Margaret Woods and Lisa Reynolds v Viktoria Teed

[2018] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Margaret Woods and Lisa Reynolds to registration of trade mark application 1772533 (25) - VIKTORIA (Logo) - in the name of Viktoria Teed.

Delegate:

Iain Campbell Thompson

Representation:

Opponent: Premier IP Ventures

Applicant: Self represented

Decision:

2018 ATMO 121

Trade Marks Act 1995

Section 52 opposition to registration; subsection 44(1) - similar goods - deceptively similar trade marks - ground established; registration refused.

Background

1. In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Viktoria Teed (‘the Applicant’) has applied to register the trade mark details of which appear below:

Application No: 1772533

Priority Date:  24 May 2016

Goods:Class 25: Dress shoes; Leather shoes; Shoes; Working shoes (other than for the prevention of accident or injury)

Trade Mark:  

(‘the Trade Mark’)

1. The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 13 October 2016.

2. On 13 October 2016, Margaret Woods and Lisa Reynolds (‘the Opponents’) filed a Notice of Intention to Oppose followed, on 11 November 2016, by a Statement of Grounds and Particulars detailing grounds under section 44 and 60 of the Act. On 6 January 2017, the Applicant filed a Notice of Intention to Defend.

3. On 12 April 2017, the Opponents filed part of their Evidence in Support being a declaration by Brian Goldberg of Premier IP Ventures, made on 12 April 2017, with attachments followed, on 17 April 2017, by a letter from Mr Goldberg outlining the range of his client’s footwear.

4. On 11 June 2017, the Applicant filed her Evidence in Answer being a declaration, dated 10 June 2017, with attachments, which also contains submissions.

5. On 16 August 2017, the Opponents filed their Evidence in Reply being a further declaration by Mr Goldberg, made on 15 August 2017.  This evidence is in the nature of submission and I weight it accordingly.

6. On 7 October 2017, the Applicant filed written submissions.

7. Both parties have been informed of their right to be heard or to make written submissions.  Neither party has applied to be heard: I have adverted to their written submissions, above.  Now the matter has been passed to me, a delegate of the Registrar of Trade Marks, for my decision based on the written record which is comprised of those materials mentioned in the foregoing paragraphs.

Evidence

The Opponents

1. The evidence establishes that the Opponents make a range of goods which includes at least footwear under variations of its registered trade marks which appear below – the evidence does not establish the extent of use of the Opponents’ trade marks nor the geographical area within which they are used.  I have only included the specifications in Class 25 of the Opponents’ registrations since these are most relevant to my decision:

Registration No:              1039562

Priority Date:  28 Jan 2005

Goods:  Class 25: Footwear, clothing and headgear

Trade Mark:  

__________________________________________

Registration No:              1633050

Priority Date:  8 July 2014

Goods:Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made of imitation leather; Articles of clothing made of leather; Athletic clothing; Casual clothing; Clothing; Girl's clothing; Gloves (clothing); Jackets (clothing); Knitwear (clothing); Ladies clothing; Men's clothing; Pants (clothing); Women's clothing; Casual footwear; Footwear; Footwear for women; Headgear for wear; Skirts; Casual jackets; Jackets for women; Hats; Cashmere gloves

Trade Mark:  

(‘the Plus Trade Mark’)

__________________________________________

Registration No:              1721592

Priority Date:  15 September 2015

Goods/Services:              Class 25: Apparel (clothing, footwear, headgear); Articles of clothing made of imitation leather; Articles of clothing made of leather; Athletic clothing; Casual clothing; Clothing; Girl's clothing; Gloves (clothing); Jackets (clothing); Knitwear (clothing); Ladies clothing; Men's clothing; Pants (clothing); Women's clothing; Casual footwear; Footwear; Footwear for women; Headgear for wear; Skirts; Casual jackets; Jackets for women; Hats; Cashmere gloves

Trade Mark:  

(‘the Ampersand Trade Mark’)

__________________________________________

The Applicant

1. The Applicant states that she makes high heeled shoes that carry the Trade Mark.  It does not emerge from her evidence when use of the Trade Mark started, the extent of the use, whether that use has been continuous, or the geographical area of the use.

Grounds of Opposition, Onus and Relevant Date

1. This matter is most readily to be decided under section 44 of the Act. To succeed, the Opponents bear the onus of establishing the ground with the relevant standard of proof required being the ordinary civil standard based on the balance of probabilities.[1]  The date at which the parties’ rights are to be determined is the priority date of the Trade Mark which is here the filing date of the application (‘the Relevant Date’).[2]

   [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.

Section 44

1. As discussed, the Applicant has not adduced evidence in terms of subsections 44(3) or 44(4) of the Act; accordingly, section 44 relevantly provides:

   44Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’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.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

2. In the circumstances of this matter to found this ground an opponent must establish each of the following:

   That the trade mark(s) upon which it relies have priority dates earlier than that of the opposed trade mark; (‘the first requirement’) and

   That the goods under consideration are similar goods; (‘the second requirement’) and

   The trade marks under consideration are substantially identical with, or deceptively similar to, the opposed trade mark. (‘the third requirement’)

The First Requirement

1. It is convenient in this decision to focus upon registration 1633050, the Plus Trade Mark, which as it has a priority date of 8 July 2014, satisfies the First Requirement.

The Second Requirement

1. The Applicant has submitted that she makes high heel shoes that carry the Trade Mark whereas the Opponents do not make high heel shoes. However, this is not a relevant consideration in terms of subsection 44(1) of the Act. Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:[3]

   ...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.

   [3] [1973] HCA 43; (1973) 129 CLR 353 at 362.

2. ‘High heels’ are goods which are embraced by both the expressions ‘Casual footwear; Footwear; Footwear for women;’ within the specification of the Plus Trade Mark and the expressions ‘Dress shoes; Leather shoes; Shoes’ contained within the specification of the Trade Mark. For the purposes of subsection 44(1) the goods of the parties are identical as the general descriptions ‘shoes’ or ‘footwear’ embrace all kinds of shoes including high heeled shoes.

3. The Second Requirement in therefore satisfied.

The Third Requirement

1. Substantial identity

2. In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[4] (‘Shell’) Windeyer J said:

   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. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered. Judging by the eye alone, as I think is proper for the determination of substantial identity …

   [4] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

3. For the purposes of comparison in terms of Shell, the Trade Mark and the Plus Trade Mark appear side by side below:

vs 

1. Whilst the Trade Mark and the Plus Trade Mark share an essential feature (the word ‘Viktoria’), the word ‘Woods’ also functions as an essential feature within the Plus Trade Mark.  The ‘total impression of resemblance or dissimilarity that emerges from the comparison’ is thus one of dissimilarity and these trade marks are not, therefore, substantially identical.

2. Deceptive similarity

3. In regard to ‘deceptive similarity’ Windeyer J continued in Shell:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.

4. Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd stated: [5]

   [5] [2012] FCA 1022, [38]-[46].

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[6] at [49]; Australian Woollen Mills[7] at 658.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[8] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[9] at 594 – 595.

   Sixth, 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 the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].

   [6] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [7] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   [8] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   [9] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

5. In the situation before me I have the Trade Mark contained within the Plus Trade Mark as one of its essential features.  In a similar situation, where the trade mark SUSHI TRAIN was contained within the trade mark ATOMA SUSHI TRAIN, the Registrar’s delegate Mr Kirov stated:[10]

   [10] Sushi Train (Australia) Pty Ltd v RGR Norman Pty Ltd as trustee for the Norman Family Trust [2016] ATMO 76.

6. As the Full Federal Court (Lindgren, Emmett and Finkelstein JJ) further explained in their joint judgment in Starr Partners Pty Ltd v Dev Prem Pty Ltd:[11]

   The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.

   [11] [2007] FCAFC 42; (2007) 71 IPR 459 at [22].

7. As indicated earlier, the combination of the elements SUSHI and TRAIN (and/or, arguably, the element TRAIN in its own right), is on the face of it an, or the, “essential feature” of the Opponent’s Word Mark because the registered mark contains no other material. This combination is entirely contained within, indeed forms a prominent part of, each of the Opposed Marks. In this regard I note that in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd^[[12] (“Crazy Ron’s”) an earlier Full Federal Court (Moore, Sackville and Emmett JJ) said:

   Fourth...the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion ...

   Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta and Berlei v Bali). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.

   (The above bolding being my emphasis)

   [12] [2004] FCAFC 196; (2004) 61 IPR 212 at [78]- [79].

8. The Court then went on to endorse the approach of Lord Radcliffe in De Cordova v Vick Chemical Co,[13] saying at [84] (with the Court’s emphasis (in italics) retained and my emphasis (in bold) added):

   Lord Radcliffe emphasised (at IPR 498– 9; RPC 105–6) that the infringer had used one of the “essential features” of the registered trade marks:

   They have not used the mark itself on the goods that they have sold, but a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features. The identification of an essential feature depends partly on the court’s own judgment and partly on the burden of the evidence that is placed before it. A trade mark is undoubtedly a visual device; but it is well-established law that the ascertainment of an essential feature is not to be by ocular test alone. Since words can form part, or indeed the whole, of a mark, it is impossible to exclude consideration of the sound or significance of those words. Thus it has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader, for confusion is likely to result ... The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed, or are often not placed, under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.[14]

   [13] (1951) 68 RPC 103; 1B IPR 496.

   [14]  In similar vein, see also Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; 1b IPR 440; Poloroid Corp v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498; Wolverine World Wide, Inc v Khoda Ali Ahmed [2008] ATMO 93; (2008) 80 IPR 172.

1. I think it relevant also to bear in mind in the present case what I would characterize as the average consumer’s awareness generally that traders may vary or “update” the overall presentation of their trade marks from time to time. In this regard the addition of the element ATOMA, or in the case of the Opponent’s Logo Mark of the device element also, to the words “sushi train” constituting the Opponent’s Word Mark, still on the face of it leaves the parties’ marks sharing what is often referred to as the same “idea”. Bound up to a large extent with the notion of imperfect recollection, I note the Court in Crazy Ron’s discussed the significance that the “idea” of the earlier mark might have on the impression it created, saying at [74]:

   In assessing the impression created by the mark, it is important to consider “the idea of the mark”, that is “the idea which the mark will naturally suggest to the mind of one who sees it”: Jafferjee v Scarlett [1937] HCA 36; (1937) 57 CLR 115 at 121 per Latham CJ (with whom McTiernan J agreed). As Latham CJ observed in Jafferjee (at 122):

   ...it is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived ... Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or impression of the mark which they have seen.

2. Finally, I note the comment in Clark v. Sharp that:[15]

   [15] [1898]15 RPC 141, 146 (Byrne J).

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

3. In consideration of the circumstances before me I observe:

   The spelling of the word ‘Viktoria’ within the trade marks, whilst being a common Russian forename, will be likely to strike most Australians as being a somewhat idiosyncratic spelling of the word ‘Victoria’ and that is likely to influence their recollections of it;

   Nor is this a case where the addition of other matter to the Trade Mark produces an entirely new meaning or impression, as for example might be the case where the trade mark DIOR submerges within the word ‘diorama’;

   The word ‘Viktoria’ is prima facie distinctive in relation to the goods and cannot be to any extent discounted in the comparison: Cooper Engineering Company Limited v. Sigmund Pumps Limited[16];

   [16] [1952] HCA 15; (1952) 86 CLR 536.

   The word ‘Viktoria’ is the sole element within the Trade Mark;

   Contrariwise, the word ‘Woods’ also occurs within the Plus Trade Mark and might be of assistance in distinguishing between the Trade Marks;

   However the word ‘Viktoria’ is the first element that occurs within the Plus Trade Mark and is hence the most striking and memorable;

   The words ‘Viktoria’ and ‘Woods’ within the Plus Trade Mark do not qualify each other in any way so as to form a distinct corporate identity – as in for example the putative trade mark WHITE KNIGHT;

   Any visual differences between the representations of the word ‘Viktoria’ within the trade marks are minor and are not apparent aurally – subsection 7(2) provides that ‘any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark’;

   The evidence establishes that, in terms of the passage quoted above from Sushi Train,[17] the Opponents either have a habit of updating their trade marks or use several of their registered trade marks;

   [17] At [80].

   The goods ‘shoes’ and ‘footwear’ include items which are not particularly expensive and could be casually bought without much close examination of the trade marks but on the other hand may be articles of personal adornment about which the public may take more care in purchasing; and

   The trade channels through which the goods come onto the market may be identical.

4. In weighing these factors, I further observe that ‘confusion’ and ‘deception’ are two different forms of bewilderment.  In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[18] Richardson J, in the New Zealand Court of Appeal, said:

   [18] [1979] RPC 410, at 423.

   ‘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.

5. In Radio Corp Pty Ltd v Disney[19] Rich J said of the word ‘confusion’:

   [19] [1937] HCA 38; (1937) 57 CLR 448 at 454.

   In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute.  Confusion involves indefiniteness of ideas.

6. And in Tivo Inc v Vivo International Corporation Pty Ltd[20] Dodds-Streeton J observed:

   [20] [2012] FCA 252 at [105].

   It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

7. Having weighed the above factors, I am satisfied that the Trade Mark and the Plus Trade Mark of the parties are deceptively similar.  Although it is not necessary to state the form of the confusion that might arise, I consider it likely that a person who is aware of the Plus Trade Mark would, on seeing the Trade Mark, speculate that it is a sub-brand of the Plus Trade Mark or a re-branding of the Plus Trade Mark.

8. The Opponent has established its opposition under subsection 44(1) of the Act.

Decision

1. Section 55 of the Act relevantly provides:

   55Decision

   (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:For limitations see section 6.

2. I refuse to register application 1772533.

Costs

1. The Opponents requested their costs in the event that they were successful in this matter. As the Opponents were successful in these proceedings they entitled to their costs which, in terms of section 221 of the Act, I award against the Applicant at the official scale set out at Schedule 8 to the Trade Marks Regulations 1995.

Iain Campbell Thompson

Hearing Officer

Trade Marks and Designs Oppositions and Hearings

7 August 2018