Monster Energy Company v Mixi, Inc

[2017] ATMO 119

TRADE MARKS ACT 1995

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

Re:Opposition by Monster Energy Company to extension of protection of International Registration 1242941 (9, 41) (Australian trade mark application 1687622) - MONSTER STRIKE - in the name of Mixi, Inc.

Delegate:

Jock McDonagh

Representation:

Opponent: Stephen Rebikoff of Counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys

Holder: Written submissions prepared by Watermark IP Lawyers

Decision:

2017 ATMO 119

Trade Marks Act 1995, Trade Marks Regulations 1995 - Opposition to extension of protection under Reg 17A.33 – grounds pressed under sections 42(b) and 60 not established – IRDA to be granted protection

Background

1. On 23 June 2014, Mixi, Inc. (‘the Holder’) applied for extension of protection to Australia of International Registration no. 1242941. The current details of the resulting International Registration Designating Australia (‘the IRDA’) are:

Application No:

International Registration:

1687622

1242941

Trade Mark

MONSTER STRIKE

Filing Date:

Convention Priority Date:

23.07.2014

27.12.2013

Goods & Services:

Class 9: Downloadable computer game programs; downloadable programs for personal computers; downloadable computer program for smart phones; downloadable computer programs for cellular phones; downloadable computer game programs for hand-held games with liquid crystal displays; downloadable arcade video game programs; downloadable consumer video game programs; electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media, all featuring recorded programs for personal computers; electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media, all featuring recorded programs for smart phones; electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media, all featuring recorded programs for cellular computers; electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media, all featuring recorded programs for hand-held games with liquid crystal displays; electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media, all featuring recorded programs for consumer video game programs; electronic machines, apparatus and their parts; telecommunication machines and apparatus; straps, covers, earphone jack and other accessories for cellular phones and tablet computers; stylus pen for telecommunication machines and electronic machines; downloadable image files; downloadable music files; downloadable character data; electronic publications (including also downloadable and recorded in electronic circuits, magnetic disks, optical disks, ROM cartridges, CD-ROMs, DVD-ROMs and other data media)

Class 41: Providing non-downloadable video games using communication by an electronic computer terminal, and consultation and providing information thereof; providing non-downloadable video games using communication by a PDA, and consultation and providing thereof; providing non-downloadable video games via a smart phone, and consultation and providing information thereof; providing non-downloadable video game using communication by hand-held games with liquid crystal displays, and consultation and providing information thereof; providing non-downloadable games for consumer video games and arcade video games via Internet, and consultation and providing information thereof; providing non-downloadable games via on-line, and consultation and providing information thereof; providing information about providing video games; providing amusement facilities; providing electronic publications about video games; providing electronic publications, and providing information thereof; services of reference libraries for literature and documentary records; providing images, motion pictures, music and audio materials via on-line, and consultation and providing information thereof; providing images, motion pictures, music and audio materials using communication by a PDA, and consultation and providing information thereof; movie showing, movie film production, or movie film distribution; presentation of live show performances; direction or presentation of plays; presentation of musical performances; production of videotape film in the field of education, culture, entertainment or sports [not for movies or television programs and not for advertising or publicity]; organization, arranging and conducting an event about video games; organization of entertainment events excluding movies, shows, plays, musical performances, sports, horse races, bicycle races, boat races and auto races

1. The IRDA was examined as required by Regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’). IP Australia advertised its intention to extend protection to Australia in the Australian Official Journal of Trade Marks on 7 May 2015. Monster Energy Company (‘the Opponent’) filed a Notice of Intention to Oppose the extension of protection of the IRDA on 7 July 2015 and a Statement of Grounds and Particulars (‘the Statement’) on 31 July 2015.  Thereafter the Holder filed a Notice of Intention to Defend on 9 September 2015. The parties then filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

2. I heard the matter in Canberra on 27 March 2017 as a delegate of the Registrar of Trade Marks. The Opponent was represented by Stephen Rebikoff of Counsel, instructed by Davies Collison Cave Patent and Trade Mark Attorneys. The Holder relied upon written submissions prepared by Watermark IP Lawyers.

   Grounds of Opposition

3. The Opponent nominated the following grounds of opposition under the Act in the Statement; however, only the last two were pressed at the hearing:

   ·Section 44: The Trade Mark is substantially identical with or deceptively similar to a prior application or registration;

   ·Section 60: The Trade Mark is similar to a mark that has acquired a reputation in Australia; and

   ·Section 42(b): Use of the Trade Mark would be contrary to law; and

4. To succeed in its opposition the Opponent bears the onus of establishing at least one of the two pressed grounds on the ‘balance of probabilities’.[1]

   [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26], affirmed by the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

5. The time at which the grounds of opposition must be established is the Priority Date.[2]

   [2] See Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595

   Evidence

6. The evidence consists of the following declarations:

Declarant	Position	Date Made	Annexures
Evidence in Support
Rodney Cyril Sacks (‘First Sacks declaration’)	Chairman and Chief Executive Officer of Opponent	8.12.15	RCS-01 to RCS-78
Elizabeth Kate Godfrey (‘Godfrey declaration’)	Senior Associate employed by Opponent’s attorney	14.12.15	The following three declarations
Rebecca Lee Dunbar (‘Dunbar declaration’)	Librarian employed by Opponent’s attorney	8.08.12	RLD-1 to RLD-20
Danielle Jade Robert(‘Roberts declaration’)	Solicitor formerly employed by Opponent’s attorney	9.07.12	DJR-1 to DJR-47
Adrian Heath Hunter (‘Hunter declaration’)	Australasian Manager of Monster Energy AU Pty Ltd	11.10.12	AH-1 to AH-19D
Evidence in Answer
Susumu Shimada (‘Shimada declaration’)	Legal Director of Holder	17.03.16	1 to 10
Evidence in Reply
Rodney Cyril Sacks (‘Second Sacks declaration’)	Chairman and Chief Executive Officer of Opponent	24.05.16

The Opponent & Opponent’s Trade Marks

1. The Opponent was previously called Hansen Beverage Company and owns and uses the trade mark MONSTER in relation to, inter alia, carbonated energy drinks (‘the Opponent’s Goods’).  The Opponent has a number (over 60) of registered trade marks in Australia which comprise or consist of the word ‘monster’ in relation to ‘carbonated energy drinks’ and which are listed in the First Sacks declaration, and in the grounds under sections 42 and 60 the Opponent relies on the use of its MONSTER and MONSTER ENERGY trade marks (‘the Opponent’s Trade Marks’) in Australia.

2. The most common portrayal of the Opponent’s Trade Marks comprise one or more of the three elements shown below:

3. The Opponent first used the Opponent’s Trade Marks’ in the USA in 2002 and sales grew rapidly: sales of the Opponent’s Goods under the Opponent’s Trade Marks occupied approximately 35% of the market for carbonated energy drinks in the USA at the time when the First Sacks declaration was made.

4. In the First Sacks declaration , Mr Sacks states:

   Today, my Company sells its MONSTER energy drinks to consumers throughout the United States, and approximately 114 nations and territories throughout the world, including:

   Australia, French Polynesia (including Tahiti), New Zealand, New Caledonia, Wallis and Futuna, Angola, Botswana, Kenya, Lesotho, Mauritius, Madagascar, Mozambique, Namibia, Reunion, Seychelles, South Africa, Swaziland, Tanzania, Uganda, Panama, Belize, Bolivia, Brazil, Chile, Colombia, Costa Rica, Ecuador, El Salvador, French Guiana, Guatemala, Guyana, Honduras, Nicaragua, Panama, Paraguay, Peru, Suriname, Venezuela, Uruguay, Antigua, Barbados, Bahamas, Bermuda, Cayman Islands, Dominica, French Guiana, Grenada, Guadeloupe, Jamaica, Martinique, Netherlands Antilles (including Aruba, Curacao, and Saint Maarten), Puerto Rico, St. Lucia, St. Maarten, Trinidad/Tobago, U.S.A. Virgin Islands, Albania, Andorra, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Gibraltar, Greece, Greenland, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey, Ukraine, the United Kingdom, Canada, Mexico, Azerbaijan, Georgia, Russia, Slovenia, Guam, Hong Kong, India, Japan, Korea, Macau, Philippines, Singapore, Afghanistan, Kuwait, and United Arab Emirates. In the United States, my Company’s MONSTER energy drinks are sold to consumers in all 50 states through more than 300,000 retail stores and outlets, and extensively through the Internet.

5. Concerning the use of the Opponent’s Trade Marks in Australia in relation to the Opponent’s Goods, Mr Sacks states in the First Sacks declaration:

   MONSTER energy drinks were first sold in Australia in 2006 by an Australian company named Bickford’s Australia Pty Ltd. Commencing in 2006, Bickford’s undertook advertising and marketing activities, including a media campaign, for MONSTER brand energy drinks and secured extensive distribution and sales of MONSTER brand energy drinks throughout Australia, including in Coles chain of retail stores, in "On the Run" convenience stores (Adelaide), and in Woolworths chain of stores. I do not have a full report of Bickford’s sales of MONSTER brand energy drinks, but did receive a report from Bickford’s that from June 2006 through February 2007, they sold more than 480,000 cans of MONSTER brand energy drinks in Australia. As the result of an agreement between Monster (then Hansen Beverage Company) and Bickford’s reached in December 2008, Monster acquired from Bickford’s all of Bickford’s rights in the MONSTER trade mark, including all trade mark applications lodged by Bickford’s for the MONSTER trade mark. Bickford’s first lodged trade mark applications to register the MONSTER trademark in Australia in May 2005. As a result of Monster's acquisition from Bickford’s of the MONSTER brand, Monster is also entitled to the benefit of all sales made and reputation developed through Bickford’s sales and marketing of MONSTER brand energy drinks from April 2006 through April 2009.

6. In the Godfrey declaration, the Opponent annexes evidence made in unrelated proceedings that have a bearing on the present case.  That evidence includes the Hunter, Roberts and Dunbar declarations.

7. Together, the First Sacks declaration and the Hunter declaration provide examples of the Opponent’s Trade Marks being used in conjunction with added matter, forming trade marks such as MONSTER RIPPER (for a combined fruit juice and energy drink), MONSTER ENERGY SHOTS (for a small volume energy supplement drink), X-PRESSO MONSTER (for an expresso coffee and energy drink blend), MONSTER REHAB (for a tea flavoured energy drink), and UBERMONSTER (for a brewed malt energy supplement), amongst others.[3]  These usages preceded the priority date and many of these trade marks are also registered.

   [3] First Sacks declaration [21]-[23]; Hunter declaration [13]-[14].

8. Goods bearing the Opponent’s Trade Marks have been retailed in literally thousands of outlets across Australia from supermarkets to take-away stores, pubs and clubs to petrol stations.  The presence of the Opponent’s Trade Marks is ubiquitous.[4]

   [4] First Sacks declaration [24].

9. Millions of dollars have been spent on the marketing and promotion of the Opponent’s Trade Marks in Australia before the priority date.  The sponsorship of sportspersons and sporting events has been a point of focus in that marketing drive and the ways in which the Opponent’s Trade Marks have been promoted to the Australian public is so manifest that it could not have gone unnoticed by a significant portion of that audience.

10. The Roberts and Dunbar declarations provide extensive evidence of the Opponent’s Trade Marks being used in many magazines featuring various motorcycle sports and activities.

11. The sponsorship of sportspersons and sporting events has also extended to such persons and events being represented in video games.[5] The Opponent’s Trade Marks appear in a number of games in the same way as they would appear on the apparel or equipment of the real persons and events depicted. Some gamers are sponsored by the Opponent and wear the Opponent’s Trade Marks on their apparel.

    [5] First Sacks declaration [215]-[220]; Second Sacks declaration [5]-[14].

12. Further, there is cross-promotion such that various games are advertised on the containers for the Opponent’s energy drinks.

13. I note that the reputation in Australia of the Opponent’s Trade Mark is discussed in Hansen Beverage Company v Bickfords (Australia) Pty Ltd[6] and Hansen Beverage Company v Bickfords (Australia) Pty Ltd[7].  The reputation in Australia of the Opponent’s Trade Marks in relation to the Opponent’s Goods is extensive and is not disputed by the Holder.

    [6] [2008] FCA 406.

    [7] [2008] FCAFC 181; (2008) 171 FCR 579; (2008) 251 ALR 1; (2008) 79 IPR 174.

    The Holder and the Holder’s IRDA

14. In the Shimada declaration Mr Shimada explains:

    Mixi presently uses its mark MONSTER STRIKE in relation to a downloadable fast-paced action game for mobile devices such as iPhones, Android phones and the Nintendo 3DS. A unique feature of the game is its online cooperative play mode, where up to four players can play together.

    Since launching in 2013, Mixi’s MONSTER STRIKE has been extremely successful. As of May 2015, the MONSTER STRIKE game had been downloaded to more than 30 million devices worldwide.

    Section 60: Trade mark similar to trade mark that has acquired a reputation in Australia

15. Section 60 of the Act is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

    The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

16. The ground of opposition pursuant to section 60 of the Act was particularised in the Statement as follows:

    Reference is made to the details of the Opponent's reputation set out in the particulars [for s42, below]. As a result of the Opponent's extensive reputation in Australia (as a result of significant exposure and/or use of one or more of the MONSTER trade marks in Australia since as early as 2004) and internationally in the MONSTER trade marks and the MONSTER brand, consumers are likely to be deceived or confused into believing that the services offered and provided under the “MONSTER STRIKE” trade mark are the Opponent's services, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case.To establish its ground of opposition under section 60 the Opponent must demonstrate that as at the Priority Date there was another trade mark that had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the IRDA would be likely to deceive or cause confusion.

17. It is necessary to bear in mind that each of the Opponent’s Trade Marks mentioned at [8] above is a separate mark for the purpose of considering the operation of s 60 of the Act in the present case.[8] However, the most common portrayal of the Opponent’s Trade Marks is as shown at [9], and I am satisfied that the Opponent’s reputation is directed to the distinctive elements displayed there.

    [8] Qantas Airways Limited v Edwards [2016] FCA 729 (‘Qantas’) at [160]

18. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[9] by Kenny J at [81] – [82]:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [9] (2000) 51 IPR 102

19. Further, at [86], Kenny J said:

    In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.

20. Rodney Cyril Sacks is the Chairman and Chief Executive Officer of the Opponent.  The First Sacks Declaration declares that energy drinks bearing the Opponent’s Trade Marks have been sold in Australia since 2006.

21. On the evidence it was perhaps 2009 before the Opponent had its own settled chain of distribution in Australia.  The evidence of use of the Opponent’s Trade Marks between 2006 and 2009 is less than perfect but it matters none since confidential sales figures show that up to the priority date sales of the Opponent’s energy drinks have been simply colossal in terms of volume sold and revenue generated therefrom.[10]

    [10] Sacks [29].

22. Although not of direct evidence to the Opponent’s Australian reputation, these sales are matched abroad and the First Sacks declaration states that energy drinks bearing the Opponent’s Mark, measured by unit volume, are the best-selling energy drink in the United States and the second best-selling energy drink worldwide.[11]

    [11] Sacks [10].

23. Goods bearing the Opponent’s Trade Marks have been retailed in literally thousands of outlets across the country from supermarkets to take-away stores, pubs and clubs to petrol stations.  The presence of the Opponent’s Trade Marks is ubiquitous.[12]

    [12] Sacks [24].

1. By the Priority Date the Opponent’s Trade Marks had an immense reputation in Australia in respect of carbonated energy drinks.

2. In terms of the likelihood of confusion or deception the parties are separated, in essence, by the arguments which follow.

3. The Opponent’s position is that there is clearly a real risk that consumers familiar with the wide variety of ways and contexts in which the Opponent has used the Opponent’s Trade Marks will have cause to wonder whether it might not be the case that a video game or gaming service bearing the IRDA is produced by or associated with the Opponent. Further the Opponent’s Trade Marks are simply too well-known, and the range of circumstances in which they has been used by the Opponent simply too diverse, for it to be said that such consumers would not entertain a reasonable doubt in that respect.

4. The Holder’s submissions were that the Opponent’s evidence gives a handful of instances of promotion of the Opponent’s energy drink via video games and partnerships with video game publishers; however, these activities do not amount to use by the Opponent of the mark MONSTER in relation to video games. Further, there is no evidence to suggest that Opponent has ever created or published video games, or that it is known for doing so.

5. Given the prevalence of “monsters” in video games, the Holder submitted that any suggestion that the term “monster” in the context of video games would necessarily be associated with the Opponent is fanciful in the extreme. The Holder submitted that consumers would clearly view the word MONSTER in the IRDA as having its ordinary meaning as an imaginary creature, and not draw any connection between the IRDA and the Opponent or its carbonated energy drink.

6. The evidence has satisfied me that there is no doubt that by the Priority Date the Opponent’s Trade Marks had an immense reputation in Australia in respect of carbonated energy drinks. However, while I can accept that the Opponent applies the Opponent’s Trade Marks within electronic games and sponsors gamers, there is no similar evidence that the reputation carries over into that market. The common element of the IRDA and the Opponent’s Trade Marks is an ordinary English word and consumers would not expect that all uses of the word Monster would be connected to the Opponent.

7. The use of the Opponent’s Trade Marks in areas other than carbonated energy drinks, such as sports and games, has a primary aim of promoting and marketing energy drinks. I consider that the relevant market for electronic games would not consider that the IRDA is other than a mark that accompanies an electronic game in which players battle monsters. There is no evidence of actual confusion.

8. I am not satisfied that this ground of opposition, under section 60 of the Act, has been established.

   Section 42

9. Section 42 of the Act is 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) the trade mark contains or consists of scandalous matter; or

   (b) its use would be contrary to law.

10. The onus is on the Opponent to establish that use of the IRDA by the Holder would be, rather than could be, contrary to law on the balance of probabilities.[13]  The relevant time for assessing whether an application is contrary to law is at the Priority Date but ‘looking forward to prospective conduct after registration’.[14]

    [13] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

    [14] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd; 59 IPR 343, 353.

11. The ground of opposition pursuant to section 42 of the Act was particularised in the Statement as follows:

    The Opponent's MONSTER trade marks are well known in Australia, the United States and internationally in approximately 115 countries or territories for energy drinks and related goods, including a range of beverages and nutritional supplements, clothing, headgear and footwear, merchandise, stickers etc.

    The Opponent has sold well over 13 billion cans of MONSTER energy drinks worldwide and now sells more than 3 billion cans per year. Sales of the Opponent's MONSTER energy drinks have generated more than US$24 billion in total retail revenues worldwide, with estimated retail sales exceeding US$6 billion per year.

    Based on the Opponent's reputation in Australia in relation to energy drinks, beverages and nutritional supplements, clothing and related apparel and related goods and in relation to the sponsorship and promotion of events including extreme sport, motor racing, music events and athletes and performers participating at those events, consumers are likely to be misled or deceived into believing that the services offered and provided under the “MONSTER STRIKE” mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Offering and selling the goods in class 9 and offering to provide and providing the services specified in classes 9 and 41 of the opposed mark under the “MONSTER STRIKE” mark also suggests that the trade mark Applicant and its goods and services are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the “MONSTER STRIKE” trade mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

12. However, in the circumstances of this matter, where the Opponent has not established that the use of the IRDA would be likely to deceive or cause confusion in terms of section 60, it follows that neither can it establish that the use of the IRDA would ‘mislead or deceive’ under the Australian Consumer Law (or its common law equivalent), which is a higher standard. In Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited[15], Gibbs C.J. said at [8]:

    The words of s. 52 require the court to consider the nature of the conduct of the corporation against which proceedings are brought and to decide whether that conduct was, within the meaning of that section, misleading or deceptive or likely to mislead or deceive . . . . . The words “likely to mislead or deceive”, which were inserted by amendment in 1977, add little to the section; at most they make it clear that it is unnecessary to prove that the conduct in question actually deceived or misled anyone. In McWilliams v. McDonalds [1980] FCA 159; (1980) 33 A.L.R. 394 it was rightly held by Smithers J. and by Fisher J. that to prove a breach of s. 52 it is not enough to establish that the conduct complained of was confusing or caused people to wonder whether two products may have come from the same source, and that Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty Ltd (1954) 91 C.L.R. 592, a decision on the Trade Marks  Act 1905 (Cth) as amended, is distinguishable: I need not add to what their Honours said on this subject (33 A.L.R.) at 397-8 and 412-3. I agree too with those learned judges that the court must decide objectively whether the conduct is misleading or deceptive or likely to mislead or deceive, and that evidence that members of the public have actually been misled is not conclusive: see at 399-400 and 413-4. I would add that evidence that members of the public were misled, not by any conduct of the defendant, but by other circumstances for which the defendant was not responsible, would be quite irrelevant.”

    [15] [1982] HCA 44; (1982) 149 CLR 191.

13. In the same case Mason J. said at [30]:

    “. . . the onus is on the plaintiff to show that the conduct is likely to mislead or deceive. Therefore conduct which merely causes some uncertainty in the minds of relevant members of the public does not breach s. 52.”

14. I am not satisfied that this ground of opposition, under section 42(b) of the Act, has been established.

    Decision

15. 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.

16. 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.

17. The IRDA may then 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 disposition of the IRDA be in accordance with the Court’s order or direction.

    Costs

18. The parties sought their costs. I see no reason to depart from the general rule that costs follow the event. As the Holder has been the successful party, I award costs against the Opponent at the scale set out in Schedule 8 to the Regulations.

    Jock McDonagh

    Hearing Officer

    18 October 2017