Maydel Extrusion Industries Pty Ltd v Plastic Extruders Ltd

[2015] ATMO 60

TRADE MARKS ACT 1995

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

Re:Opposition by Maydel Extrusion Industries Pty Ltd to registration of trade mark application 1367149 (27) - VYNAGRIP - in the name of Plastic Extruders Limited.

Delegate:	Nicole Worth
Representation:	Opponent: Eliza Foley and Ike Papageorge of Herbert Smith Freehills. Applicant: Khajaque Kortian of Spruson & Ferguson.
Decision:	2015 ATMO 60 Section 52 opposition – ss 44, 60 and 42(b) pursued – s44 established prima facie – provisions of s44(3)(b) applied – remaining grounds fail – application may proceed to registration.

Background

1. This decision arises from an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by Maydel Extrusion Industries Pty Ltd (‘the Opponent’) to registration of the trade mark detailed below, in the name of Plastic Extruders Limited (‘the Applicant’).

   Trade Mark:          VYNAGRIP (‘the Trade Mark’)

   Application No.:     1367149

   Filing Date:             15 June 2010

   Goods:Class 27: Coverings for existing floors including plastic coverings for existing floors; mats and matting.

   Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.

2. The application to register the Trade Mark was examined and a ground for rejection under section 44 of the Act was raised, the basis of which was the Opponent’s earlier registration of the trade mark “Vynagrip” in respect of mats, matting and floor coverings in class 27.

3. The Applicant filed evidence of use sufficient to satisfy the examiner that the provisions of subsection 44(4) (relating to prior use of a trade mark) should be applied. An endorsement reflecting as much was applied, and the Trade Mark was accepted for possible registration.

4. The acceptance was advertised in the Australian Official Journal of Trade Marks on 8 August 2013. The Opponent filed a Notice of Intention to Oppose on 4 September 2013 and a Statement of Grounds and Particulars on 4 October 2013. Thereafter the parties filed evidence in support of their positions (described in more detail later in this decision) and requested that the matter be heard.

5. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 21 April 2015. Eliza Foley and Ike Papageorge of Herbert Smith Freehills patent and trade mark attorneys represented the Opponent. Khajaque Kortian of Spruson & Ferguson patent and trade mark attorneys represented the Applicant.

Evidence

1. The evidence filed in this matter comprises declarations by:

   Evidence in support

   Denis Lipyeat, Director and Shareholder of the Opponent, with Annexures DL-1 to DL-3, dated 12 February 2014.

   Evidence in answer

   Doreen Mary Thomas, Company Secretary of the Applicant, with Exhibit DMT-1 which contains Tabs 1 to 6 and Confidential Tab 7, dated 16 May 2014.

   Evidence in reply

   Denis Lipyeat, dated 15 August 2014.

2. The Registrar also issued a Notice Requiring Production of a Document or Article to the Opponent, in response to which the Opponent produced three pieces of correspondence between officers of the parties.

3. A chronology of the information provided in the evidence and the produced documents is below.

4. The Applicant is a company carrying on business in the United Kingdom. In 1962 it commenced manufacturing matting products, plastic extrusion products and packaging products.

5. In or before 1976 the Applicant decided to use the Trade Mark to sell and promote one of the products it had developed, being “slip-resistant, anti-fatigue matting”. It registered the trade mark shown below in the UK on 15 June 1983.

That registration lapsed in 2007. However prior to lapsing the Applicant registered the Trade Mark, in plain text form, in the UK and that registration continues to present.

1. The Applicant first distributed goods under the Trade Mark in Australia during the 1980s. At that time it manufactured the goods in the UK and distributed them in Australia via the distributor Edward Keller Australia Pty Ltd. In about 1988 it ceased selling goods to Edward Keller Australia Pty Ltd and in either 1988 or 1989 licensed the company Australian Extruders International (‘Austex’) to both manufacture and sell goods under the Trade Mark in Australia. The directors and shareholders of Austex were comprised of six individuals including a director of the (yet to be established) Opponent and officers of the Applicant. The Opponent declares that the original directors were all equal shareholders, and the Applicant declares that its directors owned approximately 60% of Austex’s shares when it was incorporated.

2. Austex manufactured and sold goods under the Trade Mark from then until 1991 or 1992, at which time it ceased trading because it was unable to service debts owed to parties including the Applicant.

3. In April 1992 Denis Lipyeat, one of the former shareholders of Austex, and his wife established the Opponent. The Opponent entered into an unwritten license agreement with the Applicant under which the Opponent agreed to settle the debts owed by Austex and to take on responsibility for outstanding “third party leases”, and the Applicant agreed to lease its machinery to the Opponent. The Applicant declares that under the 1992 license agreement it authorised the Opponent to manufacture and sell matting goods under the Trade Mark. The Opponent made quarterly payments to the Applicant under the agreement, which the Applicant characterises as royalties (and which the documentation in the evidence itemises as royalties).

4. The 1992 license agreement was found not to comply with the Australian Tax Office rules, and so in 1995 the parties entered into a written lease agreement. The 1995 written agreement contains clauses specifically relating to the Applicant’s control over the use of various trade marks including VYNAGRIP and explicitly states that the “Lessor” (the Applicant) grants the “Lessee” (the Opponent) the exclusive rights to use the trade marks in the territory of Australia and New Zealand. It also states that at the determination of the agreement the Lessee would consent to the cancellation of any registration of it as a registered user or Lessee of the trade marks. The agreement is signed by a Director and Secretary of the Applicant and, under the common seal of the Opponent, by a Director and Secretary of the Opponent. However the copy in evidence is not signed by Mr Lipyeat or his wife, who are also parties to the agreement.

5. The initial term of the 1995 written agreement was 5 years, with the option to extend it for a further 5 years. The option was exercised, as was a further six month extension, such that the agreement was in place from May 1995 to November 2005.

6. During the period in which the agreement was in place, in 2003, the Opponent registered VYNAGRIP as a trade mark in Australia (registration number 975896). The Opponent declares that the Applicant was aware it had applied for registration but that it did not oppose the application. The Applicant declares that it was not aware of the application either before or during the relevant opposition period, and that at no time has it consented or acquiesced to the Opponent’s registration.

7. In 2007 the Opponent entered into negotiations with the Applicant to sell its business to the Applicant. Those negotiations were unsuccessful.

8. The Applicant declares it continued to use the Trade Mark in Australia since expiration of the 1995 written agreement via the Opponent. To support its statement it files two invoices of sales made to the Opponent which refer to the Trade Mark, dated 2008 and 2009.

9. In 2010 the Applicant filed the subject application. The Opponent’s trade mark was initially raised as the basis for a ground for rejection, however the Applicant filed evidence of use and the application was accepted under the provisions of subsection 44(4). The Opponent evidently obtained a copy of the evidence the Applicant had filed, and in its evidence in support asserts that the Applicant wrongly characterised payments made by the Opponent to the Applicant as royalties. Rather, the Opponent submitted, they were rental payments for the lease of the equipment. The Opponent did not press this point once a copy of the 1995 written agreement was filed in the Applicant’s evidence in answer, but it did submit that the Applicant had never exercised any of the control over the use of the Trade Mark that the written agreement specified; that since around 2000 it had produced goods under the Trade Mark on machines not leased from the Applicant; that the earlier-referred-to invoices related to parts used in association with matting that did not actually display the trade mark; and that neither the Opponent nor Mr Lipyeat had ever had a fully executed and witnessed copy of the lease agreement. It also made submissions that because the 1995 written agreement defined “the Trade Marks” as “the above mentioned trade marks ‘Heron’, ‘Vynagrip’, ‘Heronrib’ and ‘Vynastat’ registered in the United Kingdom”, then the written agreement only covered the form in which VYNAGRIP was registered in the UK at that time (shown again, below) and did not pertain to the use of the plain word.

1. For its part the Applicant declares that all use of the Trade Mark by its Australian distributors and licensees, including Edward Keller Australia Pty Ltd, Austex and the Opponent, had been use under the authorisation of the Applicant. Accordingly, the Applicant submits, it has continuously used the Trade Mark in Australia in respect of the specified goods since the 1980s.

2. The Applicant additionally submits that it commenced use of the Trade Mark in other countries during the 1980s including the United States, Japan, South Africa and Europe and that it has registered the Trade Mark in the UK, the United States, Switzerland, the European Community, Japan, Russia, Singapore, Turkey and is the holder of International Registration 959510.

3. Lastly, the parties provide brief sales information: the Opponent giving a total figure for sales made for the previous five years and the Applicant giving a single figure for annual sales.

Grounds and onus

1. In the Statement of Grounds and Particulars the Opponent particularised grounds of opposition under sections 44, 58A, 58, 60 and 42(b). However in its submissions it pressed only those under sections 44, 60 and 42(b). I treat the remaining grounds as having been abandoned.

2. The Opponent bears the onus of establishing at least one of its grounds of opposition. I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[1], and that the relevant date at which the rights of the parties are to be determined is 15 June 2010, the filing date of the application[2].

   [1] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26].

   [2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.

Section 44

1. Section 44 of the Act relevantly provides:

Identical etc. trade marks

44.(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.

…

(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.

1. The Opponent based the section 44 ground of opposition upon its registered trade mark VYNAGRIP, the details of which are shown below along with the details of the subject application for ease of comparison.

Opponent’s registered trade mark	The Trade Mark
Vynagrip	VYNAGRIP
Registration no.: 975896	Application no.: 1367149
Priority date: 29 October 2003	Priority date: 15 June 2010
Class 27: Mats, matting, floor coverings	Class 27: Coverings for existing floors including plastic coverings for existing floors; mats and matting

1. The parties did not contest that the Opponent’s registered trade mark had an earlier priority date than the Trade Mark; nor that the goods were of the same description; nor that the trade marks in question were substantially identical. Rather, the debate focused upon whether the provisions of either subsections 44(3) or 44(4) were met, in particular to whose benefit the Opponent’s use of VYNAGRIP enured.

2. The Opponent points out that once a ground under section 44 is made out then the onus shifts to the Applicant to show that it can satisfy either subsection 44(3) or 44(4). The Applicant relies largely upon the use by the Opponent to do so, on the basis that such use was under the authorisation of the Applicant.

3. As the Opponent has not provided any evidence of use of the Trade Mark, other than to make statements as to sales revenue and advertising expenditure, and as the Applicant relies upon the Opponent’s use, the Applicant can show only few examples of the Trade Mark in use in Australia. They are use upon the Applicant’s website, arguably not a use in Australia and in any event dated after the priority date, and the two invoices from the Applicant to the Opponent for matting parts “for Vynagrip and Heronrib use”, dated 2009 and 2008. Given that this matter relies more upon to whom the benefit of use enures, rather than whether there is sufficient use to satisfy either prior continuous use or honest concurrent use, I consider the most appropriate provision to determine the matter under is subsection 44(3)(b).

4. In order to establish that the use of the Trade Mark by the Opponent was under the Applicant’s authorisation the Applicant points to:

   ·     the 1995 written agreement;

   ·     a facsimile dated 25 October 1993 from the Opponent to the Applicant which lists payments, including royalties, from the Opponent to the Applicant over 1992 and 1993;

   ·     another facsimile from the Opponent to the Applicant dated 28 April 1995 describing the need for the 1995 written agreement and stating the agreement “would encompass both the lease and license payments, with fixed quarterly payments called ‘lease payments’”; and

   ·     the two invoices from the Applicant to the Opponent for matting parts “for Vynagrip and Heronrib use”, dated 2009 and 2008.

5. I am satisfied that, at least up until November 2005 when the 1995 written agreement expired, the use made by the Opponent was under the authorisation of the Applicant. Firstly, the Applicant’s use of the Trade Mark in the UK predates the use by Australian entities by a number of years and there is no evidence that the Applicant ever intended or implied that it surrendered the rights in its Trade Mark to the entities that sold VYNAGRIP labelled goods in Australia. This is supported by the reference to royalty payments and license payments in the facsimiles referred to above.

6. Secondly, the written agreement contains a number of clauses regarding the controls the “Lessor” (the Applicant) had over the application of the Trade Mark to plastic floor matting, as well as the following clauses (in which the “Lessee” is the Opponent, the “Trade Marks” include “Vynagrip”, and the “Territory” is Australia and New Zealand) which clearly identify ownership:

   4.5      THE Lessor HEREBY GRANTS the Lessee the exclusive right to use the Trade Marks in the Territory (but not outside the Territory) during the term of this Agreement in relation to the Products manufactured by the Lessee in accordance with the specifications provided or approved by the Lessee and in accordance with the terms and conditions here in after contained and the parties will co-operate with a view to the Lessee at the Lessee’s cost being registered as a Lessee or registered user of the Trade Marks pursuant to the appropriate trade mark legislation of the Territory (if the legislation provides for such registration)

   …

   4.7      THE Lessee HEREBY ACKNOWLEDGES that the Lessor is the proprietor of the Trade Marks and undertakes not to question the validity thereof and further undertakes that it will not during the period of this Agreement apply the Trade Marks otherwise than to Products manufactured and sold in accordance with the provisions of this Agreement and that after the determination of this Agreement it will not use the Trade Marks in relation to any goods or business whatsoever PROVIDED that the Lessee shall be entitled during the period six months after the determination of this Agreement to sell under the Trade Marks products manufactured hereunder prior to the date of determination (subject to rendering accounts to the Lessor and paying royalties in respect of all such sales as if this Agreement had not been terminated).

7. Thirdly, the Opponent’s submission that the only use attributable to the Applicant under the 1995 written agreement would be of the stylised word as registered in the UK and not of the word in plain text appears disingenuous. The difference between the stylised word and the word in plain text is minor, particularly given VYNAGRIP is an invented word and thus its impact is less affected by visual features than might be the case for a common or descriptive word. Moreover, the agreement specifically states that “the Trade Marks” mean “the trade marks ‘Heron’, ‘Vynagrip’, ‘Heronrib’ and ‘Vynastat’ registered in the United Kingdom”. The statement identifies the word “Vynagrip” such that one can be in little doubt as to what is being referred to, and does not provide any UK registration number that might give rise to an expectation to consult the UK Register to determine the precise form in which the mark is registered.

8. Fourthly the Opponent’s submission that, to the extent the Applicant relied upon the 1995 written agreement, the Registrar should note (a) the agreement is governed and to be construed by the laws of England and Wales, (b) the agreement contains a clause that

   any dispute or difference which may arise at any time hereafter between the Lessor and the Lessee touching the construction of this Agreement or the rights and liabilities of the parties hereto shall be submitted to arbitration under the Rules of Conciliation and Arbitration of the International Chamber of Commerce by any one or more arbitrators appointed in accordance with the said Rules

does not outweigh the fundamental points that the Opponent had agreed that the Applicant was the proprietor of the Trade Mark and that it was the Applicant who had granted to the Opponent the right to use it.

1. Accordingly I am satisfied that at least up until November 2005 the Trade Mark was used under the Applicant’s authorisation.

2. There is a marked lack of information as to what has taken place since the 1995 agreement expired in November 2005. The Opponent declares that it has generated sales under the Trade Mark of a certain amount for the previous five years (covering the period 2009 to 2014), and the Applicant declares that globally it generates a certain amount of sales per annum under the Trade Mark. The parties unsuccessfully negotiated the sale of the Opponent’s business to the Applicant in 2007 and 2008. Lastly, the previously referred to invoices indicate that at least two sales were made by the Applicant to the Opponent.

3. Accordingly, it appears that each party continued to trade under the Trade Mark and that they were aware of each other’s activities at least to a degree. The Opponent implies that the Applicant acquiesced to its use of the Trade Mark because the Applicant knew the Opponent continued to trade under it and because the Applicant failed to take any action to protect the Trade Mark until 2010. It does not explicitly state whether it believed itself to be the owner of the Trade Mark, and on what basis, either during the period of the 1995 written agreement or after its expiry.

4. Neither party addresses why the above-cited clause “…after the determination of this Agreement [the Lessee] will not use the Trade Marks in relation to any goods or business whatsoever [subject to an optional further six month period]…” was not put into effect. Nor does either party explain why trade between them continued.

5. Nonetheless, while there is a good deal of ambiguity surrounding the relationship between the parties after the expiry of the 1995 written agreement, I am not satisfied that the Applicant has forfeited or surrendered its rights in the Trade Mark. Without more than an awareness of Trade Mark use by a party formerly engaged as a lessee and licensee, I am not prepared to infer that the Applicant intended to pass ownership of the Trade Mark to the Opponent or that it was indifferent whether this should occur.

6. In these circumstances I consider that the Applicant ought to be able to secure registration of the Trade Mark in Australia, and that it is appropriate to apply the provisions of subsection 44(3)(b). Whilst the examiner applied the provisions of subsection 44(4) on the basis, it appears, that the use which took place was under the authorisation of the Applicant, the only documented use is the website extract dated after the priority date and the two invoices from the Applicant to the Opponent which refer to parts “for Vynagrip and Heronrib use”. Given the lack of documented use, I consider it more appropriate to reflect that the circumstances between the parties are such that registration is proper rather than reflecting that prior use has been established.

7. The Applicant also made submissions that the Opponent is merely holding registration 975896 on constructive trust for the Applicant. Whilst that might be found to be the case, it is a prescribed Court that may rectify the situation by expunging a registration or by substituting the true owner’s name in the Register. My delegation, as a delegate of the Registrar of Trade Marks, is to determine this matter under section 55 of the Act which deals with registration with or without conditions or limitations. I therefore do not have any decision-making power to determine whether or not registration 975896 is being held on constructive trust.

Section 60

1. Section 60 of the Act provides:

   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.

2. To establish the ground of opposition under section 60 the Opponent must demonstrate that its trade mark had acquired a reputation in Australia such that by 15 June 2010 the use of the Trade Mark in respect of the Applicant’s goods would be likely to deceive or cause confusion.

3. Reputation refers to the recognition of the Opponent’s mark by the public generally[3], although the size and nature of the relevant market must be taken into account.[4] Confusion or deception may be likely where very little nexus exists between the goods in question, depending on the strength of reputation and degree of similarity between the trade marks,[5] and confusion cannot arise solely from reputation but must always involve some degree of similarity between marks, whether it be called deceptive similarity or something less.[6]

   [3] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335; (2000) 51 IPR 102.

   [4] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587; (2001) 50 IPR 1.

   [5] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124.

   [6] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5; (2010) 85 IPR 647.

4. Here, the respective marks of the parties are identical or substantially so (the difference between presenting the word in capital letters and in lower case letters is so slight that it does not substantially affect the identity of the marks) and the goods are the same. However, to establish reputation the Opponent provides only unsupported statements of:

   ·     a total approximate sales figure for “the last five years”, which I consider relatively modest;

   ·     a total approximate figure for expenditure on promotion, which I also consider relatively modest; and

   ·     an approximate amount invested in new machinery to fabricate the matting products.

5. Whilst reputation is often inferred from high volume sales together with substantial advertising expenditure and other promotions[7], there is simply too little information before me to make that inference (notwithstanding that I consider the actual figures involved to be relatively modest). There are no examples of the Opponent using its trade mark in any context, or any documentation to support the stated sales, advertising and machinery-investment figures.

   [7] See McCormick, supra, at [86].

6. Accordingly, the Opponent has not established that its trade mark has a reputation, and the ground fails at the first hurdle.

Section 42(b)

1. Section 42 of the Act relevantly provides:

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

   (a) …

   (b) its use would be contrary to law.

2. The Opponent submits that the Applicant’s use of the Trade Mark would be contrary to Section 18 of Schedule 2 of the Competition and Consumer Act 2010 (‘CCA’), which provides:

   18 Misleading or deceptive conduct

   (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

   (2) Nothing in Part 3‑1 (which is about unfair practices) limits by implication subsection (1).

   Note: For rules relating to representations as to the country of origin of goods, see Part 5‑3.

3. In respect of the claimed contravention of Australia’s consumer protection legislation, I note that it was the Trade Practices Act 1974 (‘the TPA’) which was in force as at 15 June 2010. (Although containing essentially identical consumer protection provisions, the CCA, which replaced the TPA, only came into force as from 1 January 2011). In this regard I note the comment of Wilcox J in Time Warner Entertainment Co, LP v Stepsam Investments Pty Ltd[8]:

   I think that [Counsel] is correct to say that the application of s 42(b) of the Act should be considered as at the priority date, although looking forward to prospective conduct after registration was affected.

   [8] (2004) 59 IPR 343, at [47].

4. That said, s 18(1) of the CCA, being the particular provision identified as relevant to the Opponent’s s 42(b) ground, corresponds to s 52 of the TPA, which provides:

   s 52 Misleading or deceptive conduct

   (1)A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

5. The threshold required to establish that the Applicant’s use of the Trade Mark would mislead or deceive, under s 52 of the TPA or s 18 of the CCA, is higher than that required to establish whether such use would confuse or deceive under section 60 of the Act[9]. Since the Opponent cannot establish a reputation such that potential consumers may be confused, a test of mere wonderment or perplexing of the public mind, it cannot establish that they would be misled or deceived into an incorrect belief.

   [9] McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 49 FLR 455.

6. Accordingly, the ground under section 42(b) of the Act fails.

Decision

1. Section 55 relevantly provides that:

   …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.

2. The Opponent established a prima facie case under the section 44 ground of opposition, however the Applicant has established that the provisions of subsection 44(3)(b) ought to apply. The Opponent’s other grounds, under sections 60 and 42(b) of the Act, fail.

3. Accordingly, I direct that trade mark application 1367149 may proceed to registration after one month from the date of the decision, on the proviso that the current endorsement which reads “Provisions of s44(4) and/or Reg 4.15A(5) applied” be replaced with an endorsement which reads “Provisions of s44(3)(b) and/or Reg4.15A(3)(b) applied”.

4. If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.

5. The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent per Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth
Hearings Officer
Trade Marks Hearings
30 June 2015