Khaos Group Pty Limited v State Street Global Advisors Trust Company

[2023] ATMO 68

TRADEMARKSACT1995

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

Re:Opposition by Khaos Group Pty Limited to application under section 92 of the Trade Marks Act 1995 (Cth) by State Street Global Advisors Trust Company to remove trade mark number 1713213 FEARLESS in classes 9 & 42, 1729363 Fearless in classes 9, 35, 37, 39, 42, 44 and 45

and 1729364 Be Fearless in classes 9, 35, 37, 39, 42, 44 and 45 - in the name of Khaos Group Pty Limited

Delegate:

Tracey Berger

Representation:

Opponent: David Larish of Counsel instructed by Silberstein & Associates

Applicant: Marcus Fleming of Counsel instructed by Gilbert + Tobin

Decision:

2023 ATMO 68

Trade Marks Act 1995 (Cth) – applications under section 92 – section 92(4)(b) applications for removal – evidence of use established for some goods and services – discretion exercised for some goods and services - partial removal of registrations 1713213, 1729363 and 1729364

Background

1.     Khaos Group Pty Ltd (‘Opponent’) is the registered owner of the following trade marks:

Trade Mark Number (‘Registrations’)	Trade Mark (collectively the ‘Registered Marks’)	Filing Date	Class
1713213	FEARLESS (‘First FEARLESS MARK’)	10 August 2015	9 & 42
1729363	Fearless (‘Second FEARLESS	21 October 2015	9, 35, 37, 39, 42, 44 & 45

Mark’)
1729364	Be Fearless	21 October 2015	9, 35, 37, 39, 42, 44 & 45

The specifications for the Registrations are shown in Annexure A to this decision.

2. On 11 November 2020, State Street Global Advisors Trust Company (‘Applicant’) filed an application under s 92(4)(b) of the Trade Marks Act 1995 (Cth)1 seeking the complete removal of the Registered Marks from the Register (‘Removal Application’).

3.     On 11 January 2021, the Opponent filed a Notice of Intention to Oppose the Removal Application followed by its Statements of Grounds and Particulars (‘SGPs’) on 11 February 2021. The Applicant filed Notice of Intention to Defend the Removal Application on 26 April 2021.

4.     After obtaining an extension of time, the Opponent filed evidence in support of its opposition to the Removal Application consisting of a declaration of Daniel Gideon Lewkovitz, founder and CEO of the Opponent, made on 29 September 2021 with Exhibits A-AD (‘Lewkovitz Declaration’). The Applicant did not file any evidence.

5.     Once the time allowed for filing evidence had ended, the parties requested an oral hearing.

6.     On 23 February 2023, the Opponent filed a Declaration of Mina Hyun made on 23 February 2023 with Exhibits MH-1 and MH-2 (‘Hyun Declaration). The timing of this declaration is discussed below.

7.     As a delegate of the Registrar of Trade Marks, I heard this matter via videoconference on 14 March 2023 at which time, David Larish of Counsel, instructed by Robert Silberstein and Mina Hyun of Silberstein & Associates, observed by Daniel Lewkovitz, appeared for the Opponent and Marcus Fleming of Counsel, instructed by Gilbert + Tobin, appeared for the Applicant. The oral

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).

submissions of the parties were supplemented by the parties’ written submissions filed in a timely manner prior to the hearing.

Preliminary Matter

8.     As outlined above, the Opponent filed the Hyun Declaration on 23 February 2023 and seeks to rely on this evidence under reg 21.15(4) and/or 21.19.

9.     Regulation 21.15(4) provides that:

The Registrar is not bound by the rules of evidence, but may be informed on any matter that is before the Registrar in a way that the Registrar reasonably believes to be appropriate.

1. Regulation 21.19 relevantly states:

(1)    If:

(a)information that is available to the Registrar is relevant to proceedings before the Registrar; and

(b)the Registrar has reason to believe that the information is not known to a party to the proceedings; and

(c)the Registrar proposes to take the information into account in making a decision in the proceedings;

before making the decision the Registrar must:

(d)provide the information to the party; and

(e)give the party a reasonable opportunity to make representations about the information.

(2)    For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.

11.   The Hyun Declaration exhibits over 170 pages of additional screenshots of the Opponent’s website at (‘Website’), obtained using the Wayback Machine, which purport to show use of the Registered Marks by the Opponent during the relevant three year period and which were erroneously not included in the Lewkovitz Declaration. The Wayback screenshots of the Website exhibited to the Lewkovitz Declaration2 include only one extract during the relevant three year period and don’t show the range of services offered by the Opponent.

² Exhibit J.

12.   The Opponent submits that information contained in the Hyun Declaration should be considered as evidence because:

i.       the material is publicly available and was available on the Website during the Relevant Period;

ii.       is necessary for the Removal Applications to be decided on the merits3 as it shows the scope of use of the Registered Marks during the Relevant Period;

iii.       the material was partly contained in the Lewkovitz Declaration and the Hyun Declaration corroborates Mr Lewkovitz’ evidence; and

iv.       the Applicant is not prejudiced by acceptance of the Hyun Declaration as the Applicant did not file any evidence in answer and would not have done so, even if the materials had been filed in the Lewkovitz Declaration.

13.   The Applicant refers to the fact that it is not the practice of this office to consider evidence filed out of time as a matter of routine4 and notes that the Opponent must make a compelling case for late evidence to be considered5 including an explanation as why the late evidence was not filed earlier.6 The Applicant argues that the Opponent did not properly explain why the evidence was not filed in time until the hearing when the Opponent conceded it was an oversight. However, Ms Hyun has not explained when she became aware that the Lewkovitz Declaration did not include Website extracts showing full details of the services offered in the Relevant Period. Also, the Applicant contends that an oversight is not a valid reason for the Registrar to consider the evidence, the evidence was filed very late in the proceedings and whilst the materials are voluminous, they do not address the deficiencies in the Opponent’s evidence.

14.   The Delegate noted in Fed Square Pty Ltd v Federation IP Pty Ltd:

Parties should not attempt to circumvent the extension of time provisions under the misguided assumption that Regulation 21.19 will apply in every case. Furthermore, while it is available to parties, it is clear that Regulation 21.19 should not be perceived or used as a

³ Agcare Biotech Pty Ltd v Cropsmart Pty Ltd [2015] 111 IPR 240 (Hearing Officer Murray).

⁴ Trade Marks Manual of Practice and Procedure, Part 51, Section 2.5.

⁵ Ibid.

⁶ Ibid.

substitute for the now repealed provisions allowing for the filing of further evidence (or, indeed any available evidence stage).

…

The implications of evidence not being filed at all should inform the parties’ decisions made around the preparation of the evidence, and it is not sufficient to simply show that such evidence is relevant and there is a possibility that the opposition may fail without it. To allow regulation 21.19 to be utilized in that way may render the requirements for the current extension of time provisions otiose. Rather, there must be further circumstances that make it reasonable for the material to be taken into account.7

15.   However, it is important that a serious opposition is decided on the merits of the case with all relevant information available to the Registrar8 and that the outcome is not unnecessarily protracted by forcing a party to appeal a decision to the court where the evidence could be filed and considered.9 In my view, the Hyun Declaration is highly probative and likely to significantly affect the outcome of the opposition. I do not believe that the Opponent has sought to circumvent the timetable laid out in the Regulations and the Applicant did not seek an opportunity to file further evidence in response. It is regrettable that the Opponent’s attorneys did not realise the oversight earlier in the proceedings and whilst a party and their attorneys should take care in preparing their evidence, I consider that the public interest in determining the opposition on its merits in an efficient manner and the balance of convenience to the parties favours admitting the Hyun Declaration.

Relevant Provisions

16. Section 92(4)(b) relevantly provides:

(4) An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

….

⁷ [2015] ATMO 42, [55] (Hearing Officer H. Wilson).

⁸ as the Delegate noted when allowing an extension of time under the previous provision in Seven Network (Operations) Limited v Giorgio Armani S.P.A., Milan, Swiss Branch Mendrisio

⁹ Studio SrL v Buying Systems (Aust) Pty Ltd (1992) AIPC 90-858; 22 IPR 580 (Hearing Officer Homann)

(b)    that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)    used the trade mark in Australia; or

(ii)    used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. I note that an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the relevant trade mark.10 I confirm that more than five years has passed since the filing of each of the Registered Marks.

18. Under s 92(4)(b) the relevant period during which the Opponent must establish use of the Trade Marks is the three year period ending on 11 October 2020 (‘Relevant Period’).

19. Pursuant to s 100(1)(c) and s 100(3), the Opponent bears the onus of rebutting an allegation made under s 92(4)(b) by establishing, on the balance of probabilities, that it has used the Registered Marks (or those marks with additions or alterations not substantially affecting the identity of the Registered Marks) for the registered goods and services during the Relevant Period or that there was a relevant obstacle to use. The Opponent has not asserted that there was a relevant obstacle to use, so that question need not be considered further.

20.   In Woolly Bull Enterprises Pty Ltd v Reynolds, Drummond J observed that the expression ‘use in good faith’ has a well understood meaning in terms of s 92, namely it is ‘real, as opposed to token, use in a commercial sense’. Provided the use is in good faith, ‘a single bona fide use of the mark’ may be enough to rebut an allegation of non-use, but if a single act of use is relied upon then it should be established by ‘if not conclusive proof, overwhelmingly convincing proof’.11 It is necessary that the Opponent provide evidence which is clearly dated and shows use of the Registered Marks during the Relevant Period. Evidence of use which falls outside of the Relevant

¹⁰ Per s 93(2) of the Act prior to the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (sch 1, pt 3) as applies in the present matter. The updated s 93(2) of the Act applies to trade marks filed from 24 February 2019 onwards.

¹¹ Nodoz Trade Mark [1962] RPC 1, 7 (Wilberforce J).

Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

21.   Section 101(1) provides the Registrar with the discretion to remove any or all of the Registered Marks from the Register for all or some of the goods and services identified in the Removal Application. Also, pursuant to s 101(3), if satisfied it is reasonable to do so, the Registrar may decide not to remove the Registered Marks even if the grounds under which the Removal Application was made are established.

22.   Under s 101(4), the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of similar goods or closely related services, or similar services or closely related goods.

Summary of the Opponent and dispute between the parties

23.   The Applicant concedes that the Registered Marks were used in the Relevant Period for some of the goods and services for which the marks are registered and proposes amendments to the specifications of each of the Registrations to reflect those goods and services for which it considers each of the Registered Marks should be permitted to remain on the Register. The Opponent claims that it has used each of the Registered Marks for a broader range of goods and services than asserted by the Applicant.

24.   The Removal Opponent specialises in physical and electronic security, including design, installation and monitoring, particularly in the field of alarm, CCTV and remote surveillance systems, access control systems and personal safety.12 It has over 10,000 customers throughout Australia generating a reasonable level of annual revenue and protecting many millions of dollars’ worth of assets. In 2016, on the recommendation of a marketing agency, the Opponent adopted the marks BE FEARLESS and FEARLESS as part of its branding.

25.   The Opponent contends that the goods and services it offers fall in 7 different categories as set out below and it has categorised the registered goods and services into the following groups:

i.Intrusion detection, access control and alerting systems

¹² Lewkovitz Declaration, [6].

ii.Visual surveillance systems and apparatus

iii.Identification systems and apparatus

iv.Computing & IT

v.Fire, smoke and environment sensing

vi.Advisory and consultancy services

vii.Protection of persons and property

26. The Applicant is critical of the Opponent’s evidence on the basis that much of the evidence is either undated, falls outside the Relevant Period or comprises bare assertions. In particular, the Applicant submits that characterising the registered goods and services into the above categories “unhelpfully conflates at times disparate or unrelated goods and services into broadly defined categories, and purports to rebut the presumption pursuant to s 92(4)(b) by demonstrating use by reference to those categories – which are not the specified goods and services – rather than use by reference to the actual goods and services specified for each of the Registered Marks.”

First FEARLESS Mark

27.   At the hearing, without admission and for the purposes of this opposition, the Opponent indicated that it accepts the Applicant’s proposed amendments to the specification of the registration for the First FEARLESS Mark as set out below:

Class 9: Application software; Computer programs (downloadable software); Computer software applications (downloadable); Downloadable software applications (apps); computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application programming interface (API); Application programming interface (API) for computer software which facilitates online services for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; Network applications being computer programs; Personal computer application software; Communication software; Computer software programs; Data communications software; Data processing software; Interactive video software; Apparatus for use in security control; Security apparatus for receiving audio signals; Security apparatus for receiving video signals; Security apparatus for transmitting audio signals; Security apparatus for transmitting video signals; Security control apparatus; Security systems, other than for vehicles; Security surveillance apparatus; Security installations, other than for vehicles; Security surveillance apparatus; all the foregoing in relation to a mobile application for personal safety

Class 42: Application Service Provider (ASP) services; Development of computer software application solutions; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, displaying, linking, sharing or otherwise providing electronic media or information over communication networks; all the foregoing in relation to a mobile application for personal safety

28.   Given the parties are in agreement, I accept the proposed amendments to the specification for the First FEARLESS Mark and no further consideration of this trade mark is required.

BE FEARLESS Mark

29.   The Opponent points to different types of use of the BE FEARLESS mark, namely:

i.On the Website: The homepage of the Website is shown below by way of example:

ii.On quotes, invoices and emails in the form:

(‘CALAMITY Logo)

iii.On advertising banners and a mobile advertising trailer:

iv.The CALAMITY Logo is used on security warning stickers for use at customer premises, on business cards, in presentations given at Security and Risk Management conferences and on television.

30.   I note that other than the assertions in the Lewkovitz Declaration, there is no evidence demonstrating use of the mark on a mobile advertising trailer, branded stickers, signs or business cards.

31.   In the Opponent’s written submissions, the Opponent argues that use of the CALAMITY Logo constitutes use of both BE FEARLESS and CALAMITY as there are differences in the font, size and colouring of BE FEARLESS as compared to CALAMITY and the two marks are often used in different configurations.13 At the hearing, the Applicant indicated it would not dispute that use of the CALAMITY Logo constitutes use of BE FEARLESS and I proceed on the basis that any evidence of use of the CALAMITY Logo is use of BE FEARLESS.

32.   Nevertheless, the Applicant submits that the mark BE FEARLESS has not been used in relation to any of the registered class 9 goods nor any of the registered services in classes 35, 39 and 42 and argues that the Opponent has only used BE FEARLESS for some services in classes 37, 44 and 45.

Use of BE FEARLESS for Class 9 goods

33.   The Opponent notes that a trade mark is used in relation to goods if the mark is used upon, or in physical or other relation to, the goods which includes use in advertisements, invoices, web

¹³ See Wellness Pty Ltd v Pro Bio Living Waters [2004] FCA 438, [26]-[32] (Bennett J).

pages and other documents relating to the goods.14 A trade mark may be used to indicate manufacture of the goods or in the course of business before being offered for sale15 or even if the owner’s responsibility is limited to the selection of the goods.16

34.   In support of its contention that the Opponent has used the BE FEARLESS mark in relation to the class 9 goods, firstly, the Opponent relies on quotations and invoices for the supply and installation of various class 9 goods which feature the CALAMITY Logo. Only three of these documents are dated in the Relevant Period (‘Invoices’) which comprise a proposal, quote and/or evidence of sales for various goods such as motion detector,17 video recorder,18 remote door control,19 system sensor smoke alarm and Inovonics wireless receiver,20 alarm panel, keypad with wireless receiver, Neo Alarm Panel in Enclosure, External Siren Strobe, and batteries21.

35.   In relation to the Invoices, the Opponent claims that many of the items listed in the invoices are not branded and the only mark used in connection with these goods is the CALAMITY Logo. Hence, the Opponent contends that the only trade marks which consumers associate with the goods are CALAMITY and BE FEARLESS.

36.   The Applicant points out that some of the items are branded22 or that third party brochures/user guides for the goods are attached.23 The Applicant also argues that consumers will not

¹⁴ s 9(1)(c); Christian v Société Des Produits Nestlé SA (No 2) [2015] FCAFC 153, [77] (Bennett, Katzmann and Davies JJ)

¹⁵ Dunlop Aircraft Tyres Ltd v Goodyear Tire and Rubber Company [2018] FCA 1014, [102] (Nicholas J).

¹⁶ Ibid, [104].

¹⁷ Lewkovitz Declaration, p387.

¹⁸ Ibid.

¹⁹ Ibid, p599.

²⁰ Ibid, p 601.

²¹ Ibid, p 607.

²² Lewkovitz Declaration, [34] and Exhibit Y (pp 383-4) which refers to “Bosch” equipment; pp 388-397 which refers to “Tecom” equipment, a “Permaconn 4G [alarm] communicator” and a smartphone app called “Pocket Secure”; Exhibit AB (pp 586-7) which refers to items such as “Honeywell Fire Detector Base…; Honeywell Security Photoelectric Smoke and Thermal”.

understand the use of BE FEARLESS on the Invoices to indicate the trade source of the goods listed but rather the provision and installation of security systems.

37.   The Opponent also identifies pages of the Website which refer to home security systems,24 alarms including smoke alarms, panic buttons and sensors,25 CCTV camera, alarm systems and cameras.26 In some of these pages, the BE FEARLESS mark does not appear on the actual page referring to the goods and in other pages, it appears as part of the CALAMITY Logo in the top left hand corner as shown on the homepage of the Website at [29i].

38.   The Applicant contends that the use of BE FEARLESS relied on by the Opponent only demonstrates use for the provision of security services or the installation, maintenance or sale of security products which is not use in connection with the goods themselves.

39.   The High Court recently noted that:

Use of a trade mark in relation to goods means use of a trade mark upon, or in physical or other relation to, those goods, and so can include use of the mark on product packaging or marketing such as on a website. There is a distinction, although not always easy to apply, between the use of a sign in relation to goods and the use of a sign as a trade mark. A trade mark is a sign used, or intended to be used, to distinguish goods dealt with by one trader from goods dealt with by other traders; that is, as a badge of origin to indicate a connection between the goods and the user of the mark.27

40.   The evidence of use of the BE FEARLESS mark on the Website is weak. I do not believe that the manner of use of this mark on the Website means that the mark is being used for all goods and services referred to in the Website’s content. The present case is not one where the mark in question is the house mark or domain name making it more likely consumers would associate the mark with all of the content of the website. In the context of the use of BE FEARLESS on the Website, I do not think it can be said that BE FEARLESS is being used as a badge of origin to

²³ Lewkovitz Declaration, [34] and Exhibit Z (pp 401-442) which attaches a brochure for a product called “ProtegeWX” provided by Integrated Control Technology Ltd; Exhibit AA (pp 462-574) which attaches a manual for the “Titan Security System” provided by Interlogix.

²⁴ Hyun Declaration, p 81.

²⁵ Ibid, p 84.

²⁶ Ibid, p 119.

²⁷ Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

indicate a connection between the goods and the Opponent. In my view, the use of BE FEARLESS on the Website is use in relation to the provision of security services or the installation, maintenance or sale of security products.

41.   I agree with the Opponent that for unbranded products listed in the invoices, the only trade marks which consumers could associate with those goods is CALAMITY and BE FEARLESS.

42.   Based on the evidence, I am satisfied that BE FEARLESS has been used for a limited subset of the registered class 9 goods.

Class 35

43.   The Opponent claims that it has used the BE FEARLESS mark in relation to the class 35 services for which this mark has been registered except “auditing”. The Opponent relies on the services listed under ‘Commercial Security’ on its Website which include ‘lift phone answering services’, the Opponent’s offer to provide ‘expert technology and security consulting for firms needing to install or upgrade their security’ and the fact that customers can call for a free security assessment or to talk with a security professional. In addition, the Opponent claims it used BE FEARLESS on an email dated 20 February 2019 titled “Indicative Costings Macleay College Security Systems”28 (‘Macleay College quote”) which it alleges is use of the mark in relation to advisory and consulting services because it contains recommendations and proposals for a security system based on the customer’s needs.

44.   The Applicant disputes that these examples are use in relation to the registered services in class 35 being “advisory services relating to business risk management”, “risk management consultancy (business)” or “telephone answering (for others).” At best, the Applicant argues these uses relate to use of BE FEARLESS in relation to security advisory services covered by the registration in class 45.

45.   In my view, the Opponent is not offering the registered class 35 services. The services that the Opponent has identified on the website are simply not the same as the registered class 35 services. Hence, none of the above uses of BE FEARLESS identified by the Opponent constitute use of the mark in relation to the registered class 35 services.

²⁸ Lewkovitz Declaration, p387.

Class 37

46.    The Applicant submits that the class 37 specification for BE FEARLESS should be limited to:

Class 37: Installation of security systems; maintenance and servicing of security alarms; building construction consultancy; building services; burglar alarm installation; burglar alarm installation and repair; burglar alarm repair; electrical apparatus installation; fire alarm installation; fire alarm installation and repair; fire alarm repair; information technology (IT) services (computer and computer peripherals installation and maintenance); installation of burglar alarms; installation of communications network apparatus; installation of computerised information systems; installation of fixtures and fittings for domestic premises; installation of security systems; installation of telecommunications apparatus; installation of vehicle security devices; installation of window coatings; installation of window films; maintenance and servicing of fire alarm systems; maintenance and servicing of security alarms; repair of alarms; repair of security locks; repair, maintenance and installation consultancy services; all of the foregoing in relation to the installation, maintenance or repair of security or personal safety products

47.   The Opponent accepts that it has not used the BE FEARLESS mark for “building construction services; building services; installation of window coatings; installation of window films” (Deleted Class 37 Services”) but submits that the mark has been used for the other services registered in class 37 and argues that discretion should be exercised to retain the BE FEARLESS mark for all of the registered services in this class.

48.   Moreover, the Opponent is of the opinion that the proposed limitation is not appropriate because it doesn’t reflect the scope of established use, is nonsensical, will cause confusion as to the scope of protection afforded to the registration and draws fine distinctions between services which is undesirable.29 In particular, the Opponent considers the limitation is inaccurate and too restrictive as the limitation will exclude the Opponent’s services in supplying products, providing security system design, installation and monitoring; co-ordinating IT systems with apps, providing testing of security systems, performing security assessments and providing active patrols.

49.   The installation, maintenance and repair of security systems and apparatus is a major part of the Opponent’s business and I am satisfied on the evidence that the Opponent has used BE FEARLESS in relation to a number of the class 37 services. The limitation proposed by the Applicant does not reflect the actual use of BE FEARLESS for class 37 services which is broader than the limitation proposed. However, some of the other items are broadly worded and cover

²⁹ McHattan v Australian Specialised Vehicle Systems Pty Ltd & anor [1196] FCA 481 (Drummond J),

services provided in various industries unrelated to security or surveillance. In my view, such services should be deleted on the grounds of non-use or restricted.

Class 39

^50.          The Applicant argues that there is no evidence to support Mr Lewkovitz’s assertion that in protecting the assets of its customers, it provides “guarded transportation” and “vehicle location services”.30 The Opponent claims that Mr Lewkovitz’ statement is corroborated by extracts of the Website which refer to “Reliable Virtual guard tours and video patrols”31 and references to the Opponent’s FEARLESS app which enables users to turn on a tracking feature before entering a dangerous situation so the Opponent can monitor their movements and for the user to send their location and video/audio evidence in the event of an emergency.32

51.   I do not consider that the remote monitoring of premises or the FEARLESS app are “guarded transportation services.” Whilst the FEARLESS app involves a tracking feature and BE FEARLESS is used on occasion in relation to this app, the app essentially tracks the customer as opposed to their vehicle, unless the customer is situated in the vehicle at the time. In my view, this does not equate to “vehicle tracking services”.

52.   Hence, I am not satisfied that the BE FEARLESS mark has been used in relation to the registered services in class 39.

Class 42

53.   Again, the Applicant claims that there has been no use of BE FEARLESS for any of the IT- related and advisory services claimed in this class.

54.   However, the Opponent points to Website extracts referring to the Opponent’s offer to provide “IP & IT systems”,33 “quality security system design”,34 “IP-operated home security system”,

³⁰ Lewkovitz Declaration, [12].

³¹ Hyun Declaration, p 146.

³² Ibid, p 165-166.

³³ Ibid, p 75.

³⁴ Ibid, p 83.

“remotely monitoring your home using IP and mobile technology”35. The Website also offers “Advanced technology you can count on”36, “expert technology and security consulting for firms needing to install or upgrade their CCTV or intrusion detection equipment”,37 IP-connected security systems which coordinate with smartphone apps and online monitoring38 and “Using 3G, 4G, cellular networks and transmission devices, we monitor our clients wellbeing from a centralised hub.”39

^55.          In addition, the Opponent relies on the Macleay College Quote which includes a System Equipment Schedule that it says includes hardware and software40 and a smartphone app.41

56.   The Applicant argues that whilst there is some evidence that the Removal Opponent provides, installs and maintains computers and computer peripherals for customers and software as part of the provision of security services, this does not equate to the provision of the registered class 42 services such as the “design and development of secure computer hardware, software and systems”, “advisory services relating to computer programming”, “computer consultancy services”, or “information technology (IT) services” or the “provision of technical consultancy” services. Moreover, there is no evidence of use of BE FEARLESS for non-IT services in class 42 being “advisory services relating to building design” and “research relating to security”.

57.   I am not satisfied based on my assessment of the evidence that the Opponent has used the BE FEARLESS mark in relation to the registered services in class 42.

Class 44

58.   The Applicant proposes that the class 44 specification of the BE FEARLESS registration be amended to:

³⁵ Ibid, p 87.

³⁶ Ibid, p74.

³⁷ Ibid, p 105

³⁸ Ibid, p 111.

³⁹ Ibid, p111.

⁴⁰ Lewkovitz, p387.

⁴¹ Ibid, p389.

monitoring of patients; provision of medical assistance; all of the foregoing in relation to the installation, maintenance or repair of security or personal safety products

59. The Opponent submits that the limitation is not appropriate for the reasons outlined at [48]. I am satisfied that the Opponent has used BE FEARLESS for the ‘monitoring of patients” but do not agree that the proposed limitation is appropriate.

60.   Furthermore, the Opponent argues it has used BE FEARLESS in the Relevant Period for “provision of medical assistance” in the form of the Opponent’s Silent Sentinel pendant. This product enables a user to press a button to send an emergency signal to the Opponent’s monitoring centre, the centre then contacts the user using the unit’s speakerphone and arranges for responders or an ambulance if the user does not respond or requires assistance.42 The Opponent submits that this is the provision of medical assistance or a very similar service.

61.   The Opponent’s Silent Sentinel product is a personal alarm and the fact that the monitoring centre telephones for medical assistance on some occasions when the alarm is triggered does not amount to the provision of medical assistance.

Class 45

62.    For this class, the Applicant proposes that the services be restricted to:

Class 45: Advisory services relating to security; monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of premises; aircraft security services; airport security services; alarm monitoring services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services;

⁴² Hyun Declaration, p 152-153.

registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services; all of the foregoing in relation to the installation, maintenance or repair of security or personal safety products

63. The Opponent accepts that there has been no use of BE FEARLESS for those services which the Applicant contends should be deleted but submits that it is appropriate to exercise discretion to retain these services on the basis they are similar to services for which the BE FEARLESS mark has been used. By way of example, the Opponent argues that rental of alarms is similar to the provision, sale and installation and repair of alarms. The Opponent also rejects the proposed limitation to the remaining services on the grounds outlined at [48].

64.   In relation to the various investigation services, the Opponent contends that the industry in which the Opponent operates is known as ‘security and investigation services’43 and that these services are generally provided by the same traders.

65.   Given the parties are in agreement about the services for which the registration should be retained (other than whether the limitation in bold should apply), I will address this class in the discussion on exercise of the discretion below.

Exercise of Discretion for BE FEARLESS

66.   The Opponent argues that the BE FEARLESS registration should be retained for all of the registered goods and services because:

^i.The Opponent has used the mark BE FEARLESS for multiple goods and services which are similar or closely related to any goods or services for which the mark was not used. Further, it is not necessary to determine whether all of the ‘unused’ goods or services are similar or closely related to the ‘used’ goods and services, it is sufficient if many of the unused goods/services are similar.44

⁴³ See Exhibit M Lewkovitz Declaration.

⁴⁴ Societe Anonyme Des Eaux Minerales D’Evian v Yoghurt Co Pty Ltd (‘Evian’) 1 IPR 78, [43] (Hearing Officer I. Thompson).

^ii.Use of BE FEARLESS by a third party for any ‘unused’ goods/services would cause confusion or deception which is contrary to the public interest.45

iii.The Opponent has a reputation in the BE FEARLESS mark;

iv.The Opponent has not abandoned the BE FEARLESS mark and has increasingly used the mark during and after the Relevant Period.

v.The Opponent holds the domain name Applicant has not adduced any evidence of prejudice it would suffer from the BE FEARLESS registration being retained for all of the registered goods and services. As the Applicant’s interests are not in evidence, the Opponent’s interests should take precedence.46

67.   The Applicant submits that discretion should not be exercised because there is no evidence that the Opponent intends to use the BE FEARLESS mark for all the registered goods and services, restriction of the goods and services will not cause confusion or deception, the public interest in removing unused goods and services outweighs any interest in the Opponent retaining the registrations and any reputation that the Opponent has in BE FEARLESS is limited to security and personal safety. Moreover, the Applicant has an interest in the registration being restricted because the Opponent relies upon the BE FEARLESS registration in its opposition to the Applicant’s trade mark application 1964528 FEARLESS GIRL in classes 35, 36, 41, 43 and 45.

68.   In relation to the class 9 goods, I have found that the BE FEARLESS mark has been used in relation to some of the registered goods in the Invoices. To divide the goods into those which are branded versus those which are unbranded will involve the drawing of fine distinctions. Further, contrary to the Applicant’s submissions, I consider that the registered goods are closely related to the sale, repair, installation and maintenance of security products for which the

⁴⁵ See for example, Bayerische Motoren Werke AG v Electracom Pty Ltd (2020) 161 IPR 522, [24], [27], [30] (Hearing Officer A. Richards); Jaguar Land Rover Ltd v Danteng Pty Ltd (2020) 158 IPR 531, [18]-[20] (Hearing Officer A. Richards); General Mills Inc v Maria and Nikita Christofis [2013] ATMO 18, [44-46] (Hearing Officer M. Kirov).

⁴⁶ Evian, n41, [35].

Opponent has used the BE FEARLESS mark. If a third party was to use the mark BE FEARLESS in relation to such security products, it would be likely to cause confusion or deception.

69.   However, some of the registered class 9 goods are broadly worded and have uses in multiple industries beyond the provision of security services. Moreover, I consider that the Opponent’s reputation is in the mark CALAMITY in the security industry and that its reputation in BE FEARLESS is more limited. Accordingly, I consider that it is appropriate for items having a broader application to be restricted to such goods for use in the provision of security services or deleted particularly where there is overlap in the registered goods and the restriction of the registration will not impact the scope of protection afforded for the Opponent’s business.

70.   I have found that the Opponent has not used the registered mark BE FEARLESS for any of the class 35 services. There is no evidence that the Opponent intends to offer these services in the future and none of these services are similar or closely related to the goods and services for which the mark has been used. Further, I do not consider that the Opponent’s reputation in the mark BE FEARLESS is so extensive that I should exercise discretion to retain these services.

71.   Taking into account that many of the class 37 services form part of the core business of the Opponent and the Opponent’s likely reputation in the security services industry, I am satisfied that the BE FEARLESS mark should be retained for most of the registered services. However, the Opponent’s use of, or reputation in, BE FEARLESS cannot be said to extend generally to the provision of “installation of communications network apparatus; installation of computerised information systems; installation of fixtures and fittings for domestic premises; information technology (IT) services (computer and computer peripherals installation and maintenance); repair, maintenance and installation consultancy services” but are limited to such services provided in connection with its security products and security services.

72.   With respect to the registered class 39 services “guarded transportation”, in my view, it is appropriate for these services to be retained in the registration as incidental to the provision of security services. Similarly, the ‘vehicle location services’ are similar or incidental to services provided by use of the FEARLESS app. In my opinion, it would potentially be misleading if another trader was to use the BE FEARLESS mark in relation to the class 39 services and it is appropriate for these to be retained.

73.   I am not satisfied that it is appropriate to exercise discretion with respect to the services in classes 42 and 44 for which the BE FEARLESS mark has not been used. I consider that airport security services are specialised services that are not similar to other commercial and personal security services and there is nothing in the Opponent’s evidence to suggest otherwise.

74.   In relation to the class 45 services, I am of the view that some of the services which the Applicant contends should be deleted are similar to goods or services offered by the Opponent under the BE FEARLESS mark but others are unrelated.

75.   With respect to the wording of the limitation proposed by the Applicant, I agree with the Opponent that the wording of the limitation is not appropriate. The proposed limitation does not make sense and/or draws fine distinctions between some goods/services. However, as indicated above, in some instances, I consider that the registered goods or services should be restricted to those relating to security products or services.

76.   For the reasons outlined above, I consider that the specification of goods and services for the BE FEARLESS mark should be amended to:

Class 9: Audiovisual instruments for communication between two stations; communication installations; communications systems; computer apparatus for transmitting data; computer apparatus for use in local area networks; computer installations; computer installations (networks); computer installations for the communication of data; computer network installations; computer networking installations; intercommunication apparatus; intercommunication installations; intercommunication systems; wireless communication apparatus; wireless transmitters; all the foregoing being parts of or for use in connection with security or surveillance systems; Access control cards (encoded or magnetic); alarm bells; alarm bells, electric; alarm control apparatus; alarm devices (other than for vehicles); alarm installations for buildings; alarm instruments, other than for vehicles; alarm management apparatus; alarm management installations; alarm panels; alarm sensors; alarm signalling apparatus; alarm signalling receivers; alarm signalling transmitters; alarm systems incorporating control and visual display apparatus; alarms; alarms for controlling the movement of human beings; anti-theft alarm apparatus (other than for vehicles); anti-theft alarm installations (other than for vehicles); anti-theft alarms (other than for vehicles); anti-theft alarms adapted for use with video apparatus; anti-theft electrical alarm systems (other than for vehicles); anti-theft warning apparatus; anti-theft warning devices; apparatus for personnel entry control; apparatus for use in security control; audible alarms (other than for vehicles); audio door entry systems; audiovisual instruments for communication between two stations; automatic access control apparatus; automatic access control systems; automatic access security apparatus; automatic barriers for vehicles; automatic dialling apparatus; bells (warning devices); cards encoded with security features for authentication purposes; cards encoded with security features for identification purposes; central alarm units (other than for

vehicles); closed circuit communication apparatus; closed circuit television; closed circuit television apparatus; closed circuit television cameras; closed circuit television instruments; closed circuit television monitoring apparatus; closed circuit television monitoring installations; closed circuit television security apparatus; closed circuit television surveillance cameras to detect fire; closed circuit video apparatus for use in access control; closed circuit video installations; commercial alarm systems (other than for vehicles); commercial alarm systems for buildings; commercial alarm systems for shops; communication installations; communications systems; computer apparatus for transmitting data; computer apparatus for use in local area networks; computer installations; computer installations (networks); computer installations for the communication of data; computer network installations; computer networking installations; control centres being parts of alarm systems; controlled access security apparatus (closed circuit television); data previous security apparatus; data previous security instruments; domestic electronic monitoring apparatus; domestic security installations for buildings (electric or electronic); door phones; door security devices of metal for buildings (electric); door security devices of metal for buildings (optical); door viewers (peepholes); dummy sensors; electric access control apparatus; electric access control installations for use with encoded cards; electric access control systems; electric access security apparatus; electric alarms for fire; electric alarms for smoke; electric anti-theft devices (other than for vehicles); electric anti-theft devices, other than for vehicles; electric anti-theft instruments (other than for vehicles); electric bells; electric controlled access security apparatus; electric door control apparatus; electric door locks; electric security apparatus (other than locks) for vehicles; electric security apparatus for buildings; electric security apparatus for the detection of intruders in buildings; electric security apparatus for the prevention of theft from buildings; electric security locking devices for armoured doors; electric security locking devices for the doors of safes; electric security monitoring apparatus incorporating fibre optic cables; electrical apparatus for security purposes (other than for vehicles); electrical apparatus for the paging of personnel; electrical apparatus for the signalling of personnel; electrical control panels for burglar alarm systems; electrical control panels for fire alarm systems; electrical control panels for smoke alarm systems; electrical devices for security purposes (other than for vehicles); electrical devices for security purposes in vehicles; electrical door entry apparatus in combination with a telephone; electrical door entry apparatus in combination with a video camera; electrical door entry apparatus in combination with an intercom; electrical door entry control apparatus; electrical security apparatus, other than for vehicles; electrical security devices, other than for vehicles; electrically operated alarms, other than for vehicles; electrically operated remote control mechanisms for closing doors; electrically operated remote control mechanisms for opening doors; electrically operated security apparatus, other than for vehicles; electronic components for security installations; electronic controlled access security apparatus; electronic security apparatus for use in homes; electronic security apparatus for use in offices; electronic security apparatus, other than for vehicles; electronic security devices, other than for vehicles; electronic security equipment, other than for vehicles; electronic security installations for use in buildings; electronic security tags; electronic sensors; electronic surveillance apparatus; electronic surveillance apparatus for articles; electronic tags for security control purposes; electronic telephone data communications apparatus; electronic telephone diallers; emergency call telephone apparatus; encoded cards for operating security apparatus; fire detecting installations; fire detecting instruments; fire detection apparatus; fire detection installations; fire detectors; heat sensitive cameras for security purposes; identification cards (encoded); identification cards (machine readable); identification cards (magnetic); identification labels (encoded);

identification labels (machine readable); identification labels (magnetic); identity cards, encoded; identity cards, magnetic; infrared detection apparatus; infrared detectors; infrared scanners; infrared sensors; installations (electric or electronic) for use in access control; installations (electric or electronic) for use in security; intercom apparatus; intercom key apparatus; intercom key apparatus for connection to telephone networks; intercom key terminals for connection to a telephone network; intercommunication apparatus; intercommunication installations; intercommunication systems; intruder alarms (other than for vehicles); intruder detecting apparatus (other than for vehicles); intruder detecting instruments (other than for vehicles); intruder detecting sensors (other than anti-theft apparatus for vehicles); intruder detectors (other than for vehicles); intruder identification apparatus (other than for vehicles); intruder identification instruments (other than for vehicles); intrusion detectors (other than for vehicles; klaxons (sirens); labels (magnetic or encoded) for use in marking products for identification; labels (magnetic or encoded) for use in marking products for security; labels (magnetic or encoded) for use in marking products for verification; labels carrying magnetically, optically, or electronically recorded or encoded information; lamps for use as warning beacons; light signalling apparatus for use by persons in emergencies; locks (electric) with alarms; locks (electronic); locks, electric; magnetic identification cards; magnetic identity cards; magnetic material in the form of strips for use on cards; metal security (anti- theft) devices (electric, not for vehicles); panic buttons; personal alarms; personal alarms incorporating lights; personal protection devices (electronic alarms); proximity detectors; remote alarms (other than anti-theft for vehicles); remote control apparatus; remote control apparatus connected by modems to computers; remote control apparatus for cameras; remote control apparatus for lighting units; remote control devices (electric); remote control devices (electronic); remote control locking apparatus; remote electric or electronic control stations; remote entry control apparatus for buildings; remote entry point control apparatus; remotely controlled alarm locks; safety monitoring apparatus (electric); safety signals in the form of flashing beacons; safety signals in the form of flashing lights; security alarm systems (other than for vehicles); security alarms (other than for vehicles); security apparatus for computers; security apparatus for processing audio signals; security apparatus for processing video and/or audio signals; security apparatus for receiving audio signals; security apparatus for receiving video signals; security apparatus for storing audio signals; security apparatus for storing video signals; security apparatus for transmitting audio signals; security apparatus for transmitting video signals; security apparatus incorporating lights for use in buildings; security apparatus incorporating lights for use on the exterior of buildings; security control apparatus; security control instruments; security devices for computer hardware; security devices for computer software; security devices for doors of buildings (electric locking devices); security devices for windows of buildings; security devices for windows of buildings (electric locking devices); security installations, other than for vehicles; security passes (encoded); security passes (magnetic); security surveillance apparatus; security systems for buildings; security systems for elevators; security systems, other than for vehicles; security warning apparatus; sensing apparatus being parts of anti-theft apparatus; sensing apparatus being parts of intruder detection apparatus; sensing apparatus being parts of outside lighting apparatus; sensing apparatus for use with doors; sensing apparatus for use with windows; sensing devices (other than for medical use); sensor apparatus, other than for medical use; sensor switches; sensors for monitoring buildings against unauthorised access; sensors for monitoring grounds against unauthorised access; sensors for monitoring rooms against unauthorised access; sensors for securing buildings against unauthorised access; sensors for securing grounds against unauthorised access; sensors for securing rooms against unauthorised access; shock sensors;

signalling apparatus for use in emergencies; sirens; smoke alarms; smoke sensors; surveillance apparatus; surveillance apparatus (electronic); surveillance instruments; telecommunications security instruments; telemetry apparatus; telemetry installations; telemetry instruments; telemonitoring devices; telephone communications apparatus; telephone security instruments; transmitters (telecommunication); transmitters for use in emergency communications; transmitters for use in security; video camera security apparatus; video camera security installations; video camera security instruments; video cameras; video cameras adapted for monitoring purposes; video cameras adapted for security purposes; video cameras combined with video recorders for security purposes; video surveillance apparatus; video surveillance cameras; wireless communication apparatus; wireless transmitters

Class 35: Advisory services relating to business risk management; risk management consultancy (business); telephone answering (for others); auditing

Class 37: Installation of security systems; maintenance and servicing of security alarms; building construction consultancy; building services; burglar alarm installation; burglar alarm installation and repair; burglar alarm repair; electrical apparatus installation; fire alarm installation; fire alarm installation and repair; fire alarm repair; installation of burglar alarms; installation of security systems; installation of vehicle security devices; installation of window coatings; installation of window films; maintenance and servicing of fire alarm systems; maintenance and servicing of security alarms; repair of alarms; repair of security locks; information technology (IT) services (computer and computer peripherals installation and maintenance), installation of communications network apparatus, installation of computerised information systems, installation of fixtures and fittings for domestic premises, installation of telecommunications apparatus, all relating to the provision of security systems and security services; repair, maintenance and installation consultancy services relating to security and surveillance systems

Class 39: guarded transportation; vehicle location services

Class 42: computer security services (design and development of secure computer hardware, software and systems); advisory services relating to building design; advisory services relating to computer hardware; advisory services relating to computer programming; advisory services relating to computer software; advisory services relating to computer systems design; computer consultancy; computer consultancy services; computer firewall services; data security services (firewalls); information services relating to computers; information services relating to information technology; information technology (IT) services (computer hardware, software and peripherals; design and technical consultancy); provision of technical advice in relation to information technology; provision of technical consultancy in relation to information technology; provision of technical information in relation to information technology; provision of technical information in relation to computers; research relating to security

Class 44: monitoring of patients; provision of medical assistance

Class 45: Advisory services relating to security; monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of premises; aircraft security services; airport security services; alarm monitoring

services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services; registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services

Second FEARLESS Mark

77.   There is some similarity between the registered services of the Second FEARLESS Mark and those for which BE FEARLESS is registered.

78.   The Applicant submits that the FEARLESS Mark has should be removed for all goods and services in classes 9, 35, 37, 39 and 44 and only be retained in class 45 for:

Class 45: Advisory services relating to security; monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of premises; aircraft security services; airport security services; alarm monitoring services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services;

registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services; all the foregoing in relation to a mobile application for personal safety

79.   The Opponent contends that it should be permitted to rely on its use of BE FEARLESS as use of the registered mark FEARLESS with additions or alterations not substantially affecting the identity of the registered mark FEARLESS. The Opponent submits that the dominant cognitive cue of both BE FEARLESS and FEARLESS is the word FEARLESS. The Opponent refers to various cases which it argues support the contention that use of BE FEARLESS constitutes use of FEARLESS with additions or alterations not substantially affecting the identity of the mark FEARLESS. In particular, the Opponent submits that an analogy can be drawn the finding in Singtel Optus Pty Ltd v Optum Inc47where use of stylised ‘yes’ OPTUS was found to be use of OPTUS as the word ‘YES’ directs attention to OPTUS as a badge of origin. Hence the additional word ‘yes’ and stylisation did not substantially affect the identity of the registered mark OPTUS and it was not relevant that the stylized ‘yes’ OPTUS was the subject of a separate registration. Similarly in Express LLC v Euromode Australia Pty Ltd,48 the following marks were found to be substantially identical on the basis that ‘EXPRESS’ was the sole distinguishing element of the marks in question and hence the marks were found to be substantially identical:

Applicant’s Mark	Opponent’s Marks
EXPRESS WORLD BRAND EXPRESSFASHION

80.   The Applicant acknowledges that the word ‘BE’ is not inherently adapted to distinguish but submits that this word nevertheless constitutes an important part of the mark BE FEALESS. The

⁴⁷ [2018] FCA 575, [60] (Davies J).

⁴⁸ [2010] ATMO 71, [14]-[16] (Hearing Officer I. Thompson).

Applicant contends that the inclusion of the word BE modifies the adjective “FEARLESS” to a command, creating a two word phrase and rendering the mark visually, aurally and connotatively different from FEARLESS alone. In the Applicant’s submission, the comparison of marks here is similar to that in Samuel Smith & Son Pty Ltd v Pernod Ricard Winemakers Pty Ltd49 where the inclusion of the word ‘THE’ in THE SIGNATURE was found to serve a purpose in that:

“It attaches definitive significance to the noun that follows….[it] affects the idea conveyed by the mark’s more distinctive component in two ways. First, it causes the word SIGNATURE to convey its ordinary meaning as a noun. Second, it assists in creating a subtle impression that the signature referred to is a signature of some particular importance.”

81.   I agree with the Applicant that the inclusion of the word BE changes the nature of the mark FEARLESS solus. This is not an instance where the additional element is descriptive of the goods or services as in many of the cases relied on by the Opponent such as Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd.50 In my opinion, the marks BE FEARLESS and FEARLESS are not substantially identical.

^82.          The FEARLESS mark has only been used in relation to the Opponent’s FEARLESS personal safety app described above at [50] which was promoted on the Website during the Relevant Period51 and the FEARLESS app User Guide.52

83.   For the reasons outlined at [66], the Opponent argues that discretion should be exercised to retain the Second FEARLESS registration in its entirety. The Opponent also argues that discretion should be exercised to retain all of the registered goods and services because of the Opponent’s use of BE FEARLESS which mark is at least deceptively similar to FEARLESS and hence removal of the FEARLESS mark would give rise to deception or confusion if another trader was to use FEARLESS in relation to the relevant goods and services. Also, the Opponent holds the domain name <fearlessapp.com.au> which redirects to the Website.

84.   The Opponent’s use of the mark FEARLESS alone is limited to use in connection with the FEARLESS app. The FEARLESS app is available on the Android, Windows and iPhone app stores

⁴⁹ [2016] FCA 1515, [106] (Charlesworth J).

⁵⁰ [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

⁵¹ Lewkovitz Declaration, p 161-162 and Hyun Declaration p165

⁵² Lewkovitz Declaration, Exhibit F, p131.

but the Opponent has not provided details of the number of downloads. The app has received various third-party promotion including featuring on the ‘Today Show’ and ‘Sunrise’ to national audiences.

85.   Although the domain name <fearlessapp.com.au> redirects to the Website, the FEARLESS mark is only used on that site to promote the FEARLESS app and it cannot be said that the mark is being used in relation to all goods and services referred to on the Website. In the context of the use of FEARLESS, consumers will not associate FEARLESS as a badge of origin for all of the goods and services featured on the site. Moreover, I believe that the Opponent’s reputation is primarily in the mark CALAMITY and whilst it may have some limited reputation in BE FEARLESS, such reputation is not so extensive that the Opponent should be entitled to retain the Second FEARLESS registration in its entirety.

86. For the reasons outlined at [72] above, I am satisfied that it is appropriate to retain the Second FEARLESS registration for “vehicle location services” in class 39.

87.   I am of the opinion that there is no basis for maintaining the registration in classes 9, 35, 37, 42 and 44.

88.   With respect to the class 45 services, I consider the Applicant’s proposed amendment reflects the lack of use of the FEARLESS Mark and I am not satisfied that any exercise of my discretion to retain the mark for a range of class 45 services broader then necessary is appropriate.

Decision

89.   I have found that the Opponent has partly established its opposition to the Removal Application. Accordingly, I direct that one month from the date of this decision, the Registrations be amended as set out below:

Registration 1713213 First FEARLESS Mark

Class 9: Application software; Computer programs (downloadable software); Computer software applications (downloadable); Downloadable software applications (apps); computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; computer software for use as an application programming interface (API); Application programming interface (API) for computer software which facilitates online services for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting,

displaying, tagging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; Network applications being computer programs; Personal computer application software; Communication software; Computer software programs; Data communications software; Data processing software; Interactive video software; Apparatus for use in security control; Security apparatus for receiving audio signals; Security apparatus for receiving video signals; Security apparatus for transmitting audio signals; Security apparatus for transmitting video signals; Security control apparatus; Security systems, other than for vehicles; Security surveillance apparatus; Security installations, other than for vehicles; Security surveillance apparatus; all the foregoing in relation to a mobile application for personal safety

Class 42: Application Service Provider (ASP) services; Development of computer software application solutions; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, displaying, linking, sharing or otherwise providing electronic media or information over communication networks; all the foregoing in relation to a mobile application for personal safety

Registration 1729363 Second FEARLESS Mark

Deletion of Classes 9, 35, 37, 42 and 44 and amendment of classes 39 and 45 as set out below:

Class 39: guarded transportation; vehicle location services

Class 45: Advisory services relating to security; monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of premises; aircraft security services; airport security services; alarm monitoring services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services; registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance

services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services; all the foregoing in relation to a mobile application for personal safety

Registration 1729364 BE FEARLESS

Class 9: Audiovisual instruments for communication between two stations; communication installations; communications systems; computer apparatus for transmitting data; computer apparatus for use in local area networks; computer installations; computer installations (networks); computer installations for the communication of data; computer network installations; computer networking installations; intercommunication apparatus; intercommunication installations; intercommunication systems; wireless communication apparatus; wireless transmitters; all the foregoing being parts of or for use in connection with security or surveillance systems; Access control cards (encoded or magnetic); alarm bells; alarm bells, electric; alarm control apparatus; alarm devices (other than for vehicles); alarm installations for buildings; alarm instruments, other than for vehicles; alarm management apparatus; alarm management installations; alarm panels; alarm sensors; alarm signalling apparatus; alarm signalling receivers; alarm signalling transmitters; alarm systems incorporating control and visual display apparatus; alarms; alarms for controlling the movement of human beings; anti-theft alarm apparatus (other than for vehicles); anti-theft alarm installations (other than for vehicles); anti-theft alarms (other than for vehicles); anti-theft alarms adapted for use with video apparatus; anti-theft electrical alarm systems (other than for vehicles); anti-theft warning apparatus; anti-theft warning devices; apparatus for personnel entry control; apparatus for use in security control; audible alarms (other than for vehicles); audio door entry systems; audiovisual instruments for communication between two stations; automatic access control apparatus; automatic access control systems; automatic access security apparatus; automatic barriers for vehicles; automatic dialling apparatus; bells (warning devices); cards encoded with security features for authentication purposes; cards encoded with security features for identification purposes; central alarm units (other than for vehicles); closed circuit communication apparatus; closed circuit television; closed circuit television apparatus; closed circuit television cameras; closed circuit television instruments; closed circuit television monitoring apparatus; closed circuit television monitoring installations; closed circuit television security apparatus; closed circuit television surveillance cameras to detect fire; closed circuit video apparatus for use in access control; closed circuit video installations; commercial alarm systems (other than for vehicles); commercial alarm systems for buildings; commercial alarm systems for shops; communication installations; communications systems; computer apparatus for transmitting data; computer apparatus for use in local area networks; computer installations; computer installations (networks); computer installations for the communication of data; computer network installations; computer networking installations; control centres being parts of alarm systems; controlled access security apparatus (closed circuit television); data previous security apparatus; data previous security instruments; domestic electronic monitoring apparatus; domestic security installations for buildings (electric or electronic); door phones; door security devices of metal for buildings (electric); door security devices of metal for buildings (optical); door viewers (peepholes); dummy sensors; electric access control apparatus; electric access control

installations for use with encoded cards; electric access control systems; electric access security apparatus; electric alarms for fire; electric alarms for smoke; electric anti-theft devices (other than for vehicles); electric anti-theft devices, other than for vehicles; electric anti-theft instruments (other than for vehicles); electric bells; electric controlled access security apparatus; electric door control apparatus; electric door locks; electric security apparatus (other than locks) for vehicles; electric security apparatus for buildings; electric security apparatus for the detection of intruders in buildings; electric security apparatus for the prevention of theft from buildings; electric security locking devices for armoured doors; electric security locking devices for the doors of safes; electric security monitoring apparatus incorporating fibre optic cables; electrical apparatus for security purposes (other than for vehicles); electrical apparatus for the paging of personnel; electrical apparatus for the signalling of personnel; electrical control panels for burglar alarm systems; electrical control panels for fire alarm systems; electrical control panels for smoke alarm systems; electrical devices for security purposes (other than for vehicles); electrical devices for security purposes in vehicles; electrical door entry apparatus in combination with a telephone; electrical door entry apparatus in combination with a video camera; electrical door entry apparatus in combination with an intercom; electrical door entry control apparatus; electrical security apparatus, other than for vehicles; electrical security devices, other than for vehicles; electrically operated alarms, other than for vehicles; electrically operated remote control mechanisms for closing doors; electrically operated remote control mechanisms for opening doors; electrically operated security apparatus, other than for vehicles; electronic components for security installations; electronic controlled access security apparatus; electronic security apparatus for use in homes; electronic security apparatus for use in offices; electronic security apparatus, other than for vehicles; electronic security devices, other than for vehicles; electronic security equipment, other than for vehicles; electronic security installations for use in buildings; electronic security tags; electronic sensors; electronic surveillance apparatus; electronic surveillance apparatus for articles; electronic tags for security control purposes; electronic telephone data communications apparatus; electronic telephone diallers; emergency call telephone apparatus; encoded cards for operating security apparatus; fire detecting installations; fire detecting instruments; fire detection apparatus; fire detection installations; fire detectors; heat sensitive cameras for security purposes; identification cards (encoded); identification cards (machine readable); identification cards (magnetic); identification labels (encoded); identification labels (machine readable); identification labels (magnetic); identity cards, encoded; identity cards, magnetic; infrared detection apparatus; infrared detectors; infrared scanners; infrared sensors; installations (electric or electronic) for use in access control; installations (electric or electronic) for use in security; intercom apparatus; intercom key apparatus; intercom key apparatus for connection to telephone networks; intercom key terminals for connection to a telephone network; intercommunication apparatus; intercommunication installations; intercommunication systems; intruder alarms (other than for vehicles); intruder detecting apparatus (other than for vehicles); intruder detecting instruments (other than for vehicles); intruder detecting sensors (other than anti-theft apparatus for vehicles); intruder detectors (other than for vehicles); intruder identification apparatus (other than for vehicles); intruder identification instruments (other than for vehicles); intrusion detectors (other than for vehicles; klaxons (sirens); labels (magnetic or encoded) for use in marking products for identification; labels (magnetic or encoded) for use in marking products for security; labels (magnetic or encoded) for use in marking products for verification; labels carrying magnetically, optically, or electronically recorded or encoded information; lamps for use as warning beacons; light signalling apparatus for use by persons

securing buildings against unauthorised access; sensors for securing grounds against unauthorised access; sensors for securing rooms against unauthorised access; shock sensors; signalling apparatus for use in emergencies; sirens; smoke alarms; smoke sensors; surveillance apparatus; surveillance apparatus (electronic); surveillance instruments; telecommunications security instruments; telemetry apparatus; telemetry installations; telemetry instruments; telemonitoring devices; telephone communications apparatus; telephone security instruments; transmitters (telecommunication); transmitters for use in emergency communications; transmitters for use in security; video camera security apparatus; video camera security installations; video camera security instruments; video cameras; video cameras adapted for monitoring purposes; video cameras adapted for security purposes; video cameras combined with video recorders; video surveillance apparatus; video surveillance cameras; wireless communication apparatus; wireless transmitters

Class 35: Advisory services relating to business risk management; risk management consultancy (business); telephone answering (for others); auditing

Class 37: Installation of security systems; maintenance and servicing of security alarms; building construction consultancy; building services; burglar alarm installation; burglar alarm installation and repair; burglar alarm repair; electrical apparatus installation; fire alarm installation; fire alarm installation and repair; fire alarm repair; information technology (IT) services (computer and computer peripherals installation and maintenance); installation of burglar alarms; installation of communications network apparatus; installation of computerised

information systems; installation of fixtures and

fittings for domestic premises; installation of security systems; installation of telecommunications apparatus; installation of vehicle security devices; installation of window coatings; installation of window films; maintenance and servicing of fire alarm systems; maintenance and servicing of security alarms; repair of alarms; repair of security locks; repair, maintenance and installation consultancy services

Class 39: Guarded transportation; vehicle location services

Class 42: Computer security services (design and development of secure computer hardware, software and systems); advisory services relating to building design; advisory services relating to computer hardware; advisory services relating to computer programming; advisory services relating to computer software; advisory services relating to computer systems design; computer consultancy; computer consultancy services; computer firewall services; data security services (firewalls); information services relating to computers; information services relating to information technology; information technology (IT) services (computer hardware, software and peripherals; design and technical consultancy); provision of technical advice in relation to information technology security; provision of technical consultancy in relation to information technology; provision of technical information in relation to information technology; provision of technical information in relation to computers; research relating to security

Class 44: Monitoring of patients; provision of medical assistance

Class 45: Advisory services relating to security;

monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of premises; aircraft security services; airport security services; alarm monitoring services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services; registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services.

1729364 Be Fearless Class 9: Access control cards (encoded or magnetic); alarm bells; alarm bells, electric; alarm control apparatus; alarm devices (other than for vehicles); alarm installations for buildings; alarm instruments, other than for vehicles; alarm management apparatus; alarm management installations; alarm panels; alarm sensors; alarm signalling apparatus; alarm signalling receivers; alarm signalling transmitters; alarm systems incorporating control and visual display apparatus; alarms; alarms for controlling the movement of human beings; anti-theft alarm apparatus (other than for vehicles); anti-theft alarm installations (other than for vehicles); anti- theft alarms (other than for vehicles); anti-theft alarms adapted for use with video apparatus; anti-theft electrical alarm systems (other than for vehicles); anti-theft warning apparatus; anti- theft warning devices; apparatus for personnel entry control; apparatus for use in security control; audible alarms (other than for vehicles); audio door entry systems; audiovisual instruments for communication between two stations; automatic access control apparatus; automatic access control systems; automatic access security apparatus; automatic barriers for vehicles; automatic dialling apparatus; bells (warning devices); cards encoded with security features for authentication purposes; cards encoded with security features for identification purposes; central alarm units (other than for vehicles); closed circuit communication apparatus; closed circuit television; closed circuit television apparatus; closed circuit television cameras; closed circuit television instruments; closed circuit television monitoring apparatus; closed circuit television monitoring installations; closed circuit television security apparatus; closed circuit television surveillance cameras to detect fire; closed circuit video apparatus for use in access control; closed circuit video installations; commercial alarm systems (other than for vehicles); commercial alarm systems for buildings; commercial alarm systems for shops;

communication installations; communications systems; computer apparatus for transmitting data; computer apparatus for use in local area networks; computer installations; computer installations (networks); computer installations for the communication of data; computer network installations; computer networking installations; control centres being parts of alarm systems; controlled access security apparatus (closed circuit television); data previous security apparatus; data previous security instruments; domestic electronic monitoring apparatus; domestic security installations for buildings (electric or electronic); door phones; door security devices of metal for buildings (electric); door security devices of metal for buildings (optical); door viewers (peepholes); dummy sensors; electric access control apparatus; electric access control installations for use with encoded cards; electric access control systems; electric access security apparatus; electric alarms for fire; electric alarms for smoke; electric anti- theft devices (other than for vehicles); electric anti-theft devices, other than for vehicles; electric anti-theft instruments (other than for vehicles); electric bells; electric controlled access security apparatus; electric door control apparatus; electric door locks; electric security apparatus (other than locks) for vehicles; electric security apparatus for buildings; electric security apparatus for the detection of intruders in buildings; electric security apparatus for the prevention of theft from buildings; electric security locking devices for armoured doors; electric security locking devices for the doors of safes; electric security monitoring apparatus incorporating fibre optic cables; electrical apparatus for security purposes (other than for vehicles); electrical apparatus for the paging of personnel; electrical apparatus for the signalling of personnel; electrical control panels for burglar alarm systems; electrical control panels for fire alarm systems; electrical control panels for smoke alarm systems; electrical devices for

security purposes (other than for vehicles);

electrical devices for security purposes in vehicles; electrical door entry apparatus in combination with a telephone; electrical door entry apparatus in combination with a video camera; electrical door entry apparatus in combination with an intercom; electrical door entry control apparatus; electrical security apparatus, other than for vehicles; electrical security devices, other than for vehicles; electrically operated alarms, other than for vehicles; electrically operated remote control mechanisms for closing doors; electrically operated remote control mechanisms for opening doors; electrically operated security apparatus, other than for vehicles; electronic components for security installations; electronic controlled access security apparatus; electronic security apparatus for use in homes; electronic security apparatus for use in offices; electronic security apparatus, other than for vehicles; electronic security devices, other than for vehicles; electronic security equipment, other than for vehicles; electronic security installations for use in buildings; electronic security tags; electronic sensors; electronic surveillance apparatus; electronic surveillance apparatus for articles; electronic tags for security control purposes; electronic telephone data communications apparatus; electronic telephone diallers; emergency call telephone apparatus; encoded cards for operating security apparatus; fire detecting installations; fire detecting instruments; fire detection apparatus; fire detection installations; fire detectors; heat sensitive cameras for security purposes; identification cards (encoded); identification cards (machine readable); identification cards (magnetic); identification labels (encoded); identification labels (machine readable); identification labels (magnetic); identity cards, encoded; identity cards, magnetic; infrared detection apparatus; infrared detectors; infrared scanners; infrared sensors; installations (electric or electronic) for use in access control;

installations (electric or electronic) for use in

security; intercom apparatus; intercom key apparatus; intercom key apparatus for connection to telephone networks; intercom key terminals for connection to a telephone network; intercommunication apparatus; intercommunication installations; intercommunication systems; intruder alarms (other than for vehicles); intruder detecting apparatus (other than for vehicles); intruder detecting instruments (other than for vehicles); intruder detecting sensors (other than anti-theft apparatus for vehicles); intruder detectors (other than for vehicles); intruder identification apparatus (other than for vehicles); intruder identification instruments (other than for vehicles); intrusion detectors (other than for vehicles; klaxons (sirens); labels (magnetic or encoded) for use in marking products for identification; labels (magnetic or encoded) for use in marking products for security; labels (magnetic or encoded) for use in marking products for verification; labels carrying magnetically, optically, or electronically recorded or encoded information; lamps for use as warning beacons; light signalling apparatus for use by persons in emergencies; locks (electric) with alarms; locks (electronic); locks, electric; magnetic identification cards; magnetic identity cards; magnetic material in the form of strips for use on cards; metal security (anti- theft) devices (electric, not for vehicles); panic buttons; personal alarms; personal alarms incorporating lights; personal protection devices (electronic alarms); proximity detectors; remote alarms (other than anti-theft for vehicles); remote control apparatus; remote control apparatus connected by modems to computers; remote control apparatus for cameras; remote control apparatus for lighting units; remote control devices (electric); remote control devices (electronic); remote control locking apparatus; remote electric or electronic control stations; remote entry control apparatus for buildings; remote entry point control apparatus; remotely

controlled alarm locks; safety monitoring

apparatus (electric); safety signals in the form of flashing beacons; safety signals in the form of flashing lights; security alarm systems (other than for vehicles); security alarms (other than for vehicles); security apparatus for computers; security apparatus for processing audio signals; security apparatus for processing video and/or audio signals; security apparatus for receiving audio signals; security apparatus for receiving video signals; security apparatus for storing audio signals; security apparatus for storing video signals; security apparatus for transmitting audio signals; security apparatus for transmitting video signals; security apparatus incorporating lights for use in buildings; security apparatus incorporating lights for use on the exterior of buildings; security control apparatus; security control instruments; security devices for computer hardware; security devices for computer software; security devices for doors of buildings (electric locking devices); security devices for windows of buildings; security devices for windows of buildings (electric locking devices); security installations, other than for vehicles; security passes (encoded); security passes (magnetic); security surveillance apparatus; security systems for buildings; security systems for elevators; security systems, other than for vehicles; security warning apparatus; sensing apparatus being parts of anti- theft apparatus; sensing apparatus being parts of intruder detection apparatus; sensing apparatus being parts of outside lighting apparatus; sensing apparatus for use with doors; sensing apparatus for use with windows; sensing devices (other than for medical use); sensor apparatus, other than for medical use; sensor switches; sensors for monitoring buildings against unauthorised access; sensors for monitoring grounds against unauthorised access; sensors for monitoring rooms against unauthorised access; sensors for securing buildings against unauthorised access; sensors for securing grounds against unauthorised access; sensors for securing rooms

against unauthorised access; shock sensors;

signalling apparatus for use in emergencies; sirens; smoke alarms; smoke sensors; surveillance apparatus; surveillance apparatus (electronic); surveillance instruments; telecommunications security instruments; telemetry apparatus; telemetry installations; telemetry instruments; telemonitoring devices; telephone communications apparatus; telephone security instruments; transmitters (telecommunication); transmitters for use in emergency communications; transmitters for use in security; video camera security apparatus; video camera security installations; video camera security instruments; video cameras; video cameras adapted for monitoring purposes; video cameras adapted for security purposes; video cameras combined with video recorders; video surveillance apparatus; video surveillance cameras; wireless communication apparatus; wireless transmitters

Class 35: Advisory services relating to business risk management; risk management consultancy (business); telephone answering (for others); auditing

Class 37: Installation of security systems; maintenance and servicing of security alarms; building construction consultancy; building services; burglar alarm installation; burglar alarm installation and repair; burglar alarm repair; electrical apparatus installation; fire alarm installation; fire alarm installation and repair; fire alarm repair; information technology (IT) services (computer and computer peripherals installation and maintenance); installation of burglar alarms; installation of communications network apparatus; installation of computerised information systems; installation of fixtures and fittings for domestic premises; installation of security systems; installation of telecommunications apparatus; installation of

vehicle security devices; installation of window

coatings; installation of window films; maintenance and servicing of fire alarm systems; maintenance and servicing of security alarms; repair of alarms; repair of security locks; repair, maintenance and installation consultancy services

Class 39: Guarded transportation; vehicle location services

Class 42: Computer security services (design and development of secure computer hardware, software and systems); advisory services relating to building design; advisory services relating to computer hardware; advisory services relating to computer programming; advisory services relating to computer software; advisory services relating to computer systems design; computer consultancy; computer consultancy services; computer firewall services; data security services (firewalls); information services relating to computers; information services relating to information technology; information technology (IT) services (computer hardware, software and peripherals; design and technical consultancy); provision of technical advice in relation to information technology; provision of technical consultancy in relation to information technology; provision of technical information in relation to information technology; provision of technical information in relation to computers; research relating to security

Class 44: Monitoring of patients; provision of medical assistance

Class 45: Advisory services relating to security; monitoring of security systems; security services for the protection of property and individuals; advisory services relating to the security of

premises; aircraft security services; airport

security services; alarm monitoring services; biometric security services; closed-circuit surveillance; consultancy services relating to private investigations; consultancy services relating to security; crime prevention advisory services; crime prevention consultancy services; electronic surveillance; employment screening services (security checking); fire safety consultancy services; guarding of buildings; guarding of goods; guarding of persons; guarding of real estate; guarding of schools; guarding of shops; guarding of warehouses; guarding services (other than guarded transport); guards; intruder detection; life saving and life guarding services (safety and security patrols); lost property return; Lost property services; monitoring of burglar and security alarms; monitoring of fire alarms; monitoring of security systems; monitoring of surveillance systems; opening of security locks; personal background investigations; personal body guarding; personal bodyguard services; providing information, including online, about security; provision of information relating to security; provision of information relating to the operation of alarms; provision of on-site security facilities; provision of security alarm monitoring services; provision of security information; public events security services; registration of domain names; rental of burglar, security or fire alarms; rental of security apparatus; rental of security surveillance apparatus; rental of surveillance apparatus; security advisory services; security assessment of risks; security consultancy; security guards; security services; security services for the protection of property and individuals; security surveillance; services for the protection of property and individuals; store surveillance services; surveillance of buildings; surveillance of goods; surveillance of personnel; surveillance services