Nautilus, Inc. v Mills International Trading Pty Ltd

[2019] ATMO 11

TRADE MARKS ACT 1995

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

Re:Opposition by Nautilus, Inc. to registration of trade mark application number 1799041 (class 28) – PROFLEX Logo – in the name of Mills International Trading Pty Ltd

Delegate:

Debrett Lyons

Representation:

Opponent: no representation; no submissions

Applicant: Roseanne Mannion of Spruson & Ferguson, Patent and Trade Mark Attorneys

Decision:

2019 ATMO 11

Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 44, 58 and 60 of the Trade Marks Act 1995 considered – none established and opposition unsuccessful.

Background

1.     This matter concerns an opposition brought by Nautilus, Inc. (‘the Opponent’) pursuant to section 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark appearing below which is the subject of application 1799041 made by Mills International Trading Pty Ltd (‘the Applicant’).

(‘the Trade Mark’)

2.     Application 1799041 was made on 26 September 2016 (‘the filing date’, or as the context requires, ‘the priority date’, those dates being the same in this case) and had previously been examined by this Office as mandated by section 31 of the Act. Following examination, the application had been advertised in the Australian Official Journal of Trade Marks on 16 February 2017 as accepted for possible registration for the following Class 28 goods:

“Fitness and exercise equipment, machines and apparatus including treadmills, rowing machines, crosstrainer machines, exercise bicycles; weights for physical exercise, skipping ropes” (‘the Goods’)

3.     On 18 April 2017 the Opponent filed a Notice of Intention to Oppose the registration and filed a Statement of Grounds and Particulars (‘the SGP’) on 18 May 2017. The SGP nominated grounds of opposition under sections 42(b), 44, 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 10 July 2017.

4.     The parties each filed evidence (described later) after which they were invited to be heard in Canberra on 20 November 2018.  The Opponent advised that it would not attend the hearing and would not be filing submissions.  The Applicant, represented by Roseanne Mannion of Spruson & Ferguson, Patent and Trade Mark Attorneys, asked to be heard by telephone.  Ms Mannion provided me with a written outline of the Applicant’s submissions in accordance with the pre-hearing timetable I set.  

Grounds of Opposition, Onus and Standard of Proof

5.     Since there are no submissions from the Opponent I must assume that its intention is to rely on all grounds of opposition listed in the SGP and mentioned above.  The onus of proof to establish at least one of those grounds rests upon the Opponent.[1]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2]  The date at which grounds are to be determined is 26 September 2016, being the filing (and priority) date of the application.[3]

[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

Evidence

6.     The parties filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’). The Opponent’s Evidence in Support of its opposition comprises a Statutory Declaration made by Robert Donald Hoge, Director, Intellectual Property Counsel of Nautilus made 12 October 2017 with Exhibits RDH1 to RDH33 (‘Hoge 1’); and a second, confidential Statutory Declaration made by Robert Donald Hoge that same day, 12 October 2017, with Exhibit RDH2-1 (‘Hoge 2’).

7.     The Applicant’s Evidence in Answer comprises the declaration of David Mills, Director of Mills Brands Pty Ltd (formerly, Mills International Trading Pty Ltd) made 19 January 2018 with Annexures A to C and Confidential Annexures D-E (‘Mills’); and a Declaration made by Roseanne Mannion, a Registered Trade Marks Attorney of Spruson & Ferguson made 22 January 2018 with Exhibit A (‘Mannion’).

8.     The Opponent’s Evidence in Reply comprises a declaration made by Louise-Dawn Kiddie, Information Service Supervisor of Baldwins (patent attorneys engaged by the Opponent) made 28 March 2018 with Annexes LDK1-2 (‘Kiddie’).

The Opponent

9.     In brief, the evidence lays claim to the following.  Hoge 1 describes the Opponent as a US “consumer fitness product company”[4] which owns the BOWFLEX brand[5], used in the US since 1986 in relation to “exercise machines”[6] and first used in Australia in 2005 in connection with treadmills.[7] 

1. The Opponent is the owner of the two Australian trade mark registrations detailed below:

   [4] Hoge 1, [6].

   [5] Id.

   [6] Ibid. [8].

   [7] Ibid. [12].

Number	Priority date	Trade mark	Goods
1066821	27 July 2005	BOWFLEX	Class 28: Exercise machines; exercise equipment, namely, manually operated and electronically operated exercise equipment
1142913	14 September 2006	BOWFLEX XTREME	Class 28: Manually operated exercise equipment 11.

12.   Hoge 2 provides confidential sales figures, considered later.

The Applicant

13.   Mills declares that the Applicant was established in 2006[8] and conducts an e-commerce business in Australia selling over 80 brands of goods across 1000 product lines.[9]  Mills declares that the Trade Mark was first used in 2015 in connection with fitness/exercise equipment[10] made in China which it imported into Australia[11].

Consideration

[8] Mills, [4].

[9] Ibid. [8].

[10] Ibid. [10].

[11] Ibid. [8], [13].

Section 44

14. So far as is relevant to my decision, section 44 of the Act provides:

44Identical etc. trade marks

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

(a)  the applicant’s trade mark is substantially identical with, or deceptively similar to:

(i)  a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)  a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)  the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

15.   In its SGP the Opponent asserts that the Trade Mark is substantially identical with or deceptively similar to the trade mark registrations owned by the Opponent and mentioned above which cover similar goods and which have earlier priority dates.

16.   Clearly the goods overlap and the registrations have earlier priority dates.  The comparison of the marks can be reduced to the Trade Mark with the BOWFLEX mark.  Those marks are not substantially identical as understood by the case law.  In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J stated:[12]

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.

[12] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12]. More recently, the Federal Court has looked to what it called the “dominant cognitive cues” within the trade marks under consideration but that exercise is much the same as that of determining the essential features – in both cases it requires identification of those parts of the trade marks which are, or go to form, their distinguishing characteristics.

17.   The Trade Mark is rendered in a stylised fashion albeit not so fancifully as to differentiate the trade marks, taken alone.  In Re London Lubricants (1920) Limited’s Application to Register a Trade Mark[13], the Court held that “the first syllable of a word is, as a rule, far the most important for the purpose of distinction”.  The terms PRO and BOW have completely different meanings.  They look (and to a lesser extent, sound[14]) different and they cannot be interpreted in the same way.  They do not lend a common meaning to the second syllable of the marks, FLEX.  A total impression of dissimilarity emerges from a side by side comparison of the trade marks.  In short, they are not substantially identical and the only remaining question is whether they are deceptively similar to one another.

[13] (1925) 42 RPC 264

[14] I note here the Applicant’s submission that the element “bow” might be pronounced by some people as “bough”.

18.   As far as deceptive similarity is concerned, in Shell at [13] Windeyer J said of ‘deceptive similarity’:

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

[…]

The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.

19.   Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd[15] (‘Millennium’) referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity:

[15] [2012] FCA 1022; 97 IPR 183

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

First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[16] at [49]; Australian Woollen Mills[17] at 658.

Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[18] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

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

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

Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[19] at 594 – 595.

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

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

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

Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[20]

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

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

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

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

[20] [2012] FCA 1022, [37] – [46].

20.   Mills declares that the Trade Mark was adopted “to allude to ‘professional sporting equipment’ and ‘flexibility’ which combined go hand in hand with sports”.[21]  I have no reason to question that statement.  To the degree to which the compared marks share a common element, that element – FLEX – either alludes to the Goods or at least alludes to benefits the Goods may pass to a user, a conclusion in part supported by the Mannion and Kiddie declarations which show a number of trade marks registered in class 28 with the suffix -FLEX.[22]

[21] Mills, [12].

[22] See, by analogy, Crossfit Inc v Bossfit Pty Ltd [2017] ATMO 74 where the marks CROSSFIT and BossFit were held not to be deceptively similar.

21.   Applying the principles set out in Millennium, I do not apprehend that an ordinary person exercising an ordinary amount of attention could confuse the parties’ trade marks. The compared trade marks are not deceptively similar and so it follows that the Opponent has not established its ground under section 44 of the Act.

Section 58

22. With these findings it is possible to consider the section 58 ground of opposition summarily. In Shell Co. (Aust) Ltd v Rohm and Hass Co.[23] it was held that, to succeed under section 58, an opponent must demonstrate use in Australia by a person other than the applicant, before the priority date of the applied-for trade mark, of a trade mark which is at least substantially identical in relation to goods or services which are the same as, or the same kind of thing as, those for which registration is sought.

[23] [1948] HCA 27.

23.   I have already found that neither of the trade marks registered by the Opponent is substantially identical to the Trade Mark[24] and so it follows that the Opponent has not established this ground of opposition.

[24] Since BOWFLX is not substantially identical to the Trade Mark is follows that BOWFLEX XTREME is not.

Section 60

24. Section 60 of the Act provides:

60Trade 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.

Note:For priority date see section 12.

25.   Accordingly, the Opponent needs to establish to the satisfaction of the Registrar that:

·     the trade mark(s) upon which it relies had a reputation in Australia at the priority date; and

·     because of that reputation the use of the Trade Mark would deceive or cause confusion.

26. In the SGP the Opponent particularized its section 60 ground of opposition as follows:

The Opponent’s BOWFLEX and BOWFLEX XTREME trade marks have been used continuously in Australia since at least 2005 and 2006 respectively in respect to the goods specified in class 28 of the registrations.

By reason of this use, the Opponent’s marks have acquired a reputation in Australia.

27.   In McCormick & Co Inc v McCormick[25] (‘McCormick’) Kenny J asked:

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”.

[25] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].

28.   In Le Cordon Bleu B.V. v Cordon Bleu International Ltee[26] Heerey J said that the reputation required to be demonstrated (albeit in relation to section 28(a) of the repealed Trade Marks Act 1955)[27] was to be:

... one of which a significant number of persons were aware...What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

(Implicitly approved by the Full Federal Court (Moore, Tamberlin and Goldberg JJ) on appeal in Renaud Cointreau & Cie v Cordon Bleu International Ltee). ^[28]

[26] [2000] FCA 1587; (2000) 50 IPR 1.

[27] The word ‘reputation’ was not used in subparagraph 28(a) of the superseded Act. All that was required for subparagraph 28(a) was that use of the mark “be likely to deceive or cause confusion” and Heerey J imported the word “reputation” into his quoted remarks because he was following Gummow J’s judgment in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 438.

[28] [2001] FCA 1170; (2001) 52 IPR 382 at [71] to [76].

29.   Regarding the measurement of reputation, in McCormick Her Honour went on to state:[29]

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

[29] Op cit at [86].

30.   Hoge 1 states that since the Opponent’s first use of BOWLFEX in Australia in 2005 its “use in connection with fitness equipment has continuously extended throughout Australia and has extended beyond treadmills.”[30]  Hoge 1 explains that the Opponent sells fitness equipment under a number of brands other than BOWFLEX, such as NAUTILUS, SCHWINN, UNIVERSAL and OCTANE FITNESS.[31]  Sales are made through retails outlets (such as were made via “Rebel” stores during the period 2006 to 2010) and directly.  Direct sales are described as those made through TV promotion, catalogue distribution and through the internet.  Actual sales details are provided in Exhibit RDH2-1 to Hoge 2 and are confidentially marked but in general terms I can observe that sales of BOWFLEX branded treadmills (so-called “treadclimbers”) were first made in 2005 with sales commencing a few years later in connection with dumbbells, dumbbell stands, benches, and certain “home gym” apparatus in the nature of spinning machines and step machines.  There is a hiatus in sales data in the period 2009 to 2012 and broadly I would describe the sales figures over the years as modest.

[30] Hoge 1, [12].

[31] Hoge 1, [6].

31.   In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi (‘Pottle’) the Registrar’s delegate observed:[32]

The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.

[32] [2012] ATMO 124 at [40].

32.   In my assessment the evidence is that BOWFLEX had acquired some level of awareness with that section of the Australian public with an interest in home fitness equipment.  I find that the BOWFLEX trade mark had by the priority date gained a modest reputation in respect of treadmills and similar home fitness machines. 

33.   I accept that the Goods overlap with the products sold by the Opponent under the BOWLFEX mark and I accept that, to the extent to which the Opponent makes sales via the internet, the sales channels for the parties’ goods are the same.  That said, it nevertheless follows from the observations in Pottle that reputation and other aligning factors must be balanced against the similarity between the parties’ trade marks.  I find in this case that the trade marks under consideration have their own identity and that, on balance, there is no real likelihood of confusion or deception by use of the Trade Mark.

34. The Opponent has not established its ground under section 60 of the Act.

Section 42(b)

35. Subparagraph 42(b) of the Act relevantly provides:

42Trade mark scandalous or its use contrary to law

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

[…]

(b)its use would be contrary to law.

36.   The onus is on the Opponent to establish on the balance of probabilities that use of the Trade Mark would, rather than could, be contrary to law.[33] In the SGP the section 42(b) ground is particularised by the claim that:

Use of the Applicant’s trade mark is contrary to law within the meaning of section 42(b) because such use amounts to passing off at common law and a breach of the Australian Competition and Consumers Act 2010.

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

37. The Opponent has not given any better detail of these claims. Nonetheless, it has failed to establish the ground of opposition under section 60 of the Act and it is well recognised that the test for “misleading or deceptive conduct” under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for “deception or confusion” underhttp:// section 60.[34] Accordingly, I find that the Opponent has also failed to establish that use of the Trade Mark would be contrary to the ACL. Further, where use of a trade mark does not contravene section 18 of the ACL, neither will it contravene section 29 of that Act or constitute passing off at common law. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered – in connection with the now superseded Trade Practices Act1974 (‘the TPA’) – that “the Court’s conclusion on section 52 would necessarily carry with it a conclusion on section 53(c) and (d)”.[35] Section 53(d) of the TPA was the equivalent provision to section 29(1)(h) of the ACL. In Re Equity Access Pty Ltd v Westpac Banking Corporation Hill J also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:[36]

The scope for the operation of section 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under section 52 or section 53 will invariably mean that proceedings for passing off would likewise fail.

[34] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ).

[35] [2003] FCA 104, at [107].

[36] [1989] FCA 506.

38. The Opponent has not established the ground of opposition under section 42 of the Act.

Decision

39. Section 55 of the Act relevantly provides:

55Decision

(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:For limitations see section 6.

40.   The Opponent has not established a ground of opposition.

41.   The trade mark application may proceed to registration 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 registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should be in accordance with the court’s order or direction.

Costs

42.   The Applicant sought its costs in the event it was successful in this matter and I accordingly award costs against the Opponent at the official scale set out in Schedule 8 to the Regulations.

Debrett Lyons

Hearing Officer

Hearings and Oppositions

29 January 2019