Kimberly-Clark Worldwide, Inc v Woolworths Group Limited

[2023] ATMO 172

TRADE MARKS ACT 1995

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

Re:Opposition by Kimberly-Clark Worldwide, Inc to registration of trade mark application number 2128142 – little ones ultra dry (stylized) - in the name of Woolworths Group Limited

Delegate:

Bianca Irgang

Representation:

Opponent: Roseanne Mannion of Spruson & Ferguson

Applicant: David Larish of counsel instructed by King & Wood Mallesons

Decision:

2023 ATMO 172
Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 60 and 62A pressed at hearing – no ground of opposition established.

Background

1. Woolworths Group Limited (‘the applicant’), filed trade mark application number 2128142 on 21 October 2020 in class 5 of the Nice Agreement Concerning the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘Trade Mark’)

   Trade mark number:           2128142            

   Filing Date:  21 October 2020 (‘Priority date’)

   Specification:  Class 5: Babies' nappies (diapers); Disposable training pants (nappies or diapers) for babies; Disposable training pants (nappies or diapers) for toddlers; Disposable training pants (nappies or diapers) for young children; Disposable underpants (nappies or diapers) for babies; Disposable underpants (nappies or diapers) for infants; Disposable underpants (nappies or diapers) for young children; Nappies; Swimming nappies (diapers)

2. Acceptance of the applications for possible registration was published in the Australian Official Journal of Trade Marks on 22 March 2022. Subsequently, Kimberly-Clark Worldwide, Inc (‘the opponent’) filed its Notice of Intention to Oppose registration followed by its Statements of Grounds and Particulars[1].

   [1] Which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).      

4. I heard the opposition in Canberra as a delegate of the Registrar of Trade Marks on 5 October 2023. The applicant was represented by David Larish of counsel instructed by King & Wood Mallesons. The opponent was represented by Roseanna Mannion of Spruson & Ferguson.

   Grounds of Opposition

5. The Notices nominated a number of grounds of opposition under the Trade Marks Act 1995 (‘the Act’) however, only the grounds of opposition under sections 42(b), 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’.

   [2] [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Declaration of Philippa Bridget Gagg (‘Gagg’) made on 4 August 2022 including Exhibits PBG-1 to PBG-9 and Confidential Exhibits PBG-10 and PBG-11

   Evidence in Answer

   ·Declaration of Maggie Chan made on 8 November 2022 with Annexures 1 to 4

   Evidence in Reply

   ·Declaration of Fabiola DosSantos made on 11 January 2023 including Annexures 1 and 2  

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act provides:

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

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

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

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

8. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade marks listed in paragraph 13 below. I further note that the goods of interest to the opponent are the same nappy goods of interest to the applicant.

9. The principles relevant to the assessment of the likelihood of confusion were set out by French J in Registrar of Trade Marks v Woolworths: [4]

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[5]

   “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

   [4] [1999] FCA 1020 [50]

   [5] [1973] HCA 43; (1973) 129 CLR 353, 362

10. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    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 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick 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 her product to the company?

    [6] [2000] FCA 1335 [81]

11. For background, Ms Gagg avers that the opponent is a United States based company that was founded in 1872 in Neenah, Wisconsin, United States of America. According to Ms Gagg the opponent is a leading global manufacturer of a wide range of family care, personal care, professional and health care products, made from natural and synthetic fibres for use in the home, business and industry. She states that the opponent’s Australian company, now known as Kimberly-Clark Australia, commenced operations in Australia in 1926, selling Kotex napkins that were imported from the United States of America. During the 1930s, the opponent began manufacturing feminine care products in Australia and importing Kleenex facial tissues. In 1939, the opponent expanded its local operations in Australia to include packaging of Kleenex facial tissues at its mill in Surry Hills, New South Wales, Australia. According to Ms Gagg, the opponent’s Australian subsidiary is responsible for the sale, distribution, advertisement and promotion of the goods manufactured by the opponent in Australia and has been responsible for these actions since the 1930s.

12. Gagg states the opponent commenced use of the ULTRA DRY trade mark in relation to nappies in Australia in or around 1999. The opponent asserts that use of the ULTRA DRY trade mark has been continuous in Australia since that date and that use of the ULTRA DRY trade mark in relation to nappies by the opponent has extended throughout all of Australia.

13. I note from exhibit PBG-1 accompanying Gagg that the opponent uses its ULTRA DRY trade mark[7] in conjunction with its other well-established brand ‘HUGGIES’ on its nappies and nappy pant products most commonly in the ways below:

    [7] The opponent refers to its trade mark throughout its submissions as ULTRA DRY solus and when discussing the opponent’s arguments I will adopt its terminology.

14. The opponent has argued that it has established a reputation in its ULTRA DRY trade mark  because:

    ·Nappies have been continuously sold by reference to the ULTRA DRY trade mark all over Australia since 1999 (Gagg at [11]-[12]) which is 21 years before the Priority date.

    ·Revenue generated from sales of the opponent’s goods bearing the ULTRA DRY trade mark contained in Confidential Exhibit PBG-10 are substantial.

    ·The approximate expenditure on advertising and promotion of nappies sold under or by reference to ULTRA DRY in Australia during the period 2010 and 2021 is included in Confidential Exhibit PBG-11 accompanying Gagg and it is substantial.

    ·ULTRA DRY is used as a trade mark to indicate a particular range of the opponent’s nappies. It is prominently used as a trade mark on the packaging of the nappies in Australia (Gagg at [14] and Exhibit PBG-1).

    ·The nappies sold under the ULTRA DRY mark, or a mark containing ULTRA DRY, have been promoted in Australia through a variety of mediums such as television advertisements, print advertisements, catalogues, website advertisements and social media platforms (Gagg at [15])

    ·Examples of advertisement and promotion in catalogues published by the Woolworths and Coles supermarket chains are included in Exhibit PBG-2 (Gagg at [16-17] and Exhibit PBG-2).

    ·Other examples of advertisement and promotion in the nature of print brochures, range sheets, outdoor advertisements and historical packaging between 1999 and the Priority Date are included in Gagg at Exhibit PBG-3.

    ·The nappies sold under ULTRA DRY have been extensively advertised on national, regional and pay television in Australia during the period 1999 to 2020. Details of the various campaigns and channels where the advertisements were shown are listed in Gagg at [19] and Exhibit PBG-4. This Exhibit also includes details of social media campaigns featuring the goods sold under or by reference to the ULTRA DRY trade mark in Australia.

    ·The nappies sold under or by reference to the ULTRA DRY trade mark have been advertised via the Opponent’s website which is specifically directed towards Australian consumers (Gagg [20]). Extracts from this website during the period 2018-2021 are included in Exhibit PBG-5. These illustrate

    (a) that ULTRA DRY is used prominently as a trade mark on the packaging of the nappies,

    (b) ULTRA DRY is used prominently as a trade mark on the ribbon on the homepage where consumers can find out more information about the ULTRA DRY goods,

    (c) ULTRA DRY is used to denote a brand of nappies offered by the Opponent, (d) the goods can be purchased through a range of outlets such as amazon.com.au, BigW, Cincotta, Coles, Pharmacy4less, Woolworths, catch.com.au, Chemist Warehouse and Baby Bunting.

    ·Examples of the ULTRA DRY goods sold through a variety of retailers are included in Exhibit PBG-6 (Gagg at [21]).

    ·Examples of advertisement and promotion via social media channels such as Facebook®, Instagram® and YouTube® during the period 2017-2021 are included in Exhibit PBG-7 (Gagg at [22]).

    ·The nappies sold under or by reference to the ULTRA DRY trade mark have been the subject of commentary and review by the Australian consumer advocacy group “Choice”. The nappies received an 85% expert rating and shows a comparison with other similar goods on the market (Gagg at [23] and Exhibit PBG-8].

    ·Australian consumers clearly associate ULTRA DRY with a brand of nappies sold by the opponent’s evidenced by the customer views included in Exhibit PBG-9 (Gagg at [24]). Here it says “definitely recommend Ultra Dry Nappy pants for their ease of use easy on and very quick to remove they are nice and soft with a wide band for comfort my little man had no leaks”

15. The evidence before me is considerable. It is clear that the opponent has used the expression ULTRA DRY in regards to its nappy goods. However, as seen in paragraph 13, the expression ULTRA DRY is overwhelmingly used in conjunction with the distinctive and striking word HUGGIES. I have only been able to find limited examples in the evidence of the words ULTRA DRY being used in plain text. I note that the examples I have found are from Woolworths and Coles catalogue written descriptions of the products in small text along the bottom of large pictures of the opponent’s goods which all bear the striking word HUGGIES in prominent postion[8].  The applicant has argued:

    [8] Exhibit PBG-2 accompanying Gagg

    The Opponent did not have a reputation in ULTRA DRY solus at the Priority Date.

    The evidence indicates that ULTRA DRY was not used on its own before the Priority Date. Where a word has not been used on its own, it is very unlikely that it has a reputation: see e.g., Monster Energy Co v Mixi Inc (2020) 156 IPR 378; Zero Corporation v Lifinia Pty Ltd (1993) 154 at 163-164.

    Indeed, whenever the words ULTRA DRY appeared on HUGGIES nappies before the Priority Date, they appeared in the form of the Composite Mark…

    …Even if a trade mark (such as the Composite Mark) as a whole has a reputation, that does not mean that an individual component of it has a reputation. Rather, it is necessary to establish that those words have a reputation on their own: e.g., Monster Energy at [142], [151], [157], [170]-[173].

    Including for the following reasons, the evidence does not establish that, by reason of its use in the Composite Mark or otherwise, there was a reputation in ULTRA DRY at the Priority Date.

    First, HUGGIES is the dominant component of the Composite Mark. HUGGIES is the brand of the nappies.[9] As the Opponent asserts at OS [30] (and the Applicant agrees), there is a reputation in the brand HUGGIES: OS [30].

    Secondly, the words ‘ULTRA DRY’ are descriptive of a characteristic of the HUGGIES nappies, that is, that they are ultra-dry. In other words, the nappies are very good at absorbing wetness or remaining free from moisture, and are, in this sense, very, extra or ultra dry. The descriptiveness of the words ULTRA DRY is underscored by the various phrases in which those words have appeared, as shown at [14], for example ULTRA DRY NAPPY PANTS and ULTRA DRY NAPPIES.

    Thirdly and relatedly, given their descriptive nature the words ULTRA DRY lack any inherent adaptation to distinguish. As Hearing Officer Thompson said in PrecedentProductions Pty Ltd v Interested in Business Pty Ltd (2018) 142 IPR 73 at [35]:

    Whilst ‘reputation’ and ‘inherent adaptation’ are different concepts they are interrelated and to find that the ground succeeds under section 60 would be tantamount to both allowing the Opponent a monopoly in the Opponent’s Word Trade Mark and, by inference, acknowledging an entitlement to registration of the Opponent’s Word Trade Mark which does not exist because that trade mark lacks any inherent adaptation to distinguish the Opponent’s services and no amount of use would render it in fact distinctive only of the Opponent’s services.

    As there was no reputation at the Priority Date in ULTRA DRY solus– being, the only asserted mark relied upon in the SGP – it follows that the s 60 ground must fail at the reputation threshold.

    In the event that the Opponent is permitted to rely on the non-SGP Marks (contrary to the above), for the purposes of this opposition the Applicant does not dispute the existence of a reputation in the Composite Mark.

    [9] Reece Pty Ltd v Rogers Seller & Myhill Pty Ltd (2010) 85 IPR 647 [56]

16. I agree with the applicant. While the opponent has demonstrated a significant reputation in the HUGGIES ULTRA DRY trade mark there is very limited evidence of the words ULTRA DRY solus being used as a trade mark. More to the point, because of the way the opponent uses its HUGGIES ULTRA DRY trade mark with the word HUGGIES as the most prominent and emphasized element in the trade mark coupled with the descriptive meaning of ULTRA DRY when applied to the nappy goods of interest to the respective parties, I am not satisfied that the opponent has demonstrated a sufficient reputation in the words ULTRA DRY solus. While I am satisfied that the opponent has a significant reputation in its HUGGIES ULTRA DRY trade mark, is it likely to cause confusion in the Australian marketplace when a consumer is faced with the Trade Mark? I am not satisfied that it would.

17. While I have no doubt that the opponent does have a reputation in its HUGGIES ULTRA DRY mark, I am not satisfied that a consumer faced with the stylized composite Trade Mark incorporating the words LITTLE ONES ULTRA DRY would be deceived or confused into believing that there was somehow a connection between the opponent’s nappy goods and those of the applicant. The differences between the respective trade marks are simply too great.

18. The opponent has argued that when the HUGGIES ULTRA DRY mark is compared as a whole with the Trade Mark, that the visual, aural and conceptual similarities mean that the respective trade marks are more similar than not. As a result of this, and the reputation established by the opponent in ULTRA DRY, consumers are likely to be confused or deceived as to the origin of the goods. The opponent states that at the very least, consumers will be legitimately caused to wonder if there is a commercial connection between the goods sold under these marks when this is not the case. The opponent says that consumers familiar with the opponent’s ULTRA DRY trade mark and the variety of ways that it is used, promoted and advertised by the opponent will have cause to wonder whether it might not be the case that the goods offered under or by reference to the Trade Mark are produced by or associated with the opponent

19. However, I am not persuaded by this reasoning. The opponent’s evidence overwhelmingly demonstrates the use of the words ULTRA DRY under a large, prominent and distinctive word element being HUGGIES. As far as brand extension goes, there is nothing before me in the evidence to suggest that a consumer wanting to purchase nappies is going to focus on the descriptive expression ULTRA DRY in the Trade Mark and would be caused to wonder whether or not those LITTLE ONES ULTRA DRY nappy goods are somehow related to the opponent’s very well-known HUGGIES ULTRA DRY nappy goods.

20. I am not satisfied that the applicant’s use of its Trade Mark will result in any significant degree of confusion or deception in the marketplace. The opponent has not established the section 60 ground of opposition.

    Section 42(b) - Contrary to Law

1. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:
                    (a) the trade mark contains or consists of scandalous matter; or
                    (b) its use would be contrary to law.

2. Section 42(b) prevents registration of a trade mark that would be contrary to law.

3. The opponent claims that use of the Trade Mark will breach section 18 and/or section 29 of the Australian Consumer Law (‘ACL’) being Schedule 2 to the Competition and Consumer Act 2010 (Cth), as well as constitute passing off.

4. Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. These are stricter requirements than section 60 which can be established if the use is likely to cause confusion or wonderment.[10]

   [10] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J); Hasbro Inc v Imagination Holdings Pty Ltd (2005) 66 IPR 636; [2005] ATMO 43.

5. As already established in respect of section 60, I am not satisfied that use of the Trade Mark in respect of the applicant’s goods is likely to deceive or cause confusion. It therefore follows that under the stricter test requirements of the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

6. Where a trade mark does not contravene s 18 of the ACL, it is unlikely to amount to passing off.[11]  Justice Hill noted in Re Equity Access Pty Ltd v WestpacBanking Corporation[12] that:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[13]

   [11] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer R.Wilson).

   [12] [1989] FCA 771.

   [13] Ibid, [40].

7. Sections 52 and 53 of the Trade Practice Act 1974 (Cth)were the antecedents of sections 18 and 29 of the ACL. Given my findings in relation to sections 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

8. For the above reasons, the ground of opposition under section 42(b) has not been established.

   Section 62A – Application made in bad faith

9. Section 62A of the Act provides:

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

10. Justice Bennett in DC Comics v Cheqout Pty Ltd[14] considered bad faith and endorsed the approach taken by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse (No 2) [15], wherein her Honour commented:

    Bad faith, in the context of s62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in the United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in [Harrison’s Trade Mark Application [2005] FSR 10, in which the “combined test” of bad faith was said to involve both subjective and objective elements].

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character…

    The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.

    [14] [2013] FCA 478; (2013) 101 IPR 334.

    [15] [2012] FCA 81; (2012) 94 IPR 551, [164].

11. The opponent has based its bad faith ground of opposition on that basis that given the opponent’s history of use of, and reputation in, the ULTRA DRY trade mark it is clear that ULTRA DRY is recognised in Australia as the trade mark of the opponent. Coupled with this, the opponent pointed out that its goods are sold in Woolworths supermarkets in Australia which are the supermarkets operated by the applicant.

12. Therefore, the opponent concluded that the applicant had acted in bad faith because:

    In this capacity, there is no doubt that WGL (the applicant) would be very familiar with the ULTRA DRY nappies sold in its retail outlets. It has chosen to adopt and seek registration of a trade mark which wholly includes ULTRA DRY for nappies. The Applicant has not provided any information around why it adopted a mark containing ULTRA DRY, in a scenario where the Opponent has been using ULTRA DRY as a trade mark in relation to its nappies since 1999 and these goods are sold in WGL’s supermarkets, despite having an opportunity to do so.

    Taking into account all of the circumstances, it is clear that a person in the position of the Applicant adhering to normal commercial standards would not have sought to register the Opposed Mark.

13. I am not persuaded that the opponent has discharged the onus of establishing that the applicant, as at the Priority date, applied for the Trade Mark in bad faith, in the sense that in all the circumstances, persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behavior.

14. The applicant states that there is nothing to suggest that the opponent’s use of the words ULTRA DRY or the HUGGIES ULTRA DRY trade mark had any bearing on the selection of the Trade Mark by the applicant.[16] The words ‘ULTRA DRY’ are descriptive of a characteristic of the applicant’s nappies, that is, that they are ultra-dry and other traders are likely to want to use this expression in relation to the same or similar goods. In any event, the mere knowledge of another person’s trade mark before the date of application does not provide a basis for a finding of bad faith.[17]

    [16] Kinsel Pty Ltd v Bacchus Wine Merchants Pty Ltd (2019) 144 IPR 55 [32].

    [17] DXC Technology Australia Pty Ltd and Ent Services Australia Pty Ltd v Specialisterne Centre Australia Ltd (2020) 157 IPR 17 [58]

15. The applicant also emphasized the level of (dis)similarity between the Trade Mark and a prior mark provide important context in assessing whether there has been bad faith.[18] I agree with the applicant. The differences between the Trade Mark and the opponent’s HUGGIES ULTRA DRY trade mark are significant and do not give rise to any likelihood of confusion for the purposes of section 60. Given how different the respective trade marks are, it is unlikely that I would be satisfied that bad faith would be established.[19]

    [18] Holder of IP Pty Ltd v Buttita (2020) 161 IPR 315 [78]

    [19] Sigfox v Macquarie Telecom Pty Ltd (2020) 161 IPR 557 [28].

16. What I have before me is a case of two traders who have individually struck upon the descriptive expression ULTRA DRY as forming part of their respective trade marks. The opponent’s desire to seek to apply to register the Trade Mark after having stocked the opponent’s HUGGIES ULTRA DRY goods in its supermarkets is also not an indication of behavior that falls short of acceptable commercial behavior. Indeed, the evidence before me does not support the opponent’s assertions that the applicant applied for the Trade Mark in bad faith and I find that the opponent has not established this ground of opposition.

    Decision

17. Section 55 of the Act provides:

    55  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.

    Note:          Forlimitationssee section 6.

18. The opponent has not established any grounds of opposition. The trade mark applications may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Marks shall not occur until the appeal has been decided or discontinued.

    Costs

19. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

    Bianca Irgang

    Hearing Officer

    Oppositions and Hearings

    30 October 2023