Grew Holdings Pty Ltd v Adriano Goldschmied LLC

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Grew Holdings Pty Ltd to registration of trade mark application 1357509 (25) - AG ADRIANO GOLDSCHMIED - in the name of Adriano Goldschmied LLC.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: K&L Gates, written submissions

Applicant: Baldwins Intellectual Property, written submissions

Decision:

2016 ATMO 65

Trade Marks Act 1995 – section 52 opposition to registration – distinctiveness of plain printed letters AG – grounds under sections 44, 42, 58A and 60 not established.

Background

In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Adriano Goldschmied LLC (‘the Applicant’) has applied for registration of the trade mark which appears below:
Application No: 1357509
Priority Date:  22 April 2010
(‘the Relevant Date’)
Goods:  Class 25: Clothing, footwear, and headgear
(‘the Goods’)
Trade Mark:  AG ADRIANO GOLDSCHMIED
(‘the Trade Mark’)
Endorsement: Provisions of subsection 44(4) and/or Reg.4.15(5) applied[1].
[1] The endorsement reflects the outcome of an examiner’s ground for rejection in terms of subsection 44(1) based on registrations 957892 (25), (35) AG (Logo), 1056306 (25) AG Active & Device, and 1135236 (3), (14), (18), (25) AG (letters) & Unicorns rampant device. Registration 957892 is owned by the Opponent.
The Trade Mark was examined and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 17 May 2012.
On 12 June 2012, Meni’s Tailoring & Alterations Pty Ltd (‘Meni’s’) filed Notice of Opposition (‘the NOO’) to the registration of the Trade Mark. The right or interest in these proceedings has passed to Grew Holdings Pty Ltd (‘the Opponent’). The NOO recites grounds under sections 58, 60, 41, 42, 43, 44 (relying on trade mark registrations 957892 and 1241151 which are registered in the name of the Opponent), 58A, and 62A of the Act.
Subsequently, the parties have filed Evidence in Support, Evidence in Answer and Evidence in Reply which is further discussed below. The Applicant has paid a hearing fee; however, both the Opponent and the Applicant have chosen to rely on written submissions by their attorneys. K&L Gates represents the Opponent and Baldwins IP represents the Applicant.
Now the matter has been given to me as a delegate of the Registrar of Trade Marks in order that she may meet her obligation under section 55 of the Act to decide the matter.
Onus & Relevant Date
The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[2]
[2] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the opposed application[3].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
Grounds
In its submissions the Opponent relies on grounds under sections 44, 42, 58A and 60 of the Act. For completeness, I note that the other grounds recited on the NOO have not been established but may, of course, be relied upon in any appeal from this decision.
Evidence
The evidence filed in this matter comprises the following statutory declarations:
Evidence in Support
Mimi Galan, Marketing Director of the Opponent, made on 12 September 2012, with exhibits MG-1 to MG-43;
Evidence in Answer
John Hur, General Counsel of the Applicant, made on 21 December 2012 with exhibits JH-1 to JH-29;
Evidence in Reply
Mimi Galan, made on [unspecified day] May 2013, with exhibit MG-43 [sic]. (As the identification of this exhibit duplicates the last exhibit of Ms Galan’s first declaration, for the sake of clarity I will refer to this exhibit as MG-44 in my decision);
Paris Johnson, clothing stylist, made on 1 May 2013; and,
Savannah Holly Hardingham, Senior Associate of the Opponent’s attorneys, made on 22 May 2013, with exhibits SHH-1 and SHH-2.
Evidence in Support
Ms Galan’s first declaration establishes that the Opponent is the owner of the following registered trade marks in Australia:
Registration No:              957892
Priority Date:  13 June 2003
Goods/Services:              Class 25: Clothing, footwear, headwear and clothing accessories
Class 35: Wholesale and retail services relating to clothing, footwear, headwear and clothing accessories
Trade Mark:
(‘the Opponent’s Logo Trade Mark’)
Registration No:              1241151
Priority Date:  19 May 2008
Goods:Class 18: Leather and imitations of leather, goods made from these materials, bags, belts, straps, handbags, beach bags, garment bags, travel bags, key cases, shoulder belts, wallets, purses, backpacks, suitcases, umbrellas and fashion accessories in this class
Class 25: Clothing, footwear and headgear
Class 35: Retailing and wholesaling services in relation to leather and imitations of leather, goods made from these materials, bags, belts, straps, handbags, beach bags, garment bags, travel bags, key cases, shoulder belts, wallets, purses, backpacks, suitcases, umbrellas and fashion accessories, clothing, footwear and headgear
Trade Mark:
(‘the Opponent’s Name Trade Mark’)
I will refer to the above trade marks collectively as ‘the Opponent’s Trade Marks’ and the above goods and services as ‘the Opponent’s Goods and Services’.
Ms Galan, in her first declaration, states that the Opponent started use of the Opponent’s Logo Trade Mark in 1998 in relation to the manufacturing, wholesaling and retailing of fashionable clothing, footwear and accessories.
I will turn to a detailed analysis of the Opponent’s evidence shortly, but make these preliminary comments. In my assessment of Ms Galan’s voluminous first declaration, the Opponent’s public use of the Opponent’s Trade Marks is mostly confined to the Opponent’s Name Trade Mark and such use that the Opponent has made of the Opponent’s Logo Trade Mark has dwindled since around 2004. There is, in the exhibits attached to Ms Galan’s first declaration, sparse use of the plain printed words ‘AG Arthur Galan’ or ‘Arthur Galan AG’ as trade marks, and rare occasions on which the plain printed signs ‘AG’ or ‘AG Clothing’ appear but not obviously as use of a trade mark by the Opponent. In regard to the latter usages, these appear in magazine articles featuring the Opponent’s clothing where it appears that the writers or editors might have used these signs as useful abbreviations of the Opponent’s Trade Marks or references to the Opponent’s business itself. The Opponent’s business is referred to as ‘AG’ by its business associates such as advertising agencies and stylists but this is not trade mark use.
Ms Galan also refers to an instance of confusion between the parties’ trade marks which I will further discuss below.
Some of the exhibit evidence to Ms Galan’s first declaration within exhibit MG-34 is poor quality photocopies. Much of the evidence is confusing; it does not always run in date order; it overstates the Opponent’s use of the Opponent’s Logo Trade Mark and conflates the use of the Opponent’s Logo Trade Mark with that of the Opponent’s Name Trade Mark. At paragraph 12 of her first declaration Ms Galan states that the Opponent has used the Opponent’s Logo Trade Mark and Opponent’s Name Trade Mark extensively throughout Australia and that the following examples exemplify this use:
·exhibit MG-4, which is said by Ms Galan to contain photographs of the Opponent’s first store at South Yarra, in fact contains several rolls of photographic negatives showing a clothing store interior in which there is no discernible use of a trade mark;
·exhibit MG-5 is a press kit for the opening of the Opponent’s womenswear store in South Yarra in 2006 and shows only use of the Opponent’s Name Trade Mark;
·exhibit MG-6 is a PR agency’s proposal, running sheet, and press release for the opening of the Paddington store in 2001; while the agency refers in its proposal to the Opponent as AG, in its press release it uses the Opponent’s Logo Trade Mark;
·exhibit MG-7 is comprised of undated ‘photographs of the Opponent’s retail stores and Myer concession stores throughout Australia’[4] and show use only of the Opponent’s Name Trade Mark;
[4] As Ms Galan has previously stated that the Opponent has concession stores only in Melbourne, Sydney, and Brisbane the claim that these are ‘throughout Australia’ is not established.
·exhibit MG-8 is invitations to fashion shows in 2001 on which the Opponent’s Logo Trade Mark appears;
·exhibit MG-9 is, states Ms Galan, comprised of ‘the Opponent’s business cards featuring the [Opponent Logo Trade Mark] and the [Opponent’s Name Trade Mark]’; however, only the Opponent’s Name Trade Mark appears on these cards;
·exhibit MG-10 is a mailing list application form of unspecified date which bears the Opponent’s Name Trade Mark;
·exhibit MG-11 is an ‘activity summary from Burst SMS for the period 1 January 2012 to 31 August 2012 together with examples of promotional materials sent to customers’. The significance of ‘Burst SMS’ is not further explained however the exhibit contains the plain printed trade mark Arthur Galan AG and the Opponent’s Name Trade Mark; moreover, I note that this is after the Relevant Date;
·exhibit MG-12 contains a sample of the Opponent’s year 2000 Christmas card bearing the Opponent’s Logo Trade Mark and two cards bearing the Opponent’s Name Trade Mark;
·exhibit MG-13 contains swing-tags showing both the Opponent’s Logo Trade Mark and Opponent’s Name Trade Mark as well as bromides for the former; the dates of these swing tags is not given;
·exhibit MG-14 is a point of sales box which bears the Opponent’s Logo Trade Mark; the date of this sales box is not given;
·exhibit MG-15 is a ‘current’ shopping bag bearing the Opponent’s Name Trade Mark; as the word ‘current’ refers to the time that the declaration was made, it is not obvious that the shopping bag was in use before the Relevant Date;
·exhibit MG-16 are printouts from the Opponent’s website which bear the Opponent’s Name Trade Mark; the dates of these printouts is 11 September 2012 which is after the Relevant Date;
·exhibit MG-17 is a printout of a Whois search for the website showing that the website registrant is a business called AG Clothing; however, the relationship between AG Clothing and the Opponent (or Meni’s) is not explained;
·exhibit MG-18 is said by Ms Galan to be the Opponent’s Winter 2003 catalogue showing use of the Opponent’s Logo Trade Mark; however, that exhibit also contains a publication titled Festival Report (dated 2012 which is after the Relevant Date) which contains, inter alia, a picture of a model captioned ‘AG Arthur Galan’ (plain printed words);
·exhibit MG-19 is a set of three catalogues, or ‘look books’ as Ms Galan terms them, bearing the Opponent’s Name Trade Mark; these are dated 2006, 2009 and 2011; the latter is, of course, after the Relevant Date;
·exhibit MG-20 is a copy of the L’Oreal Melbourne Festival for 2012[5] (‘LMFF’) which is after the Relevant Date;
[5] Ms Galan states that the Opponent has participated in the LMFF since 2001.
·exhibit MG-21 contains two letters addressed to ‘Mimi’ and ‘Arthur’ thanking them for their participation at the World Cup Polo in April 2001 – I am unable to find reference to either of the Opponent’s Trade Marks within this correspondence and its relevance to this matter is not clear;
·exhibit MG-22 is two photographs of male models at a Myer fashion parade – apparently in 2011 – which is after the Relevant Date;
·exhibit MG-23 refers to a fashion event which took place after the Relevant Date;
·exhibit MG-24 is a 2011 supplement to the American Crew Face Off Awards; this is also after the Relevant Date;
·Ms Galan states that people who have worn the Opponent’s garments include Nicole Kidman, Orlando Bloom, Liam Hemsworth, Zac Efron, Benji Madden, Cadel Evans, Hamish & Andy, Helena Christensen, and Tara Banks; exhibit MG-25 comprises photographs of the foregoing personages wearing the Opponent’s garments; there is no information on when these photographs were taken or what trade marks were used on or in relation to these clothes;
·exhibit MG-26 is ‘samples of […] programs’ related to the LMFF event referred to above; however, the exhibit contains only one such example dated 2001 which contains the plain printed sign AG leading into some descriptive text;
·exhibit MG-27 is a sample of an email signature used in the Opponent’s email communications – it is in the form of the Opponent’s Name Trade Mark and has been used in that form, states Ms Galan, since 2004;
·exhibit MG-27A is promotional material sent in 2011 by Myer to loyalty club members and is after the Relevant Date and thus not relevant to these proceedings;
·exhibit MG-28 contains examples of Myer print advertisements from Summer 2011 and Summer 2012 which are after the Relevant Date;
·exhibit MG-29 is a confidential email from Myer to the Opponent outlining plans for the August 2012 to May 2013 advertising of the Opponent’s goods; these dates are after the Relevant Date;
·exhibit MG-30 is printout of the Westfield Shopping Centre website promoting the Opponent’s 2012 Autumn/Winter range; this period is after the Relevant Date;
·exhibit MG-31 is a Westfield magazine which is dated after the Relevant Date;
·exhibit MG-32 is media releases by David Jones, Myer and the Westfield Group which are all dated after the Relevant Date;
·exhibit MG-33 refers to an event in 2012 and is hence after the Relevant Date;
·exhibit MG-34 is referred to above; this exhibit is further problematic in that the newspaper articles in the exhibit cover the date range April 1998 to July 2012, the latter of which is after the Relevant Date;
·exhibit MG-35 concerns a profile, states Ms Galan, on the AG label and Mr Galan which was aired on Network Ten as part of its 1999 Melbourne Cup coverage; facsimiles between Network Ten and the Opponent from October 1999 confirm the profile;
·exhibit MG-36 is the Myer Annual Report from 2011; again, this is after the Relevant Date;
·exhibit MG-37 is to support the Opponent’s contention that the Opponent has been associated with a great many television programs and is a printout of the IMDb website listing credits given to Mr Galan as a ‘dresser’ and ‘actor’; it is not clear how this might relate to the Opponent’s use of the Opponent’s Trade Marks;
·exhibit MG-38 is a printout from the website of a television program named ‘The Project’ which refers to an broadcast that happened in 2011 and is thus after the Relevant Date;
·exhibit MG-39 refers to the Opponent’s sponsorship of a sports club in 2011 and is thus after the Relevant Date;
·exhibit MG-40 is a printout from Vogue’s website referring to an event in 2012 and after the Relevant Date;
·exhibit MG-41 is a further printout from Vogue’s website of a document dated 2012 which is after the Relevant Date;
16. As can be seen from the summary of the evidence in support, above, much of it is dated from after the Relevant Date. It is accepted law that evidence which post-dates the Relevant Date ‘may cast light upon the true position’[6] as at the Relevant Date. However; such evidence must be given appropriate weight. The nature of the post-dated evidence in this case is such that it carries little, if any, weight in establishing the grounds of opposition relied upon by the Opponent.
[6] Conde Nast Publications Ltd v Taylor (1998) 41 IPR 505 at 509 (Burchett J).
The last two of the exhibits (MG-42 and MG-43) to Ms Galan’s first declaration are confidential and detail the amounts spent on direct advertising by the Opponent and the revenue generated under the Opponent’s Trade Marks. The evidence in support shows that there been a considerable number of editorial articles about the Opponent in newspapers and magazines which would be worth a substantial amount if considered as being free ‘advertising’. I note, however, that there is no information as to the amount allocated separately to either the Opponent’s Logo Trade Mark or to the Opponent’s Name Trade Mark but that the advertising and revenue details have been given in relation to both.
Use of the Opponent’s Name Trade Mark has been through the Opponent’s first menswear store in South Yarra in 1998; then a second (womenswear) store in South Yarra in 2006; in Melbourne Central Shopping Centre since 2008; in Little Collins Street, Melbourne from 1998 to 2012; in Chadstone (Melbourne) Shopping Centre since 2009; in the GPO Shopping Centre in Melbourne since 2006; both a menswear and womenswear store in Westfield Doncaster (Melbourne) since 2008; Paddington in Sydney since 2001; Chatswood Chase (Sydney) since 2009; and both a separate menswear and womenswear store at Westfield Bondi Junction (Sydney) since 2009. Sales have also been through David Jones and subsequently Myer stores in both of which signage appears to have been the Opponent’s Name Trade Mark.
Evidence in Answer
Mr Hur in his declaration gives the history of the Trade Mark. The Trade Mark was adopted by the Applicant in the year 2000 to use in relation to a ‘boutique’ line of jeans in California. Since then the range of clothing on which the Trade Mark is used has expanded to include non-denim trousers, dresses, tops, and jackets.
Mr Hur states that the Applicant’s use of the Trade Mark started in Australia in 2002; invoices at exhibit JH-9 to his declaration show sales of jeans and pants to a shop in South Yarra and the invoices bear a trade mark consisting of the words ‘Adriano Goldschmied’ with the letters ‘AG’ contained in a circle over the words. As at April 2010 the Applicant’s goods bearing the Trade Mark were available through eight stockists in New South Wales, Victoria and Queensland.
Evidence in Reply
In her second declaration Ms Galan more fully states the nature of the instance of confusion that she mentioned in her first declaration:
At paragraph 20 of My First Statutory Declaration I refer to instances of actual confusion in Australia resulting from the use of the Applicant’s Mark. In that paragraph I referred to an incident in 2011 when The Age newspaper, after a photo shoot for the Applicant’s products, returned AG branded product of the Applicant to the Opponent in error. I wish to correct the date referred to in that paragraph. The actual date was 20 March 2012. On that day I received at the Opponent’s office in South Yarra a package containing garments bearing the Applicant’s Mark and the mark “AG”. The package was sent by an assistant to Kate Gaskin, the fashion editor at The Age newspaper’s Melbourne Magazine. The package was accompanied by a note from Ms Gaskin’s assistant that indicated that the garments were being returned to the Opponent after they had been used in an editorial fashion shoot for the Melbourne Magazine. I telephoned Ms Gaskin and told her that I had received the package in error and that the “AG” branded goods did not belong to the Opponent. Ms Gaskin said to me words to the effect that “my assistant was obviously confused because of the reference on the labelling to “AG”‘‘. I was upset at the labelling because in my experience in Australia customers and media refer to the Opponent’s brand as “AG”. I took photos of one of the Applicant’s garments bearing the Applicant’s Mark. and the “AG” mark. The next day Ms Gaskin’s assistant attended the Opponent’s offices and collected the package. Attached and marked MG-4[4] are photographs that I took of one of the Applicant’s Goods that I had received.

There are four photographs taken by Ms Galan as exhibit MG-44: the first is the Trade Mark on a woven tag, the second is the plain letters AG enclosed in a circle on a woven tag, the third is the plain letters AG enclosed in a circle on a paper swing tag, and the fourth is a leather-look clothes patch bearing the stitched outline of the letters AG enclosed below a half circle to the left of which is the bolded words MADE IN THE USA.
An obvious problem with this contended instance of confusion is that it is not apparent which of the four trade marks led to Ms Gaskin’s assistant’s confusion; in the presence of the other more obvious sources of confusion (for example, the tag bearing the plain printed letters AG enclosed in a circle) it is most unlikely, in my view, that the source of confusion would have been the Trade Mark.
Ms Johnson is the stylist who participated in the photo shoot on behalf of Ms Gaskin. Ms Johnson in her declaration refers to the above incident and states:
I do not recall the exact date that the events referred to below occurred, however I believe that it was probably last year[7].
I was engaged by Kate Gaskin to assist on a fashion photo shoot for The Age in Melbourne. Ms Gaskin is located in Sydney and when she is hired for jobs in Melbourne then usually engages me as her clothing stylist for her jobs. As part of my job, following each shoot, I return the garments and accessories used in the shoot to the designers who provided them.
On this occasion, one of the garments which was used in the shoot and which needed to be returned was a pair of jeans that were branded “AG”. I usually check the back care label to identify the brand of garments to be returned, however I cannot recall which label I checked on this occasion. I recall seeing the mark “AG” on the jeans and I assumed that the jeans were from Arthur Galan, as I know that this brand is known in the marketplace as “AG” I sent the jeans to the Arthur Galan head office in South Yarra.
I recall that shortly after I sent the “AG” jeans to the Arthur Galan head office, Kate Gaskin told me that the “AG” jeans I had sent to Arthur Galan were not an Arthur Galan product but were actually Adriano Goldschmied jeans. I had never heard of the brand Adriano Goldschmied.
[7] As the declaration was made in 2013, the event took place in 2012.
Setting to one side the obvious lack of precision in the above statement, I consider it unlikely that an experienced stylist could look at the Trade Mark and mistake it for one of the Opponent’s Trade Marks and it is more probable that the confusion stems from the same source as I have attributed in my discussion of Ms Galan’s account of the incident. Accordingly, I consider this evidence is of low weight in these proceedings. The incident also appears to have taken place two years after the Relevant Date. I give it little weight.
Ms Hardingham’s declaration is rebuttal evidence to that of Mr Hur in his declaration of Google^® searches involving the letters AG. In the context of the trade marks under consideration, I do not think that much turns on the evidence of either party in this regard: the Google^® search engine does not take into account such factors in these proceedings as the way in which the letters are rendered, the whole of the trade marks under consideration, the inherent adaptation of the letters AG, or the features of the marketplace in which they are used.
Section 44
Section 44 of the Act relevantly provides:
44Identical etc. trade marks
(1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:
(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar goods or closely related services; or
(ii)a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1:For deceptively similar see section 10.
Note 2:For similar goods see subsection 14(1).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
[…]
(3)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 limitations see 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 title see section 6.
Note 3:For priority date see section 12.
In order to establish its ground under section 44 the Opponent must establish that there exists a trade mark (or trade marks) registered or pending in the name of a person other than the Applicant which:
firstly, has a priority date earlier than that of the Trade Mark; and,
secondly, the goods applied for are similar goods to the Opponent’s goods, or are closely related to the Opponent’s services; and,
thirdly, is substantially identical or deceptively similar to the Trade Mark.
As the Opponent relies on the Opponent’s Logo Trade Mark and the Opponent’s Name Trade Mark the registrations on which the Opponent relies are registered in the name of a person other than that of the Applicant.
As to the first and second requirements, the priority dates of the registrations on which the Opponent relies are earlier than that of the Trade Mark and the goods are identical. It is not necessary for me to determine whether the parties’ goods and services are closely related.
In terms of the Opponent’s submissions it remains for me to assess whether the trade marks under consideration are substantially identical or deceptively similar.
In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[8] (‘Shell’) Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[8] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
Although the Opponent argues otherwise, in my consideration one cannot overlook or discount the words ‘Adriano Goldschmied’ that occur within the Trade Mark (or the words ‘Arthur Galan’ that occur in the Opponent’s Name Trade Mark). These words form major and substantial portions of the trade marks. On this basis, the Trade Mark is not substantially identical to either of the Opponent’s Trade Marks.
For clarity in my discussion of deceptive similarity, I focus on the Opponent’s Logo Trade Mark. Whatever my finding in that regard, the discussion of the similarity of the Trade Mark to the Opponent’s Name Trade Mark would be otiose. In discussing deceptive similarity in Shell Windeyer J said at [13]:
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] HCA 51; (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”.
Further Parker J, said In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[9]:
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 a 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 ... you must refuse the registration, or rather you must refuse the registration in that case.
[9] 1906) 23 RPC 774 at 777.
One of the ‘surrounding circumstances’ in the comparison of trade marks is the ‘inherent adaptation to distinguish’ of the element(s) being compared. Here the element in common to the trade marks under consideration is the alphabetical letters ‘AG’. Inherent adaptation is assessed according to the test oft quoted from Clark Equipment Co v Registrar of Trade Marks[10] where Kitto J stated:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.” The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[10] [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5].
Following the principle in Registrar of Trade Marks v W & G Du Cros Ltd[11] (‘du Cros’) it has been the practice of the Registrar to regard many trade marks comprised of two alphabetical letters as lacking in prima facie inherent adaption to distinguish. The Trade Mark Examiner’s Manual (‘the Manual’) explains this practice. Within Part 22 the Manual states:
[11] [1913] AC 624.
8.2 Two letter trade marks
Two letter marks without “get up” will generally be considered prima facie capable of distinguishing if there is no descriptive significance in the letters AND one or all of the following applies:
•the relevant goods or services are narrow in scope; OR
•the relevant goods or services are of a specialised nature; OR
•the combination forming the trade mark is a comparatively unusual one (e.g. one involving X, Y, Z, or U).
Two letter trade marks in common use in a specific field will usually not be prima facie capable of distinguishing. For example GT and LS are used by a number of traders in class 12 to indicate performance or luxury levels and do not serve to distinguish one trader’s goods from another’s.
Two letter trade marks with dictionary meanings should be examined on the basis of their definition. If they convey a descriptive meaning a ground for rejection is appropriate. If they do not convey a descriptive meaning then they are capable of distinguishing. Words such as “UP”, “NO” or “HE” would fall in this category, whether in upper or lower case. This is based on the UK practice as outlined in I.Q. trade mark [1993] RPC 379 at 381. However the inclusion of punctuation could alter the identity of the word. “U.P.” would most likely be seen as letters rather than a word and therefore examined on that basis.
The alphabetical letters AG, if considered as a word, do have a meaning. The Macquarie Dictionary provides:
ag/æg/ (say ag) Colloquial
–noun 1. agriculture: to study ag at uni.
–adjective 2. agricultural: ag supplies.
Accordingly, if the acceptance of the Opponent’s Logo Trade Mark had been on the basis that it is a word of the English language, it should have attracted a ground for rejection in terms of section 41 of the Act as the word ‘Ag’ lacks inherent adaptation to distinguish being descriptive of agricultural footwear, headwear and clothing accessories, and services in Class 35 relating thereto[12]. It follows that the Opponent’s Logo Trade Mark is not registered as a word but as a fancy rendition of a two letter trade mark.
[12] See the test for inherent adaptation at paragraph [35].
I note that here the goods and services under consideration are broad in scope; the goods and services are not specialised; and the letter combination is not unusual. In my consideration, in the context of this matter, the significance of the letters AG within the parties’ trade marks is fixed by their usages as the initial letters of the names of the parties. In the Trade Mark and the Opponent’s Name Trade Mark that use is as the initial letters of the names ‘Arthur Galan’ and ‘Adriano Goldschmied’; in the Opponent’s Logo Trade Mark it is as a fancy rendition of the plain printed alphabetical letters AG.
This approach is affirmed in the submissions of the Opponent:
In the present case, the common “AG” element is inherently distinctive as it is not a word with any fixed meaning but rather is adapted from the initials of the designers of the Opponent and the Applicant. The Opponent submits that the fact that “AG” is adapted and is not a real word increases the likelihood of confusion.
It is noteworthy that du Cros has been quoted with approval by the High Court in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[13] (footnotes omitted):
In Du Cros, Lord Parker’s speech was also directed to s 9(5) of the Trade Marks Act 1905 (UK) Lord Parker was not dealing with a word but with two applications for registration of a trade mark consisting of two letters of the alphabet joined by an ampersand. The question was whether those marks were registrable under s 9(5), being “adapted to distinguish” certain goods, as letters of the alphabet were not included in the “essential particulars” in sub-ss (1), (2), (3) or (4) of s 9. Lord Parker said that the registrability of a trade mark as “distinctive” should:
“largely depend upon whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods.”
As Lord Parker explained when applying the principle (since much relied upon), even though a mark may have acquired some distinctiveness through use, a person should not be given a monopoly of letters of the alphabet, which other traders may legitimately desire to use because they have the same initial letters. [Stress added]
[13] [2014] HCA 48; (2014) 254 CLR 337; (2014) 315 ALR 4; (2014) 109 IPR 154 at [41].
When the principle inherent within the foregoing discussion is applied to the matter before me, I find that the limited right established by the registration of Opponent’s Logo Trade Mark in relation to the Opponent’s Goods and Services lies in the manner that the letters AG are rendered rather than in the plain printed letters AG themselves. The same is a fortiori true of the Opponent’s Name Trade Mark. In particular the Opponent’s Logo Trade Mark is registered because it is something quite distinct from the plain printed letters AG. The aura that surrounds the Opponent’s Logo Trade Mark as far as deceptive similarity is concerned thus extends only as far as representations of the alphabetical letters AG which are deceptively similar to the particular manner in which they are represented within the Opponent’s Logo Trade Mark.

On the other hand, I am to consider the fair and normal use of the Trade Mark by the Applicant. In Registrar of Trade Marks v Woolworths[14] French J put it this way:
Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.
[14] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [88].
Obviously, the ‘fair and normal use’ of the Trade Mark does not extend to the use of the letters as represented in the Opponent’s Logo Trade Mark. Firstly, the rendition within the Trade Mark of the letters AG are of the plain printed letters and registration of the Trade Mark will give rights only in the Trade Mark and will not extend to alterations or additions which substantially affect the identity of the Trade Mark. As the alteration from the plain printed letters AG to those in the Opponent’s Trade Mark were sufficient to render that trade mark registrable, that alteration must have been one which affected the identity of a putative trade mark consisting of the plain printed letters AG. Secondly, an assumption on my part that the Opponent could or would represent the letters AG in manner similar to the Opponent’s Logo Trade Mark would be to impute a conduct amounting to bad faith, or worse, to the Applicant which is not supported by any of the evidence before me.
In summary, the Opponent’s Logo Trade Mark is a fancy rendition of two letters of the alphabet and the Trade Mark is not. They are not deceptively similar.
This approach is consonant with the preceding registration of the trade mark appearing hereunder (to which Mr Hur’s declaration draws my attention):
Registration No:              525999
Priority Date:  22 December 1989
Goods:  Class 25: All goods in this class including showercaps
Trade Mark:
Endorsements:                Registration of this trade mark shall give no right to the exclusive use of the letters A and G and the device of an ampersand.
Registered under provisions of paragraph 45(1)(b).
The preceding endorsement(s) were recorded prior to commencement of the Trade Marks Act 1995.
In my consideration, if the Opponent’s submissions, at paragraph [41] above, had merit the above earlier registered trade mark should have stood as a bar to the registration of the Opponent’s Trade Marks.
The ground under section 44 of the Act is not established.
It logically follows that I also find the endorsement that was applied to the Trade Mark as a term of acceptance is inappropriate and that, if the opposition is not established under any other ground, it should be removed.
It also follows that the ground under section 58A falls away as there is no acceptance under the provisions of subsection 44(4) to address.
Section 60
Section 60 of the Act provides:
60Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
The Opponent’ summary submissions in regard to section 60 state:
(a) before the priority date for the registration of the […] Trade Mark, the Opponent had amassed a strong reputation in Australia in its well-known Opponent’s [Logo Trade Mark]. […]; and
(b) the […] Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s [Logo Trade Mark] and as a result the use of the […] Trade Mark by the Applicant would be likely to deceive or cause confusion.
While the Opponent in its submissions also makes reference to the Opponent’s Trade Marks, it is convenient to primarily discuss the similarity of the trade marks under consideration in terms of the Opponent’s Logo Trade Mark, if the ground is not established under section 60 of the Act in relation to the Opponent’s Logo Trade Mark, then neither is it established in relation to the Opponent’s Name Trade Mark.
The onus is on the Opponent to establish that the Opponent’s Logo Trade Mark (on which it primarily relies) has a reputation and that, because of that reputation, the use of the Trade Mark would deceive or cause confusion.
What is ‘reputation’? In McCormick & Co Inc v McCormick[15] (‘McCormick’) Kenny J said of reputation:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
[15] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
Concerning the assessment of reputation, in McCormick[16] Kenny J said:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s mark over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[16] Ibid [86].
Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[17] (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) said that the reputation required to be demonstrated was:
[ …] one of which a significant number of persons were aware […] What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[17] [2000] FCA 1587; (2000) 50 IPR1.
I will add that the Registrar’s delegate in Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[18] observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[18] [2012] ATMO 124 at [40].
There is little doubt that the Opponent’s revenue and advertising figures (and the previously discussed inferred value of editorials placements in magazines and newspapers) are large by any measure. My assessment of the evidence, however, is that in large part both revenue and advertising involve the Opponent’s use of the Opponent’s Name Trade Mark rather than the Opponent’s Logo Trade Mark.
As I have commented, at paragraph [13] above, the Opponent’s public use of the Opponent’s Trade Marks has been focussed on the Opponent’s Name Trade Mark and the corroborative exhibits to Ms Galan’s first declaration establish that such use that the Opponent has made of the Opponent’s Logo Trade Mark has been very modest since around 2004.
Much of the evidence which is submitted by the Opponent to go to the reputation of the Opponent’s Logo Trade Mark in fact goes to the reputation of the Opponent’s Name Trade Mark. Large amounts of the Opponent’s evidence, as discussed at paragraphs [15] and [16] above, concern events after the Relevant Date. I am hard pressed to find a single corroborated use by the Opponent of the Opponent’s Logo Trade Mark after the year 2004 which is conclusively shown by the Opponent to be before the Relevant Date. Accordingly, I find that the Opponent has not established that the Opponent’s Logo Trade Mark had a reputation in Australia at the Relevant Date. I would also conclude that the Opponent has established that the Opponent’s Name Trade Mark had a reputation at the priority date. Inasmuch as the Opponent’s Logo Trade Mark is recognised by Australians generally, it is in the succour that it gains from being a part of the Opponent’s Name Trade Mark and is, in my consideration, only generally recognised as such.
Furthermore, although the Opponent’s Name Trade Mark has a reputation, it bears no similarity to the Trade Mark. The only similarity between these trade marks of the parties is the occurrence of the letters AG. The names of the individuals who bear those initials (‘Arthur Galan’ and ‘Adriano Goldschmied’) are prominent within those trade marks and allow ready distinction between them.
64. The Opponent has not established its opposition under section 60 of the Act.
For the sake of completeness, I note that even if the Opponent had established that the Opponent’s Logo Trade Mark had a reputation at the Relevant Date, the public recognition of the Opponent’s Logo Trade Mark would be limited to the form in which it is rendered. It is difficult to understand how an ordinary person could confuse the particular form of the Opponent’s Logo Trade Mark with the Trade Mark in which the words ‘Adriano Goldschmied’ also prominently appear.
Paragraph 42(b)
Paragraph 42(b) of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
[…]
(b)its use would be contrary to law.
Here the Opponent submits:
[…] that use of the […] Trade Mark would be contrary to law as its use by the Applicant is likely to result in the commission of the tort of passing off.
The Opponent also submits that use of the […] Trade Mark would be contrary to law as its use by the Applicant is likely to result in misleading and deceptive conduct and the making of false and misleading representations in breach of sections 18 and 29 of the Australian Consumer Law as found in Schedule 2 of the Competition and Consumer Act 2010 (Cth) (ACL).
As the Relevant Date falls prior to the commencement of the ACL on 1 January 2011, it is sections 52 and 53 of the now superseded Trade Practices Act 1974 (‘the TPA’) (which prevailed at the Relevant Date) that are applicable to this matter.
In its submissions the Opponent states:
As stated in paragraph 44 above, the Opponent submits that [the Opponent’s Logo Trade Mark] is well known throughout Australia and that the Opponent has developed a substantial reputation in the [Opponent’s Logo Trade Mark] and the Opponent’s Trade Marks. Due to the Opponent’s reputation in the [Opponent’s Logo Trade Mark], use of the […] Trade Mark will also result in consumers being misled and deceived into believing that there is some connection, sponsorship or affiliation between the Opponent and the Applicant or the Applicant’s goods, which is not the case.
My considerations are thus limited to the Opponent’s Logo Trade Mark. However, the establishment by the Opponent of a reputation in the Opponent’s Logo Trade Mark is essential to both the passing off and TPA contentions.
In regards to the TPA, as observed in Re Equity Access Pty Limited v Westpac Banking Corporation and Westpac Savings Bank Limited and Challenge Bank Limited[19]:
[19] [1989] FCA 506; 16 IPR 431 by Hill J at [41]
[…]
5. In a case such as the present the applicant must establish that it has acquired the relevant reputation in the name, that is to say that the name had become distinctive of the applicant’s business in a particular country or geographical area: Sheraton Corporation of America v. Sheraton Motels Ltd (1964) RPC 202; BM Auto Sales Pty Ltd v. Budget Rent A Car System Pty Ltd (1976) 12 ALR 363. However at least in some circumstances very slight activities may be found to be sufficient to establish that a name has become distinctive of a person’s business in a particular country: Miki Shoko Co Ltd v. Merv Brown Pty Ltd (1988) ATPR 40-858.
Further, in a passing off action the Opponent must establish a reputation in the Opponent’s Logo Trade Mark if it is going to succeed on that basis: Reckitt & Colman Products Ltd v Borden Inc[20].
[20] [1990] RPC 341, 406 (Lord Oliver of Aylmerton).
I have found in my discussion of the ground under section 60 that the Opponent has not established a reputation in the Opponent’s Logo Trade Mark and that public recognition of the AG Logo is only inasmuch as it appears in the Opponent’s Name Trade Mark. As such it carries the explanatory words ‘Arthur Galan’ alongside it.
For completeness, I also note that as the ground under section 60 has not been established, this ground as far as it relates to the TPA and passing off must also fail because both of those grounds are at the higher standard of ‘mislead or deceive’: Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[21] where Gibbs C.J. said:
[21] [1982] HCA 44; (1982) 42 A.L.R. 1 (at page 6)
In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3.
In the same case Mason J. said (p. 15):-
“. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”
The ground under paragraph 42(b) of the Act is not established.
Decision
At the Relevant Date section 55(1) of the Act provided:
55Decision
(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.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and that the disposition of the application should be in accordance with the Court’s order or direction.
I direct that, should there be no appeal against this decision, the endorsement notating the application of the provisions of subsection 44(4) of the Act be removed prior to the registration of the Trade Mark.
Costs
Both parties requested their costs in this matter. I award costs at the Official Scale set out in Schedule 8 to the Trade Mark Regulations 1995 against the Opponent as it was the unsuccessful party.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
2 September 2016

[2016] ATMO 65

2 September 2016

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