Ocean Spray Cranberries, Inc v the Sunraysia Natural Beverage Company Pty Ltd

[2000] ATMO 123

TRADE MARKS ACT 1995

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

Re:Opposition by Ocean Spray Cranberries, Inc to the registration of trade mark application number 655444 in the name of The Sunraysia Natural Beverage Company Pty Ltd for the trade mark comprising the words RUBY'S RED.

Background
Application number 655444 was filed on 9 March 1995 in the name of The Sunraysia Natural Beverage Company Pty Ltd (the applicant).  The application was for the registration of the word trade mark RUBY'S RED and covered the statement of goods, "Fruit juice and all non-alcoholic beverages in this class" in Class 32.  Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 7 August 1997.

Following the grant of an extension of time to do so, notice of opposition to the trade mark’s registration was filed by Ocean Spray Cranberries, Inc (the opponent), on 28 January 1998.  The notice of opposition listed grounds under ss.41, 42, 43, 44, 58, 60, 61 and 62.  At the hearing set down to decide the matter, the opponent's counsel advised that her client was not pressing all of these grounds, in particular, not that ground under s.44.  However, she did not nominate which other grounds were not being pursued and I have had to address the remaining seven grounds here.

The opponent requested a hearing in the matter and it came before me, as a delegate of the Registrar, in Canberra.  Representing the opponent at the hearing was Ms Julia Baird of Counsel, instructed by Mr James Maxwell of Peter Maxwell and Associates.  The applicant's attorney, Mr Stephen Wilson of Griffith Hack appeared at the hearing on the telephone.

The Evidence
The evidence in support includes declarations by several people.  These comprise:

·    Rebecca Baldwin, a private investigator who acted on behalf of the opponent in this matter.  Ms Baldwin outlines investigations made in respect of the applicant's use of the present mark.  She attaches to her declaration various promotional and other literature in relation to her investigations.

·    Rodney Cant, a citrus grower, who declares as to his knowledge of the industry and particularly red grapefruit referred to, inter alia, by the generic names RUBY and RUBY RED.

·    Peter Vaughan, the Licensing, Research & Development Manager for Agricultural Licensing Australia Pty Limited.  Mr Vaughan declares as to his knowledge and inquiries of and into RUBY RED grapefruit and the generic nature of that term.  He attaches various material to his declaration which supports his findings.

·    Alana Sharenow (the first Sharenow declaration), legal counsel for the opponent, who details the opponent's use and registration of the trade mark RUBY RED in the United States and other overseas countries.  She gives details of sales and advertising in the United States and other markets, excluding Australia.  She details the history of the RUBY RED grapefruit and attaches, as exhibits to her declaration, various material to support her statements.

·    S. Woodworth Chittick, Vice-President International of the opponent, who outlines the history of the opponent's involvement in the Australian fruit juice market.

·    Kenneth Rosenberger, former Manager, International Finance and Operations for the opponent, who details the opponent's entry into the Australian market in the mid 1990s.  He annexes various material, including written and video records of meetings held by his company and others.

·    John Fassak, the opponent's Director of International Business Operations, who declared as to his knowledge of the opponent's involvement in the Australian fruit juice market.  He attaches material to support his version of events.

·    James Maxwell (first Maxwell declaration), a legal practitioner of the opponent's trade mark attorneys, who declares as to his research into the Australian use of the word RUBY, inter alia, in relation to grapefruit.  He annexes various material outlining his findings.

·    Raymond Quinlan, the Managing Director of Quinlan Enterprises Pty Limited, a consulting service for the opponent.  This declarant gives a history of the opponent's involvement in the Australian fruit juice market and of the various preparations which he had been involved with in relation to the launch of its products for sale in this country.  He goes into some detail regarding meetings which took place between the opponent's representatives and various retailers, and the advertising campaign surrounding the various launches of the opponent's fruit juice products, including its RUBY RED grapefruit juice.  He also gives sales figures in respect of the opponent's RUBY RED mark, and advertising figures, in relation to that mark, from August 1995 onwards.  He also discusses the alleged generic nature of the words RUBY RED, in relation to grapefruit in Australia.  Mr Quinlan attaches a great deal of material which goes towards supporting the statements made in his declaration, including various correspondence, advertising material and videos.

The applicant's evidence in answer consists of a sole declaration by Daniel Presser, the Managing Director of the applicant.  Mr Presser here reviews the history of the applicant's use of the subject trade mark since 1995.  He further outlines what he alleges is the origin of the applicant's trade mark.  He attaches material to his declaration to support the statements made there.

The opponent's evidence in reply consists of declarations by two people.  These are:

• Alana Sharenow (the second Sharenow declaration), who declares as to the alleged first use made by the opponent of the mark RUBY RED in Australia in 1993.  She attaches various material to support her statements.

• James Maxwell (second Maxwell declaration), where the declarant reports on investigations made into the existence of "Ruby Presser", allegedly the person mentioned by Mr Presser, in his declaration in the evidence in answer, as being the inspiration for the trade mark RUBY'S RED.  Mr Maxwell further reports on an Internet search he caused to be made in relation to the word RUBY.

Submissions
Both Ms Baird, for the opponent, and Mr Wilson, for the applicant made quite comprehensive submissions in relation to most of the grounds in the notice of opposition.  I will not repeat them in detail here.  However I will refer briefly to any points made where I consider it would be relevant in explaining my decision.

Ms Baird's main arguments centred around the proposition that the terms RUBY, RED RUBY and RUBY RED had, at the relevant date, established meanings and were interchangeable in relation to grapefruit.  She further claimed that the addition of an apostrophe to complete the term RUBY'S RED was a "trifling variation" to the phrase RUBY RED, meaning that it was still suggestive of a particular type of grapefruit, or the juice made from it and was consequently unregistrable.  She argued that the evidence showed that the opponent had used the words RUBY RED, in relation to its own fruit juice, from a date that was earlier than the applicant had shown for its mark, that the applicant was not the owner of the mark applied for and that use by that party on its goods would lead to deception or confusion in the market place because of the opponent's reputation in the term.  She also submitted that the subject mark contained a connotation - either in relation to grapefruit or through an association with the opponent, which would be likely to deceive or cause confusion.

She finally sought costs in the matter on behalf of the opponent.

In his turn, Mr Wilson argued that the terms RUBY'S RED and RUBY RED were not the same or substantially the same.  He said that the former was the applicant's trade mark, while the latter indicated a varietal form of grapefruit.  He submitted that the opponent's use of the latter term was descriptive in nature.  This meant that it was not a proper trade mark which distinguished that party's goods, nor was it the owner of that phrase for grapefruit.  He disputed the reliability of the opponent's evidence, particularly in relation to it showing first use by that party and any reputation of the words RUBY RED.  He submitted that the opponent bore the onus to demonstrate that these grounds of opposition were valid.  Mr Wilson emphasised the inclusion of the apostrophe S in the present mark saying that it completely altered the nature of the mark by introducing a possessive nature to it, indicating that a female called RUBY - allegedly Mr Presser's mother - gave her name to a red coloured grapefruit juice.  Mr Wilson said that registration of the applicant's mark would not preclude any other trader from using the varietal name RUBY RED.  He said further that there was no evidence of deception or confusion, as at the date of application, in relation to the use of the applicant's mark.

He closed his submissions by seeking an award of costs in the applicant's favour.

Analysis
I will deal, in this part of the reasons for my decision, with the grounds on which the opponent's counsel relied upon in the making of her submissions.

Section 41
Trade mark not distinguishing applicant's goods or services

As it is relevant to the present application, this section reads:

(1)…

(2) 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 (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)      the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c)      if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)      if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)      in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Justice Branson considered this section of the Act in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the Oregon case).  Her Honour observed, at 504, that, in applying the provisions of s.41 and in deciding whether a trade mark is capable of distinguishing, the Registrar has three options.  He or she may conclude:

(a)that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

(b)that 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; or

(c)that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of distinguishing the designated goods or services.

Her Honour continued, that:

The structure of s 41 of the Act dictates that if the registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

Additionally, in the judgments of French and Tamberlin JJ in Registrar of Trade Marks v WoolworthsLtd (1999) 45 IPR 411 (the Woolworths Metro case), it was confirmed that a presumption of registrability underlies the policy of the new law.  This principle, in particular, guides examiners of trade marks in determining whether or not to raise a s.41 ground of rejection.

The situation in the present instance is that the examiner, in her initial consideration of the mark under s.24 of the Trade Marks Act 1955, decided that, because her research did not locate any obvious meaning to the words RUBY'S RED, then there was no objection to its registration under that section.  However, I must now consider the matter, as the delegate of the Registrar of Trade Marks, in the context of an opposition to the registration of the mark under s.41 of the present Act.  The evidence in support has gone towards showing that the words RUBY RED do indicate a particular variety of grapefruit which originated in the USA and that that term, together with the variants RED RUBY and RUBY is widely used in the trade in Australia.  This conclusion was supported by both Ms Baird and Mr Wilson in their submissions.  Mr Presser, in his declaration forming the applicant's evidence, has also agreed that the words RUBY RED are descriptive of grapefruit but has emphasised that the mark applied for includes an apostrophe and the letter S, thereby completely changing the meaning of the words.  Mr Wilson argued in his submissions that these additions were important considerations in determining the registrability of the mark.

Mr Presser further said in his declaration that the applicant's mark was coined from the varietal name of the ruby red grapefruit and his mother's first name, Ruby. I have no reason to doubt Mr Presser's bona fides in his explanation of way that the mark was coined, or the applicant's adoption as a trade mark.  However, what I do have to consider is, given the parties' consensus as to quite direct meaning of the words RUBY RED in relation to grapefruit, whether the additional material of the apostrophe S is enough to render the mark inherently adapted to distinguish.

Whether a trade mark is inherently adapted to distinguish depends on whether other traders are likely to want to use the word(s) contained in it, without improper motive in the normal course of their business.  The test was set down by Justice Kitto in Clark Equipment Co v Registrar of Trade Marks, 111 CLR 511 (the Michigan case).  In that case, the relevant paragraph starts on page 513.  Dealing with the question of whether a trade mark is adapted to distinguish, his Honour says:

That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner’s goods if it be registered and other persons consequently find themselves precluded from using it.  The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing the goods from the goods of others.  In Registrar of Trade Marks v W. & G. Du Cros Ltd (1913) 30 RPC 660, Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed markis or is not “adapted to distinguish” the applicant’s goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present.  His Lordship said: “The applicant’s chance of success in 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 business 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.

What is in dispute here is whether the subject mark so nearly resembles the varietal name of a grapefruit that other traders in fruit juice would legitimately wish to use it to describe their goods.  The words RUBY RED, on their own and applied to grapefruit, are extremely apt for normal description and would be required for use by other fruit juice makers.  I have given consideration to whether the apostrophe S adds much to the appearance and meaning of the subject mark.  Certainly, as Mr Wilson argued, those added elements do change the idea of the word RUBY word in the mark.  Nonetheless, I do not think that it is sufficient to differentiate the mark, as a whole, from the descriptive term for a kind of grapefruit.  The appearance and sound of the mark is almost the same as the term for the grapefruit variety, and when it is applied to the fruit juice goods listed in the specification, the minor change to that descriptor could well be unnoticed, inferred as a slight variation of the RUBY RED grapefruit variety, or merely an alternative spelling.  I would certainly consider the terms RUBY RED and RUBY'S RED to be deceptively similar if they were trade marks competing for registration.

It could be that a person, upon encountering the phrase RUBY'S RED on the side of a fruit juice carton, could well regard it as being the correct way to refer to the style of grapefruit from which the juice was made.  Additionally, even if a consumer was correctly aware of a kind of grapefruit known as RUBY RED, I think that is possible that s/he could not recall accurately that name if faced with a container of the applicant's product in a supermarket.  I consider that, in that context, the test referred to as the doctrine of "imperfect recollection", as expounded by Luxmoore, L.J. in Rysta Ltd.'s Appn. (1943) 60 RPC 87, is quite relevant.

It is also my experience that the use of the apostrophe is a widely misunderstood and abused device in written speech in Australia - particularly in recent years.  A customer could merely regard the apostrophe S in the present mark as being an error commonly seen in signage and written communication - if indeed they were aware of the apostrophe's function in indicating possession in the first place.  Nevertheless, while I cannot agree with Mr Wilson that the additional material "represents a substantial effect on the significance of the descriptive word(s) RUBY RED", I am also of the opinion that the idea of ownership suggested by the apostrophe S does add something to the mark, rendering it, to some small extent, inherently adapted to distinguish the applicant's goods.  I think that, as per Justice Branson's test in the Oregon case, supra, at 504, if there is uncertainty, on the basis of the small degree of inherent adaptation to distinguish that I have found in the trade mark, then I should look to other criteria to decide whether it is actually capable of distinguishing those goods.

Having adopted this course, I must assess the combined effect of sub-paras (i), (ii) and (iii) of para 41(5)(a) of the Act in order to determine the trade mark's registrability.  These considerations are, firstly, the extent that the mark is inherently adapted to distinguish; secondly, the use, or intended use, of the trade mark by the applicant; and, finally, any other circumstances.  On the first point, I have already said that I believe that the trade mark has a very small degree of inherent adaptation to distinguish.  However, for me to gauge the extent of the use, or intended use, of the mark, I must turn to any evidence to this effect submitted by the applicant.  This evidence is limited to the declaration of Mr Presser served as evidence in answer.  Here, the declarant makes the assertion that the applicant has used the mark on grapefruit juice "since 1995" and "...throughout Australia through many retail outlets including Safeway Supermarkets and Coles Supermarkets".  However, this statement is not supported by any declarations from officers of those companies, nor by any other person in the appropriate trade.  All that is attached in this regard is a copy of a label which includes the words "Ruby's Red Ô" but there is no indication of its date of origin.  Additionally, there are no sales or advertising figures supplied which might show the extent of the mark's exposure to the purchasing public.  Mr Presser does attach to his declaration the text of advertisements featuring the mark, which he states, "commenced in 1995 and which are played in circulation on both radio and television...".  One of these includes the words, "Recorded at 3AW 11.10.95".  Again, there is nothing to support these claims, either in the form of supporting declarations, or any other material.  I do not believe that I can attach a great deal of weight to such claims without some corroborating evidence.

Accordingly, after consideration of all of this material, I have come to the conclusion that the evidence is insufficient to outweigh the subject mark's relative lack of inherent adaptation to distinguish.  Nothing was put to me at the hearing, and there is nothing that I can see in the evidence, which might show that there are any other circumstances, as per s.41(5)(a)(iii), which might render the mark capable of distinguishing the designated goods from those of other persons.

I therefore find that the opponent has been successful on this ground of opposition.

Section 42
This section reads:

Trade mark scandalous or its use contrary to law

42.      An application for the registration of a trade mark must be rejected

(a)       the trade mark contains or consists of scandalous matter; or

(b)       its use would be contrary to law.

Ms Baird did not make any specific submissions on this ground at the hearing.  However, it was included in the original notice of opposition and I will make comment on it.  There is nothing that I can see in the evidence which might suggest that the trade mark consists of anything which might be regarded as scandalous.  Also, it does not appear that the applicant has broken any law in relation to this trade mark.

Accordingly, I find that the opponent fails on this ground of its opposition.

Section 43
This section reads:

Trade mark likely to deceive or cause confusion

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.

In determining the s.43 ground, I note that previous decisions by delegates of the Registrar have said that the word "connotation" refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.  I note that the Explanatory Memorandum to the Trade Marks Bill 1995 spells out the meaning of this section at para.45.  This section, it says, provides that an application for registration must be rejected if the trade mark:

…because of some signification inherent to it, would be likely to deceive or cause confusion regarding a characteristic of the goods...

Considerations under s.43 must therefore concentrate on the matter within the trade mark that could cause deception or confusion in the mind of the relevant buying public.  The trade mark here comprises the words RUBY'S RED.  I have already found that those words have very little inherent adaptation to distinguish because they are only very slightly different to the name of a variety of grapefruit.  I believe that a consumer, upon seeing those words on a bottle of fruit juice, would infer that it contained a particular type of fruit juice because of a connotation that the words possess.  Therefore, they would be deceived or confused if that juice did not come from RUBY RED grapefruit, given that the present form of the statement of goods is not restricted in that way.

Accordingly, I find that the opponent is successful on this ground of opposition.

Section 58
This section reads:

Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

The term "owner" in the Trade Marks Act 1995 equates to that of "proprietor", as referred to in the Trade Marks Act 1955 - see p.2 of the Readers Guide to the 1995 Act.  The initial onus, with respect to ownership, is on the applicant for registration.  As is stated in s.27 of the Act:

27.(1) A person may apply for the registration of a trade mark in respect of goods and/or services if:

(a) the person claims to be the owner of the trade mark; and

(b) one of the following applies:

(i) the person is using or intends to use the trade mark in relation to the goods and/or services;

(ii) the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;

(iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.

Ownership depends on a combination of authorship and first use and, as per Shell Co. (Aust.) Ltd v Rohm and Haas Co. (1949) 78 CLR 601. Such ownership may be claimed either on being the first user of the trade mark in Australia, in relation to the nominated goods, or on the basis of the making of an application for registration. That ownership is limited to "the same kind of thing" - as per Holroyd J in Hicks’ case (1897) 22 VLR 636. The present application covers the goods, "Fruit juice and all non-alcoholic beverages in this class", while the opponent's goods comprise, from the evidence, fruit juices, and fresh and preserved fruit and the like. Therefore, there is no doubt that the goods sold by both parties here are the same kind of thing.

The dispute of a claim to ownership of a mark can only be successful where the opponent can also show that the trade mark it relies upon as being owned by itself or another person is substantially identical with the mark, the subject of the application for registration.  Any small amount of use will suffice but the effect of the act relied on to constitute use must be the creation, in the minds of those concerned, of an impression that the goods of a particular trader are being offered for sale, in this country, under the trade mark.

The subject mark comprises the words RUBY'S RED and the opponent is relying upon its use of the words RUBY RED as a basis for its claim of ownership here.  However, that party has admitted, in its evidence and through its Counsel at the hearing, that the latter term is commonly known in Australia as a variety of grapefruit.  Therefore, aside from any claims which might be made about the substantial identity or close resemblance of the respective terms, the opponent cannot claim to be the owner of the words RUBY RED.  Any earlier use which that party might be able to point to of that term could not have been as a trade mark - except perhaps as the non-registrable element of a composite mark - because of its non-descriptive nature.

The opponent therefore must fail on this ground of its opposition.

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

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

(a)  it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

There is no change in the law from the Trade Marks Act 1955 that there is an evidentiary onus on the opponent, in the first instance, to establish the extent of its reputation in Australia - re Heery J., when referring to s.28 of that Act, in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 at 501. To succeed on this ground under s.60 then, the opponent would have needed to establish that its marks' reputation in its mark was sufficient amongst a substantial number of persons, as at the critical date of the filing of the present application - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, so that deception or confusion was bound to occur amongst a substantial number of people, likely to be concerned in the purchasing of the particular goods, because of the use of the applicant's mark - as per The Kendall Company v Mulsyn Paint and Chemicals (1963) 109 CLR 300.

I have already said that I believe that the terms RUBY RED and RUBY'S RED are deceptively similar.  However, I have already also found that the subject trade mark is not prima facie capable of distinguishing the applicant's goods from those of other persons.  This is because the mark comprises the name of a kind of grapefruit - together with the other matter of an apostrophe S.  Given that the opponent's use of its trade mark, as shown in its evidence, is only of the words RUBY RED, simpliciter, I cannot agree that the opponent can have any sort of a reputation in a claimed trade mark which is simply the name of a variety of red grapefruit.

I therefore find that the opponent has failed on this leg of its opposition.

Section 61
Trade mark containing or consisting of a false geographical indication.
Ms Baird made no submissions on this matter and it is obvious that it is not an appropriate ground for consideration here.

The opponent is therefore unsuccessful on this ground.

Section 62
Application etc. defective etc.
This section reads:

The registration of a trade mark may be opposed on any of the following grounds:

(a)that the application, or a document filed in support of the application, was amended contrary to this Act;

(b) that the Registrar accepted the application for registration on the basis of evidence or representations that were false in material particulars.

Again, there is nothing that I can see in either the opponent's evidence, nor in Ms Baird's submissions, which might support either of these grounds.

I therefore find that the opponent has not been successful on this ground of its opposition.

Conclusion
I have found that the opponent has not established the grounds of its opposition related to ss.42, 58, 60, 61 and 62.  However, I have also found that it has been successful on the grounds based on ss.41 and 43.  It follows that the opposition as a whole is successful and, accordingly, as the delegate of the Registrar, I refuse to register the trade mark, the subject of this application.

Costs
In respect of costs, I can see no reason why they should not follow the result.  Accordingly, I order that costs in the matter be awarded against the applicant, in accordance with the Official scale

Ian Forno
Hearing Officer

15 November 2000