Licensing IP International S.a.r.l v Waterpro Pty Ltd

[2022] ATMO 177

TRADE MARKS ACT 1995

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

Re:Opposition by Licensing IP International S.a.r.l to registration of trade mark application number 2121214 (class 1) - LAWN HUB (figurative) - in the name of Waterpro Pty Ltd

Delegate:

Louise Tuohy

Representation:

Opponent: Phillips Ormonde Fitzpatrick

Applicant: Michael Seifried of FB Rice

Decision:

2020 ATMO 177

Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42, 60 and 62A – no grounds established – trade mark to proceed to registration

Background

1.     This matter concerns an opposition by Licensing IP International S.a.r.l (‘Opponent’) under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark application in the name of Waterpro Pty Ltd (‘Applicant’):

Application Number:  2121214

Trade Mark:  (‘Trade Mark’)

Filing Date:  17 September 2020

Specification:  Class 1:  Fertilisers; Chemical products for use in agriculture (other than fungicides, weedkillers, herbicides, insecticides, parasiticides); Chemical products for use in horticulture (other than fungicides, weedkillers, herbicides, insecticides, parasiticides); Wetting agents; Wetting preparations. (‘Goods’)

2. The trade mark application was examined as required by s 31 of the Act and advertised as having been accepted for possible registration on 18 February 2021.

3.     The Opponent filed a Notice of Intention to Oppose the registration on 22 February 2021 followed by its Statement of Grounds and Particulars (‘SGP’) on 22 March 2021. The Applicant filed a Notice of Intention to Defend the registration on 11 May 2021. 

4.     Thereafter the Opponent and Applicant filed evidence in accordance with the provisions of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) as follows:

Evidence in Support

• Declaration by Andreas Alkiviades Andreou, Manager of the Opponent, made on 11 August 2021, with Annexures AAA-1 to AAA-26 (‘Andreou 1’).

Evidence in Answer

• Declaration by Matthew Irving, General Manager of the Applicant, made on 15 November 2021, with Exhibits MI-1 to MI-17.

Evidence in Reply

• Declaration of Andreas Alkiviades Andreou, made on 17 January 2022, with Annexures AAA-1 to AAA-5.

5.     Once the time for filing evidence had ended, both parties requested to be heard by way of written submissions. Phillips Ormonde Fitzpatrick filed written submissions on behalf of the Opponent. Michael Seifried of FB Rice filed written submissions on behalf of the Applicant.  The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the SGP, evidence and written submissions.

The Opponent

6.     The Opponent is an intellectual property holding company. The purpose of the Opponent is to exclusively license its intellectual property to MG Freesite Ltd (‘MG’). A crucial aspect of MG’s business is online adult entertainment.

7.     The Opponent is the owner of the trade marks listed below (‘Opponent’s trade marks’): 

Trade mark number	Opponent’s trade marks	Specification
1530887 Priority date: 12.12.2012	PORN HUB	Class 41: Entertainment services, including publication and distribution via a website of video, photographs, images, audio and text in the field of adult entertainment via a global computer network
2014556 Priority date: 6.06.2019	Class 38: Video-on-demand transmission services video broadcasting electronic, electric, and digital transmission of voice, data, and images, all in the field of adult entertainment; providing access to a website allowing users to download videos in the field of adult entertainment Class 41: Entertainment services, namely, providing non-downloadable video, photographs, images, audio, and text in the field of adult entertainment via a website on the global computer network
2039488 Convention Priority date: 18.09.2019 (EUIPO)	Class 9: Magnets; phone hand stands; Mobile phone cases; mouse mats; sunglasses Class 29: Meat; fish; poultry; game; meat extracts; jellies; jams; compotes; eggs; milk; milk products; edible oils; fats
2098812 (IRDA 1476323) Priority date: 1.05.2020	PORNHUB	Class 25: Clothing
2149908 Priority date: 6.06.2019	Class 25: Clothing
2157513 Priority date: 25.09.2019	Class 5:  Gels for use as personal lubricants; sexual stimulant gels; topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response Class 10: Sex toys Class 16: Printed matter; stationery; writing implements; calendars, diaries, personal organisers; posters; photographs; goods of paper, card and cardboard, being beer mats, coasters, napkins and serviettes, paper table cloths; Promotional decals; pens, pencils, calendars; event programs; gift cards; stickers Class 20: Pillows Class 21: Mugs; bottles; porcelain wares; cups; dishware; earthenware Class 24: Towels; pillow covers; canvas; bed linen; kitchen linen; table linen; bath linen Class 26: Clothing patches; patches; pins; hair ornaments; ornamental novelty badges; feathers for ornamentation; novelty buttons; shoe ornaments Class 28: Playing cards; cards; video game machines for use with television; parlour games Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; breads; pastry and confectionery; ices; honeys; treacle; yeast; baking-powders; salts; mustards; vinegars; sauces; condiments; spices; ice Class 34: Electronic cigarettes; cartridges sold filled with propylene glycol for electronic cigarettes

The Applicant

8.     The Applicant is an Australian company which manufactures and sells irrigation, landscaping and lawn care products.

Preliminary Issue

9.     On 12 August 2022 the Applicant filed a further declaration by Matthew Irving. The declaration corrected a statement made in paragraph 34 of Mr Ivring’s declaration made on 15 November 2021.

10.   Regulation 21.19 of the Regulations affords the Registrar discretion to consider whether available information is relevant and should be considered in the course of making a decision. Regulation 21.19 is not a substitute for the evidence stages of an opposition and compelling reasons are required for inclusion of any new material in the hearing. The decision of a delegate to take into account information under regulation 21.19 requires consideration of a number of factors which include: the public interest and that of the parties in matters being decided in a timely and predictable manner; the public interest in the delegate of the Registrar having all material relevant to a decision; the requirement that principles of procedural fairness be adhered to; and the relative inconvenience to the parties.[1]

[1] Registrar of Trade Marks v Woolworths Ltd (1999) FCA 1020 (French J).

11.   In this case the Applicant merely seeks to correct what appears to be an error in its Evidence in Answer. The further declaration serves the purpose of ensuring that the information before me is correct and addresses any possible suggestion that the Applicant was misrepresenting itself to the public. Whilst I do not believe that the further declaration of Mr Irving is critical to the outcome of this decision and it is necessary to admit the declaration as evidence under Reg. 21.19, I take note of the information contained therein under Reg 21.15.

Grounds of Opposition, Relevant Dates and Onus

12. In the SGP the Opponent nominated grounds under ss 42(b), 60 and 62A of the Act.

13.   The date at which the rights of the parties are to be determined is 17 September 2020 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

14.   The Opponent bears the onus of establishing at least one of the grounds of opposition.0F[2] The standard of proof is the ordinary civil standard of the balance of probabilities.1F[3]

Legislative Background and Reasoning

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

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

Section 60

15. 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.

16. In the SGP the Opponent particularises the s 60 ground of opposition as follows:

The Opponent has used the Opponent’s Trade Marks in relation to the Opponent’s goods and services claimed in at least classes 5, 9, 10, 14, 18, 20, 21, 24, 25, 26, 35, 38, 41 and 42 in Australia continuously since the dates outlined above in relation to the Section 42 ground of opposition, including through its predecessor in title, being dates well before the priority date of the Opposed Trade Mark.

The Opponent has acquired a significant reputation in the Opponent’s Trade Marks through the sustained and continuous use of its marks in relation to the Opponent’s goods and services claimed in at least classes 5, 9, 10, 14, 18, 20, 21, 24, 25, 26, 35, 38, 41 and 42, and from dates before the priority date of the Opposed Trade Mark.

The Opponent’s reputation in the Opponent’s Trade Marks is such that any use of the Opposed Trade Mark by the Applicant (or any other person), whether in relation to the goods that are the same as, or similar to, the goods (or closely-related services) in relation to which the Opposed Trade Mark is sought to be registered, or otherwise, would be likely to deceive or cause confusion contrary to section 60.

17. To satisfy s 60 of the Act the Opponent must establish that the trade marks upon which it relies had a reputation in Australia at the priority date of the Trade Mark. The Opponent must then establish that because of that reputation, use of the Trade Mark would deceive or cause confusion.

18.   In McCormick & Co Inc v McCormick, Kenny J asked what is intended by the word ‘reputation’ in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’12F9F[4] and quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner…13F10F[5]

[4] [2000] FCA 1335, [81].

[5] [1992] FCA 159, [118].

19.   Justice Kenny also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sale or turnover of goods sold under the trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum sale, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorship, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sale may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an association of the trade marks with the goods or services themselves.14F11F[6]

[6] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 436.

20.   What constitutes a significant or substantial number of persons in the relevant market must be considered. Justice Heerey in Le Cordon Bleu BV v Cordon Bleu International Ltd (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955 (Cth)) provided some guidance:

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 …15F12F[7]

[7] [2000] FCA 1587, [91].

21.   Turning to the Opponent’s evidence, in Andreou 1, Mr Andreou declares the Opponent has used its  trade mark in relation to entertainment, video on demand transmission, and video broadcasting services, globally, including in Australia since March 2007.

22.   In Andreou 1, Mr Andreou declares that since 2007 the Opponent has offered its services from a website located at the domain The website offers online pornographic content, across 100 different categories, from “Amateur” to “Webcam”.

23.   Confidential Annexure AAA-13 to Andreou 1 provides the Opponent’s website statistics for visits and pageviews from Australian users since 2017.

24.   Annexure AAA-18 to Andreou 1 provides copies of the Opponent’s Pornhub ‘Year in Review’ publications from 2012 to 2019. The reviews provide examples such as the breakdown of traffic to the website by Australian men and women.  

25.   Confidential Annexure AAA-14 to Andreou 1 lists the number of paid subscriptions in relation to the Opponent’s ‘premium version’ service from individuals located in Australia from 2017 to 2020. 

26.   In Andreou 1, Mr Andreou provides the Opponent’s confidential advertising expenditure for Australia for the years 2017 to 2020.

27.   In Andreou 1, Mr Andreou declares that the Opponent advertises and markets its services sold under or by reference to its  trade mark in Australia via its Instagram, Twitter, YouTube, Reddit and Discord social media accounts.[8] The Opponent also publishes regular press releases which are available on its website.[9]

[8] Andreou 1 [41], [Annexure AAA-16].

[9] Andreou 1 [41], [Annexure AAA-17].

28.   In my assessment of the evidence, given that the relevant market for the Opponent’s goods and services is all Australians over the age of 18, I am satisfied that at the Relevant Date the Opponent’s  trade mark had a significant or substantial reputation in Australia in relation to its entertainment, transmission, broadcasting and website services. The Opponent’s subscription figures and advertising expenditure in relation to its services are solid. Furthermore, the Opponent’s advertising and promotional activities are supported by the substantial number of Australian visitors to its website.

29.   Having regard to the Opponent’s substantial reputation in the  trade mark, I turn to whether the use of the Trade Mark would deceive or cause confusion.  This is linked to how similar the respective trade marks are. In Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd12F[10] the delegate said:

Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

[10] [2010] ATMO 5, [39]-[40].

30.   In this case, the Opponent’s  trade mark and the Trade Mark share the word HUB inside a rounded corner rectangle. However, this is where the similiaries end. The Opponnet’s trade mark contains the word PORN, in comparison the Trade Mark contains the word LAWN. The words PORN and LAWN have differnet meanings and are visually and aurally dissimilar.

31.   The Opponent and Applicant operate in different markets. The Opponent’s services are in relation to adult entertainment, in comparison the Applicant’s Goods are for fertilisers and chemical products. Notwithstanding the respective trade marks share the word HUB inside a rectangle I do not believe that consumers would be confused, or be caused to wonder whether the Applicant’s Goods are provided by or have some connection with the Opponent’s services.

32. The Opponent has not established the ground for opposition under s 60 of the Act.

Section 42(b)

33. Section 42(b) of the Act provides:

42 Trade Mark scandalous or its use contrary to law

An application for the registration of a trade mark must be rejected if:

[ …]

(b)  its use would be contrary to law.

34.   In the SGP the Opponent particularises the ground of opposition as follows:

The Opponent has used the Opponent’s Trade Marks in Australia continuously in relation to the Opponent’s goods and services claimed in at least classes:

§  5 – since December 2009;

§  9 – since May 2013;

§  10 – since 9 July 2015;

§  14 – since 2013;

§  18 – since January 2015;

§  20 – from a date before the priority date of the Opposed Trade Mark;

§  21 – since September 2013;

§  24 – since 2013;

§  25 – since January 2010;

§  26 – since 2013;

§  35 – since December 2009;

§  38 – since 11 March 2007;

§  41 – since 11 March 2007; and

§  42 – since 11 March 2007.

Use of the Opponent’s Trade Marks prior to March 2010 was by its predecessor in title (originally DCI Capital Investments Ltd).

The Opposed Trade Mark is aurally and visually similar to at least trade marks 2014556, 2039488, 2149908 and 2157513 of the Opponent.

In the light of the Opponent’s reputation in the Opponent’s Trade Marks, and in particular, trade marks 2014556, 2039488, 2149908 and 2157513, use of the Opposed Trade Mark, in relation to the goods for which registration of the Opposed Trade Mark is sought would be likely to mislead or deceive consumers contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) and, or alternatively, constitute the common law tort of passing off.

In the alternative, the Opponent says that any use of the Opposed Trade Mark, in connection with the goods sought to be registered under the Opposed Trade Mark, would be likely to mislead or deceive consumers into thinking that such goods have the sponsorship, endorsement or approval of the Opponent which is contrary to fact and contrary to sections 18 and 29 of the Australian Consumer Law (Schedule 2 to the Australian Competition and Consumer Act 2010 (Cth)) and, or alternatively, constitutes the common law tort of passing off.

The use of the Opposed Trade Mark would therefore be contrary to law within the meaning of section 42.

35. As with all the grounds of opposition, the onus of proof rests with the Opponent and in that regard the case law on section 42(b) requires the Opponent to show that use of the Trade Mark would be, rather than could or might be contrary to law.[11]

[11] Advantage Rent a Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

36. Section 18 of the Australian Consumer Law[12] (‘ACL’) is concerned with misleading or deceptive conduct, while s 29 of the ACL is concerned with false and misleading representations. Case law has made it plain that s 18 of the Act imposes a more stringent test than that for deception or confusion under s 60 of the Act.[13] In this matter, I have found that the Opponent has failed to establish a ground of opposition under s 60 of the Act. Consequently, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to s 18 of the ACL.

[12] Competition and Consumer Act 2010 (Cth), sch 2.

[13] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198. This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) (‘TPA’) the equivalent provision to the current s 18 of the ACL.

37. In relation to s 29 of the ACL it has been held that where a trade mark does not offend s 18 of the ACL, neither will it offend s 29 of the ACL[14] nor will it constitutepassing off.[15]

[14] In Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, Beaumont J considered – in connection with the superseded TPA that ‘the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53 (c) and (d).’ Sections 53(c)-(d) of the TPA are the equivalent provisions to ss 29(1)(g)-(h) of the ACL.

[15] Re Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506, [40] (Hill J).

38. The Opponent has not established the ground of opposition under s 42(b) of the Act.

Section 62A

39. Section 62A of the Act provides:

62A  Application made in bad faith

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

40.   In the SGP the Opponent particularises the ground of opposition as follows:

The Opponent has used the Opponent’s Trade Marks in relation to the Opponent’s goods and services claimed in at least classes 5, 9, 10, 14, 18, 20, 21, 24, 25, 26, 35, 38, 41 and 42, in Australia continuously since the dates outlined above in relation to the Section 42 ground of opposition, including through its predecessor in title.

By reason of the Opponent’s reputation in the Opponent’s Trade Marks, the Applicant was, or should reasonably have been aware, that the Opponent enjoyed such a reputation and that it owned the Opponent’s Trade Marks in Australia.

The Applicant sought to take advantage of the Opponent’s reputation by filing, in bad faith (within the meaning of section 62A), an application that is substantially identical with, or deceptively similar to, the Opponent’s Trade Marks.

1. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) provided some illustrations of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks; and

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

2. These illustrations are not exhaustive. Justice Bennett in DC Comics v Cheqout Pty Ltd observed that all of the circumstances surrounding the application to register a trade mark are relevant.[16] Moreover, conduct after the filing date can be used to shed light on the Applicant’s subjective intent at the filing date.[17] 

3. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J made the following comments:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

   … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[18]

   [16] [2013] FCA 478 [62].

   [17] Ibid [71].

   [18] [2012] FCA 81, [147], quoting, Harrison’s Trade Mark Application [2004] EWCA Civ 1028.

4. Her Honour also considered:

   The formulation in 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.

   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.[19]

   [19] Ibid [165]-[166].

   45.   The Opponent alleges that the filing of the Trade Mark was made in bad faith as the Applicant was or should have been reasonably aware of the Opponent’s rights and reputation in its trade marks. In particular the Opponent argues the Applicant is using the same colour combinations as the Opponent’s website and trade marks in connection with the Applicants logo, website, apparel and promotional goods.  

   46.   In response the Applicant argues that there is no connection between the provision of online adult entertainment services and the Applicant’s Goods. The Applicant also notes that the colours black, orange and white are not uncommon and in fact have been adopted in registered trade mark 2146552  for restaurant services. The Applicant argues that its trade mark application does not make a claim for colour and that it has used the Trade Mark in a range of different colour combinations.[20] Furthermore, the Applicant argues that it is the registered owner of the plain word trade mark LAWNHUB in class 1 which was obtained prior to the Relevant Date and that it had used the Trade Mark for at least two years before it filed the trade mark application without complaint from the Opponent.   

   [20] Irving declaration [Exhibit M1-2].

   47. With regards to the Opponent’s arguments, I have previously addressed the reputation in the Opponent’s trade marks in relation to the s 60 ground of opposition. While the reputation in the Opponent’s  trade mark can provide a context for the Applicant’s decision to adopt and seek to register the Trade Mark, mere awareness of another trade mark, or the filing of a trade mark that includes elements that are the same or similar to a well-known trade mark, does not necessarily constitute bad faith. 

   48.   Based on the evidence before me I cannot conclude that the decision of the Applicant to adopt and seek to register the Trade Mark was a decision to take advantage of the reputation of the Opponent’s trade marks. The evidence of the Applicant’s purpose and activities clearly indicates that it intended to operate as a business manufacturing and supplying professional lawn care and gardening products.

   49.   In such circumstances, I cannot be satisfied on the balance of probabilities that the application was made in bad faith.  

   50. The Opponent has not established the ground of opposition under s 62A of the Act.

   Decision

   51. 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.

   52.   The Opponent has not established a ground of opposition. Accordingly, I decide that trade mark number 2121214 may proceed to registration one month from the date of this decision. If the Registrar is served with a notice of appeal, I direct that the disposition of the applications should be in accordance with the Court’s order or direction.

   Costs

   53. Both parties sought an award of costs. 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 s 221 of the Act in line with the amounts set out in Schedule 8 of the Regulations.

   Louise Tuohy

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   10 October 2022