KUESKI, S.A.P.I De C.V. SOFOM, E.N.R. v Llapingacho LLC
[2025] ATMO 23
•31 January 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONSRe:Oppositions by KUESKI, S.A.P.I DE C.V. SOFOM, E.N.R. to extension of protection to International Registrations designating Australia 2313952 (International Registration No. 1630140) – KUSHKI – 2345538 (International Registration No. 1721833) - KUSHKI Mundial (composite) – 2345609 (International Registration No. 1722076) – KUSHKI (composite) - held by Llapingacho LLC
Delegate: Bianca Irgang Representation: Opponent: David Larish of counsel instructed by Thomson Geer Lawyers
Holder: A J Park
Decision: 2025 ATMO 23
Trade Marks Regulations 1995 (Cth) – Opposition under reg 17A.33– ss 44 ground of opposition considered – ss 44 ground of opposition established but overcome with evidence of prior use – extension of protection allowed.Background
This decision concerns oppositions brought by KUESKI, S.A.P.I DE C.V. SOFOM, E.N.R. (‘Opponent’) to the extension of protection of International Registration Designating Australia (‘IRDA’) 2313952 which was filed 19 October 2022 in classes 36 and 42, IRDA 2345609 which has a convention priority of 21 October 2022 and was filed in classes 36 and 42, IRDA 2345538 which has a convention priority of 8 November 2022 and in classes 36 and 42 of the International Classification of Goods and Services in the name of Llapingacho LLC (‘the Holder’). Current details of the IRDAs are set out below.
Trade mark: KUSHKI
Application no: 2313952
International Registration: 1630140
Lodgement date: 19 October 2022
Specification: Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing financial transaction and payment processing services via a website portal.
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; application service provider featuring application programming interface (API) software for accepting and sending payments via credit cards, debit cards, wire transfer and cash.
Trade mark:
Application no: 2345538
International Registration: 1721833
Lodgement date: 30 November 2022
Convention details: 97667275 US
8 November 2022Specification: Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing payment processing services featuring financial transaction services via an internet web site portal.
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; application service provider featuring application programming interface (API) software for accepting and sending payments via credit cards, debit cards, wire transfer and cash.
Trade mark:
Application no: 2345609
International Registration: 1722076
Lodgement date: 10 November 2022
Convention details: 97642440 US
21 October 2022Specification: Class 36: Electronic foreign exchange payment processing; electronic payment services involving electronic processing and subsequent transmission of bill payment data; merchant services, namely, payment transaction processing services; providing payment processing services featuring financial transaction services via an internet web site portal.
Class 42: Application service provider (ASP) featuring e-commerce software for use as a payment gateway that authorizes processing of credit cards or direct payments for merchants; application service provider featuring application programming interface (API) software for accepting and sending payments via credit cards, debit cards, wire transfer and cash.
Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the IRDAs for possible protection in the Australian Official Journal of Trade Marks, the Opponent filed its Notices of Intention to Oppose the registration followed by Statements of Grounds and Particulars on 12 May 2023, 14 June 2023 and 24 July 2023 respectively (‘SGPs’). In terms of Regulations 17A.28 and 17A.34 the SGPs raised grounds of opposition under ss 42(b), 44, 58, 60 and 62A. The Holder filed its Notices of Intention to Defend on 14 August 2023, 11 September 2023 and 11 September 2023 respectively.
The Opponent requested a hearing by way of written submissions. The matter was delegated to me to decide as a delegate of the Registrar of Trade Marks on 17 December 2024. The Opponent’s written submissions were by David Larish of counsel instructed by Thomson Geer Lawyers. The Holder provided written submissions by way of its legal representatives A J Park.
Grounds of Opposition
Regulation 17A.34 of the Regulations provides that the extension of protection may be opposed on any of the grounds on which an IRDA may be rejected and also on the grounds set out in ss 58 to 61 and 62A.
The SGP nominated the ss 42(b), 44, 58, 59,[1] 60 and 62A grounds of opposition under the Act but only the s 44 ground was pursued by way of the hearing by written submissions. The Opponent bears the onus of establishing at least one of the grounds of opposition.[2] The standard of proof is the ordinary civil standard of the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of ss 44 and 60.[4]
[1] I note that the SGP for each of the oppositions was amended to add s 59 as a ground of opposition.
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
Evidence
The evidence filed in this matter consists of the following declarations being:
Evidence in Support
·Declaration of Carlos Antonio Saches Almada (‘Almada’), Senior Vice President of Lega, Compliance, Security and Internal Control of the Holder, dated 22 November 2023 accompanied by Annexures CA-1 to CA-25.
·Declaration of Mauel Rico Lopez, Founder of Manual Rico y Asociados S.A. DE C.V. trading as StratBranding, dated 17 November 2023 accompanied by Annexures ML-1 and ML-2.
Evidence in Answer
·Confidential Declaration of Sebastion Castro (‘Castro’), Managing Member and Co-Founder of the Applicant, dated 27 February 2024 accompanied by Exhibits 1 to 13.
The entirety of the evidence filed by the Holder is claimed to be confidential. I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd[5], who when in receipt of a similar claim (albeit solely in respect of the opponent in that case) stated:
The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.
This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.
Discussion
[5] [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).
Section 44
Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (Holder's trade mark) in respect of goods (Holder's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (Holder’s trade mark) in respect of services (Holder’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the Holder’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the Holder’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the Holder’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
(4) If the Registrar in either case is satisfied that the Holder, or the Holder and the predecessor in title of the Holder, have continuously used the Holder’s trade mark for a period:
(a) beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b) ending on the priority date for the registration of the Holder’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
To establish its opposition in terms of s 44(2) of the Act the Opponent must show all of the following:
·a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present Holder, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;
·the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and
·the priority date(s) of the other person’s trade mark(s) is (are) the earlier.
The Opponent is the registered owner of the following registration relied on in support of its s 44 ground of opposition:
Trade mark:
Application no: 2306830 (‘Opponent’s Registration’)
Priority date: 12 October 2022
Specification: Class 36: Online financial transaction services; electronic money transfer; financial loans; installment loans; personal loan financing; business loan services; home collection of financial payments; financial consulting and analysis; payment processing and electronic processing of payments through a global computer network; financing of sales through credits; facilitation and financing of credits
As verified on the Register of Trade Marks, the Opponent’s Registration has an earlier priority date to the Trade Mark and cover the same financial services to those of interest in classes 36 and 42 to the Holder (‘the Holder’s services’). Therefore, the remaining issue for me to determine is whether the Trade Marks are either substantially identical or deceptively similar to the Opponent’s Registration. I will refer to the Holder’s trade marks collectively as ‘Holder’s Trade Marks’ or otherwise specify the particular trade mark for ease of reference throughout the decision.
It is obvious that none of the Holder’s Trade Marks are substantially identical to the Opponent’s Registration according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[6]. While all of the respective trade marks contain the same two letter prefix KU- and the same two letter suffix -KI, the Holder’s Trade Marks contain a differing device, an additional word (in the case of the Holder’s Trade Mark no. 2345538 and differing letter and order of spelling within the body of the expression which sufficiently differentiates it from the Opponent’s Registration. All of these factors taken together precludes a finding of substantial identity with the Opponent’s Registration.
[6] (1963) 109 CLR 407, 414 (‘Shell’).
I now consider whether the Holder’s Trade Marks are deceptively similar to the Opponent’s Registration. Deceptive similarity is defined by s 10 of the Act, which states ‘[f]or the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.’ The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the Opponent’s Registration, to the impression they would get from the Holder’s Trade Marks.[7] The probability of deception must be finite and non-trivial.[8]
[7] Shell (n 6) 415 (Windeyer J).
[8] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J) (‘Woolworths’).
According to the authorities[9] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Similarities in ideas are also a possible source of confusion although the fact that the trade marks have similar ideas is not conclusive in itself. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[10] the High Court stated:
"But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods."
[9] Clark v Sharp (1898) 15 RPC 141, 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 (Dixon, Williams and Kitto JJ) (‘Cooper Engineering’); Woolworths (n 8).
[10] Cooper Engineering (n 9) [3].
Justice French in Registrar of Trade Marks v Woolworths Ltd[11] observed in relation to the expression “likely to deceive or cause confusion”:
… The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …
[11] Woolworths (n 8) [43].
The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[12] where it was stated:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[12] (1979) RPC 410, 423 (Richardson J).
The trade marks for comparison are:
Opponent’s Registration
Holder’s Trade Marks
KUSHKI
The Opponent’s Registration consists of the expression KUESKI with a device that appears to be a pot plant with ‘v’ shaped leaves. The striking and prominent element of the Holder’s Trade Marks is the six letter expression KUSHKI. It has no readily apparent and commonly understood meaning as a six letter word.
The Opponent has argued:
There is a high degree of aural and visual similarity between the dominant words KUESKI and KUSHKI. The similarity arises because the words KUESKI and KUSHKI both:
(a) contain the same prefix “KU”, which provides a strong “K” sound at the beginning of the word – it being well accepted that the first part of a mark is usually the most memorable;14
(b) contain the same suffix “KI”, which also provides a strong “K” sound at the end of the word and together with the “KU” prefix creates a striking and memorable feature;
(c) comprise the same number of letters (six)
(d) contains five letters that are the same (K, U, S, K, I) with only one middle letter that differs;
(e) are invented words; and
(f) are likely to give rise to uncertainty for consumers as to how they should be pronounced, resulting in added emphasis on the more easily recognisable prefix and suffix.
…by reason of the doctrine of imperfect recollection, consumers encountering the Opposed Marks are likely to be caused to wonder whether it might be from the same source as the KUSHKI Mark. This is based on the visual and aural similarity between the key components of the Opposed Marks and the KUESKI Mark, as submitted above, as well as for the following reasons.
The KUESKI Mark is not easy to recall. The words KUESKI and KUSHKI are invented words with no obvious meaning in the English language.[13] Where similar, invented words are more readily confused because they convey no particular meaning on which a consumer can grasp. A consumer, not to be credited with any high perception or habitual caution[14] and not having a “photographic recollection of the whole”,[15] is more likely to retain a memory of the KUESKI Mark’s distinctive prefix and suffix features than having a precise recollection of the word as a whole
[13] The word KUESKI is derived from the Nahuatl (or Aztec) word “Keski”, which means “how much”: Almada [11]. The word KUSHKI is “inspired” by the Quechuan (an indigenous language spoken in the Andes region of South America) term “cullqui”, which means “money”: Castro [7]. Cf Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 [338].
[14] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 [658].
[15] De Cordova v Vick Chemical Co (1951) 68 RPC 103 [106].
I am in agreement with the Opponent. Looking at the Trade Mark it is clear that the respective trade marks share some striking similarities. The respective trade marks share the same suffix and prefix and five of the six letters are the same although there is a differing letter ‘H’ and ‘E’. Additionally, the device in the Opponent’s Registration appears to be an abstract pot plant employing a line and a ‘v’ shaped leaves. The Holder’s Trade Mark no.(s) 2345538 and 2345609 also contain a device which uses a horizontal line topped with a ‘v’ or ‘tick’. Given all these similarities, I am satisfied that the Opponent’s Registration is deceptively similar to all the Holder’s Trade Marks. However, this does not necessarily mean that extension of protection cannot be applied.
Section 44 is subject to paragraphs 44(3) and (4) of the Act which make provision for the Holder to overcome the issue of a deceptively similar trade mark in respect of similar services on the basis of prior continuous use, honest concurrent use or other circumstances which would make extension of protection proper. I now turn to the Holder’s evidence.
Evidence of Use
The principles regarding when a trade mark has been used as a badge of origin were recently summarised in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd (‘Selfcare’), in which the High Court noted the following:
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.
Whether a sign has been "use[d] as a trade mark" is assessed objectively without reference to the subjective trading intentions of the user. As the meaning of a sign, such as a word, varies with the context in which the sign is used, the objective purpose and nature of use are assessed by reference to context. That context includes the relevant trade, the way in which the words have been displayed, and how the words would present themselves to persons who read them and form a view about what they connote. A well known example where the use was not "as a trade mark" was in Irving's Yeast-Vite Ltd v Horsenail, where the phrase "Yeast tablets a substitute for 'Yeast-Vite'" was held to be merely descriptive and not a use of "Yeast-Vite" as a trade mark. Therefore, it did not contravene the YEAST-VITE mark.
The existence of a descriptive element or purpose does not necessarily preclude the sign being used as a trade mark. Where there are several purposes for the use of the sign, if one purpose is to distinguish the goods provided in the course of trade that will be sufficient to establish use as a trade mark. Where there are several words or signs used in combination, the existence of a clear dominant "brand" is relevant to the assessment of what would be taken to be the effect of the balance of the label, but does not mean another part of the label cannot also act to distinguish the goods.[16]
[16] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [23]-[25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ) (citations omitted).
Castro avers that the Holder provides a financial technology service whereby the Holder developed a platform that was built to connect directly with processors, compensation chambers, local acquirers, and other payment infrastructure companies, including but not limited to credit card companies (such as Visa and MasterCard) in order to perform every part of a transaction, from insertion of consumer credit or debit card information, to transmission of the message to the issuing bank to accept the transaction, and receipt of the settlement of funds to pay to the corresponding merchant. The platform provides secure online payment processing for debit, credit card or cash transactions through an online web browser or an application offered under the Holder’s Trade Mark numbers 2313952 and 2345609. The majority of the Holder’s customers are businesses who want to securely transfer money between their customer’s credit card or bank account and the business’s bank account.
The evidence establishes that the Holder created the KUSHKI name and engaged the company Blu Lab to design the Holder’s Trade Mark numbers 2313952 and 2345609 in 2015. Exhibit 1 of Castro includes the various designs Blu Lab presented to the Holder. According to Castro, the Holder has operated the Kushki Platform from September 2016, with the official platform launching in early 2017 and bearing the Holder’s Trade Mark numbers 2313952 and 2345609.[17]
[17] Exhibit 3 accompanying Castro.
Castro states the Holder’s browsers and application/platform bearing the Holder’s Trade Marks have been available to consumers in Australia since its inception. The Opponent referred me to Ward Group Pty Limited v Brodie & Stone plc[18] (‘Ward Group’) where it was held, in the context of trade mark infringement, that use of a mark on the internet, uploaded onto that website outside of Australia, without more, is not sufficient to establish use of that mark in any particular jurisdiction where the mark is then downloaded (viewed). Evidence of use that was “specifically intended to be made in, or directed or targeted at, a particular jurisdiction” is required.[19]
[18] (2005) 64 IPR 1 [43] (Merkel J).
[19] Ward Group [43].
The Holder responded by arguing that that the Opponent omitted a crucial element, namely the final sentence in Ward Group at [43]:
Of course, once the website intends to make and makes a specific use of the mark in relation to a particular person or persons in a jurisdiction there will be little difficulty in concluding that the website proprietor used the mark in hat jurisdiction when the mark is downloaded.
To this end, the Holder has demonstrated that the first transaction successfully performed using the Holder’s platform bearing the Holder’s Trade Mark numbers 2313952 and 2345609 was made from an Australian bank account on 11 May 2017.[20] A number of transactions using credit or debit cards that were issued by Australian banks took place continuously between 2017 and 2022. Additionally, a number of financial transactions using Australian IP Addresses took place continuously for the years 2018 through to 2022.[21]
[20] Line 63 of Exhibit 4 accompanying Castro.
[21] Exhibits 4 and 5 accompanying Castro. See also Castro, [18]-[28].
Exhibit 7 accompanying Castro contains pages from the WayBackMachine which demonstrate use of the Holder’s Trade Mark numbers 2313952 and 2345609 on the website’s English language pages dating from 2 October 2020. While the evidence does not detail overwhelming amounts of use, I am satisfied on the balance of probabilities that the Holder has been using its Trade Mark numbers 2313952 and 2345609 in Australia since before the priority date of the Opponent’s Registration and on a continuing basis for all of the Holder’s services. Given the evidence of prior and continuous use, I am satisfied it is appropriate to apply the provisions of paragraph 44(4).
When it comes to the Holder’s Trade Mark number 2345538 for the KUSHKI Mundial (composite) trade mark, Exhibit 7 accompanying Castro contains copies of screenshots from the WayBackMachine dated 30 September 2022 which demonstrates the trade mark being used by the Holder on the Holder’s services. Given that this is also before the priority date of the Opponent Registration I am satisfied that it is also appropriate to apply paragraph 44(4) in this instance.
Decision and Costs
Regulation 17A.34N provides:
17A.34NDecision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2)The Registrar must tell the International Bureau of his or her decision.
I find that the Opponent did establish a ground of opposition under s 44, however, the Holder was able to overcome this ground via production of evidence of prior, continuous use and honest concurrent use. Accordingly, I direct that protection of the Holder’s Trade Marks be extended in respect of all the listed services and that the following endorsement be added to each of the Holder’s Trade Marks:
Provisions of subsection 44(4) and/or Reg 4.15A(5) applied
The Holder’s Trade Marks may proceed to protection one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and the protection of the Holder’s Trade Marks be subject to any orders of the Court.
The International Bureau will be notified of the Registrar’s decision.
The Holder has sought an award of costs in its favour. All three opposition matters had common evidence and this being the case I award costs against the Opponent in terms of Schedule 8 of the Trade Mark Regulations 1995 in the following way:
·Full costs, as per scale, for filing the Notices on all three matters;
·Full costs, as per scale, for the evidence in the opposition to IRDA 2313952; and
·At 20% of the scale[22] for the evidence in the remaining two oppositions.
[22] Hume Industries (Malaysia) Berhad v James Hardie & Co Pty Ltd (2001) 53 IPR 591
Bianca Irgang
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs31 January 2025
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