GSLT Holdings Limited v Palace Arcade No. 2 Pty Ltd

[2024] ATMO 240

TRADE MARKS ACT 1995

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

Re:Opposition by GSLT Holdings Limited to registration of trade mark application number 2309393 (class 16, 25, 28, 39, 41 and 43) – PALACE ARCADE - in the name of The Palace Arcade No 2 Pty Ltd

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Mills Oakley

Applicant: Northern Lights IP

Decision:

2024 ATMO 240

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition pressed under ss 42(b), 44, 58 and 60 – s 44 established in respect of a subset of the goods – amendment made deleting the goods for which the s 44 ground has been established – no other grounds established – trade mark to proceed to registration –

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by GSLT Holdings Limited (‘Opponent’) to registration of the following trade mark:

[1] Unless otherwise stated, each reference to a regulation below is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) and each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth).

Trade mark number:  2309393 (‘Application’)

Trade mark:  PALACE ARCADE (‘Trade Mark’)

Applicant:  The Palace Arcade No 2 Pty Ltd (‘Applicant’)

Filing Date:  20 October 2022 (‘Relevant Date’)

Specification:               Class 16: printed matter; printed publications; printed publications in the field of entertainment and events; printed publications in the field of music events, concerts, festivals, and lifestyle events; printed publications in the field of accommodation; advertising material and publications; printed promotional material and publications; books; newspapers, newsletters and periodicals; booklets; magazines; catalogues; photographs; posters; banners of card, cardboard or paper; pamphlets; printed programs; flyers; postcards; tickets; timetables; photographs; maps; greeting cards; calendars; albums; bookmarks; note books; stationery; signs of card, cardboard or paper; stickers including bumper stickers; stamps; pencil cases; rulers; coasters; paper bags and packaging; drawing and writing pads; flags and pennants of paper;

Class 25: Clothing, footwear and headgear;

Class 28: Gaming machines; video game apparatus; electronic gaming machines; gaming apparatus (other than software); coin operated gaming machines; token operated gaming machines; arcade amusement and games machines, automatic and coin-operated; arcade video game machines; electronic arcade machines; amusement apparatus for use in arcades; parts and accessories in this class for the aforesaid goods

Class 39: Transportation services; delivery, collection, transport, forwarding and courier services; storage, collection, transport, forwarding and courier services; food and drink delivery; food delivery; beverage delivery;

Class 41: entertainment services; entertainment services relating to music events, festivals and lifestyle events; organisation of entertainment events, including music events, festivals, and lifestyle events; musical entertainment; radio entertainment services; video entertainment services; provision of entertainment facilities; rental of entertainment facilities; ticket booking and reservation services for entertainment events, including music events, festivals, and lifestyle events; the provision of non-downloadable audio and video entertainment via streaming services; production, presentation and distribution of sound and video recordings; production of radio or television programmes; publishing services; publication services of advertising and promotional material; publication of entertainment information; publication of accommodation information;

Class 43: providing food and drink; cafe services; bar services; restaurant services; catering services; night club services being the provision of food and drink; hospitality services being the provision of food and drink; take away food services; restaurant and catering services; providing information, including online, about services for providing food and drink; arranging for the provision of food and drink; providing temporary accommodation; hotels; motels; lodging and boarding services;

(‘Applicant’s Goods and Services’)

2.       The Trade Mark was examined and advertised as accepted for possible registration on 21 March 2023.

3.       On 19 May 2023, the Opponent filed a Notice of Intention to Oppose the Application. On 19 June 2023, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 17 August 2023. No evidence was filed by either of the parties.

4.       The parties were given the opportunity to either request an oral hearing or to file written submissions. Both parties elected to be heard by written submissions, the Opponent filing written submissions on 16 October 2024 drafted by Lisa Egan of Mills Oakley and the Applicant filing written submissions on 23 October 2024 drafted by Anja Bartels of Northern Lights IP. I have decided this matter based on the particulars set out in the SGP and the written submissions of the parties.

Grounds and onus

5.       The SGP nominates grounds of opposition under ss. 42(b), 44,[2] 58 and 60.

[2] As the Opponent relies on six international trade mark registrations which are protected in Australia (‘PITMs’) (defined later in this decision) as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A rather than s 44. However, as the terms are substantively identical for all relevant purposes and for ease, I have retained the reference to s 44 in this decision. References to s 44 as considered in the present decision should be taken to read to reg 4.15A.

6.       The Opponent carries the burden of establishing at least one ground of opposition[3] on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is the Relevant Date.[5]

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’)

Discussion and Reasons

Section 44

7. Section 44 relevantly provides:

Identical 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.

(2)         Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)         it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)         the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:For deceptively similar see section 10.

Note 2:For similar services see subsection 14(2).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

8. The SGP nominates six PITMs in support of this ground (‘Opponent’s Registrations’), brief particulars of which appear below:[6]

[6] A full list of goods and services appears at Annexure A and these goods and services are collectively referred to as the ‘Opponent’s Goods and Services’.

Number	Mark	Class	Priority Date
1642219 (219 Mark’)	18, 25, 28	12 May 2014
1660774 (‘774 Mark’)	PALACE SKATEBOARDS	18, 25, 28, 35	29 July 2014
1660775 (‘775 Mark’)	35	29 July 2014
1814195 (‘195 Mark’)	PALACE	18, 25, 28, 35	4 March 2016
1942273 (‘273 Mark’)	25	3 April 2018
1953737 (‘737 Mark’)	25	2 February 2018

9.       As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish that:

·At least one of the Opponent’s Registrations has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

·the Applicant’s Goods and Services are similar or closely related to the Opponent’s Goods and Services of at least one of the Opponent’s Registrations (‘the second requirement’); and

·the Trade Mark is substantially identical with or deceptively similar to at least one of the Opponent’s Registrations (‘the third requirement’).

10.    I am satisfied that the priority date of the Opponent’s Registrations is earlier than the Relevant Date and are in a name other than the Applicant. Therefore, the first requirement is satisfied.

11.    The next consideration is whether the Applicant’s Goods and Services are similar or closely related to the Opponent’s Goods and Services.

12.    Goods are ‘similar to other goods’ if they are the same or of the same description as the other goods.[7] The factors relevant to the consideration of whether goods are similar include their nature such as their origin and characteristics, uses made of the goods including their intended purposes, source of manufacture, respective trade channels and whether the ordinary consumer of the goods would regard the goods as being from a single source.[8] These can be conveniently summarised as: whether the respective goods are of the same nature; whether they are used by the same people for the same purposes; and whether the trade channels are the same. No single consideration is conclusive in itself.[9]

13.    A fuller explanation of trade channels as approved by the High Court in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[10] (‘Southern Cross’) considers whether the goods are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same classes of customers, and whether by those engaged in their manufacture or distribution they are regarded as belonging to the same trade.

14.    The question is one of fact[11] and the phrase ‘goods of the same description’ ought not to be given too restrictive a construction so as to be limited to goods substantially analogous in kind, or commonly used as mere substitutes or alternatives, the one for the other.[12]

15.    In Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd, Burchett J said:

[The object of s 23(2)] seems plainly to be the avoidance of confusion and deception in the market place, which would be likely to arise should a mark become available for use by two or more different companies, which are unrelated, upon goods of the same description. From that point of view, the expression “goods of the same description” is generally to be understood in such a sense that, if two different items are held not to fall within the expression, their sale under the same mark by different companies is not likely to lead to confusion or deception. That approach would seem to me to accord with the common sense business view recommended by Lord Evershed.[13]

[7] s 14(1).

[8] Re Jellinek’s Application [1946] 63 RPC 59 (Romer J).

[9] Southern Cross (n 5), 606.

[10] Ibid.

[11] J Lyons & Co Ltd’s Application [1959] RPC 120, 128 and 132 (CA UK) (‘J Lyons’).

[12] Ibid.

[13] [1993] FCA 265, 240 (‘Polo Textiles’).

1. In Goodman Fielder Pte Ltd v Conga Foods Pty Ltd, Burley J in considering ‘goods of the same description’ in the context of a s 92 removal action said:

   Accordingly, courts in recent times have consistently found it to be of significance that the policy underlying the expression “goods of the same description” is the need to avoid any confusion and deception in the market place which would be likely to arise should a mark become available for use by two or more different companies upon goods of the same description. That policy, when considered in the context of modern shopping practices in large stores where multiple products can be displayed near each other, such as in supermarkets, tends to expand the likelihood that products that at first blush are of quite different character and which are manufactured differently will nonetheless be goods of the same description because there is an increased likelihood that goods will be placed in close proximity to each other in the same store.[14]

   [14] [2020] FCA 1808, [286].

2. Goods are not necessarily of the same description simply because they are sold in common trade channels.[15]

   [15] See Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and Re Application by Chan Li Chai Medical Factory (HK) Ltd [2012] ATMO 59 (Hearing Officer Worth).

3. Services are ‘similar to other services’ if they are the same or of the same description as the other services.[16] Services of the same description may be services that one might expect to be provided by one trader under the same trade mark or those whose providers consider that they belong to the same trade.

   [16] s 14(2).

   19.    The Full Court in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd said the following factors were relevant in relation to considering whether certain services might be services of the ‘same description’ as services for which a trade mark is registered:

   (1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?

   (2) To whom are the services offered?

   (3) How are they provided?

   (4) How are they used?

   (5) What is their purpose?

   (6) Are they bundled together with other services?

   (7) Are they differentiated by the functional level at which they are provided: wholesale or retail?

   (8) Where do they originate?

   (9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

   (10) How closely contestable are the services in substance: are they in the same market or trade?

   (11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386; [2009] FCAFC 27, per Moore, Edmonds and Gilmour JJ at [71]–[73].[17]

   [17] (2017) 124 IPR 264, [339] (Greenwood, Besanko and Katzmann JJ).

4. The Act does not define the words ‘closely related’. In Registrar of Trade Marks v Woolworths (‘Woolworths’), French J stated that the relationship between goods and services, ‘may, and perhaps in most cases will, be defined by the function of the service with respect to the goods’.[18] Justice French also stated:

   [18] [1999] FCA 1020, [38] (‘Woolworths’).

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question... Consistently with that proposition, the registrar or a judge on appeal from the registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant's marks would be likely to deceive or cause confusion.[19]

   [19] Ibid [40].

5. The nature, function and circumstances of the trade, such as trade channels, are also relevant factors, as is the likelihood of consumer association of the services with the goods, because they are generally offered by the same people.[20] It can also be relevant as to whether the services are performed directly upon or by the means of the goods[21] and whether the goods and services are generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or, a closely related industry or trade.[22]

   [20] Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods [2023] FCA 487, [40] (Kennett J). See also Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [33] (Charlesworth J).

   [21] Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143 (Lockhart, Neaves and Franki JJ).

   [22] Re Aussat Pty Ltd [1993] ATMO 55 (Hearing Officer Thompson).

6. In considering the Applicant’s Goods and Services and the goods and services of the Opponent’s Registrations (‘Registered Goods and Services’), I should look to the ordinary meaning of the words and the notional normal and fair use, not restricting myself to how or in what goods or services the Opponent or Applicant actually trade.[23] I should consider the context in deciding whether ordinary consumers of the goods and services would see the goods and services as having the same trade origin[24] and judge the goods and services on the basis of business realities and common sense - and not on the basis of abstract reasoning.[25] I should also be aware that the nomination of a class for particular goods is not decisive as to the scope of a given registration.[26]

   [23] Woolworths (n 18), [88] (Branson J); Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43, [11] (Mason J). Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816, [43 - 44] (Wilcox J).

   [24] Southern Cross (n 5), 606; E & J Gallo Winery v Lion Nathan Australia Pty Limited [2009] FCAFC 27, [73] (Moore, Edmonds and Gilmour JJ) (‘Gallo’).

   [25] Polo Textiles (n 13).

   [26] Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, 132 (Yates, Stewart and Rofe JJ).

7. The Opponent submits that the Opponent’s Registrations are all registered in class 25,[27] three are also registered in classes 18 and 28 and two in class 35 and the Application covers classes 16, 25, 28, 39, 41 and 43. The Opponent submits that the Applicant’s Goods and Services are either the same as or similar to the Registered Goods and Services in classes 25, 28 and 35.

   [27] In fact, only five of the Opponent’s Registrations cover class 25.

1. The Applicant’s submissions do not disagree that there is an overlap in classes 25 and 28 of some of the Opponent’s Registrations and the Application but claims that the respective parties’ goods in class 28 are clearly different.

   Similar Goods

   Class 25

2. There is no dispute that the Applicant’s class 25 goods conflict with the Opponent’s five registrations which cover class 25 goods namely registration numbers 1642219, 1660774, 1814195, 1942273 and 1953737. The goods are clearly the same.

   Class 28

3. I consider that the unqualified claim to ‘games and playthings’ in three of the Opponent’s Registrations namely numbers 1642219, 1660774 and 1814195 encompasses the Applicant’s class 28 goods or the Applicant’s class 28 goods are goods of the same description.

4. Games and playthings cover any type of game, toy or thing to play with, on or through any medium and include apparatus for playing games. The word ‘gaming’ is defined in the Macquarie Dictionary Online as ‘gambling’ and ‘the activity of playing computer and video games’. I consider that ‘games and playthings’ would include within their ambit ‘video game apparatus, electronic gaming machines, gaming apparatus (other than software), coin operated gaming machines, token operated gaming machines, arcade amusement and games machines, automatic and coin-operated, arcade video game machines, electronic arcade machines and amusement apparatus for use in arcades’. The manufacturers and trade channels are likely to be the same or similar. I am therefore satisfied that all the Applicant’s Goods in class 28 are similar to games and playthings.

   Class 16

5. I do not consider the Applicant’s class 16 goods to be similar to the Opponent’s Goods. They are clearly completely different to class 25 goods and while games and playthings can be sold in the same shops as printed matter, printed publications, stationery etc e.g. in newsagencies and supermarkets, the inherent natures and uses of games and playthings differ from the class 16 goods of the Application. I am not satisfied that ordinary consumers of the respective goods would see them as having the same trade origin.

   Similar Services

   Class 39 and 43

   29.    The Opponent does not provide any submissions concerning the similarity of the Opponent’s Services in classes 39 and 43 with the Applicant’s Services. I consider that the natures, uses and trade channels of the Opponent’s Services in classes 39 and 43 and the Applicant’s Services in class 35 are completely different. The provision of the parties’ respective services is not likely to lead to confusion or deception.

   Class 35

   30.    The Opponent submits that the services include retail and wholesale services for a wide range of goods including those connected with sporting articles, sporting apparatus, bags and apparel, beer mats, records (among other things). The Opponent submits that these services are similar to the Applicant’s claim to a variety of entertainment services. The Opponent adds that I should consider that many musical festivals revolve around the skateboarding sub-culture.

   31.    As an initial point, the Opponent has not provided any evidence that musical festivals revolve around skateboarding sub-culture. Therefore, I give no regard nor weight to this submission.

   32.     I disagree with the Opponent that the Applicant’s class 41 services are similar to the Opponent’s class 35 services. The natures, uses and trade channels of entertainment services per se are clearly distinct from the natures, uses and trade channels of the Opponent’s class 35 services. For example, a retailer of records is not providing a service closely related to a manufacturer and producer of records merely because a record falls into the entertainment category of goods. Again, the provision of the parties’ respective services is not likely to lead to confusion or deception.

   Closely related goods and services

   33.    Thus far, I have only found that the Applicant’s goods in classes 25 and 28 are goods of the same description as the Opponent’s class 25 and 28 goods. Therefore, I need only give consideration as to whether the Applicant’s goods in class 16 are closely related to the Opponent’s class 35 services and whether the Applicant’s Services are closely related to the Opponent’s goods in class 18.

   Applicant’s Goods in class 16 and Opponent’s Services in class 35

   34.    In essence, the Opponent’s class 35 services in the 774 and 775 Marks contain an unqualified claim to retail and wholesale services including online, whereas the 195 Mark claims retail and wholesale services including online connected with sporting articles, sporting apparatus and equipment, sportswear, apparel, bags, badges, jewellery, beer mats, stickers, key rings, key fobs, high visibility tapes, records and prints. Notably the 195 Mark covers retailing or wholesaling of beer mats and stickers.

   35.    The Applicant’s class 16 goods include stickers and coasters. I consider that coasters include beer mats. While it is common for many manufacturers of some goods to also retail and wholesale those goods e.g. clothing and sporting goods, it is also just as common for goods to be wholesaled or retailed by an entity other than the manufacturer or brand owner. Therefore, the mere fact that a good may be sold through wholesale or retail channels does not necessarily render such good closely related to wholesale or retail services.

   36.    The question of whether goods and the service of providing their wholesale or retail sale are closely related must be considered in the context of the risk of confusion. Here I am not satisfied there is a likelihood of consumer association of the Opponent’s class 35 services with the goods beer mats and stickers, because they are not generally offered for sale by the same people that manufacture them. Thus, the Opponent’s class 35 services and the Applicant’s class 16 goods are not generally regarded by the ordinary consumer as originating in, or as being part of, the one industry or trade, or a closely related industry or trade and they are not closely related.

   Applicant’s Services and Opponent’s Goods in class 18

   37.    I consider the determination as to whether the Applicant’s Services are closely related to the Opponent’s goods in class 18 to be very straightforward. The natures, uses and trade channels of the respective goods and services differ markedly. On the basis of business realities and common sense, the Applicant’s Services are obviously not closely related to the Opponent’s class 18 goods.

   38.    In conclusion, I am satisfied that the following subsets of the Applicant’s Goods (‘Subset Goods’) are the same or the same description as the Opponent’s Goods claimed in the Opponent’s registration numbers 1642219, 1660774, 1814195, 1942273 and 1953737:

   Class 25: clothing, footwear, headgear

   and the Opponent’s registration numbers 1642219, 1660774 and 1814195:

   Class 28: gaming machines; video game apparatus; electronic gaming machines; gaming apparatus (other than software); coin operated gaming machines; token operated gaming machines; arcade amusement and games machines, automatic and coin-operated; arcade video game machines; electronic arcade machines; amusement apparatus for use in arcades; parts and accessories in this class for the aforesaid goods

   39.    However, I am not satisfied that the remainder of the Applicant’s Goods and Services are the same, of the same description or closely related to the Opponent’s Goods and Services namely:

   Class 16: printed matter; printed publications; printed publications in the field of entertainment and events; printed publications in the field of music events, concerts, festivals, and lifestyle events; printed publications in the field of accommodation; advertising material and publications; printed promotional material and publications; books; newspapers, newsletters and periodicals; booklets; magazines; catalogues; photographs; posters; banners of card, cardboard or paper; pamphlets; printed programs; flyers; postcards; tickets; timetables; photographs; maps; greeting cards; calendars; albums; bookmarks; note books; stationery; signs of card, cardboard or paper; stickers including bumper stickers; stamps; pencil cases; rulers; coasters; paper bags and packaging; drawing and writing pads; flags and pennants of paper;

   Class 39: Transportation services; delivery, collection, transport, forwarding and courier services; storage, collection, transport, forwarding and courier services; food and drink delivery; food delivery; beverage delivery

   Class 41: entertainment services; entertainment services relating to music events, festivals and lifestyle events; organisation of entertainment events, including music events, festivals, and lifestyle events; musical entertainment; radio entertainment services; video entertainment services; provision of entertainment facilities; rental of entertainment facilities; ticket booking and reservation services for entertainment events, including music events, festivals, and lifestyle events; the provision of non-downloadable audio and video entertainment via streaming services; production, presentation and distribution of sound and video recordings; production of radio or television programmes; publishing services; publication services of advertising and promotional material; publication of entertainment information; publication of accommodation information

   Class 43: providing food and drink; cafe services; bar services; restaurant services; catering services; night club services being the provision of food and drink; hospitality services being the provision of food and drink; take away food services; restaurant and catering services; providing information, including online, about services for providing food and drink; arranging for the provision of food and drink; providing temporary accommodation; hotels; motels; lodging and boarding services

   (together ‘Remaining Goods and Services’).

   40.    For the Subset Goods, the next consideration is whether I am satisfied that the Trade Mark is substantially identical with or deceptively similar to the trade marks of the Opponent’s registration numbers 1642219, 1660774, 1814195, 1942273 or 1953737 (‘Subset Marks’).

   Substantial identity

   41.    The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’),[28] where his Honour stated at 414:

   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

   [28] (1963) 109 CLR 407 (‘Shell’).

   42.    Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’

   43.    In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[29] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them:

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[30]

   [29] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

   [30] Ibid [52].

   44.    Whether there is substantial identity is a question of fact.[31]

   [31] Ibid [53].

   45.    The respective marks appear below:

Subset Marks	Trade Mark
PALACE ARCADE
	PALACE SKATEBOARDS
	PALACE

46.    The Opponent’s submits that the Trade Mark is substantially identical to the Subset Marks as it reproduces the essential word element PALACE of the Subset Marks.

47.    On a side-by-side comparison there are clear differences which mean that a total impression of dissimilarity emerges from a comparison of the Subset Marks and the Trade Mark. While they each share the element PALACE, the presence of the word ARCADE in the Trade Mark and the lack of that word in the Subset Marks provides a significantly different visual impression. I move then to consider whether the Trade Mark and the Subset Marks are deceptively similar.

Deceptive similarity

48.    Section 10 provides a definition of deceptively similar being 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’.

49.    Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

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 [mark].[32]

[32] Shell (n 28), 416.

50.    The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[33] conveniently stated the relevant principles, which was summarised in The Agency Group Limited v H.A.S. Real Estate Pty Ltd[34] as follows:

[33] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[34] [2023] FCA 482, [55] (Jackman J).

·the resemblance between the two marks must be the cause of the likely deception or confusion;[35]

[35] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ).

·in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[36]

[36] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

·the marks should not be compared side by side;[37]

·the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[38]

·the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[39]

·the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[40]

·the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of notional and normal fair use of the opposed mark;[41]

·“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers;[42]

·the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[43]

·it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[44]

·evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[45] and

·any intention to deceive or cause confusion may be a relevant consideration but is not required.[46]

[37] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

[38] Ibid.

[39] Ibid.

[40] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).

[41] Shell (n 28), 415.

[42] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

[43] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

[44] Woolworths (n 18), [50(ii)] (French J) restating principles from Southern Cross (n 5) 594-595.

[45] Australian Woollen Mills (n 37).

[46] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 37), 657.

51.    Justice French expressed the view in Woolworths[47] that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is ‘logically antecedent to’ assessing the similarity of the parties’ trade marks. In particular, French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths Ltd v Registrar of Trade Marks matter that, ‘[t] he closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive’.[48]

[47] (n 18), [39].

[48] Ibid.

52.    In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Subset Marks. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Subset Marks are used and the circumstances in which the Subset Goods are and will be sold.

53.    The Opponent submits that the Trade Mark is deceptively similar to the Subset Marks as:

·taken as a whole, the marks look alike, they sound alike and they are conceptually the same.

·the addition of the word ‘ARCADE’ does little to alter the overwhelming similar impression conveyed by the word ‘PALACE’.

·Arcade is a descriptive word and does not alter the overall impression of the marks on the minds of consumers.

·in relation to registration 1660774 for the mark PALACE SKATEBOARDS, the focus or emphasis is on the distinctive word ‘PALACE’ as the word ‘SKATEBOARD’ does not alter the impression conveyed by the word ‘PALACE’.

·the word ‘PALACE’ features prominently in the Subset Marks on trade mark numbers 1642219, 1942273 and 1953737

54.    The Applicant submits that the Trade Mark is not deceptively similar as:

·the words PALACE and ARCADE are both common English words and neither words is descriptive of the Applicant’s Goods and Services.

·similarity objections must be considered in the context of the ordinary purchaser and the Opponent failed to provide any evidence in relation to the ordinary purchaser or the types of goods and services.

55.    It is convenient to confine the following discussion to a comparison of the 195 Mark for the trade mark PALACE. The rationale being that if the 195 Mark is determined not to be deceptively similar to the Trade Mark, logic dictates that the same conclusion will apply to the remainder of the Opponent’s Registrations, given that the other registrations have additional points of dissimilarity.

56.    In my opinion the 195 Mark is distinctive in respect of the Subset Goods. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the 195 Mark will be the distinctive and well known English word PALACE. This element is the only component of the 195 Mark. The same element appears in the Trade Mark as the first word of that mark. It is also well established that the first word or syllable of a trade mark provides the most important means of distinguishing marks. As Finn J said in C A Henschke & Co v Rosemount Estates Pty Ltd:

[P]articular attention ought be paid to the first part of a name for generally the first word or syllable provides the most important means of distinguishing marks... save where the initial word or syllable is both common to the marks and is common to the trade or is commonly used by a number of trade mark proprietors, in which case the emphasis is to fall on other portions of the mark as a means of distinguishing them.[49]

[49] [1999] FCA 1561, [35].

57.    The parties’ submissions differ as to whether the word ARCADE is descriptive. While ARCADE can describe a covered passageway with shops on either side, it does not describe class 25 or 28 goods. However, ‘ARCADE GAME’ describes a coin-operated device for entertainment, such as pinball.[50] I note that the Applicant’s class 28 goods include ‘arcade amusement and games machines, automatic and coin-operated, arcade video game machines, electronic arcade machines and amusement apparatus for use in arcades’. Given this, the word ARCADE in the Trade Mark has an obvious suggestive quality in respect of the class 28 Subset Goods and therefore a lower level of distinctiveness than the word PALACE.

[50] Macquarie Dictionary Online.

58.    In my opinion, the PALACE element does not lose its identity in the Trade Mark and is the more striking and memorable feature, particularly as it is the first word in the Trade Mark. It seems to me that adding the word ARCADE does not give the Trade Mark an immediate and obvious meaning that avoids any prospect of confusion, particularly in respect of the Subset Goods in class 28.

59.    In Starr Partners Pty Ltd v Dev Prem Pty Ltd, the Full Court said in relation to the comparison of marks:

The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.[51]

[51] [2007] FCAFC 42, [22] (Lindgren, Emmett and Finkelstein JJ).

60.    Further, even if ARCADE had no suggestive qualities, it is well-established that a mark may comprise two distinctive elements and still be deceptively similar to a mark containing only one of those elements.[52] I consider the PALACE element is a key visual, aural and conceptual feature of the Trade Mark. It is highly likely that consumers with an imperfect recollection of the 195 Mark would immediately link the Trade Mark to a memory of association with the PALACE element.

[52] Gallo (n 24), [75].

61.    Here the respective trade marks will be used for the Subset Goods. The potential purchasers of clothing and games are vast in number, covering most if not all consumers in Australia. The fact that such a large class of people is involved in this assessment lends increased weight to the possibility for confusion to occur, even though clothing consumers tend to take time to assess a brand before purchase.[53]

[53] Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92, [44] (Hearing Officer Cooper); Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards); Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23 (Hearing Officer Forno).

62.    In conclusion, allowing for the imperfect recollection of consumers of ordinary memory and intelligence, I consider the trade marks are likely to be mistaken one for the other. Thus, as a matter of impression and common sense, I believe that a person of ordinary intelligence would be likely to be confused or deceived by the Trade Mark.

63.    I am satisfied that there is ‘a real, tangible danger’ that a consumer ‘might be caused to wonder’ whether the Subset Goods originate from the same source. I therefore find that the Trade Mark is deceptively similar to the 195 Mark and that the Opponent has made out the ground of opposition under s 44 for the Subset Goods.

64.    Nevertheless, it remains possible for the application to be accepted for the Subset Goods under the provisions of ss 44(3) and/or 44(4) which make provision for the Applicant to overcome a s 44 ground of opposition on the basis of prior use, honest concurrent use or other circumstances. However, as the Applicant has not filed any evidence in this opposition, the provisions of ss 44(3) and/or 44(4) do not apply.

65.    I will now consider the remaining grounds with respect to the Remaining Goods and Services.

Section 58

66.    Section 58 of the Act provides:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

Note:          For applicant see section 6.

67.    The term ‘owner’ is not defined in the Act. However, it is well established that in the absence of fraud, the original owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application for it in Australia, whichever is earlier.[54]

[54] Shell Co of Australia Ltd v Rohm & Haas Co (1949) 78 CLR 601.

68.    To succeed on this ground of opposition, the Opponent must establish:

·that the Trade Mark is identical, or substantially identical, to a trade mark(s) relied upon by the Opponent;[55]

·that the Remaining Goods and Services are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent have been used;[56] and

·that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to the Application or any actual use of the Trade Mark by the Applicant, whichever is earlier.[57]

[55] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936.

[56] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640.

[57] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

69.    The Opponent particularised this ground of opposition in its SGP as follows:

The Applicant is not the owner of the trade mark comprised in the Application. The only element of the mark comprised in the Application which serves as a badge of origin is the word PALACE. The word PALACE is a registered trade mark of the Opponent. As such, the Opponent is the owner of the mark seeking to be registered by the Applicant

70.    The Opponent’s submissions do not expand on the above.

71.    The Applicant submits that no evidence has been filed by the Opponent to establish this ground.

72.    I agree with the Applicant. Absent any evidence to establish that a person other than the Applicant has an earlier claim to ownership of the Trade Mark based on prior use or any actual use of the Trade Mark by the Applicant, the s 58 ground of opposition must fail.

Section 60

73.    Section 60 provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)         another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)         because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:For priority date see section 12.

74.    Section 60 relies upon a likelihood of consumer confusion and/or deception occurring because of the reputation of another trade mark.

75.    What must be shown by the Opponent is that the Opponent had a reputation in Australia in at least one trade mark at the Relevant Date, and because of that reputation, use of the Trade Mark would be likely to confuse or deceive.

76.    While the Opponent has identified in the SGP the Opponent’s Registrations and has made claims that the Opponent has a reputation in these trade marks, no evidence has been filed by the Opponent and therefore, these claims are unsubstantiated.

77.    Absent any evidence from the Opponent, I am not satisfied that the Opponent had developed the necessary reputation in the Opponent’s Registrations at the Relevant Date amongst a substantial number of consumers in any market. Thus, the s 60 ground of opposition has not been established in respect of the Remaining Goods and Services.

Section 42(b)

1. Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.

   79.    In its SGP, the Opponent simply lists the ‘Competition and Consumer Act 2010’ (‘CCA’) and ‘tort of passing off.’ The Opponent’s submissions refer to breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’) and rely on the submissions filed in respect of s 60 that the Opponent has a significant reputation in the Opponent’s Registrations.

   80. As stated above in respect of the s 60 ground, the claims that the Opponent has a significant reputation in the Opponent’s Registrations are unsubstantiated. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 29 of the ACL will also fail, as will claims of passing off.[58]

   [58] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 (Hill J); Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

2. Absent any evidence from the Opponent, I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law. Therefore, the Opponent has not established the ground of opposition under s 42(b) in respect of the Remaining Goods and Services.

   Resolution of Opposition

3. In Apple Inc. v Registrar of Trade Marks Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[59]

   [59] [2014] FCA 1304, [232].

4. In circumstances where an opposition has been established in respect of some, but not all of an applicant’s goods or services, the Registrar may proceed to reject the application in its entirety, under the principles outlined above, but also has a discretion to offer an amendment to an applicant, allowing it to amend the application to remove goods and services for which a ground of opposition has been established.

5. Given the breadth of goods and services claimed in the Application, I considered it appropriate to offer the Applicant the opportunity to amend the Applicant’s Goods and Services to delete the Subset Goods and thereby allow protection of the Trade Mark for the Remaining Goods and Services.

   85.    On 21 November 2024 I provided the Applicant with an opportunity to amend its application for Trade Mark No. 2309393 to remove the Subset Goods, being the goods for which the s 44 ground of opposition has been established, which it did on 4 December 2024. The amendment has now been made. On that basis, trade mark application 2309393 may proceed to registration not less than 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 either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Applications should be in accordance with the Court’s order or direction.

   Costs

   86.    The Opponent sought its costs in this matter but as both parties have had a degree of success, I decline to award costs.

   Anne Makrigiorgos

   Hearing Officer

   Oppositions and Hearings

   Trade Marks and Designs

   6 December 2024

   Annexure A

Number	Mark	Goods and services
1642219	Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals Class 25: Clothing, footwear, headgear Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; childrens' toy bicycles
1660774	PALACE SKATEBOARDS	Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals Class 25: Clothing, footwear, headgear Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; children's toy bicycles; skateboards; skateboard hardware; skateboard parts; skateboard wax; skateboard wheels; skateboard rollers; bags for skateboards; athletic protective wrist, knee and elbow pads or guards (sports articles) for skateboarding Class 35: Advertising, marketing and promotional services; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; administration of the business affairs of franchises; advertising services provided via the Internet; advice and assistance in the selection of goods and services; business advisory services relating to the establishment and operation of franchises; auctioneering; business information services; business services; data processing; demonstration of goods; direct mail order retail services and online retail services connected with sporting articles, sporting apparatus and equipment; direct mail marketing; email marketing services; import-export agencies; business intermediary services relating to bringing customers and/or buyers and sellers together; management of retail and wholesale enterprises; opinion polling; production of television and radio advertisements; provision of business information; rental of advertising space; retail and online marketing and sales promotions; wholesale and retail services connected with the sale of sporting equipment including spare parts thereof; retail store services connected with the sale of sporting goods, namely, sportswear, sporting articles, sporting apparatus and equipment including extreme sports apparatus and equipment; retail store services connected with the sale of skateboards, skateboard hardware, skateboard parts, skateboard wax, skateboard wheels, skateboard rollers, bags for skateboards, athletic protective wrist, knee and elbow pads or guards (sports articles) for skateboarding, skateboard artwork graphic kits (including downloadable graphics), protective clothing, gloves and headgear, and skateboarding apparel; trade fairs; the bringing together, for the benefit of others of a variety of sporting articles, sporting apparatus, sporting equipment, skateboards, skateboard parts, protective pads and guards, bags and apparel, enabling customers to conveniently view and purchase those goods in wholesale or retail points, mail order, catalogue, via the Internet and/or a global computer and/or by means of a communications network; wholesale and retail services connected with sporting articles, sporting apparatus, bags and apparel; information, advisory and consultancy services relating to the aforesaid
1660775	Class 35: Advertising, marketing and promotional services; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; administration of the business affairs of franchises; advertising services provided via the Internet; advice and assistance in the selection of goods and services; business advisory services relating to the establishment and operation of franchises; auctioneering; business information services; business services; data processing; demonstration of goods; direct mail and online retailing services; direct mail marketing; email marketing services; import-export agencies; intermediary services relating to bringing customers and/or buyers and sellers together; management of retail and wholesale enterprises; opinion polling; production of television and radio advertisements; provision of business information; rental of advertising space; retail and online marketing and sales promotions; wholesaling and retailing services; retail sporting goods store including extreme sports apparatus and equipment; retail store services featuring skateboards, skateboard goods, skateboard hardware, skateboard parts, skateboard wax, skateboard wheels, skateboard rollers, bags for skateboards, athletic protective wrist, knee and elbow pads or guards (sports articles) for skateboarding, skateboard accessories, protective clothing, gloves and headgear, and skateboarding apparel; trade fairs; the bringing together, for the benefit of others of a variety of goods, enabling customers to conveniently view and purchase those goods in wholesale or retail points, mail order, catalogue, via the Internet and/or a global computer and/or by means of a communications network; wholesaling and retailing services relating to sporting articles, sporting apparatus, bags and apparel; information, advisory and consultancy services relating to the aforesaid
1814195	PALACE	Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; handbags, rucksacks, purses; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing for animals Class 25: Clothing, footwear, headgear Class 28: Games and playthings; playing cards; gymnastic and sporting articles; decorations for Christmas trees; children's toy bicycles; skateboards; skateboard hardware being skateboard parts; skateboard parts; skateboard wax; skateboard wheels; skateboard rollers; bags for skateboards; athletic protective wrist, knee and elbow pads or guards (sports articles) for skateboarding Class 35: Office functions; organisation, operation and supervision of loyalty and incentive schemes; advice and assistance in the selection of goods and services; auctioneering; data processing; demonstration of goods; direct mail order retail services and online retail services connected with sporting articles, sporting apparatus and equipment; import-export agencies; management of retail and wholesale enterprises; opinion polling; production of television and radio advertisements; rental of advertising space; wholesale and retail services connected with the sale of sporting equipment including spare parts thereof; retail store services connected with the sale of sporting goods, namely sportswear, sporting articles, sporting apparatus and equipment including extreme sports apparatus and equipment; retail store services connected with the sale of skateboards, skateboard hardware, skateboard parts, protective pads and guards, bags and apparel, badges, jewellery, beer mats, stickers, key rings, key fobs, high visibility tapes and stickers, records, prints, enabling customers to conveniently view and purchase those goods in wholesale or retail points, mail order, catalogue, via the Internet and/or global computer and/or by means of a communications network; wholesale and retail services connected with sporting articles, sporting apparatus, bags and apparel; information, advisory and consultancy services relating to the aforesaid
1942273	Class 25: Clothing, footwear, headgear
1953737	Class 25: Clothing, footwear, headgear