Nesor Nominees Pty Ltd v Big Boy Restaurant Group LLC

[2022] ATMO 135

TRADE MARKS ACT 1995

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

Re:Opposition by Nesor Nominees Pty Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) of trade mark number 2058399 (International Registration number 1503942) (class 43) – Cartoon Boy with Hamburger Device – in the name of Big Boy Restaurant Group, LLC

Delegate:

Tracey Berger

Representation:

Opponent: Melissa Marcus of counsel instructed by Frenkel Partners

Holder: Davies Collison Cave Pty Ltd

Decision:

2022 ATMO 135

Trade Marks Act 1995 (Cth) – opposition to extension of protection under reg 17A.33 – grounds of opposition pressed under ss 42(b), 44, 60 and 62A considered – no grounds established – extension of protection allowed

Background

1.     This is a decision on the opposition by Nesor Nominees Pty Ltd (‘Opponent’) to the extension of protection in Australia of International Registration 1503942 (‘IRDA’) in the name of Big Boy Restaurant Group, LLC (‘Holder’) of the following mark:

Trade Mark:   (‘Trade Mark’)

Australian Trade Mark Number: 2058399

Filing Date:  6 August 2019 (‘Relevant Date’)

Specification:  Restaurant services including carry-out, concession stands and catering services, preparing and serving food for others (‘Holder’s Services’)

2.     The IRDA was advertised as accepted for possible protection on 23 June 2020.  The Opponent filed a Notice of Intention to Oppose on 20 August 2020 and a Statement of Grounds and Particulars (‘SGP’) on 16 September 2020.  The Holder filed a Notice of Intention to Defend on 3 December 2020.

3.     The parties then filed evidence in accordance with the timetable set out in reg 5.14.[1]  The Opponent filed evidence in support of the opposition (‘EIS) on 2 March 2021, followed by the Holder’s evidence in answer (‘EIA’) on 6 June 2021 and concluding with the Opponent’s evidence in reply (‘EIR’) filed on 7 December 2021.

[1] Unless otherwise stated, each reference to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).

4.     The parties were given an opportunity to request a hearing.  The Opponent requested to be heard by written submissions and filed its written submissions prepared by Melissa Marcus of counsel on 1 July 2022 (‘Written Submissions’).  The Holder did not ask to be heard.  I have decided this matter based on the particulars outlined in the SGP, the evidence filed and the Written Submissions.

Grounds and Onus

5.     The SGP nominates grounds of opposition under ss 42(b), 44, 60 and 62A.

6.     The Opponent carries the burden of establishing one or more of the grounds of opposition on the balance of probabilities.[2] The rights of the parties are assessed as at the Relevant Date.[3]

Evidence

[2] Pfizer Products Inc v Karam [2006] FCA 1663, [22] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).

EIS

7.     The EIS consists of a Declaration of Lance Russell Rosen, Operations Manager for the Opponent, made on 2 March 2021 with Exhibits LRR-1 to LRR-29.

8.     The Opponent declares that it began trading as ‘Big Boy’ in September 2011 and has been offering American style BBQ goods and services, including the sale of BBQ meats, continuously since that time.

9.     The Opponent is the registered owner of the following Australian registrations:

Trade Mark Number	Trade Mark	Class	Priority Date
1449900	Big Boy BBQ	16, 25 & 43	4 October 2011
1449901	Big Boy Barbeque	16, 25 & 43	4 October 2011
1562172	16, 25 & 43	12 June 2013
1701570	Big Boy Burgers	16, 25 & 43	19 June 2015

(‘Opponent’s Marks’)

10.   Since 2011, the Opponent’s Marks have been used on its website at (‘Opponent’s Website’) which sells merchandise, Temples of BBQ cookbook, sauces, spices, and rubs.

11.   The Opponent, or a related company, has also used or continues to use the Opponent’s Marks at the following stores (‘Opponent’s Stores’):

•Hardware Lane, Melbourne from April 2013-April 2019;

•Caulfield, Victoria since October 2013;

•Richmond, Victoria from July 2014 to December 2016.

12.   At the Opponent’s Stores, the Opponent’s Marks are used for restaurant, takeaway and catering services as well as cooking classes, on menus, food packaging, sauce bottles, chopping boards, vehicles, signs, t-shirts and hats, stubby holders, display merchandise such as surfboards, smokers, competitions and gift vouchers.  In addition, the Opponent’s Marks are promoted on the Opponent’s Website and social media accounts, attendance at BBQ competitions and charity events held around Australia and via sales of merchandise and retail products through stockists around Australia.  Examples of these various uses are provided together with annual gross sales figures and advertising expenditure.

13.   The EIS refers to Australian registrations previously owned by Big Boy Restaurants International LLC (‘BBRI’), which was acquired by the Holder, for the same mark as the Trade Mark but featuring the words ‘BIG BOY’ on the bib of the cartoon boy character (the cartoon boy character is hereinafter referred to as the ‘Boy Cartoon Device’).  These registrations have been removed from the Register either for non-renewal or as a result of an application for removal for non-use.

14.   The Opponent alleges that in use the Trade Mark will generally be described as ‘Big Boy’ and that the Holder’s website and social media accounts show the Trade Mark used with or in close proximity to the words ‘Big Boy’.

15.   The EIS outlines the history between the Holder (or its predecessor in title) and the Opponent.

EIA

16.   The EIA consists of a declaration of Altinia Kandrevas, General Counsel of the Holder, made on 4 June 2021 with Exhibits AK-1 to AK-14.

17.   Ms Kandrevas attests to the history of the Holder which has been operating continuously in the USA under the marks BIG BOY and the Boy Cartoon Device mark since the late 1930s.  The Holder has 74 BIG BOY locations across the USA, 274 outlets in Japan and restaurants in Egypt, Saudi Arabia, Brazil, the Philippines and Thailand.

18.   The Boy Cartoon Device was designed by Warner Brothers’ animation artist based on a 6 year old fan of the Holders’s business and in particular its double-decker hamburger, which was the first double-decker burger in the world.  The name BIG BOY was chosen as it was the owner’s nickname for the fan.  Early renditions of the Boy Cartoon Device had the boy wearing red and white overalls with nothing written on his chest or bib as shown in examples contained in the EIA.  Subsequently, it was decided to use the company name BIG BOY on the bib and this continued until 2019 when the Holder decided to revert to the Boy Cartoon Device as initially represented.  Since 2019, the Holder attests that it has transitioned to using the Boy Cartoon Device with no writing or to using a black square on the bib.  Examples of these uses including from the Holder’s website at and its social media accounts are included in the EIA.

19.   Ms Kandrevas attests that the Holder has chosen the Trade Mark as its logo for its international expansion.  It holds registrations for the Trade Mark in the USA, Canada, China, Indonesia, Philippines, Vietnam and Singapore as well as pending applications in Thailand and India (in addition to the IRDA).

20.   The EIA also outlines some history between the parties as well as the Holder’s reputation in BIG BOY (including the results of a Google search for BIG BOY) and the Boy Cartoon Device.

EIR

21.   The EIR comprises the following:

·     Declaration of Lance Russell Rosen made on 7 December 2021 with Exhibits LRR-30 to LRR-36 (‘Rosen 2 Declaration’); and

·     Declaration of Sofija Celebic, solicitor for the Opponent, made on 7 December 2021 with Exhibits SC-1 to SC-3.

22.   The Rosen 2 Declaration points to a number of uses of the Trade Mark with the words BIG BOY on the bib of the cartoon boy character in the EIA both before and after the Relevant Date.

23.   In addition, Mr Rosen provides further information about past correspondence between the Opponent and the Holder’s predecessor in title.  Mr Rosen also notes two other International Registrations designating Australia, one for BIG BOY and the other for the Trade Mark in classes 16, 29, 30, 32 and 43, neither of which are protected in Australia.

24.   Ms Celebic attests that she conducted Internet searches for ‘BIG BOY’ which returned different results to that contained in the EIA.

Discussion

Section 44

25.   Section 44 relevantly provides:

44  Identical etc. trade marks

…

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

(a)  it is substantially identical with, or deceptively similar to:

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

(ii)  a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

26.   In the SGP, the Opponent alleges that the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Marks outlined at paragraph 9 above which cover similar services or closely related goods.

27.   Firstly, I note that the Opponent’s Marks are all in the name of a person other than the Holder and have an earlier priority date than the Relevant Date.

28.   The Opponent’s Marks cover “Preparation of food and drink, providing food and drink, take away food services, catering services; restaurant services”.[4]  These services are essentially the same as the Holder’s Services.

[4] Registration number 1701570 also specifies “restaurant services for the provision of fast food” which is encompassed by the broader item “restaurant services”.

29.   Accordingly, I must now consider whether the Trade Mark is substantially identical with, or deceptively similar to, one or more of the Opponent’s Marks.

30.   The test for whether two marks are substantially identical requires that they 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.[5]

[5] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

31.   I am satisfied that the Trade Mark is not substantially identical with any of the Opponent’s Marks.  The Trade Mark is a device of a cartoon boy character in checked overalls with a bib holding a hamburger on a tray.  The Trade Mark does not feature the words ‘BIG BOY’ or any other word element.  On a side by side comparison, it is obvious that the Trade Mark is different from the Opponent’s Marks.

32.   The test for deceptive similarity is broader than the test for whether they are substantially identical and requires that one trade mark  so nearly resembles the other trade mark that it is likely to deceive or cause confusion.[6]

[6] Act s 10.

33.   In determining whether any of the Opponent’s Marks and the Trade Mark are deceptively similar, I am guided by the longstanding principles relevant to the assessment of deceptive similarity summarised by the Federal Court in Caterpillar Inc. v Puma SE:[7]

First, the relevant comparison is between the marks themselves.  The comparison assumes a normal and fair use of the application trade mark for all goods or services covered by the application…

Second, the test is not a “side-by-side” comparison of the marks. Deceptive similarity is to be assessed by reference to persons who do not have an opportunity to compare the respective marks side-by-side and who may have an imperfect recollection of the marks…

Third, while the deception or confusion must result from the similarity in the marks, the likelihood of deception or confusion is to be judged not by the degree of similarity alone but by the effect of the similarity in the circumstances.  Confusion may arise from two word marks in a number of ways. The confusion might arise because of the textual similarity of the words, or because of the phonetic similarity of the words when pronounced, or there may be conceptual confusion where consumers might think that the product bearing the impugned mark is a variant of, or related to, an existing brand…

Fourth, confusion includes being left in doubt or having cause to wonder. The creation of an incorrect belief or mental impression and causing confusion “… may go no further than perplexing or mixing up the minds of the purchasing public…”

Fifth, it is not necessary to establish that confusion is more probable than not; likelihood is established if there is a real risk, that is a finite, non-trivial risk, of confusion.  It is enough if the ordinary person entertains a reasonable doubt…

Sixth, no intention to deceive or cause confusion is required, although it may nevertheless be a relevant factor to take into account in the evaluation of deceptive similarity if the defendant did have that intention.[8]

[7] [2021] FCA 1014, (O’Bryan J).

[8] Ibid, [90]-[96] (citations omitted).

34.   It is apparent from the first principle enunciated above, that I must consider the  Trade Mark which is the subject of the IRDA and it is not relevant that a similar mark containing the words ‘BIG BOY’ has previously been registered or may be in use overseas.[9]  A notional and fair use of the Trade Mark would not include using the mark with the words ‘BIG BOY’ on the bib.

[9] See Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353 per Mason J; Johnson & Johnson v Kalnin (1993) 114 ALR 215; 26 IPR 435, 438 (Gummow J); MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236, 244 (Burchett, Sackville, Lehane JJ); Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 383 – 384 (French J).

35.   In support of its contention that the Trade Mark is deceptively similar to the Opponent’s Marks, the Opponent refers to various decisions where a device mark was found to be deceptively similar to a word mark such as the device of an emu and word EMU,[10]  the word SAMURAI and a Samurai Warrior device[11] and a footprint image and BAREFOOT.[12]  The Opponent argues that the Trade Mark will be perceived as the image of a ‘big boy’ and that the Holder itself refers to the Trade Mark as such.  In my opinion, the present case is distinguishable from those relied upon by the Opponent.  In Constellation, the Registrar’s Delegate found that the device mark in question could only logically be referred to as ‘EMU’ and therefore, “the only possible conclusion in the present opposition is that the idea of the applicant’s EMU device is “EMU”, precisely the same idea and name that would be associated with the opponent’s trade mark for the word EMU”[13]. The Teraglow and BAREFOOT decisions were similar in that the word mark was the most obvious means of referring to the device mark.  In this case, I am not satisfied that consumers would refer to the Trade Mark as ‘Big Boy’.  The cartoon boy character is not obviously ‘big’ and in my view, is not large in comparison to the size of the hamburger.  There are any number of ways in which consumers may refer to the Trade Mark such as ‘cartoon boy’ or ‘hamburger boy’ and ‘Big Boy’ is not the only or most obvious reference.  Further, the Opponent’s Marks are not simply BIG BOY but also include the words BBQ or Burgers.

[10] Constellation Australia Limited v Littore Family Wines Pty Ltd [2011] ATMO 47 (‘Constellation’).

[11] Teraglow Pty Ltd [2016] ATMO 32, [34].

[12] E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15, [69] (French CJ, Gummow, Crennan and Bell JJ).

[13] Constellation (n 10) [30].

36.   The Opponent also argues that during examination, the Examiner conducted a search for prior marks containing both of the words ‘big’ and ‘boy’ which indicates that the Trade Mark will be referred to as ‘big boy’.  The EIS explains that when the Trade Mark was originally entered on IP Australia’s database it was described and indexed by reference to ‘big boy’.  This, perhaps together with the Holder’s name, likely explains why the Examiner would have undertaken a word search for the combination ‘big’ and ‘boy.  Any reference to ‘big boy’ was subsequently removed from the description and indexing of the mark  as having been entered in error.  Although I am speculating, it may be the case that when the IRDA was received, there was some doubt about the quality of the image and whether there were words on the bib of the boy and a search revealed the prior registrations for the Boy Cartoon Device with ‘big boy’ on the bib so the IRDA was entered and indexed on the database in the same manner.  Given the indexing of the Trade Mark, I do not think that the Examiner’s search indicates that ‘big boy’ is the obvious description of the Trade Mark.  Further, the Examiner did not extract any of the Opponent’s Marks for consideration as citations even though they would have been revealed by the search.  In my view, no significance can be attributed to the Examiner’s search strategy during examination to indicate that ‘big boy’ is the manner in which the Trade Mark will be described.     

37.   I am not satisfied that there is any danger of confusion between the Trade Mark and the Opponent’s Marks.  The Trade Mark is not deceptively similar to any of the Opponent’s Marks and hence the s 44 ground of opposition is unsuccessful.

Section 60

38.   To establish this ground, the Opponent must establish a reputation in a trade mark existing in Australia at the Relevant Date. If reputation is established, the Opponent must then prove that because of the reputation in the mark relied on by the Opponent, use of the Trade Mark is likely to deceive or cause confusion.

39.   The reputation must be established as a matter of fact by the Opponent[14] and must be amongst a ‘significant’ or ‘substantial’ number of Australian consumers[15] although this is tempered by the nature of the relevant market.

[14] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159, [77] (Lockhart J).

[15] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

40.   In support of this ground of opposition, the Opponent states in the SGP that:

The opponent, and its related entities and authorised users, have been selling BBQ meats (e.g. as platters and burgers) and related products under and by reference to the Opponent's Trade Marks throughout Australia since 2011, such goods and services being extensively advertised and promoted throughout Australia in various forms of media, and winning national and international awards. As a result, each of the Opponent's Trade Marks had acquired a reputation in Australia before the priority date for the opposed mark and because of that reputation, the use of the opposed mark would be likely to deceive or cause confusion.

41.   At one stage, the Opponent had three restaurants in Melbourne and generated a commercially appreciable amount of revenue in financial years FY13, FY14 and FY15 but revenue in other years has been significantly less.  Further, whilst the Opponent promotes the goods and services offered under the Opponent’s Marks through its social media accounts, the number of followers does not constitute a substantial number of Australian consumers and no metrics are provided about the number of visitors to the Opponent’s Website.  The Opponent alleges that it has expended considerable sums on advertising and promotion and whilst these figures to do not include the cost of participating in competitions, in my view, the advertising expenditure has not been significant. From 2015-2017, the Opponent attended one or two competitions/events a year which increased to 7-8 events annually in 2018 and 2019.  No details about the number of attendees at these events has been provided.

42.   The relevant market for restaurant and takeaway food services is large comprising most of the adult, and a significant proportion of the teen, populations.  Whilst the Opponent has had some level of success with its business and may have a local following at its Caulfield store, I am not satisfied that it has acquired a reputation amongst a significant proportion of the Australian public in the Opponent’s Marks. 

43.   The s 60 ground is unsuccessful.   

Section 42(b)

44. The Opponent alleges that use of the Trade Mark would be contrary to law under s 42(b) on the basis that use of the Trade Mark is likely to mislead or deceive consumers in breach of ss 18 and 29 of the Australian Consumer Law (‘ACL’).

45. The claim that use of the Trade Mark would constitute misleading or deceptive conduct under the ACL relies on the Opponent establishing a reputation in the Opponent’s Marks. If there is no reputation, there can be no mistaken belief or assumption on the part of the consumer caused by use of the Trade Mark, and therefore such use cannot be misleading or deceptive.

46.   I have already determined under s 60 that the evidence is insufficient to establish reputation in the Opponent’s Marks in Australia.

47.   Absent sufficient evidence of reputation, I am not satisfied that use of the Trade Mark would be contrary to law, and the ground under s 42(b) is not established.

Section 62A

48.   Section 62A provides that registration of a trade mark may be opposed on the ground that the application was made in bad faith.

49. Bad faith is not defined in the Act. The Explanatory Memorandum to the Bill that inserted this ground of opposition into the Act stated that this ground was introduced to cater for situations (among others) ‘in which a person has deliberately set out to gain registration of a trade mark, or adopted a trade mark in bad faith.’[16]  The Federal Court has substantively considered the issue of bad faith in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2)[17] and DC Comics v Cheqout Pty Ltd.[18]  The following propositions emerge from these decisions which are relevant to the present opposition:

·     Bad faith for the purposes of s 62A must be [as at the Relevant Date] and must relate to the making of the subject application.[19]

·     Bad faith is a serious allegation that “impugns the character of an individual or collective character of a business” and requires correspondingly cogent evidence.  The standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[20]

·     Conduct that falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area is sufficient. Bad faith does not require dishonesty.[21]

·     The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.[22]

·     All the circumstances surrounding the application to register the mark are relevant.[23]

·     A prior business connection with and knowledge of the opponent by the applicant such that a person standing in the shoes of the applicant should have known that he should not have applied for a trade mark deceptively similar to that used by the opponent is sufficient for a finding of bad faith.[24]

·     Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion.[25]

[16] Explanatory Memorandum, Trade Marks Amendment Bill 2006 (Cth) [4.12].

[17] (2012) 201 FCR 565 (Dodds-Streeton J) (‘Fry Consulting’).

[18] (2013) 212 FCR 194 (Bennett J) (‘DC Comics’).

[19] Fry Consulting (n 17) 593-4 [145].

[20] Ibid.

[21] Ibid 594-5 [147]-[148], 597 [165].

[22] DC Comics (n 18) 206 [62].

[23] Ibid.

[24] Fry Consulting (n 17) 596-7 [156].

[25] DC Comics (n 18) 209 [76].

50.   The decided cases have established that assessing whether an application was filed in bad faith is a two-step test with a subjective and an objective element. The subjective element requires findings as to what the Holder knew at the filing date. The objective element then asks: armed with that knowledge, would a person adopting proper standards of commercial behaviour consider the act of filing the trade mark to be in bad faith?

51.   The Opponent alleges that the filing of the Trade Mark was made in bad faith as the Holder was aware of the Opponent’s rights and reputation in the Opponent’s Marks.  In particular, the Opponent argues that the Holder is familiar with the history between the Opponent and BBRI as the Holder acquired BBRI and the US attorney for the Holder is the same attorney who previously acted for BBRI.  Moreover, the Opponent alleges that the Holder sought to register the Cartoon Boy Device with Big Boy on the bib under Australian number 2060264 (International Registration 1506760) on 22 August 2019 and the word mark BIG BOY under Australian number 2060753 (International Registration 1505979) on 6 August 2019.  Further, whilst the EIA indicates that the Holder intends to use the Trade Mark and not the Cartoon Boy Device mark with Big Boy on the bib, the EIA contains examples of use of both versions of the mark including after the Relevant Date.  The Opponent submits that omitting the words ‘Big Boy’ from the bib of the Cartoon Boy Device is “a forerunner for expansion plans despite the Opponent’s clear, valid and prior rights”.

52.   It is not clear from the evidence whether the Holder checked on the status of the Opponent’s Marks prior to filing the International Registrations.  It may be that they did not and/or that their attorney had forgotten the past correspondence in 2017 between BBRI and the Opponent.  I note that Australian trade mark number 2060264 (IR 1506760) did not include the words ‘Big ‘Boy’ as alleged by the Opponent and that the IRDA for the word mark BIG BOY lapsed, presumably after encountering citations of the Opponent’s Marks.      

53.   I have no doubt that the Holder’s preference would be to use and register the mark BIG BOY in Australia but they are now (even if they did not know at the Relevant Date) well aware that the Opponent’s Marks present an impediment to use and registration of BIB BOY by the Holder in Australia.  The Holder has declared that it intends to expand internationally using the Trade Mark and there is evidence that it has in fact been using the mark in the form applied for (although not exclusively).  The Holder’s situation is not unique and it is not unheard of for traders to adopt an alternative mark for use in different jurisdictions because of a prior right, cultural, language or some other reason specific to a jurisdiction.  The omission of the words ‘Big Boy’ from the Trade Mark may suggest an awareness of the Opponent’s Marks but is consistent with the sworn evidence that the Holder has been transitioning away from use of these words on its device mark.  It cannot be assumed that because the Holder uses the Trade Mark in other countries with the mark BIG BOY that they will do so in Australia.

54.   Even if the Holder was aware of the Opponent’s Marks at the Relevant Date, they have filed an International Registration designating Australia for a Trade Mark which omits the words BIG BOY, which they have used overseas both before and after the priority dates of the Opponent’s Marks and which the Holder has attested they intend to use for their overseas expansion.  I do not consider this behaviour to be dishonest or otherwise fall short of commercially acceptable standards of behaviour.

55.   The s 62A ground of opposition is not established.

Decision

56.   I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Accordingly, extension of protection of the Trade Mark may proceed not less than one month from the date of this decision.

57.   If the Registrar is served with a notice of appeal, I direct that extension of protection of the IRDA shall not occur until either the appeal is withdrawn or discontinued.  Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.

58. Costs generally follow the event and hence I award costs against the Opponent under s 221 in accordance with the amounts set out in Schedule 8 of the Regulations.

Tracey Berger

Hearing Officer

Delegate of the Registrar of Trade Marks

10 August 2022