Kids with Cancer Foundation (Australia) Limited v Australia Alopecia Areata Foundation Inc

[2023] ATMO 102

TRADE MARKS ACT 1995

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

Re:Opposition by Australia Alopecia Areata Foundation Inc to registration of trade mark application number 2134911 (class 36) – WIGS 4 KIDS and device - in the name of Kids with Cancer Foundation (Australia) Limited.

Delegate:

Nicole Worth

Representation:

Opponent: Alan Ford, counsel, instructed by Vault Legal

Applicant: Stephen Krouzecky, Krouzer IP

Decision:

2023 ATMO 102

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds under ss 58 and 60 pursued – trade marks not substantially identical – reputation not established – no grounds established - trade mark to be registered.

Background

1. This decision is in respect of an opposition to registration under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’).

2. On 24 November 2020 Kids with Cancer Foundation (Australia) Limited (‘Applicant’) filed an application to register the trade mark detailed below.

   Trade Mark:    (‘Trade Mark’)

   Filing Date:  24 November 2020

   Services:  Class 36: Charitable Fundraising

3. The Trade Mark was examined and accepted for possible registration. Its acceptance was advertised in the Official Journal of Trade Marks on 25 April 2021.

4. On 27 April 2021 Australia Alopecia Areata Foundation Inc (‘Opponent’) opposed the registration of the Trade Mark, filing both a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’). On 10 February 2022 the Applicant filed a Notice of Intention to Defend.

5. Thereafter the parties filed their evidence in accordance with reg 5.14 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’). The Opponent filed declarations of Chel Campbell, President and Treasurer of the Opponent, as evidence in support of its opposition and evidence in reply. The Applicant filed a declaration of Peter John Bodman, Executive Director and Founder of the Applicant, as evidence in answer to the opposition. The evidence is discussed in more detail below.

6. At the end of the evidence stages the parties requested a hearing. I heard the matter, as a delegate of the Registrar of Trade Marks, on 3 May 2023. Alan Ford of counsel, instructed by Vault legal, made oral and written submissions on behalf of the Opponent. Stephen Krouzecky of Krouzer IP made oral and written submissions of behalf of the Applicant.

Grounds of opposition, onus, and relevant date

1. The Opponent nominated grounds of opposition under ss 58, 60 and 59 of the Act in its SGP, however in its written summary of submissions the Opponent indicated that it no longer pursued the ground of opposition under s 59. That being the case it made submissions only in respect of the grounds of opposition under ss 58 and 60, and I confirm that those are the only grounds considered in my decision. Should the Opponent establish one of the grounds of opposition, there is no requirement under the Act that I consider any remaining ground.

2. The Opponent bears the onus of establishing a ground of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

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

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The rights of the parties are determined at the filing date of the application,[3] except in the context of s 60 wherein the priority date applies (which in some circumstances is not the same as the filing date). Here, the filing date and priority date of the application are the same, 24 November 2020 (‘Relevant Date’).

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

Evidence

1. The following declarations were filed as evidence in this matter.

   Evidence in support:

   Chel Campbell, President and Treasurer of the Opponent, with exhibits CC-1 to CC-19, dated 25 March 2022. (‘Campbell 1’)

   Evidence in answer:

   Peter John Bodman, Executive Director and Founder of the Applicant, with exhibits PJB-1 to PJB-9, dated 27 June 2022. (‘Bodman’)

   Evidence in reply:

   Chel Campbell, with exhibits CC2-1 to CC2-7, dated 4 August 2022 (‘Campbell 2’).

2. A summary of the parties’ evidence is as follows, discussed in more detail in the discussion of the grounds.

3. The Opponent is a charitable organisation established in Victoria in January 2010 with the aim of raising awareness, funding research and providing support for people living with Alopecia areata. Alopecia areata is an autoimmune disorder that attacks hair follicles which results in hair loss. As stated by Ms Campell ‘[s]udden and recurrent hair loss can have a profound psychological and physical impact on the lives of those affected’.[4]

   [4] Campbell 1, [5].

4. The Opponent has established branches in all states and territories except the Northern Territory. It operates four main charitable programs, listed by Ms Campbell as a) Hair donation; b) No Hair We Care; c) Wigs for Kids, and d) state-based Alopecia Areata support groups.

5. Of the ‘Wigs for Kids’ program Ms Campell states:

   On or around 2011 AAAF [the Opponent] established the Wigs for Kids program to help children suffering from Alopecia Areata and their families to purchase a wig. The program works by providing a child who applies for a grant with a voucher valued at $400 (inclusive of GST) to purchase a wig from a local wig provider. The voucher covers the cost of the wig as well as wig stand, hair brush, speciality shampoos and conditioners.[5]

   [5] Campbell 1, [11].

6. The Opponent’s website was launched in 2010 and a page dedicated to the ‘Wigs for Kids’ program was created in around November 2011. The Opponent has had a social media presence on platforms including Facebook, LinkedIn, Instagram and YouTube since 2010.

7. Various promotional materials of the Opponent are exhibited as well as references to either the Opponent or its ‘Wigs for Kids’ program in sources from various third parties.

8. As to the Applicant, it is a registered charity which since 1998 has funded research to assist doctors, nurses, researchers, families, support groups and hospitals involved in caring for children with cancer. It funds clinicians and oncology units in hospitals, as well as providing direct family financial assistance for items including wigs for children who are suffering hair loss due to chemotherapy.

9. In 2004 the Applicant received its first request from a hospital social worker to provide a wig for a child with cancer. Since then, the Applicant has developed an operating model to provide such wigs which involves asking its supporters to donate their hair to the Applicant, who in turn passes it on to its wig maker so that that the Applicant can provide wigs to children or adolescents who have lost their hair due to cancer treatment. The Applicant declares that its own charter prevents it from providing wigs for any other reason than for a child suffering with cancer.

10. At some point after October 2020, the Applicant declares its management team coined the name ‘Wigs 4 Kids’ after noticing that most of the traffic to the Applicant’s website was coming in search of hair donations. In late 2020 and early 2021 the Applicant declares it searched sources including Google® and the Australian Securities and Investments Commission for other parties using ‘Wigs 4 Kids’ but found no relevant results. It then obtained an assessment of registrability through IP Australia’s ‘Headstart’ service, which advised that the words were not distinctive but that this could be remedied by the addition of a distinctive device. The Applicant decided to adapt the device used in its long-standing ‘Kids with Cancer’ trade mark (registered since 2002),[6] and applied for registration of the Trade Mark in November 2020.

    [6] See Australian trade mark registration 912594.

11. It then set up its own fundraising site within the ‘kids with cancer’ website utilising the name ‘Wigs 4 Kids’ in early 2021.

Section 58

1. Section 58 of the Act provides:

   58 Applicant not owner of trade mark

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

   Note:         For applicant see section 6.

2. The term ‘owner’ is not defined in the Act, nonetheless there are numerous court decisions which have considered its meaning. It is well established that in the absence of fraud the owner of a trade mark in Australia for particular goods and/or services is taken to be the first person to use it in respect of those goods and/or services, or apply for its registration in respect of those goods and/or services, whichever is the earlier. The courts have established three factors that must be satisfied by an opponent to prove that an applicant is not the owner of the trade mark it seeks to register. In the context of the subject opposition, they are that:

   ·     The Trade Mark must be substantially identical to the trade mark(s) relied upon by the Opponent;[7]

   ·     The Applicant’s services must be the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent are used;[8] and

   ·     Use of the trade mark(s) relied upon by the Opponent must have commenced in Australia prior to whichever is the earlier of: (a) the application to register the Trade Mark, or (b) any use of the Trade Mark in Australia by the Applicant.[9]

   [7] Carnival Cruise Lines Inc. v Sitmar Cruises Limited [1994] FCA 936 (Gummow J).

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

   [9] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 (McGarvie J).

3. The trade mark relied upon by the Opponent for the purposes of s 58 is the phrase ‘Wigs for Kids’ (‘Opponent’s trade mark’). As will become apparent it is appropriate to begin with an analysis of whether that phrase is substantially identical to the Trade Mark.

4. In Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited Windeyer J articulated the test for substantial identity as:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

   [10] [1963] HCA 66, [12].

5. The Trade Mark and the Opponent’s trade mark are shown side by side below. It is immediately apparent that there are significant differences, primarily that the Trade Mark comprises an image of a child’s drawing of two children amongst grass and flowers with the words ‘Wigs 4 Kids’ in child-like script, whereas the Opponent’s trade mark is comprised only of the words ‘Wigs for Kids’ in plain font.

   WIGS FOR KIDS

6. The Opponent submits nonetheless that it can be concluded the respective trade marks are substantially identical. It begins with the proposition that Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited (‘Thorpedo’)[11] implies that substantially identity arises where the respective trade marks are either visually or aurally identical, on account of the Bennett J’s statement (in the context of a comparison between a word mark and a composite mark):

   For the purposes of substantial similarity, the totality of the characteristics of the marks should be taken into account. In my opinion, compared side by side, the marks are not substantially identical either visually or aurally.[12]

   [11] [2003] FCA 901, [60] (Bennett J).

   [12] Ibid, [60].

7. Following on from this proposition, the Opponent asserts there are two bases upon which a finding of substantial identity may be made. The first basis for alleged substantial identity is that the Trade Mark is comprised of two separate trade marks, the words ‘Wigs 4 Kids’ and the device, and the words are substantially identical to ‘WIGS FOR KIDS’ (‘4’ being commonly understood to mean ‘for’). To support its argument the Opponent cites Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’),[13] Seven-Up Co v Bubble Up Co Inc (‘Seven-Up’)[14] and E & J Gallo Winery v Lion Nathan Australia Pty Limited (‘Gallo’),[15] which I will discuss further below.

   [13] [2007] FCAFC 184 (Kenny, Gyles and Allsop JJ) (‘Colorado’).

   [14] (1987) 9 IPR 259 (King J) (‘Seven-Up’).

   [15] [2010] HCA 15 (French CJ, Gummow, Heydon, Crennan and Bell JJ) (‘Gallo’).

8. The second asserted basis for substantial identity is that the words ‘Wigs 4 Kids’ are the dominant cognitive cue in the Trade Mark, and they are substantially identical to ‘WIGS FOR KIDS’. In this regard the Opponent cites Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’).[16]

   [16] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

9. I am not persuaded by either of these arguments. It is well established that trade marks are to be assessed as wholes, not dissected into component parts. Justice Bennett recognised this in her discussion of substantial identity in Thorpedo:

   It is not just a question of adding up and comparing the points of resemblance and dissimilarity, nor of portions of a word (In the Matter of an Application of William Bailey (Birmingham) Ltd to Register a Trade Mark and Opposition Thereto by AC Gilbert Co [1935] 52 RPC 136 at 153). It is the general effect of ‘the respective wholes’ (Clark v Sharp [1898] 15 RPC 141 at 146).[17]

   [17] Thorpedo (n. 11), [53] (emphasis in original).

10. Her Honour’s statement quoted in paragraph 26 of this decision was made in the context of an argument put to her that substantial identity relied upon visual similarity and that aural similarity was irrelevant. Her Honour found nothing in the Act to support this argument, and having determined already that a total impression of dissimilarity arose from a side by side comparison of the trade marks, proceeded to apply the principles of comparing essential elements to an aural comparison of the trade marks. Her Honour specifically states at [58] of Thorpedo that ‘[i]n considering the total impression, both the visual and aural aspects are relevant’. Accordingly, I do not consider her Honour to have indicated that substantial identity exists on the basis of one or the other of visual or aural equivalence. Rather, both were relevant but neither existed when comparing the trade marks before her.

11. In relation to whether the Trade Mark is comprised of two separate trade marks, the Opponent points to Exhibit PJB-7 of Bodman[18] to allege that the Applicant has, and intends, to use the words of the Trade Mark without the device. On this basis it argues therefore that the words comprise a separate trade mark and the appropriate comparison is between them and the Opponent’s trade mark.

    [18] Exhibit PJB-3 of Bodman was also raised in written submissions, but not addressed in oral submissions. Exhibit PJB-3 does not relate to use by the Applicant, and I confirm that I do not consider it relevant to the argument put by the Opponent.

12. Exhibit PJB-7 comprises pages from the Applicant’s website, the first of which is headed by the Trade Mark, beneath which appears the words ‘wigs-4-kids’ as part of the addresses of several related web pages, and ‘Wigs 4 Kids’ as a heading in enlarged, stylised font. I do not consider the use of the words as part of web page addresses relevant – web page addresses usually contain only textual elements, so it is unsurprising that the words are used absent the device. The enlarged, stylised heading is a use of the words absent the device. However, the Trade Mark does appear at the top of the page, somewhat diluting any trade mark significance of the words used as a heading. Additionally, those words describe the name of a service providing wigs for kids, further reducing any trade mark significance they possess. Lastly, the assessment before me is of the Trade Mark applied for and the notional use to which it can fairly be put; it is not informed by how it may have been used in the past.[19]

    [19] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).

13. I do not consider that Colorado, Seven-Up or Gallo assist the Opponent’s case. In Colorado Allsop J observed that the word ‘Colorado’ was always used with a mountain peak device such that the two components operated as part of a combination and did not operate as separate marks. Therefore, ownership of the word could not be proved by first use of the combination. However, the inverse does not necessarily hold true, namely that a use of the words absent the device indicates that those words operate as a separate trade mark. Firstly, such use by the Applicant is limited so it cannot be said the Applicant always, or even frequently, uses the words in isolation. Secondly, the use relied upon is in combination with the Trade Mark applied for and the words possess a descriptive quality; both are factors which reduce any trade mark significance of those words.

14. Seven-Up is cited by the Opponent on the basis that it was allegedly found the applicant in that case was to be treated as if it intended to use ‘up’ in isolation, as the Opponent asserts the Applicant intends here. Seven-Up came to the conclusion that the trade marks ‘bubble up’ with bubble device and ‘UP’ were not deceptively similar, however use of the ‘bubble up’ composite trade mark would nonetheless be a use of ‘UP’ (which would therefore place the two within the bounds of substantial identity). It is noteworthy that King J had already found the ‘bubble up’ composite trade mark was non-distinctive, nor was it capable of becoming distinctive. His Honour considered the words ‘bubble up’ within a device of bubbles upon aerated drinks would be taken ‘to be a reference to their effervescence and not to their manufacturing or trade origin’.[20] In that context his Honour went on to find that use of the ‘bubble up’ composite trade mark would be a use of ‘up’, on the basis that ‘up’ was a prominent and distinct feature of the ‘bubble up’ composite mark ‘retaining its distinct appearance, sound and meaning’.[21] I would not characterise this as a finding that the applicant was to be treated as using ‘up’ in isolation, but rather that ‘up’ retained its characteristics in the composite mark which did not have other distinctive features to differentiate the two. Here, whilst the words ‘Wigs 4 Kids’ retain their appearance, sound and meaning in the Trade Mark, it cannot reasonably be said that the device component of the Trade Mark would be taken to be simply a reference to the services. Rather, it serves to differentiate the Applicant’s services.

    [20] Seven-Up (n. 14) 262.

    [21] Ibid, 268.

15. Somewhat related considerations were raised in Gallo, wherein a device depicting a bare foot was said to be no more than an illustration of the word BAREFOOT, and so use of the word BAREFOOT with the device was taken to be use of the word alone. Whilst the device here is of children, it cannot be said that it is an illustration of the words ‘Wigs 4 Kids’. At most, the Trade Mark alludes to children by the nature of its rendering and the subject of the device. It may also allude to baldness, although stick-figure drawings commonly omit hair. It is not, however, a depiction of a wig or an unambiguous depiction of the intended recipients of the wigs. It is therefore not an illustration of the words.

16. The Applicant also raises a relevant point regarding the cohesion of the elements of the Trade Mark: namely that the child-like rendering of both the words and the drawing creates an impression that integrates the two elements as a single drawing to constitute a single trade mark.

17. For the reasons above, I do not consider that the Trade Mark is comprised of two separate trade marks.

18. As to the second basis upon which substantial identity may allegedly be found, the Opponent contends that the dominant cognitive cue of the Trade Mark is the words and it is substantially identical to the Opponent’s trade mark. It cites Pham Global in support of its proposition, wherein substantial identity was found to exist between trade marks that did contain differences, but those differences were not considered to be essential elements (and therefore were not dominant cognitive cues). I am not satisfied that here the differences between the trade marks relate only to inessential features. Whilst the difference of the numeral ‘4’ and the word ‘for’ is only slight – ‘4’ being commonly used and understood as shorthand for ‘for’ – the presence and absence of the distinctive device is a fundamental difference. As already stated, the device is not an illustration of the words nor is it a mere depiction of the recipients of the services. It is a highly stylised drawing of children which carries at least as much significance in the Trade Mark as do the words. As noted in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd:

    [So]me caution needs to be exercised before characterising words in a complex composite registered trade mark as an ‘essential feature’ of that mark in assessing the question of deceptive similarity. If such a characterisation is made too readily, it effectively converts a composite mark into something quite different.[22]

    [22] [2004] FCAFC 196, [100] (Moore, Sackville and Emmett JJ).

1. Accordingly, I do not consider that the words of the Trade Mark comprise its sole dominant cognitive cue.

2. Bearing the differences between the parties’ trade marks in mind, and being unpersuaded by the Opponent’s arguments, I do not consider the Trade Mark is substantially identical to the Opponent’s trade mark. The ground of opposition under s 58 therefore fails.

Section 60

1. Section 60 of the Act provides:

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

   (a)another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. Section 60 does not require deceptive similarity between trade marks nor similarity between services, although as a matter of logic the greater the degree of similarity between the marks and/or respective services, the greater the likelihood of confusion. It requires only that another trade mark had a relevant reputation, and because of that reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. The Opponent relies upon the Opponent’s trade mark, that is, the words ‘Wigs for Kids’ to establish the ground.

4. The seminal case for determining reputation is McCormick & Co. Inc. v McCormick,[23] wherein Kenny J considered the meaning of the word ‘reputation’ and articulated the test for s 60 as follows:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the McCormick & Co marks by the public generally".

   Does the evidence establish that in Australia before [the priority date] the [opponent’s] marks were recognised by the public generally and, because of that, the use by [the applicant] of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing [the applicant’s] product to the [opponent]?[24]

   [23] [2000] FCA 1335, (‘McCormick’) (Kenny J).

   [24] Ibid [81]-[82].

5. At the same time, the size of relevant audience must be taken into account. In Renaud Cointreau v Cordon Bleu International Ltee it was recognised that the reputation required to be demonstrated was:

   [O]ne of which a significant or substantial number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.[25]

   [25] [2001] FCA 1170, [74] (Moore, Tamberlin and Goldberg JJ).

6. Here, the Opponent has indicated that Alopecia areata affects only 2 per cent of the Australian population.[26] I therefore bear in mind that the relevant audience for its services is narrow, although not limited only to those who receive wigs but including also members of the public who might be sufficiently motivated to donate funds.

   [26] Campbell 2, [11].

7. Reputation is commonly inferred from high volumes of sales and advertising expenditure (or, as would be relevant here, the value of vouchers donated or funds raised) without any direct evidence of consumer appreciation of a trade mark.[27] Additionally, as pointed out by the Opponent, spreading awareness of the relevant condition amongst the community is as much a goal as raising funds.

   [27] McCormick, (n. 23) [86].

8. The Opponent has existed for approximately a decade in most states and territories (with the exception of Tasmania which did not open a branch until 2018).[28] The first voucher it issued to a child was in 2012, and since then it has issued vouchers representing a modest, though still commercially significant, total amount (given the specialised market). However no yearly breakdown of when vouchers were issued is provided, so I cannot determine which apply to the period before the Relevant Date. Annual revenue from 2014 to 2021 is provided, representing significant funds raised given the size of the relevant market.

   [28] Campbell 1, [4]-[8].

9. The Opponent’s trade mark is declared to have been continuously used since 2011. It is used on the Opponent’s website, its application form, on social media, as part of Google® advertisements and in various materials promoting the program including brochures, emails, newsletters, blogs, and news articles. Much of the use demonstrated is in combination with the acronym AAAF and/or a logo reminiscent of an eye or a person with arms upheld and emanating rays, as shown below.

(The above two images are partial images of the Opponent’s web pages)

1. An analytics report and traffic data relating to the above web pages is given, however they relate to the period after the Relevant Date. Similarly, Google® search results for ‘wigs for kids’ and ‘wigs 4 kids’ are provided although the searches were conducted after the Relevant Date. They show that the Opponent’s ‘Wigs for Aussie Kids – Wigs for Kids’ page is listed first, as an ‘Ad’, in the former and its page ‘Wigs for Kids | Australia Alopecia Foundation’, is listed fourth in the latter.[29] The results of a Google® search conducted in 2016, before the Relevant Date, are exhibited but the results relate to a search for ‘aaaf’, not the Opponent’s trade mark.

   [29] I note here that during the oral hearing, the Applicant submitted that the Google® search engine adapted to the habits of the user, such that a person who frequently searched for ‘AAAF’ or the Opponent would have results related to them higher up in their search results. The Opponent considered this information to be new evidence and the Applicant contended it was common knowledge. I have disregarded the statement. I do not accept that this alleged function of the Google® search algorithm is of such common knowledge that evidence supporting the statement is not required (as opposed to, for example, the way that paid advertisements are given prominence over organic search results). To that end, I have taken the Google® search results at face value.

2. The Opponent’ has a modest, though still commercially significant (given the size of the relevant audience), number of followers on its social media including Instagram, Facebook, LinkedIn and YouTube. However, it is the number of followers as at March 2022, after the Relevant Date, which is provided.

3. Considering the totality of the Opponent’s evidence, I am not satisfied that the Opponent’s trade mark had a reputation of the kind anticipated by s 60 of the Act as at the Relevant Date. This is particularly so because much of the use is in combination with other indicia that identifies the Opponent, such as its name, the acronym AAAF, or the logo. Additionally, significant parts of the evidence do not relate to the period before the Relevant Date. Finally, as previously noted, the words ‘Wigs for Kids’ are apt to describe a charitable program that provides wigs for kids. The trade mark significance of those words is therefore reduced.

4. Given I am not satisfied that the Opponent’s trade mark had a reputation at the Relevant Date, the ground of opposition under s 60 cannot be established.

Decision

1. Section 55 of the Act relevantly provides:

   Decision

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has not established a ground of opposition. Trade mark application 2134911 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

Costs

1. At the hearing both parties sought an award of costs. The Applicant made submissions to the effect that should costs be awarded against the Opponent, there was precedent and grounds to have costs awarded in amounts higher than that in Schedule 8 of the Regulations. I directed that the Applicant may provide submissions identifying authority for this after the hearing, which it filed in due course. The Opponent responded with an allegation that the Applicant’s submissions regarding costs contained new evidence, and expressed concern that the new evidence would be taken into account in the determination of the substantive matter. As I had not (and have not) yet read the submissions regarding costs, I undertook not to read them until the substantive decision here was issued. To that end, the matter of costs will be the subject of a separate decision to be issued shortly.

Nicole Worth

Hearing Officer

Delegate of the Registrar of Trade Marks

26 July 2023