trade mark.  The notice cites a number of grounds of opposition to which I will revert at a later stage.  The opponent then filed its evidence in support of the opposition and served a copy on the applicant. 

3. On 16 October 2009, the applicant filed a letter with IP Australia which he stated was written as a reply to the opposition.  By a letter dated 28 October 2009, IP Australia advised the applicant that if he wished his comments to be taken into account in the proceedings, it was necessary that he provide them in an appropriate form as required by the Trade Mark Regulations, that is, in declaratory form.  He was also advised of the requirement to copy the declaration to the opponent.  Given that the applicant’s evidence in answer had been due for service and filing by 14 October 2009, he was also advised that he would need to apply for extensions of time in which to submit his evidence.

4. Nothing further was heard from the applicant, and in due course the opponent advised IP Australia of its wish to be heard.

5. I was delegated to hear the matter in Sydney on 10 May 2010.  Susan Chrysanthou of counsel appeared for the opponent.  The applicant did not appear or provide any written submissions.

The Notice and Onus

1. The notice nominated most of the grounds of opposition available under the Act. At the hearing the opponent did not pursue the grounds nominated under sections 41, 62(a) and 62(b). I consider these grounds to have been abandoned.

2. At the hearing the opponent’s main submissions were in respect of sections 44 and 60 of the Act. It made briefer submissions in respect of section 42, 43, 58, 59 and 62A. The onus is on the opponent to establish at least one of the grounds it pursued in order to be successful. The standard of proof required is that of the “balance of probabilities”[1]. 

   [1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599.  See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

Evidence

1. The opponent’s evidence in support consists of a single declaration made by Steven Rosser, who is the director of legal and business affairs for FremantleMedia Australia Pty Ltd (formerly known as Grundy Television Pty Ltd).  FremantleMedia Australia is a company related to the opponent companies, and is the authorized user of the AUSTRALIAN IDOL trade marks in Australia.[2] 

   [2] References to the opponent can be taken as references to the Australian authorised user and vice versa unless otherwise specified.

2. Mr Rosser says the opponent is the producer of the “Australian Idol” television series which is promoted by the AUSTRALIAN IDOL trademark and features a singing competition.  It was first aired in Australia in July 2003 and a competition has run every year since then. 

3. The “Australian Idol” contest was preceded by the British version of the contest known as “Pop Idol”.  It used the following logo, and was first aired on television in 2001 in the United Kingdom:

1. Following the success of the “Pop Idol” competition in the United Kingdom, a talent show contest utilizing a similar format was rolled out throughout the world.  In most of the countries where the talent show was produced, a link with the original show was maintained by the use of marks or logos incorporating the word IDOL or IDOLS.  The talent shows were promoted by use of the blue and white get up similar to that which is shown in the “Australian Idol” trade marks, some of which I will refer to later in this decision.

1. Many of the countries who utilize the format prefix the word “idol” with the nationality or name of the country, as is the case in Australia.  When this is not appropriate, other versions such as “Music Idols” (Bulgaria) or “Super Idol” (Greece) have been used.  There are other variations as well.  However, most use the word “idol”.

2. Mr Rosser says that talent contests utilizing the format have been widely adopted throughout the world and that the “idol format” has appeared in over 38 countries.  The opponent has applied for and obtained registration in different countries for many “idol” trade marks: a list provided at Exhibit SR-6 to his declaration includes over 250 trade marks in a variety of countries.  Extracts and copies of the certificates of registration for some of these trade marks have been provided at Exhibit SR-18.

3. In Australia, Mr Rosser says, the contest is a popular piece of television viewing, with a high proportion of the viewing public watching each contest series.  The same applies, he says, for jurisdictions other than Australia.

4. Mr Rosser also provides examples of the range of merchandising, licensing and sponsorship of third party goods and activities with which the opponent is involved.  This material covers a broad range of goods and services.  He says that the “idol” marks have also been promoted on the internet at various official “Australian idol” websites from as early as 2004, as well as being widely featured on independent websites such as Wikipedia and some news sites.

5. Mr Rosser gives his opinion that the exposure of the AUSTRALIAN IDOL trade mark through television programs, promotional activity and retail sales of merchandise commencing before the priority date and continuing to the present supports the ground that any use or intended use by the applicant of the SHOWER IDOLS trade mark would be likely to deceive or cause confusion.  Mr Rosser, at paragraph 50, also gives his opinion that he does not believe that the applicant truly intends to use the trade mark because of the extremely wide range of services for which he has applied.

Discussion

1. The final sentence in the previous paragraph is directly relevant to a consideration of the ground of opposition raised under the provisions of section 59 of the Act. This is a useful place to begin discussing the grounds of opposition which the opponent pursued at the hearing.

Section 59 – Applicant not intending to use trade mark

1. Section 59 provides the following:

   The registration of a trade mark may be opposed on the ground that the applicant does not intend:

   (a) to use, or authorise the use of, the trade mark in Australia; or

   (b) to assign the trade mark to a body corporate for use by the body        corporate in Australia;

   In relation to the goods and/or services specified in the application

   Note:  for applicant see section 6.

2. In Americana International Ltd v Suyen Corporation [2008 ATMO 4], Hearing Officer Debrett Lyons summarised case law under section 59 in the following way:

   §  filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee Manufacturing Company [1960] 103 CLR 391 at 401);

   §  that presumption is rebuttable (Sapient Australia Pty Ltd and Sapient Corporation v SAP Aktiengesellschaft [2002] ATMO 31; Danjaq, LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18);

   §  once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);

   §  where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing Manufactures Pty Ltd v. Ellis and Goldstein Ltd [1966] HCA 81; (1967) 116 CLR 254);

   §  a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co v Croakers Gully Australia Pty Ltd (2000) 53 IPR 430; NSW Lotteries Commission v Novamedia BV 52 IPR 638, Torrag Pty Ltd v Pah Pty Ltd 70 IPR 349);

   §  inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);

   §  prior or concurrent actions between the same parties can be a source of inference (Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Sapient; Danjaq);

   §  non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);

   §  failure to respond to an allegation can draw an adverse inference (Jones v Dunkel (1959) 101 CLR 298 at 312);

3. Use of the trade mark is a cornerstone of trade mark law.  Section 27 specifies that a person may apply for registration of a trade mark in respect of goods and/or services if that person both claims to be the owner of the trade mark and has an intention to use it or authorise its use in relation to the specified goods and/or services.  At that initial stage, the application itself is prima facie evidence of the applicant’s intention to use its trade mark in the course of the trade it has nominated.

4. However, once that intention has been impugned, the onus shifts to the applicant to demonstrate actual use or an actual intention to use.  Paragraph 50 of the Rosser declaration, noted previously, reads as follows:  “The specification claimed under the application for shower idols is [an] extremely wide range of services for which I do not believe the applicant as an individual truly intends using the mark”.  The applicant has indeed applied for an extremely broad and varied range of services - a range which I consider would challenge a very large and well funded institution or organization.  The full range he has claimed is set out in paragraph 1 of this decision.

5. The applicant has done nothing to support his case, even though he has received the opponent’s evidence and thus should be aware that his intention to use his trade mark is a matter in contention.  The only information received from the applicant was not submitted in declaratory form and thus was not accepted as formal evidence in answer.  When the letter was filed with IP Australia, the applicant was advised that the format of his information was not correct; he was advised of the format he would need to use, and provided with information to assist him in requesting the extensions of time he would require in order to submit his evidence appropriately.  He did not respond to this letter.  I note that the formal Hearing Notice sent to the applicant in the middle of April 2010 has now been returned to IP Australia as undeliverable at the only address the applicant has provided.

6. It can be inferred from the applicant’s lack of response and apparent change of address without notifying IP Australia that, following receipt of the letter effectively rejecting his brief arguments in support of his trade mark, he has lost interest in pursuing its registration. That does raise the question of whether the loss of intention at this late stage necessarily means that the opponent has established the ground under section 59. As pointed out by Hearing Officer Lyons in the BENCH BODY Logo case,[3] there have been a number of decisions noting that section 59 is written in the present tense and that its operation is therefore a continuing one. As the Hearing Officer put it (at [27]):

   What is clear is that the intention of the applicant is an ongoing intention not limited by its state of mind at the filing date of the application. Less clear is the proposition that the relevant date is the date the Notice of Opposition was filed. Other cases, some of which are referred to later, suggest that the relevant date is the date of the hearing, but it seems to me that the correct “cut-off” date is when the last evidence is filed. In some cases, for example where further evidence is admitted at a hearing, that date might be the hearing date. In very rare cases, it might even coincide with the filing of the notice of opposition, but what seems to me to be critical is the time when the record of admissible evidence closes.

   [3] Americana International Limited v Suyen Corporation (2008) 75 IPR 596

7. A noted previously, the applicant has applied for an extremely wide-ranging service claim. The fifth paragraph of the letter he provided (and which does not form part of the formal evidence for this opposition) does say that the trade mark SHOWER IDOLS “is used for a choir trading under the identical business name”.  That comment allows me to infer that while the applicant may not have had an intention to use the trade mark for the broad range of services for which he has applied, at various points in the history of the application he most likely did have an intention to use the trade mark in respect of entertainment services involving choir performances.[4]  However, the applicant’s following actions (or lack thereof) indicate that this intention was probably not a continuing one.

   [4] I am of the opinion that the service specification the applicant has claimed points to his lack of understanding of trade marks law in general and the Nice classification system in particular.

8. Neither party in this opposition has provided any evidence which goes directly to actual use of the applicant’s trade mark, but neither is there any evidence going directly to lack of an intention to use, apart from the opponent’s paragraph 50 of the Rosser declaration.  The opponent has submitted that I should draw an adverse inference because of the applicant’s silence in the matter, and his failure to provide evidence of use. 

9. In my decision in respect of Television Food Network GP v Food Channel Network Pty Ltd, 2006 ATMO 88, I declined to draw an adverse inference in a case where the trade mark applicant had not filed evidence in answer during an opposition.  The circumstances in this case are quite different. 

10. The trade mark applicant in Food Channel filed information which was not in an approved form and was given advice as to the proper form required for evidence in answer, as well as the necessity of applying for extensions of time for the purpose of serving and filing the evidence.  Despite this information, the applicant did not file his evidence appropriately, however neither did he withdraw from the field.  He was in contact with IP Australia at various times over the next few months and once the opponent requested to be heard, he advised of his intention to take part in proceedings.  It is significant that the applicant responded to e-mails and updated his address when a piece of correspondence was returned to IP Australia as undeliverable.

11. That is certainly not what has happened in this case.  IP Australia has heard nothing from Mr Lohmann since it issued the letter advising him of the need to provide his evidence in answer in an appropriate form.  When the Formal Hearing Notice issued, it was returned to sender as undeliverable at the only address Mr Lohmann had provided.  Prior to the hearing, I attempted to contact Mr Lohmann by e-mail at an address appearing on his previous correspondence, in an effort to make sure he was aware of the proceedings, and giving him necessary information should he wish to appear on his own behalf.  He did not respond to the e-mail and nothing further has been received from him. 

12. I am satisfied, on the balance of probabilities, of the following: 

    • that Mr Lohmann, as an individual involved in what appears to be management and organization of an amateur choir, did not have the intention to use his trade mark for the very broad range of services for which he applied, at all or any of the relevant dates at which that intention could be considered; and
    • that he has now effectively abandoned the field in relation to the specific services for which he may have originally intended to use his trade mark. 

13. As there is nothing before me which would satisfy me of the contrary view, I find the opponent has established this ground of opposition.

Section 44 – identical etc trade marks

1. Technically, the opponent has succeeded in this opposition because it has established a ground of opposition. However, some of the submissions the opponent has made, especially in respect of section 44 of the Act are worthy of comment. I consider it necessary to make these comments in order to clarify certain matters which the opponent has raised.

1. Subsection 44 provides that an application for registration must be rejected if it is substantially identical with, or deceptively similar to, another person’s trade mark application or registration that has an earlier priority date, and which covers goods and/or services that are similar to or closely related to the applicant’s services.  The definition of ‘deceptively similar’ in section 10 is that ‘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’.  Section 14 defines ‘similar goods or services as goods or services which are ‘the same’, or ‘of the same description’.

2. The notice nominated three trade marks owned by the opponent as relevant to the ground under section 44, all of which have earlier priority dates. Of these three, only two are registered for services, the third being registered for goods in class 3. I am satisfied that there is no nexus of similarity between the goods in class 3 and the range of services the applicant has claimed. That application therefore falls out of contention. Brief details of the remaining two registrations, including only the service claims, are as follows:

   Registration number:  934309 

   Registered from:  14 November 2002

   Trade Mark:                   

   Services:          Class 38:  Broadcasting; television broadcasting; radio broadcasting; satellite television broadcasting; cable television broadcasting; communications by telephone; interactive telephone services; communication services by means of radio waves, telephones, the Internet, the worldwide web, cable, satellite, microwaves and the electricity grid; telephony  for voting purposes; telephony for entertainment purposes

   Class 41:  Education and entertainment services all relating to television, cinema, radio and theatre; production and presentation of radio and television programmes, films and shows; education by or relating to television and radio; entertainment by or relating to television and radio; organization of competitions (education or entertainment); interactive telephone competitions; publishing; production of cinematographic films, shows, radio programmes and television programmes; provision of education and entertainment by means of radio, television, satellite, cable, telephone, the worldwide web, the Internet; organization of shows, rental of sound recordings and pre-recorded shows, films, radio and television performances; production of video tapes and video discs; radio entertainment; television entertainment; cinema entertainment; theatre entertainment; game shows; television entertainment services involving telephonic audience participation.

   Registration Number: 973847

   Registered from:  10 October 2003

   Trade Mark:    AUSTRALIAN IDOL

   Services:          Class 41:  Education and entertainment services all relating to television, cinema, radio and theatre; production and presentation of radio and television programmes, films and shows; education by or relating to television and radio; entertainment by or relating to television and radio; organization of competitions (education or entertainment); interactive telephone competitions; publishing; production of cinematographic films, shows, radio programmes and television programmes; provision of education and entertainment by means of radio, television, satellite, cable, telephone, the worldwide web and the Internet; organization of shows; rental of sound recordings and of pre-recorded shows, films, radio and television performances; production of video tapes and video discs; radio entertainment; television entertainment; cinema entertainment; theatre entertainment; game shows; television entertainment services involving telephonic audience participation; interactive entertainment services for use with a mobile phone; Internet based games.

3. It is quite clear from these details that the Class 41 service specifications of the opponent’s registrations include services the same as and of the same description as the broad range of services which the applicant has claimed.  The dates of the registrations are earlier than that of the application.  The remaining matter, therefore, is whether AUSTRALIAN IDOL in its plain typescript form or in its logo form is substantially identical with or deceptively similar to the applicant’s trade mark “shower idols”.

4. The opponent made the following submissions in respect of substantial identity:

   To determine whether or not a trade mark is substantially identical with another trade mark one must compare them and assess the similarities and differences between them.  In doing so it is relevant to consider the essential features of the marks and the inessential features.  If only inessential features differ then the marks are substantially identical:  Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 at 414-415 per Windeyer J.

   It is not however, merely a matter of adding up and comparing the points of resemblance and dissimilarity:  Re William Bailey (Birmingham) Ltd’s Trade Mark application (1935) 52 RPC 136 at 153 – it is the general effect of “the respective wholes”: Clark v Sharp (1898) 15 RPC 141 and 146.

   In this case the question is whether the Trade Mark is substantially identical with the Fremantle trade marks.  The opponents submit that it is.

   They are substantially identical by reason of the identical use of the word IDOL.  That word forms the essential feature of all of the marks.

   The first word in each of the marks is merely there to delineate what type of IDOL it is.  This is emphasised by the fact that the other word that forms part of the Fremantle trade marks is a nationality (Australian) – indicating that the brand is IDOL but it is the Australian version of that IDOL brand.

5. I do not agree with these submissions.  They would be more likely to stand up to scrutiny if the applicant’s trade mark also had as its initial word, a word nominating a nationality or a country.  Then at least it would be possible to perceive a degree of connection between the concepts embodied in the trade marks when they are viewed as wholes and compared side by side.

6. However, the first word in the applicant’s trade mark is the word “shower”.  That word has a multiplicity of usages according to the Oxford English Dictionary,[5] but none of them approach the description of a nationality or country.  Probably the most common usage is a reference to a fall of water, whether as rain from clouds or mains water from a shower head in a bathroom. 

   [5] Electronic version, 2010

7. The two words SHOWER and IDOLS, when placed together, do not seem to have any readily discernible meaning, unlike the trade marks consisting of the word IDOL plus a nationality or country.  It is also a matter of conjecture whether either of the words in the applicant’s trade mark should be regarded as the “essential feature” of the trade mark.  I am not satisfied, on the basis of the test articulated by Windeyer J that these two trade marks are substantially identical. 

8. In respect of the question of deceptive similarity, the opponent referred to the test as summarised by Mr Justice Parker in the Pianotist decision[6]. At page 777 he 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. If, considering all those circumstances, you come to the conclusion that there will be confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case.

   [6] Re Application by the Pianotist Co Ltd (1906) 1A IPR 379; 23 RPC 774

9. The principles to be applied under the Act in assessing deceptive similarity were conveniently summarised by French J in the Woolworths Metro case at [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.”

10. Even assuming that the applicant had or has the ability and intention to use his trade mark in respect of the broad range of services he has applied for, I have difficulty in conceiving of any real tangible danger of confusion between these two trade marks.  The “nationality + idol” trade marks can be seen as a group of related trade marks, and the likelihood of a person assuming they refer to services emanating from the opponent is high. 

11. However, the same cannot be said for the trade mark “shower idols”.  The word “shower” is simply too unusual a word in respect of the services claimed and it is difficult to see why the trade mark in which it appears would be confused with the opponent’s trade marks.  I am not satisfied that the opponent has any specific right to monopolise use of the words IDOL or IDOLS in all and every circumstance where they are used with just any other word.  I do not consider the trade marks AUSTRALIAN IDOLS and “shower idols” to be deceptively similar.  The opponent has not established this ground of opposition.

Decision

1. The opponent has established the grounds of opposition under the provisions of section 59. I refuse to register trade mark application 1241652.

Costs

1. The opponent requested its costs in the event of success. Section 221(1) of the Act specifies that “the Registrar may award costs in respect of the matters, and in the amounts, provided for in the regulations against any party to proceedings brought before him or her”. Use of the word “may” obviously allows the Registrar discretion in the matter of awarding costs.

2. I have found the opponent succeeds in the opposition, but more because the applicant through ignorance or lack of interest did not support his case, than because of any other reason.  In these circumstances I decline to award costs against the applicant.

Alison Windsor

Hearing Officer

Trade Marks and Designs Hearings

16 June 2010