Mathew Wilson v Madrid Protocol by Lambda, Inc

[2022] ATMO 195

TRADE MARKS ACT 1995

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

Re:Opposition by Mathew Wilson to extension of protection to Australia of International Registration 1434845 (9) – LAMBDA (Australian Trade Mark Application No. 1971399) – in the name of Lambda, Inc.

Delegate:

Nicholas Smith

Representation:

Opponent: Self-represented

Holder: Clayton Utz

Decision:

2022 ATMO 195

Trade Marks Regulations 1995 (Cth) – Reg 17A.33 opposition: ss 43, 44 and 58A considered - none established – protection of the IR to be extended Australia

Background

1.  Trade mark number 1971399 is the Australian designation of a request made under the Madrid Protocol by Lambda, Inc. (‘the Holder’) to extend protection of the trade mark subject of International Registration 1434845 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Mathew Wilson (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:

Application Number:	1971399
IR Number:	1434845
Priority Date (Convention)	2 March 2018
Filing Date	24 August 2018
Goods:	Class 9: Computer hardware for use in data analytics, machine learning, and artificial intelligence; computer hardware for facial recognition (‘Holder’s Goods’)
Trade Mark:	LAMBDA	(‘Trade Mark’)

1. 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.

2. Following the advertisement in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the International Registration, the Opponent filed a Notice of Intention to Oppose extension of protection followed by a Statement of Grounds and Particulars on 26 November 2020 (‘SGP’).  The SGP raised grounds of opposition under ss 43, 44, and 58A of the Act.  The Holder filed a Notice of Intention to Defend on 26 March 2021. 

   Evidence

3. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 28 June 2021 by Mathew James Wilson, the Opponent, with Exhibits A to I (‘Wilson declaration’).

4. The Holder filed the following evidence in answer:

   ·Declaration made on 3 October 2021 by Stephen Balaban, the co-founder and CEO of Lambda Labs, with exhibits 1-9 (‘Balaban declaration’).

5. The Opponent did not file evidence in reply.

6. The entirety of the evidence filed by the Holder, including publicly available information such as the public use of the Trade Mark, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit 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.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

7. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

8. Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing.  The Holder requested that the matter proceed to a hearing by way of written submissions, paid the appropriate fee and provided written submissions.  The Opponent did not file any written submissions.  As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.

9. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, 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 the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

10. Given the nature of the grounds on which the Opponent presses its opposition and my findings in respect of the s 44 ground of opposition, it is not necessary to summarise the Opponent’s evidence in any great detail.  The Opponent is an Australian individual that is the registered owner of the Trade Mark listed below (‘Opponent’s Trade Mark’).  According to the Opponent’s evidence, the Opponent’s Trade Mark is used by related entities to the Opponent and has been used continuously since 7 June 2016.

Number	Trade Mark	Priority Date	Goods or Services
1804430	LAMBDA DYNAMICS	22 Oct 2016	Class 37: Advisory services relating to industrial engineering; Computer engineering; Computer engineering consultancy services; Computer software engineering; Design engineering; Electrical engineering services (design); Engineering; Engineering consultancy; Engineering design; Engineering drawing; Engineering feasibility studies; Engineering project management services; Engineering project studies; Engineering research; Engineering services relating to computer programming; Engineering services relating to computers; Engineering testing; Industrial engineering design services; Mechanical engineering services (design); Preparation of engineering drawings; Preparation of engineering reports; Provision of engineering reports; Research relating to engineering; Research, engineering and technical consultancy for industry; Software engineering; Structural engineering services (design); Technical engineering; Technological engineering analysis; Aeronautical design; Computer design; Computer software design; Computer system design; Consultancy in the design and development of computer hardware; Consultancy in the design and development of computer software; Design and development of computer hardware (for others); Design and development of computer software (for others); Design and development of electronic calculators; Design consultancy; Design of computer hardware; Design of computer programs; Design of computer software; Design of electric circuit boards; Design of electrical systems; Design of electronic systems; Design of equipment for transportation; Design of feasibility studies; Design of industrial machinery; Design of industrial products; Design of information systems; Design of instruments; Design of land vehicle parts; Design of land vehicles; Design of lighting systems; Design of manufacturing apparatus; Design of new products; Design of products; Design of tools; Design of vehicles; Design services; Environment design services; Industrial design; Marine vehicle design; Product design; Project management (design); Providing information, including online, about design and development of computer hardware and software; Providing information, including online, about scientific and technological services and research and design relating thereto; Provision of information relating to industrial design; Research relating to design; Vehicle design services; Vehicle engine design services (‘Opponent’s Services’)

The Holder

1. The Holder is a United States company, founded in 2012, involved in the provision of artificial intelligence infrastructure.   Given the nature of the grounds on which the Opponent presses its opposition and my finding under the s 44 ground of opposition, it is not necessary to summarise the Holder’s evidence in any great detail but I do note that the Holder gives evidence that it has used the Trade Mark since 2012 for a variety of IT infrastructure products including servers and laptops and that the Holder has had dealings with Australian business customers in 2012, 2015 and 2017.  The Holder has impressive levels of sales of its products in Australia since 2018.

   Grounds of Opposition, Onus and Standard of Proof

2. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 43, 44, and 58A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

   14.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined for the purposes of s 44 and 58A is the priority date of 2 March 2018 and for s 43 is the filing date of 24 August 2018 (each being the ‘relevant date’ under the corresponding grounds of opposition).[4]

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

   [3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [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).

   Section 44

3. The relevant provisions of section 44 are reproduced below:

   Section 44 - Identical 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)it 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).

   (2)…

   (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 applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant'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. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant'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 applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For 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.

   16.     To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Holder:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Holder’s Goods (‘the third requirement’).

4. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Holder has continuously used the Trade Mark beginning before the relevant date.

5. The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark.  The Opponent’s Trade Mark has a priority date that is earlier than the relevant date and hence the first requirement is satisfied.  I will now consider whether the third requirement is satisfied, namely that the Opponent’s Trade Mark is registered for services that are closely related to the Holder’s Goods.

   Closely related services

   19.     The case of Paypal, Inc v Braintree Communications Pty Ltd[5] summarises the legal principles applicable when determining if the services for which the Opponent’s Trade Mark are registered are closely related to the Holder’s Goods as follows:

   [5] [2017] ATMO 90 (Hearing Officer Thompson).

   In Qantas Airways Ltd v Edwards[6] Yates J quoted from the judgment of French J in Registrar of Trade Marks v Woolworths Ltd[7]:

   [6] [2016] FCA 729, [111] (Yates J).

   [7] (1999) 93 FCR 365; [1999] FCA 1020, [37] (French J).

   ... The term “closely related” recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word “similar” does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. ...

   Yates J continued:

   His Honour also said in this connection that “closely related” was of wider import than “similar”.

   Woolworths was a case arising under s 44(2) of the Act. Thus, the question was whether, in the case of a mark for services, there was conflict with a previously registered mark for “closely related goods”. His Honour gave (at [38]) the following illustrations where goods and services might be “closely related”:

   Services which provide for the installation, operation, maintenance or repair of goods are likely to be treated as closely related to them. Television repair services in this sense are closely related to television sets as a class of goods. A trade mark used by a television repair service which resembles (to use the language of s 10) the trade mark used on a prominent brand of television sets could be deceptively similar for suggesting an association between the provider of the service and the manufacturer of the sets. ...

   His Honour also made reference to Caterpillar Loader Hire (Holdings)Pty Ltd v Caterpillar Tractor Co (1983) 77 FLR 139; [1983] FCA 143 (Caterpillar) in which Lockhart J said (at 150):

   ... It is obvious that there is likely to be confusion if substantially the same or deceptively similar trade marks are used by different proprietors, one for goods and the other for services, where the goods and services are closely related. Examples that present practical difficulties are the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

   Significantly, in Woolworths, French J (at [38]) also said that the range of relationships between goods and services which may support the designation “closely related” will be “limited by the requirement in s 44(2) that there be a substantial identity or deceptive similarity between the potentially conflicting marks which attach to them”. This observation might suggest that his Honour had in mind that, in a case arising under s 44 of the Act, the determination of whether the goods and services are “closely related” will be informed by the determination of whether the competing marks are, in fact, deceptively similar.

   However, at [38] his Honour continued by stating that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods” (emphasis added). It was in this context that his Honour gave the examples quoted at [113] above and referred to the examples given by Lockhart J in Caterpillar. This part of his Honour’s reasoning suggests that the question of whether goods and services are “closely related” is a discrete question within the injunction against registration provided by s 44 of the Act.

   This understanding is supported by the following passage in [39] of his Honour’s reasons:

   ... Apposite to the present case is the question whether a retailer of various classes of goods provides a service to customers which warrants the description of the goods for sale as “closely related goods” in respect of that service. The characterisation of the relationship between services and goods in this way is evaluative. The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods. Wilcox J at first instance in this case saw the questions as “conceptually distinct” but accepted that one could not be addressed in isolation from the second: “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive.” This approach is not greatly assisted by the language of s 10 which, like s 6(3) of the 1955 Act, defines deceptive similarity solely in terms of the degree of resemblance of the trade marks in question and whether that degree of resemblance is “likely” to deceive or cause confusion. But that definition must, in the context of s 44, be applied to the case of “closely related” goods and services.

   His Honour concluded at [40]:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

   The practical judgment to which his Honour referred in the last passage is, quite clearly, the judgment involved in determining whether the two marks are deceptively [similar]. The passage marks his Honour’s acceptance that the question of deceptive similarity between allegedly conflicting marks will be informed, in part, by the closeness of the relationship between the goods and services in respect of which the marks severally are, or are sought to be, registered. I do not accept that his Honour was there directing attention to the judgment involved in determining whether given goods and services are “closely related” as such. [8] 

   [8] [2017] ATMO 90, [28]-[29] (Hearing Officer Thompson).

   20.     In assessing the likelihood of deception or confusion in a case involving goods and services, consideration should be given to consumer expectations.  Factors which influence consumer expectations include whether the services are performed upon, in relation to, or by means of certain goods.  Consideration should also be given to the marketplace realities and surrounding circumstances including:

   ·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 consumers of the goods and services.

1. The Holder’s Goods are characterised fairly narrowly, being computer hardware for use for specific purposes, namely data analytics, machine learning, AI and facial recognition.  The Opponent’s Services are best characterised as design and engineering services, including computer engineering, and computer hardware and software design.

2. While both the Holder’s Goods and the Opponent’s Services have connections to the IT industry, a consideration of the nature of the goods and services and marketplace realities surrounding how these goods and services are produced, sold and used mean that deception and confusion are unlikely.  The Holder’s Goods are specialist hardware products, that are highly capital-intensive and hence only produced by larger specialist companies.  They are sold to a specialist and sophisticated market (entities that are seeking computer hardware to perform data analytics, machine learning, AI and facial recognition).  The Trade Mark  will be used on the Holder’s Goods or directly connected to the sale and use of the Holder’s Goods.

3. Conversely the Opponent’s Services are very broad and consist of an array of design and engineering services.  These services are produced by a large array of providers, from individuals to large companies.  They are generally not capital intensive (unlike the development and manufacture of computer hardware) and there are fairly low barriers to entry.  They are sold to a large variety of consumers and used for varying purposes, but not for the same purpose as the Holders Goods.  Importantly, while the Opponent’s Services do include design and engineering services in respect of computer hardware, this does not make them closely related. Although the Opponent’s Services may be an input (one of many) to the Holder’s Goods, there is not a reasonable consumer expectation that the Opponent’s Services and Holder’s Goods would be offered by the same entity; a producer of the Holder’s Goods would be unlikely to offer design services relating to computer hardware to third parties  (who would be its competitors).   To put it another way; the market for the Opponent’s Services in respect of design and engineering of computer hardware would be the Holder and its competitors, which is a very different market to the market the Holder participates in, being entities that are seeking computer hardware to perform data analytics, machine learning, AI and facial recognition.  

4. In the absence of submissions or evidence from the Opponent (who bears the onus) establishing the close relationship between the goods and services, I am not satisfied that any of the Opponent's Services are closely related to the Holder's Goods.  The Holder’s Goods are goods of a different nature for a different purpose and sold in different channels from the Opponent’s Services.  The third requirement under s 44 has not been established. 

5. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Section 58A

   26.     Section 58A is reproduced below:

   Section 58A – Opponent’s earlier use of similar trade mark

   (1)This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

   (a)subsection 44(4); or

   (b)a similar provision of the regulations made for the purposes of Part 17A.

   Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark whose registration is being sought where the first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

   (2)The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

   (a)first used the similar trade mark in respect of:

   (i)     similar goods or closely related services; or

   (ii)    similar services or closely related goods;

   before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

   (b)has continuously used the similar trade mark in respect of those goods or services since that first use.

   Note:  For predecessor in title see section 6.

   27.     For s 58A to apply, the trade mark must have been accepted by the examiner under the provisions of s 44(4), or a hearing officer finds during an opposition that it is appropriate to apply the provisions of s 44(4).  In this matter the Trade Mark was not accepted by the examiner under the provisions of s 44(4). Furthermore, given my finding that the Trade Mark is not sought to be registered for goods closely related to the services for which the Opponent's Trade Mark is registered, the provisions of s 44(4) are not available to be applied in this opposition proceeding.  As such this ground of opposition is not available to the Opponent. 

   Section 43

   28.     Section 43 is reproduced below:

   Section 43 Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

   29.     To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark.  As Gyles J in Pfizer Products Inc v Karam commented:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [9]

   [9] [2006] FCA 1663, [53].

6. In Winton Shire Council v Lomas Spender J said:

   Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [10]

   [10] [2002] FCA 288, [19].

7. The ground of opposition pursuant to s 43 was particularised in the SGP as follows:

   The opponent (Lambda Dynamics) has held a registered trademark (1804430) in class 42 since 22nd of October 2016. The opponent (Lambda Dynamics) has invoices documenting the sales of products and services indicating prior use under trademark class 9 as early as 07/06/2016. The opponent (Lambda Dynamics) has now filed for class 9 trademark registration (2114359) in order to enforce its prior use and is awaiting examination. It is the understanding of the opponent (Lambda Dynamics) that the trademark use of the opponent (Lambda Dynamics) predates the trademark application and trademark use of the applicant (Lambda Labs). The opponent (Lambda Dynamics) asserts that they have been developing, manufacturing, marketing, and selling products as well as offering services in an ongoing, continuous manner from at least 07/06/2016 till the present day. The products include automated control systems for both commercial and consumer products, as well as computing hardware and products developed under the Australian research and development tax incentive program, with invoicing and other documentation available as proof. The opponent (Lambda Dynamics) has previously and is currently conducting long term development programs for products which will occupy the same market sector as the applicant (Lambda Labs).

8. In order for s 43 to operate to prevent the registration of the Trade Mark, the requisite confusion or deception must arise from a connotation within the Trade Mark itself rather than as a result of the reputation the Opponent may be able to demonstrate in its own marks or confusion between the Trade Mark and the trade marks owned by the Opponent or third parties.  Neither the existence of the Opponent’s Trade Mark nor any use or intention to use that trade mark is of relevance under s 43.  The first step in establishing this ground of opposition requires the Opponent identify some connotation inherent in the Trade Mark.  The Opponent has provided no evidence to suggest such a connotation exists. 

9. As a consequence, I am not satisfied that if the Trade Mark is used in relation to the Holder’s Goods, there is an apparent connotation within it which is likely to result in deception or confusion.  I find that the ground of opposition under s 43 has not been established.

   Decision

   34.     Regulation 17A.34N provides:

   17A.34N  Decision 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 the grounds on which the IRDA was opposed have been established.

   (2)         The Registrar must notify the International Bureau of the Registrar’s decision.

   35.     The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.

   36.     The IRDA 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 IRDA be subject to any orders of the Court.

   37.     The International Bureau will be notified of the Registrar’s decision.

   Costs

   38.     The Holder has sought an award of costs in its favour.  I see no reason to depart from the general rule that costs follow the event.  I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.

   Nicholas Smith

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   8 November 2022