Michael Farlam v Ozsale Pty Limited
[2024] ATMO 53
•21 March 2024
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOppositions by Michael Farlam to registration of the trade marks the subject of applications 2195543 (35) OZSALE and 2195544 OZSALE.COM.AU (35) – both in the name of Ozsale Pty Limited
Delegate: Robert Wilson
Representation: Opponent: No appearance
Applicant: Jonathan Feder of K&L Gates
Decision: 2024 ATMO 53
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 41, 42(b) and 43 considered. None established. Trade marks may proceed to registration.
Background
1. This decision concerns oppositions to registration of the trade marks detailed below. The oppositions were brought by Michael Farlam (‘Opponent’) pursuant to s 52.[1] The opposed applications are in the name of Ozsale Pty Limited (‘Applicant’).
[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) or the Trade Marks Regulations 1995 (Cth), respectively.
Application Number:
2195543
Filing Date:
21 July 2021
Trade Mark:
OZSALE
(‘543 Trade Mark’)
Application Number:
2195544
Filing Date:
22 July 2021
Trade Mark:
OZSALE.COM.AU
(‘544 Trade Mark’)
2. The applications have claimed the same services in Class 35 (‘Applicant’s Services’), being:
Discount services (retail, wholesale, or sales promotion services); Online retail services; Retail services; Retailing of goods (by any means); Retailing of goods via a vending machine; Organisation, operation and supervision of customer loyalty schemes; Organisation and management of incentive and sales promotion programmes (frequent buyer programmes); Promotional marketing; Sales promotion services; Sales promotions by issuing redeemable coupons (for others); Trade promotional services; Advertising; Electronic advertising services; Online advertising on a computer network; Rental of advertising space on the internet; Consumer market information services; Providing commercial information and advice for consumers in the choice of products and services
3. The applications bear the same endorsement, being ‘Evidence and/or other circumstances provided under subsection 41(4)’. The endorsements arose from adverse reports which were issued during examination of the applications (as was required by s 31). The examiner indicated her view that there was a ground for rejecting the application under s 41 because:
OZ commonly refers to Australia, and is wide and common use by Australian traders. SALE describes the sale of goods. Therefore your trade mark as a whole indicates that your goods are from sale from or in Australia.
Other traders should be able to use OZSALE (or something similar thereof) in connection with goods or services similar to yours.
4. The above is taken from the adverse report in connection with the application to register the 543 Trade Mark. The adverse report associated with the application to register the 544 Trade Mark was in similar terms but included that:
The addition of .COM.AU does not add to your trade mark. This is because merely indicates an internet domain, and is therefore viewed as any ordinary address would be. It does not detract from the major element of your mark, which is OZSALE.
5. The examiner indicated in both cases that the Applicant might overcome the ground for rejection if he supplied evidence of use in terms of s 41(4). The Applicant provided such evidence and the examiner was satisfied that the Applicant’s trade marks did in fact distinguish the Applicant’s Services. The examiner was so satisfied notwithstanding the examiner’s view that the trade marks lacked sufficient inherent adaptation to distinguish. This led to the applications being accepted with the corresponding endorsement entered on the Register. Section 41 will be considered in more detail below.
6. Following publication of notice of acceptance of the applications, the Opponent filed a Notice of Intention to Oppose registration of the Applicant’s trade marks, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 41, 42(b) and 43. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
7. The Opponent filed the following during the Evidence in Support stage of the opposition:
Declaration made on 2 September 2022 by the Opponent, with Appendices 1 to 4 (‘Farlam 1’) (re 543 Trade Mark); and
Declaration made on 2 September 2022 by the Opponent, with Appendices 1 to 4 (‘Farlam 2’) (re 544 Trade Mark).
8. The Applicant filed Evidence in Answer, being:
Declaration made on 5 December 2022 by Jimmy Gill, a partner of ClarkeKann Lawyers the representative of the Applicant at the time, with Exhibits JG1 to JG22 (‘Gill 1’) (re 543 Trade Mark); and
Declaration made on 5 December 2022 by Jimmy Gill, with Exhibits JG1 to JG22 (‘Gill 2’) (re 544 Trade Mark).
9. The Opponent did not file Evidence in Reply.
Once the time allowed for filing evidence had ended both parties requested to be heard. A hearing was scheduled for 19 March 2024. The Hearing Notice included a schedule for the parties to file written summaries of the submissions they intended to rely on at the hearing. Those submissions were to be filed by 5 March 2024 and 12 March 2024 for the Opponent and the Applicant respectively. The Opponent did not adhere to that schedule and in the end did not file written submissions or appear at the hearing. The Applicant filed its written summary in accordance with the schedule and was represented at the hearing by Jonathan Feder of K&L Gates. I heard the matter in my capacity as a delegate of the Registrar of Trade Marks.
The Opponent
There is no information before me from which I might provide a background to the Opponent.
The Applicant
According to Gill 1:
[The Applicant] is an Australian corporation registered on 2 March 2006. …
[The Applicant] is a leading e-commerce fashion marketplace that allows users to access a range of global fashion, lifestyle and luxury brands via its dedicated website at (the Website), and use a ‘direct to consumer’ model via the postal system. …
[The Applicant] has approximately 1,000 active suppliers that sell their products via the Website.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 41, 42(b) and 43. The Opponent did not file a written summary of submissions and did not appear at the hearing. It is assumed, therefore, that all grounds are pressed. There is a general presumption of registrability in favour of the applicant.[2] The onus of proof in an opposition rests upon the Opponent.[3] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is 21 July 2021 in the case of the 543 Trade Mark and 22 July 2021 in the case of the 544 Trade Mark, those being the filing dates of the respective applications (‘Relevant Dates’).[5]
Consideration of Grounds of Opposition
[2] Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519, [26]-[27] (Kenny J) and the authorities cited therein.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).
Section 41
This ground of opposition was particularised in the SGP as follows:
The trade mark applications consist solely of words that would be considered of common use to other businesses in Australia. The marks consist of two words 'OZ' and 'SALE' merged together. Australia is often referred to as 'OZ' and all Australian proprietors expect to be able to use the word 'OZ' in describing their business location as 'OZ' based. 'SALE' is a common use word with selling services, essentially meaning the applicant's marks are solely descriptive, using a geographical location and a common use word and have no distinctive element. A competitive advantage over other Australian businesses would be achieved by the applicant having a registered mark for 'OZSALE'.
Section 41 provides:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
The case law setting out the necessary considerations for determining whether a trade mark is inherently adapted to distinguish is plentiful and well established. In Registrar of Trade Marks v W & G Du Cros Ltd, Lord Parker of Waddington said:
The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.[6]
[6] (1913) AC 624, 634-5 (‘Du Cros’).
In citing Du Cros with approval Kitto J in Clark Equipment Co v Registrar of Trade Marks stated:
[W]hether a mark is adapted to distinguish [will] be tested by reference to the likelihood of other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[7]
[7] (1964) 111 CLR 511, 514.
In Cantarella Bros Pty Limited v Modena Trading Pty Limited the High Court adopted a two part test for determining inherent adaptation to distinguish of signs.[8] The first step requires assessing the ordinary signification of the sign, in Australia, to persons who will purchase, consume or trade in the relevant goods and/or services. If there is no ordinary signification the sign is to be considered inherently adapted to distinguish. Where there is an ordinary signification the second step is necessary. That step involves determining whether there is a legitimate desire for other traders to use the sign. If such a desire is likely, the sign is not inherently adapted to distinguish. Such legitimate desire exists on a continuum. At one end of the continuum are signs for which there is a high likelihood that other traders will wish to use them; such signs are considered to be bereft of inherent adaptation to distinguish. At the other end of the continuum are signs which, notwithstanding their ordinary signification, it is highly unlikely that other traders will wish to use them. Such signs approach inherent adaptation to distinguish.
[8] [2014] HCA 48 (French CJ, Hayne, Crennan, and Kiefel JJ) (‘Cantarella’).
Relevant to this matter is that the 544 Trade Mark is essentially the 543 Trade Mark with the addition of ‘.COM.AU’. Adding ‘.COM.AU’, or ‘.com.au’, to a sign does not afford the sign additional distinctiveness.[9] The distinctiveness of the 544 Trade Mark, therefore, turns on the distinctiveness of OZSALE. Accordingly, it is the distinctiveness of that sign that will be focussed upon.
Consideration of ordinary signification
[9] See for example: 1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57 (Thompson); Taxback Pty Ltd v Skilled Accounting Pty Ltd [2009] ATMO 79 (H Wilson).
The Applicant submitted that in assessing the ordinary signification of OZSALE the sign should be read as a whole and that to split the sign into two parts, ie assessed as OZ SALE, ‘does not accurately reflect the ordinary signification and obvious meaning of OZSALE, as a singular term, on its face’. The conjoining of what are normally read as separate words is common in the formulation of trade marks. Consumers are accustomed to recognising separate words within signs and interpreting the meaning of a sign accordingly. The consequence is that conjoining words, to form what might be termed a neologism, will not generally give the resulting sign a distinctiveness beyond that of the separate words. Accordingly, signs such as REPORTERPLATE,[10] MOROCCANOIL[11] and CASHCARD[12] were considered not to be inherently adapted to distinguish their relevant goods despite their being neologisms resulting from the obvious conjoining of words.
[10] Re Application by Ag-Id Pty Ltd [2005] ATMO 70 (Thompson).
[11] Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2015] ATMO 97 (Irgang).
[12] Re Application by Cashcard Australia Ltd [2007] ATMO 70 (Lyons).
‘Oz’ and ‘Sale’ are two words with well understood meanings (at least in Australia). OZSALE will be seen by consumers as an obvious conjoining of those two words. Accordingly, it is appropriate to consider the ordinary signification of ‘Oz Sale’ in assessing the ordinary signification of the Applicant’s trade marks.
‘Oz’ is a common colloquialism used to refer to Australia. ‘Sale’ has a number of relevant meanings in the context of the Applicant’s Services. The following are taken from the Macquarie Dictionary:
the act of selling;
opportunity to sell;
a special disposal of goods, as at reduced prices;
offer for sale, to make available for purchase.
In light of the above, the ordinary signification of OZSALE, in Australia, to persons who will purchase, consume or trade in services such as the Applicant’s Services is that the services concern the offering for sale of goods in Australia.
The likelihood that other traders might wish to use OZSALE
Having determined the ordinary signification of OZSALE, it is now necessary to consider whether there is a legitimate desire to use the trade mark. It is important to recognise that Cantarella refers to ‘a desire’ to use a sign, rather than ‘a need’ to use a sign.[13]
[13] A matter at odds with one of the Applicant’s submissions and a case relied upon.
During examination the examiner conducted research in regard to the use of the term ‘oz sale’. Many of the search results show use by the Applicant and very little use by other traders (seemingly only one example). An example of use by another trade was in reference to a ‘BIG OZ SALE – Save up to 50% off Selected Furniture & Homewares’. This apparent lack of use of OZ SALE by other traders is not determinative of whether other traders might have a legitimate desire to use the sign, but can give an indication of the likely desire. If it had been the case that there were many examples of other traders using OZ SALE this would have strongly indicated that OZ SALE had little, if any, inherent adaptation to distinguish. However, this is not the case, and on that basis I am of the view that the sign is to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Services from the goods or services of other persons, that is, that it falls under s 41(4). Consequently, it is necessary to consider the Applicant’s evidence to determine whether despite what that evidence shows, OZ SALE does not, and will not distinguish the Applicant’s Services from the goods or services of other traders.[14]
Consideration of Applicant’s evidence
[14] As per s 41(4).
The Applicant’s evidence is comprehensive and shows use of OZSALE in a number of online fora such as social media sites, and on its own website where it conducts its business. In some examples there is slight stylisation of the sign but in the main these are not use with additions or alterations which substantially affect the identity of the sign.[15] The Gill declarations provide comprehensive information regarding marketing expenditure for each of the calendar years 2015 to 2022—the expenditure is high. The Gill declarations also provide ‘approximate annual revenue figures’ for the financial years 2007 to 2022—those figures are also high. Having considered the Applicant’s evidence, I am not satisfied that OZSALE does not and will not distinguish the Applicant’s Services from the goods and services of other persons. Consequently, this ground of opposition is not established. The endorsement as entered on the Register by the examiner is appropriate.
[15] Section 7.
Section 42
The ground of opposition under s 42 was particularised in the SGP as follows:
Use of the OZSALE mark by the Applicant would be misleading or deceptive, or likely to mislead or deceive consumers as to the which actual business is providing the services offered due to widespread use of 'OZ' and 'SALE' in Australia. The use of the OZSALE mark constitutes a false and misleading representation that the goods and services provided under or by reference to the OZSALE mark originated from, or are affiliated with other Australian businesses who also choose to use the words ‘OZ’ and ‘SALE’.
The Farlam declarations clarify the ground of opposition by indicating that:
[U]se of the OZSALE mark by the Applicant would:
(a)be contrary to section 18 of the Australian Consumer Law contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth) (ACL) in that its use is misleading or deceptive, or likely to mislead or deceive consumers into believing that the Applicant's goods and services originated from or are affiliated with, another business;
(b)be contrary to section 29(1)(h) of the ACL in that its use constitutes a false and misleading representation that the goods and services provided under or by reference to the OZSALE mark originated from, are affiliated with, or approved or sponsored by other Australian businesses, or the goods are an equivalent quality to the goods of another Australian business; and
(c)constitute the common law tort of passing off.
The clarification in the Farlam declarations makes it apparent that this ground of opposition falls under s 42(b).
The relevant provisions of s 42 are reproduced below:
42 - Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of OZSALE by the Opponent would be, rather than could be, contrary to law on the balance of probabilities.[16] The relevant time for making this assessment is at the Relevant Dates but ‘looking forward to prospective conduct after registration’.[17]
[16] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
[17] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
It is appropriate at this point that the Opponent’s evidence is discussed. The body of the Farlam declarations consist of two pages. The declarations consist almost entirely of what are submissions regarding the grounds of opposition rather than evidence to support the grounds. In this regard the Applicant submitted in respect of the s 42(b) ground:
Evidence is required to support assertions that use of the trade mark by persons other than the opponent would lead to deception or confusion. As stated by Hearing Officer Purvis-Smith in Red Hat Inc v Martinek, evidence of ‘mere wonderment does not necessarily rise to the level required to satisfy s 42(b)’.[18]
Additionally, to succeed in a claim of passing off, an opponent must establish the ‘classic trinity’ of reputation, misrepresentation and injury or damage to goodwill. There must be a likelihood of injury to the goodwill of its business, and it follows that the reputation of its mark or name must be in some degree substantial.[19] …
The Opponent has also provided no evidence to show reputation it owns in any competing mark or reputation owned by other Australian businesses in any similar mark. Consequently, it also cannot be said that use and registration of the Ozsale Marks would misrepresent that the Applicant's Services originated from or are affiliated with the Opponent or other Australian businesses or that use and registration of the Ozsale Marks would be contrary to the law of passing off.
The Opponent's contention that the Ozsale Marks would be misleading or deceptive is therefore merely speculative and amounts to a ‘mere wonderment’ which does not rise to the level required to satisfy section 42(b)
[18] (2002) 56 IPR 292, [301].
[19] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302.
I am in general agreement with the Applicant’s submissions in respect of the Farlam declarations. The Opponent has not provided sufficient evidence to satisfy me that this ground of opposition is established.
Section 43
This ground of opposition was particularised in the SGP as follows:
The Applicant has the ability to locate its operations to another country, or sell its business and IP rights to a foreign based entity. Use of the OZSALE trade mark, when its business doesn't solely sell Australian made goods, or potentially isn't located within Australia would result in Australian customers being mislead or deceived as the trade mark itself implies that the services are Australia based and/or the goods are Australian made.
Section 43 provides:
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.
Spender J in Winton Shire Council v Lomas stated that:
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. [20]
[20] (2002) 56 IPR 72, [19].
In McCorquodale v Masterson the court found:
In an opposition to registration, s 43 of the Act requires an opponent to show that: (1) there is a connotation in the proposed trade mark or in a part of it; and (2) because of this connotation, the use of the proposed mark would be likely to deceive or cause confusion. The connotation must be contained within the mark itself. [21]
[21] (2004) 63 IPR 582, [25].
Similarly in Pfizer Products Inc v Karam Gyles J said:
‘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, rather than, for example, deception by reason of similarity with other marks … Section 43 might well prevent the registration of HERBAGRA for classes of goods with no connection with herbal ingredients. [22]
[22] (2006) 70 IPR 599, [53] (emphasis added).
It was stated in the Farlam declarations:
Australians would be shocked or offended, or could reasonably be expected to be shocked and offended, that a person or group of people based overseas could own the name ‘OZSALE’. Further, overseas businesses can own ‘.com.au’ domain names when they own the Australian trade mark for that domain name in word form.
It is noted that from articles shown in Appendix 4, there is a potential for OZSALE to be ‘swallowed-up’ by MYSALE and use logistics centres based in Italy, China, the US and UK.
Appendix 4 to the Farlam declarations is indicated to be ‘News articles involving ownership and possible relocation’ which mention, ‘the possible relocating of OZSALE’ from Inside Retail and the ‘possible relocating of OZSALE operations’ from the Financial Review.
The Applicant submitted in response:
[T]here is no primary meaning associated with the Ozsale Marks that is misleading or deceptive and the Opponent's arguments are not supported by evidence. [T]he Ozsale Marks do not imply that the Applicant's business would be operated by a local Australian entity or that the goods are Australian made.
Even if the Ozsale Marks do have an implied secondary meaning, they could only at best imply that the Applicant's ‘sale’ or the Applicant's Services are in Australia. In such case, use of the Ozsale Marks would not deceive or cause confusion because the Applicant's Services are offered to Australian consumers in Australia.
Additionally, even if the Applicant does relocate its operations to another country or sell its business to a foreign based entity, the Ozsale Marks would not deceive or mislead Australian consumers into thinking otherwise because the Ozsale Marks make no reference to where, how or by whom the Applicant's business would be operated. Moreover, in this day and age of globalisation where national economies are more tightly connected with one another than ever before, Australian consumers are well aware of the fact that businesses can be conducted from anywhere in the world. The ground of opposition also needs to be determined as at the date of filing of the Ozsale Marks and these matters are purely speculative.
I am inclined to the Applicant’s view. I found in considering the s 41 ground that the ordinary signification of OZSALE is that the Applicant’s Services concern the offering for sale of goods in Australia. Notwithstanding this connotation, I am not satisfied that the use of either of the Applicant’s trade marks in relation to the Applicant’s Services would be likely to deceive or cause confusion. The Opponent has not established this ground of opposition.
Decision and Costs
Section 55 relevantly provides:
(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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade marks 2195543 and 2195544 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.
The Applicant requested an award of costs in its favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995 (Cth), with costs for the second of the two oppositions to be assessed as set out in the table attached to the Hearing Officer’s decision in James Hardie & Co Pty Ltd v Hume Industries (Malaysia) Berhad.[23]
[23] (2001) 53 IPR 591 (Williams).
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
21 March 2024
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