Jackson Family Farms, LLC and Jackson Family Wines, Inc v Grands Domaines Du Littoral

[2023] ATMO 171

TRADE MARKS ACT 1995

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

Re:Opposition by Jackson Family Farms, LLC and Jackson Family Wines, Inc to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2058540 (International Registration number 1504571) (class 33) – VERITE DU TERROIR - in the name of GRANDS DOMAINES DU LITTORAL

Delegate:

Anne Makrigiorgos

Representation:

Opponents: Piper Alderman

Holder: A J Park

Decision:

171 ATMO 2023

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – grounds of opposition pressed ss 42, 44, 58A, 58 and 60 – s 44(3)(a) not applicable - s 44 ground established – protection refused.

Background

1. This is a decision in respect of an opposition by Jackson Family Farms, LLC and Jackson Family Wines, Inc (‘Opponents’) under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth)[1] to the extension of protection of International Registration Designating Australia (‘IRDA’) 2058540. The details are as follows:

   International Registration number:         1504571

   Australian trade mark number:  2058540 (‘Application’)

   Trade mark:       VERITE DU TERROIR (‘Trade Mark’)

   Holder:                GRANDS DOMAINES DU LITTORAL (‘Holder’)

   Filing Date:        7 November 2019 (‘Relevant Date’)

   Specification:     Class 33: AOC wines (wines with protected appellation of origin). (‘Holder’s Goods’)

   Endorsement:   Provisions of paragraph 44(3)(a) and/or Reg 4.15A(3)(a) applied.

   [1] Unless otherwise stated, each reference to a regulation 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).

2. The Trade Mark was examined and advertised as accepted for possible extension of protection on 1 March 2022.

3. On 22 April 2022, a Notice of Intention to Oppose the Trade Mark was filed. On 20 May 2022, the Opponents filed their Statement of Grounds and Particulars (‘SGP’), which this office gave to the Holder on 14 June 2022. The Holder filed a Notice of Intention to Defend the opposition on 6 July 2022.

4. The Opponent filed Evidence in Support (‘EIS’) on 7 October 2022. The Applicant filed Evidence in Answer (‘EIA’) on 10 January 2023. No evidence in reply was filed.

5. The parties were given the opportunity to either request an oral hearing or a hearing by way of written submissions. The Opponents requested a decision without a hearing. As a delegate of the Registrar of Trade Marks, I have decided this matter based on the particulars set out in the SGP and the evidence of the parties.

Grounds and onus

1. Regulation 17A.34 provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and on the grounds set out in ss 58 to 61 and 62A.

2. The SGP nominates grounds of opposition under ss 42, 44, 58, 58A and 60.

3. The Opponents carry the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32].

   [3] Pfizer Products Inc v Karam [2006] FCA 1663 [6]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 [133].

Evidence

1. The following evidence was filed:

   EIS

   Declaration of Katy Stambaugh, Vice President and Legal Counsel of the Opponents with Annexures KS-1 – KS-14 dated 6 October 2022 (‘Stambaugh’).

   EIA

   Declaration of Paul-François Vranken, president of the Holder with Exhibits 01 to 10 dated 17 January 2022. (‘Vranken Declaration’).

   Confidential Declaration of Paul-François Vranken dated 17 January 2022 (‘Confidential Vranken Declaration’).

Summary of EIS

1. Stambaugh discusses the business run by the Opponents, their history of trading in Australia and other details that are not necessary to outline given my findings further below.

2. Stambaugh refers to Registration No. 940089 for the trade mark VERITE (‘VERITE Trade Mark’) covering wines, registered in Australia in 2003 in the name of the Jackson Family Farms, LLC (‘VERITE Registration’).

3. Stambaugh also lists the online retailers in Australia which sell wine bearing the VERITE Trade Mark and provides printouts from these retailer’s web sites including Dan Murphy’s. United Cellars, The Wine Collective, World Wine, The Envied Cellar, Whole Bunch Wines and Global Wine Merchants. I note from these printouts that the price of a bottle of wine branded with the VERITE Trade Mark Trade Mark depends on size and vintage. A 750 ml bottle ranges in price from AU$500 – AU$1200.

Summary of EIA

1. Vranken begins by providing a history of the Holder and its operation in the wine market and specifically wines of Cotes de Provence and Camargue.

2. Vranken states that the Trade Mark was adopted in 2005 and was first used in Australia in 2013. Vranken provides pictures of labelled wine bottles which are available in Australia. I note from these pictures that the predominant wording on the labels is ‘Chateau La Gordonne’ which is in significantly bigger script than the words ‘Verite du Terroir’.

3. Vranken states that the Holder’s Australian subsidiary Vranken-Pommery Australia Pty Ltd promotes and sells wine bearing the Trade Mark in Australia. A price list from 2013 and a portfolio of wines from 2018 and 2021/22 shows the Trade Mark.

4. Vranken declares that the wine bearing the Trade Mark is sold through local distributors and various distribution channels including:

• restaurants/bars, 5 star hotels, wine boutiques, in store liquor retailers and corporates. I note however that no supporting evidence has been provided.

• lnternet/online sales including Cloudwine.com.au; Wine.com.au; Libertyiquors.com.au; davidjones.com.au and Winesandales.com.au. I note however that the printouts provided from these web sites refer to the wine as Chateau La Gordonne and the Trade Mark only appears on the bottles of wine. I also note that the price point of wines bearing the Trade Mark is AU$22 - AU$34.

1. Vranken goes on to detail the marketing and promotion of the wine bearing the Trade Mark including:

• shelf-takers - both mock ups and those used in situ in store displays in supermarkets and bottle stores. I note that none of this evidence is dated, only one of the mock ups displays the Trade Mark and only one bottle of wine above a shelf taker displays the Trade Mark.

• tasting and dinner events at restaurants, wine retailers, art fairs and major events such as Melbourne Cup and Concours D'Elegance. I note that of all the marketing and promotion examples, only one is dated before the Relevant Date which shows the Trade Mark. All the others are either after the Relevant Date, not dated or do not refer to the Trade Mark.

• media and paid influencer blogs. I note that these blogs are after the Relevant Date.

1. In respect of honest concurrent use, Vranken declares that he is not aware of any instances of confusion arising between the Trade Mark and the VERITE Trade Mark and claims that the Holder was not aware of the VERITE Registration when the Trade Mark was selected.

2. Vranken declares the units sold and revenue in Australia for the wines bearing the Trade Mark in the Vranken Confidential Declaration from 2013 to January - July 2021.

Discussion and Reasons

Section 44

1. The relevant provisions of s 44 are reproduced below:

   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)  .

   (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.

1. The SGP nominates the VERITE Registration as the basis for this ground of opposition.

2. I am satisfied that the goods covered by the VERITE Registration being wines encompass the subset of wine claimed in the Application. I am also satisfied that the VERITE Registration has an earlier priority date and is held in a name other than that of the Holder. Therefore, the consideration becomes one of whether the Trade Mark is substantially identical with, or deceptively similar to, the VERITE Trade Mark. I do not consider the marks to be substantially identical, but they are deceptively similar for the reasons that follow.

Deceptive Similarity

1. 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”.

2. Justice Windeyer outlined the approach for the assessment of deceptive similarity in The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’). His Honour observed:

   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].[4]

   [4] [1963] HCA 66, [13].

3. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[5] conveniently stated the relevant principles, which may be summarised as follows:

   [5] [2023] HCA 8.

(a)the resemblance between the two marks must be the cause of the likely deception or confusion;[6]

[6] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (2022) 168 IPR 42, 55 [69].

(b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[7]

[7] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538.

(c)the marks should not be compared side by side;[8]

[8] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641.

(d)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;[9]

[9] Ibid.

(e)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”;[10]

[10]Ibid 658. See also Shell (n 12).

(f)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;[11]

(g)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 the alleged infringer’s mark (as actually used);[12]

(h)“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;[13]

1. 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;[14]

(j)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”;[15]

(k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[16] and

(l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[17]

[11] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43].

[12] Shell (n 12) 415.

[13] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39], quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62.

[14] Campomar Sociedad Limited v Nike International Limited (2000) 202 CLR 45, 79 [83].

[15] Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594 - 595; See also Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50].

[16] Australian Woollen Mills Ltd v F S Walton & Co Ltd (n 8) 658.

[17] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (n 8) 657.

1. The question is whether there is a real tangible risk that the result of the use of the Trade Mark will be that a reasonable person will be caused to wonder whether it might not be the case that wine bearing the Trade Mark is from the same source as wine bearing the VERITE Trade Mark.

2. I believe the impression or recollection to be carried away and retained by the notional consumer with an imperfect recollection of the VERITE Trade Mark will be the distinctive word VERITE. This element is the only component of the VERITE Trade Mark. This same element appears in the Trade Mark as the first word. The VERITE element does not lose its identity in the Trade Mark. It is highly likely that consumers with an imperfect recollection of VERITE would immediately link VERITE DU TERROIR to a memory of association with the essential element VERITE.

3. I note from the translation endorsement on the VERITE Registration that VERITE is the French word for truth. I also note that VERITE DU TERROIR is also French and the word TERROIR means the natural environment of a vineyard, especially as determined by climate, topography, geology, and hydrology and is also an adjective of wine meaning the wine is associated with a particular region.[18] The Holder itself uses the term terroir in its examples of portfolios of Chateau La Gordonne where it states “an exceptional terroir”. I am also aware that a translation of the word DU is of.

   [18] Macquarie Dictionary online.

4. The context of the comparison of the trade marks is that of what may be termed the wine industry. This includes everyone from the discriminating wine wholesaler/retailer, sommelier, and wine connoisseur to the discriminating and non-discriminating mum and dad customer. While it is not as likely that the non-discriminating mum and dad customer would be aware of the meaning of TERROIR, discriminating customers are highly likely to understand its meaning.

5. To those consumers where the word TERROIR will have an understood meaning, when combined with VERITE they are likely to believe that VERITE DU TERROIR is VERITE wine produced from a particular region. Therefore, the likelihood of confusion arising is significant among that cohort.

6. To those consumers where the word TERROIR does not have an understood meaning, the likelihood of confusion arising is just as significant. These consumers who have recalled the word VERITE upon seeing VERITE DU TERROIR are highly likely to believe it is the same wine or a similar wine emanating from the same brand. The visual, aural and conceptual similarities are too great.

7. As a result, given the degree of resemblance between the trade marks and the fact that the goods are identical, I am satisfied that there would be a real tangible danger of confusion occurring between the trade marks and the ground under s 44(1) has been established. As this provision is subject to ss 44(3)-(4), this is not the end of the matter. The VERITE Registration having a priority date in 2003, and the Holder’s first attested use in Australia being from 2013, a finding of prior and continuous use under s 44(4) cannot be reached. Similarly, there is nothing in the documentation that appears to go to other circumstances under s 44(3)(b).

8. However, the Holder obtained acceptance of the Trade Mark under s 44(3)(a). Section 44(3)(a) concerns ‘honest concurrent use’ and is a discretionary provision which allows the Registrar to accept the Application notwithstanding that the requirements of s 44(1) have been satisfied. The onus is on the Holder to establish that there has been honest concurrent use of the Trade Mark and the VERITE Trade Mark, and that should honest concurrent use be established, that it is appropriate for the Registrar to accept the application on that basis.

9. Accordingly, I will now consider the evidence to decide whether the provisions of s 44(3)(a) are applicable to the Application.

Honest Concurrent Use

1. The date for the purposes of s 44(3)(a) is the Relevant Date. Evidence of honest concurrent use after the priority date is not relevant to an application under s 44(3)(a).[19]

   [19] Hills Industries Ltd v Bitek Pty Ltd [2011] FCA 94, [163]–[164].

2. Justice Kenny in McCormick & Company Inc v McCormick[20] summarised a non-exhaustive statement of characteristic considerations relevant to a determination of honest concurrent use under s 44(3)(a) as follows:

   (a) the honesty of the concurrent use;

   (b) the extent of the use in terms of time, geographic area and volume of sales;

   (c) the degree of confusion likely to ensue between the marks in question;

   (d) whether any instances of confusion have been proved; and

   (e) the relevant inconvenience that would ensue to the parties if registration were to be permitted.

   [20] [2000] FCA 1335, [30].

1. Of the factors listed above, the honesty of the concurrent use is the most important, ‘for if it is not honest it is as nothing’.[21] The honesty of concurrent use refers to commercial honesty, which differs not from common honesty. In Re Parkington & Co Ltd's Application, Romer J said:

   [T]he circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user.[22]

   [21] Re Granada Trade Mark [1979] RPC 303, 313.

   [22] (1946) 63 RPC 171, 181-182.

2. Whether the adoption of a trade mark was ‘commercially honest’ was considered by Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd (‘Tivo’), where her Honour stated:

   Relevant authorities have taken into account a number of factors in determining whether the applicant adopted the trade mark without knowing of the earlier mark or in the honest belief that no confusion would arise or business be diverted by use of the name. They include:

   (a) whether the words which make up the trade mark are common, everyday words. If they are, it is more likely that the use will be found to be honest than would be the case if the words are ‘invented’ or are not such as to be obviously attractive to other traders;

   (b) the subsequent conduct of the applicant;

   (c) the likelihood of confusion;

   (d) the applicant’s knowledge of the opponent’s mark; and

   (e) whether the adoption of the mark, and the continued use of it, was surreptitious.[23]

   [23] [2012] FCA 252, [246].

3. In Tivo, Dodds-Streeton J found there had not been honest concurrent use in circumstances where, amongst other things, the applicant had failed to carry out an adequate search, seek professional advice or take reasonable precautions in relation to its adoption of a trade mark.[24]

   [24] Ibid [293].

4. In Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd,[25] Beach J considered that if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then the person is not acting in good faith in the sense of “honestly” within the terms of the good faith “own name” defence under s 122(1)(a).

   [25] [2016] FCA 235.

5. In Insight Radiology Pty Ltd v Insight Clinical Imaging Pty Ltd, Davies J in deciding that there was no honest concurrent use stated:[26]

   Had reasonable diligence been exercised by her at the time, it is reasonable to expect that she would have searched the website and found out that Insight Clinical Imaging was trading in the same field, using similar marks. Whilst there is insufficient evidence from which to conclude that she had looked at the website, the evidence does point to a failure on her part to conduct a proper and adequate search, either because her search was not sufficiently comprehensive to bring up the website in the search result or, if it did, because she failed to visit the website. Furthermore, no searches were done once the IR composite mark had been designed to check whether there were any similar marks used by other traders or before Insight Radiology commenced using the logo. These matters demonstrate a lack of diligence and reasonable care in carrying out adequate searches before the marks were adopted for use by Insight  Radiology. It cannot be said that there has been “honest” concurrent use of the Radiology marks within the terms of s 44(3) when the searches, if conducted properly, would have come up with Insight  Clinical Imaging’s website and its similar marks. If Mr Pham was not aware of  Insight  Clinical Imaging’s marks before he had  Insight  Radiology adopt and commence to use the Radiology marks, it was because of the inadequacies in the searches that were conducted and lack of care taken.

   [26] [2016] FCA 1406, [125].

6. It is ultimately the Holder who has the onus to positively demonstrate that the honesty of adoption and use weighs in favour of an exercise of the discretion under s 44(3)(a). It is not for the Opponent to establish dishonesty.

7. The Holder’s evidence does not support a finding of knowledge of use of the VERITE Trade Mark before the Holder commenced using the Trade Mark. However, the Holder does not provide any evidence as to the circumstances surrounding the adoption of the Trade Mark, nor has the Holder provided evidence that adequate searches were carried out, professional advice sought or reasonable precautions taken in relation to its adoption of the Trade Mark. The Holder merely makes a single claim that it was not aware of the VERITE Registration when the Trade Mark was selected. The Holder has not indicated that it was not aware of the trade mark VERITE per se but rather only that it was not aware of the registration of VERITE. The lack of explanation as to the circumstances surrounding the adoption of the Trade Mark is problematic.

8. Given this, it is important to consider the other factors stated by Dodds-Streeton J in Tivo[27] to assist in determining the Holder’s honesty in adopting the Trade Mark.

   [27] Tivo (n 23) 252.

9. The first of these factors is whether the words VERITE DU TERROIR are common, everyday words. Here they are not invented words but they are also not common everyday words in Australia as they are French words. However, in respect of the word TERROIR, it is a word which to wine traders is a common everyday word. In contrast, the word VERITE is not a word which is obviously attractive to other wine traders. Therefore, the inclusion of VERITE in the Trade Mark is less likely to be seen as honest.

10. The second of these factors is the subsequent conduct of the Holder. There is nothing in the evidence which implies or shows anything untoward regarding the conduct of the Holder in the use of the Trade Mark.

11. The third is the likelihood of confusion. Here I have already determined that the likelihood of confusion arising is significant considering the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold and the character of the probable acquirers of the goods.

12. In addition, whist the price point of the wines is at two ends of a spectrum – one very expensive and one relatively cheap, this fact alone does not remove a likelihood of confusion or deception. A consumer aware of the VERITE Trade Mark may believe that wine labelled with the Trade Mark is just a lower price point product from the same source.

13. The last of these factors is whether the adoption of the Trade Mark, and the continued use of it, was surreptitious. There is nothing in the evidence which leads me to a conclusion or even hints that the Holder’s adoption of the Trade Mark, and the continued use of it, was surreptitious.

14. Although the Holder has been transparent about its commercial activity and use of the Trade Mark and the evidence does not show the Holder’s conduct has been untoward or surreptitious, the lack of evidence regarding the adoption of the Trade Mark or state of awareness of the VERITE Trade Mark and the significant likelihood of confusion arising, I am not satisfied that the Holder has discharged the burden upon it to establish that the Trade Mark was adopted honestly. It is therefore unnecessary that the other factors surrounding honest concurrent use be considered. The provisions of s 44(3)(a) do not assist the Holder.

Decision

1. Regulation 17A.34N provides:

   17A.34N  Decision on opposition

   (1)  Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)  to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)  to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.

   (2)  The Registrar must notify the International Bureau of the Registrar’s decision.

2. I have found the Opponent has established the ground of opposition it raised pursuant to s 44, I accordingly refuse to extend protection of the IRDA to Australia in its entirety. Otherwise, I direct that the protection of the IRDA be subject to any orders of the Court.

3. The International Bureau will be notified of the Registrar’s decision.

Costs

1. The Opponent sought costs. It is usual for costs to follow the event, and there is no reason to depart from that principle here. I award costs against the Holder in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Regulations.

Anne Makrigiorgos

Hearing Officer

Delegate of the Registrar of Trade Marks

30 October 2023