Kayser-Roth Corporation v Rebecca Collinson-Smith

[2018] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by Kayser-Roth Corporation to registration of trade mark application 1732313 (25, 42) - HUNTING HUE - in the name of Rebecca Collinson-Smith.

Delegate:	Decision on the Written Record Iain Campbell Thompson
Representation:	Opponent: AJ Park Applicant: IP Guardian
Decision:	2018 ATMO 17 Trade Marks Act 1995, Trade Marks Regulations 1995 Section 52 opposition to registration: grounds under regulation 4.15A and sections 60 and 59 – trade marks not deceptively similar; no evidence led in support of section 59; Opponent has not established that its trade mark had a reputation in Australia at the priority date. Opposition to registration not established.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) and the Trade Mark Regulations 1995 (‘the Regulations’) Rebecca Collinson-Smith (‘the Applicant’) has made application to register the trade mark which appears hereunder:

Application No:         1732313

Priority Date:             4 November 2015
Goods/Services:         Class 25: Apparel (clothing, footwear, headgear)
  (‘the Goods’)

Class 42: Computer design

(‘the Services’)

Trade Mark:               HUNTING HUE

(‘the Trade Mark’)

1. Following examination of the Trade Mark as mandated by section 31 of the Act it was advertised as being accepted for possible registration in the Australian Official Journal of Trade Marks on 31 March 2016.

2. On 31 May 2016 Kayser-Roth Corporation (‘the Opponent’) filed a Notice of Intention to Oppose, followed on 29 June 2016 by a Statement of Grounds and Particulars (‘the SGP’). The SGP specifies grounds under regulation 4.15A, section 60, and section 59 of the Act.

3. On 8 August 2018 the Applicant filed a Notice of Intention to Defend.

4. Thereafter the parties both filed evidence.

5. The Opponent’s evidence in support of the opposition comprises the declaration of:

   ·Samantha Louise Carr, Legal Assistant employed by AJ Park, made on 10 November 2016, with Exhibits SLC-1 to SCL-6.

6. The Applicant’s evidence in answer comprises the declarations of:

   ·The Applicant, made on 14 November 2016, with Exhibits RCS-1 to RCS-4; and

   ·Barry Ian Meskin, Registered Patent and Trade Mark Attorney, made on 15 December 2016, with Exhibits BM-1 and BM-2.

7. Both parties have been advised of their right to be heard or to make written submissions: neither party has availed themselves of either of these opportunities.  Now, in order that the Registrar may discharge her obligation to decide this matter it has been allocated to me, one of her delegates, for my decision on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Onus & Relevant Date

1. The Opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[1]

   [1] 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].

2. The relevant date at which the grounds under section 52 of the Act must be considered is the filing date of the Trade Mark (or, in relation to the grounds under regulation 4.15A and section 60, the ‘priority date’ which is here the same as the filing date of the Trade Mark).

Evidence

In Support

1. In her declaration in support of the opposition Ms Carr states:

   3. Attached and marked exhibit SLC-1 is a copy of Kayser-Roth's Australian trade mark registration 1293749 HUE in class 25.

   4. Attached and marked exhibit SLC-2 is an extract from kayser-roth.com with a brief description of the HUE brand.

   5. Attached and marked exhibit SLC-3 are extracts from hue.com showing the range of products sold and demonstrating that the website targets and ships to Australian customers.

   6. Attached and marked exhibit SLC-4 is an extract from shopstyle.com.au dated 27 August 2014 showing a range of HUE branded socks and hosiery available.

   7. Attached and marked exhibit SLC-5 is an extract from davidjones.com.au dated 14 August 2014 showing a range of HUE branded socks and hosiery available.

   8. Attached and marked exhibit SLC-6 is an extract from davidjones.com.au dated 8 November 2016 showing the range of HUE socks and hosiery currently available.

2. I note that it is not possible to attribute a date for the material attached to Exhibit SLC-3 showing the range of products sold by the Opponent and the other material confirms the presence of long and short socks bearing the Opponent’s HUE trade mark on the Australian websites referred to in Ms Carr’s declaration.

In Answer

1. In her declaration in answer the Applicant states:

   2. I came up with the trade mark HUNTING HUE in 2010 when I graduated with a Diploma of Commercial Arts from the Commercial Arts Training College CATC.

   3. It took me over a year to come up with the trade mark HUNTING HUE. I chose the word HUNTING because my parents are Antique dealers and I grew up alongside them hunting for collectables. I chose the word HUE because I studied Interior Design and Colour Consulting at University for 5 years and the word came up a lot during my studies. The word means a lot to me because I love colour and HUE [is] another word for colour.

   4. When coming up with the trade mark HUNTING HUE I consciously searched for a unique name that would describe the unique products and services I offer for sale under the name.

   5. Attached and marked Exhibit RCS-1 is the entry from the Macquarie Dictionary online for the word HUNTING.

   6. Attached and marked Exhibit RCS-2 is the entry from the Macquarie Dictionary on line for the word HUE.

   7. I registered my business name HUNTING HUE with the NSW Department of Fair Trading as BN98631505 on 18 April 2012 and this registration is current until the renewal date of 18 April 2018. My business name is associated with my ABN 34 131 550 986.

   8. Attached and marked Exhibit RCS-3 is an extract dated 30 October 2016 from the Australian Securities & Investment Commission (ASIC) that shows the details of my business name registration.

   9. Attached and marked Exhibit RCS-4 are screenshots from my website which has been operating since 2012.

2. I note that section 41 is not a ground of opposition and the Applicant’s declaration at paragraph 4 as to the descriptiveness of the Trade Mark is thus not relevant to this decision.

3. In the absence of submissions by the Applicant, the import of the Applicant’s registration of a business name is not clear to me – in Lone Star Steakhouse & Saloon Inc v Zurcas[2] Lindgren J observed:

   Registration of a business name under the Business Names legislation […] merely prevents contravention of the legislation, which provides generally to the effect that a person may not carry on a business under a name other than the person's own name unless the business name is registered under the Act.

   By duly registering the business name "Lonestar Saloon", Ms Zurcas avoided contravening s 5 [of the ] the Business Names Act 1962 (Vic) but this did not give her a "right" to carry on business under that name, let alone a right to do so in infringement of the trade marks of others.

   [2] [2000] FCA 29; 48 IPR 325 at [26]-[27].

4. In his declaration Mr Meskin brings to the Registrar’s attention the state of the Register.  This evidence establishes that the sole person with prior registrations of the exact trade mark HUE in Class 25 is the Opponent.

Regulation 4.15A

1. Regulation 4.15A provides:

   4.15AGrounds for rejection—trade mark identical etc to trade mark protected under Madrid Protocol

   (1)For section 189A of the Act, and subject to subregulations (3) and (5), 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 protected international trade mark; or

   (ii)a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar goods or closely related services; 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 other trade mark in respect of the similar goods or closely related services.

   Note:Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

   (a) may be inconsistent with the Act; and

   (b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

   Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

   (2)For section 189A of the Act, and subject to subregulations (3) and (5), 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)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a protected international trade mark; or

   (ii)a trade mark in respect of which the Registrar has received notification of an IRDA;

   held by another person in respect of similar services or closely related goods; 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 other trade mark in respect of the similar services or closely related goods.

   Note:Under subsection 189A(3) of the Act, regulations made for the purposes of section 189A:

   (a) may be inconsistent with the Act; and

   (b) prevail over the Act (including any other regulations or other instruments made under the Act), to the extent of any inconsistency.

   Division 2 of Part 4 of the Act includes provisions relating to the grounds on which an application for the registration of a trade mark must be rejected.

   (3)If, in a case mentioned in subregulation (1) or (2), the Registrar 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.

   (4)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.

   (5)If, in a case mentioned in subregulation (1) or (2), the Registrar 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 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 must not reject the application because of the existence of the other trade mark.

   Note:Section 44 of the Act provides for rejection of an application on the grounds that the trade mark is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark for which registration is being sought.

2. Regulations 4.15A(3) to 4.15A(5) only come into play if the Opponent establishes its opposition under regulations 4.15A(1) or 4.14A(2).

3. In my consideration it is convenient to discuss this ground initially in terms of regulation 4.15A(1) which is couched in terms analogous to those under section 44(1) of the Act.

4. The Opponent relies upon the trade mark appearing hereunder which was particularised in the SGP:

Registration No:         1293749

International Regn:     851572

Priority Date:             19 March 2009

Goods:Class 25: Socks, stockings, garter belts, pantyhose, tights, robes, leggings, hosiery, bodysuits, pants, halter tops, tank tops, tube tops, skirts, blouses, shorts, jackets, t-shirts, shapewear, namely, figure-shaping tights, leggings, pantyhose, hosiery and body suits; panties, camisoles, sleepwear, slippers, slipper socks, shoes, footwear, underwear, bras

Trade Mark:               HUE

(‘the Protected Trade Mark’)

1. The Opponents must here establish each of the following, that:

   ·     The Protected Trade Mark has a priority date which is earlier than that of the Trade Mark; (‘the First Requirement’) and,

   ·     the goods detailed on the Protected Trade Mark are similar to the Goods; (‘the Second Requirement’) and

   ·     the Trade Mark and the Protected Trade Mark are either substantially identical or deceptively similar. (‘the Third Requirement’)

2. As the Protected Trade Mark has a priority date earlier than that of the Trade Mark and the goods involved are, as far as ‘footwear’ is concerned, similar, the First Requirement and the Second Requirement are satisfied and what remains to be discussed is whether or not the Protected Trade Mark and the Trade Mark are either substantially identical or deceptively similar.

Substantial identity

1. Speaking of the expression ‘substantially identical’, in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[3] (‘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. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [3] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

2. The trade marks HUE and HUNTING HUE, when compared side by side are very obviously different: while the element ‘hue’ might occur as a feature in both of the trade marks, the element ‘hunting’ occurs in the Trade Mark whereas it does not in the Protected Trade Mark.  The Opponent has not suggested that the word ‘hunting’ has an obvious denotation in relation to the Goods such that it falls within the same genus of words as the word ‘choc’ within the trade mark CHOC CHILL involved in PB Foods Ltd v Malanda Dairy Foods Ltd.[4]  Consequently, the ‘total impression of resemblance or dissimilarity that emerges from the comparison’ is that the trade marks are dissimilar.

   [4] [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117.

3. The trade marks are not substantially identical.

Deceptive Similarity

1. Section 10 of the Act provides:

   For the purposes of this Act, a trade mark is deceptively similar to another trade mark if it so nearly resembles that other mark that it is likely to deceive or cause confusion.

2. In Shell[5] Windeyer J discussed deceptive similarity:

   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" (1937) 58 CLR, at p 658.

   [5] Op cit at [13].

3. In Mars Australia Pty Ltd v Sweet Rewards Pty Ltd[6] Perram J summarised the observations of the Full Court in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd:[7]

   (1) The question of deceptive similarity is not to be judged by a side by side comparison. Instead what is involved is a comparison, on the one hand, of the impression based on recollection of an applicant’s mark that persons of ordinary intelligence would have and the impression such persons would get from the respondent’s mark. In that regard it is important to consider the “idea of the mark”.

   (2) In assessing deceptive similarity, questions of aural impression may be important. In that context I regard the aural similarity between Malt Balls and Maltesers as negligible.

   (3) The risk of deception must be tangible but it is enough if an ordinary person entertains a reasonable doubt.

   (4) Allowance must be made for imperfect recollections in considering whether a mark so nearly resembles another mark that it is likely to cause confusion or deception.

   (5) That principle extends even to marks which are not just invented words. If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark.

   [6] [2009] FCA 606; (2009) 81 IPR 354 at [95].

   [7] [2004] FCAFC 196; (2004) 61 IPR 212 at [84].

4. Further some allowance must be made for ‘contextual confusion’[8] but here I note that the element ‘hunting’ within the Trade Mark serves to qualify the word ‘hue’ to form a distinct ‘corporate identity’ which is suggestive of ‘searching for a distinguishing colour’ or the ‘hunting pink’ worn by British fox-hunters. 

   [8] In the Matter of John Fitton & Co Limited’s Application (1949) 66 RPC 110 (JESTS and EASYJESTS) (UK Reg.); Tonka Corporation v Chong (1994) 29 IPR 253 (MONOPOLY and MUSICOPOLY); Telstra Corporation Ltd v Yellownet Corporation (1999) 44 IPR 415 (YELLOW PAGES and YELLOWNET); and Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407 (CAT and LANDCAT).

5. The qualifying word ‘hunting’ also occurs at the beginning of the Trade Mark.  Where a distinguishing feature occurs at the beginning of a trade mark it is given additional emphasis: in London Lubricants (1920) Ltd's Application,[9] it was observed that in assessing the similarity of words, emphasis is put on the start of the words, so that the opening letters or syllable is of importance in the comparison.  The same is a fortiori true of distinctive words which occur at the start of a trade mark.

   [9] (1925) 42 RPC 264 (CASTROL/TRIPCASTROID).

1. In balancing the above factors, I am not satisfied that the trade marks under consideration are deceptively similar.

2. The Opponent has not established its ground under regulation 4.15A(1).

3. In my view the ground under regulation 4.15A(2) must fail for both the above reason and that below.

4. To found the ground under regulation 4.15A(2) it is also necessary that the Opponent establish that the Services are closely related to the Opponent’s Goods.

5. The expression ‘closely related goods and services’ was discussed by French J in Registrar of Trade Marks v Woolworths:[10]

   The relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods. Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. Similar examples were suggested in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co [1983] FCA 145; (1983) 48 ALR 511 by Lockhart J who saw service marks as potentially giving rise to problems of confusion with goods marks and other service marks “... of greater difficulty and subtlety than has previously been experienced in the case of goods marks alone”. His Honour observed that:

   “Confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods or where services (for example, consultancy) involve goods but can be provided either with or without the sale or promotion of goods.” (at 522).

   In Rowntree plc v Rollbits Pty Ltd (supra) registration was sought for a trade mark in respect of foods which included biscuits, cakes and pastry goods. The same applicant also sought registration of a service mark with respect to services rendered or associated with restaurants, take-a-way food stores and other retail food outlets which sell and promote prepared food and drinks for consumption. Both applications were accepted but opposed. On appeal by the opponent from the decision of the Registrar, Needham J found the applicant’s mark in respect of goods to be deceptively similar to the opponent’s registered mark as covering goods “of the same description” under s 33(1). His Honour also concluded that the goods covered by the opponent’s registered mark were “closely related” to the services in respect of which registration of the applicant’s service mark was sought. While accepting that it was not a logical necessity that the relevant question under subs 33(2) of the 1955 Act must be answered in the same way as the question under subs 33(1), his Honour said at 546:

   “...I think, in the present case, that the conclusion that the goods are goods of the same description requires a conclusion that the services contemplated by the defendant, which would feature the goods already held to be goods of the same description as those of the plaintiff, are services closely related to the plaintiff’s goods.”

   [10] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [38].

6. Here the Services are ‘Computer design’ whereas the goods covered by the Protected Trade Mark are:

   Socks, stockings, garter belts, pantyhose, tights, robes, leggings, hosiery, bodysuits, pants, halter tops, tank tops, tube tops, skirts, blouses, shorts, jackets, t-shirts, shapewear, namely, figure-shaping tights, leggings, pantyhose, hosiery and body suits; panties, camisoles, sleepwear, slippers, slipper socks, shoes, footwear, underwear, bras.

7. I take the Services to be ‘computer aided design’ (‘CAD’) rather than ‘the design of computers’.  While it is true that CAD may be employed to design clothing, etc, CAD may be also employed to design goods, or their containers, in many if not all classes of goods.  There is not an immediacy of association between CAD services and the Goods such that any direct connection is likely to be perceived in the normal course of trade: clothiers are not normally understood to be the source of CAD services.

8. The Opponent has not established its opposition under regulation 4.15A(2).

Section 60

1. 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.

2. To found its ground under section 60 the Opponent must establish that the trade mark on which its relies:

   ·    by 4 November 2015 had a reputation in Australia such that

   ·    the use of the Trade Mark would be likely to deceive or cause confusion.

3. In McCormick & Co Inc v McCormick[11] Kenny J asked:

   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”.

   [11] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

4. Regarding the measurement of reputation, Her Honour went on to state:[12]

   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 marks 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.

   [12] Ibid at [86].

5. Here the Opponent has not supplied any of the kinds of details referred to above and accordingly there is no basis upon which the Registrar could be satisfied that the Opponent has established that the trade mark upon which it relies has a reputation in Australia.

6. The Opponent has not established its ground under section 60.

Section 59

1. Section 59 of the Act provides:

   59Applicant not intending to use trade mark

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

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

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

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

   Note:For applicant see section 6.

2. The Opponent has filed no evidence to support this ground and has merely asserted in its SGP:

   The applicant has limited use of the HUNTING HUE trade mark and does not intend to use the mark on all of the goods and services of the application.

3. In my view, this assertion is insufficient to enliven the ground under section 59: non-use of a trade mark at the priority date does not reflect on the Applicant’s intentions at that time - Ritz Hotel Ltd v Charles of Ritz Ltd and Another:

   … there is no evidence from which I would be prepared to conclude that the first defendant did not as at the date of the respective applications ... propose to use those marks. The fact that the mark CHARLES OF THE RITZ was never used in Australia in relation to any of the goods in respect of which [one mark] is registered ... does not to my mind establish the absence of any proposed use of that mark at the relevant date.

4. The Opponent has not established its opposition under section 59 of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (1)Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established its opposition to registration of the Trade Mark; it is therefore appropriate that the Registrar decides to register the Trade Mark.

3. 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 the disposition of the application be in accordance with the Court’s order or direction.

Iain Thompson
Hearing Officer
Trade Marks Hearings
13 February 2018