Opposition by Energy Beverages LLC to registration of trade mark application 1819816 (30, 40) MOTHERSKY in the name of Cantarella Bros Pty Ltd

[2019] ATMO 150

TRADE MARKS ACT 1995

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

Re:Opposition by Energy Beverages LLC to registration of trade mark application 1819816 (30, 40) MOTHERSKY in the name of Cantarella Bros Pty Ltd

Delegate:	Katrina Brown
Representation:	Opponent: Siobhan Ryan of counsel Applicant: Michael Green SC and Angus Lang of counsel
Decision:	2019 ATMO 150 Trade Marks Act 1995 – section 52 opposition – grounds pursued under ss 42(b), 44 and 60 – no ground established – trade mark to proceed to registration.

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by Energy Beverages LLC (‘the Opponent’) to the registration of the following trade mark:

Trade Mark No:

1819816

Trade Mark:

MOTHERSKY (‘the Trade Mark’)

Applicant:

Cantarella Bros Pty Ltd (‘the Applicant’)

Filing Date:

Specification:

11 January 2017

Class 30: Coffee; coffee beans; chocolate
Class 40: Coffee roasting; coffee grinding

1. The application for the Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 1 June 2017.

2. The Opponent filed a Notice of Intention to Oppose on 31 July 2017 followed by a Statement of Grounds and Particulars (‘SGP’) on 30 August 2017.

3. The Applicant filed a Notice of Intention to Defend on 16 October 2017.

4. In due course the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.

5. The matter came before me, a delegate of the Registrar of Trade Marks, for hearing in Canberra on 19 February 2019. The Opponent was represented by Siobhan Ryan of counsel, instructed by Elizabeth Godfrey of Davies Collison Cave. The Applicant was represented by Michael Green, Senior Counsel, and Angus Lang of counsel. 

   Grounds of opposition, onus and relevant date

6. In the SGP, the Opponent nominated grounds under ss 42(b), 44, 59 and 60 of the Act. The ground under s 59 was not pressed in the written submissions, nor was it pursued by the Opponent at the hearing. As such I consider the ground under s 59 to be abandoned.

7. The Opponent bears the onus of establishing at least one of the remaining nominated grounds of opposition. The standard of proof is the ordinary civil standard of the balance of probabilities.

8. The date at which the rights of the parties are to be determined is 11 January 2017 (‘the Relevant Date’) being the filing and priority date of the Trade Mark.

   Evidence

9. The parties rely on the following declarations:

   Evidence in support

   ••         Declaration of Rodney Cyril Sacks (Chief Executive Officer of the Opponent) made on 15 January 2018 with Exhibits RCS-1 to RCS-38 (‘Sacks 1’).

   Evidence in answer

   ••         Declaration of Fred Audi (Group Financial Controller and Company Secretary of the Applicant) made on 24 April 2018 with Exhibits FA-1 to FA-4 (‘Audi Declaration’).

   Evidence in reply

   ••         Declaration of Elizabeth Kate Godfrey (Principal of Davies Collison Cave Pty Ltd) made on 29 June 2018 with Exhibits EKG-1 to EKG-6; and

   ••         Declaration of Rodney Cyril Sacks made on 27 June 2018.

   The Applicant

10. The Applicant’s submissions conveniently provide the following summary, based on the information provided in the Audi Declaration, of the Applicant and its business:

    The Applicant, Cantarella, has been selling pure coffee in Australia continuously since 1958. It was one of the earliest entrants to the pure coffee market in Australia. Today, Cantarella has a very significant business in pure coffee in Australia and exports its coffee products to more than 20 countries in the Asia Pacific, Europe, Middle East, South Africa and the USA. Cantarella also deals in a range of other goods and services, particularly foodstuffs and beverages, including chocolate and drinking chocolate, coffee equipment and hospitality services.

    …

    The mark MOTHERSKY was adopted by Cantarella following a suggestion by one of its contractors who was a musician and has released a single under the Mother Sky Records label.

    The Opponent

11. The Opponent is a leading supplier of energy drinks in Australia. Sacks 1 states that the Opponent acquired a portfolio of trade marks on 12 June 2015 which consist of, or include, the word ‘Mother’. Its predecessor in title, the Coca Cola Company, created the Mother energy drink in 2006.

12. The Opponent is the registered owner of various trade marks in Australia including the following (‘the Opponent’s Trade Marks’):

TM No.	Trade Mark	Priority Date	Specification
1230388	MOTHER	17 Mar 2008	Class 32:  Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; carbonated soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages including syrups, concentrates and powders for making mineral and aerated waters, carbonated soft drinks, energy drinks, sports drinks, fruit drinks and juices
1345404	MOTHERLAND	11 Feb 2010	Class 32: Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; carbonated soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages including syrups, concentrates and powders for making mineral and aerated waters, carbonated soft drinks, energy drinks, sports drinks, fruit drinks and juices Class 33: Alcoholic beverages (except beers); distilled spirits; liqueurs; wines; wine based alcoholic beverages; spirit based alcoholic beverages Class 41: Education services; educational services, including providing classes, seminars, workshops and educational information relating to consumer beverage choices, health, wellness, fitness and lifestyle issues, corporate involvement in community, environmental, conservation, emergency relief, health and welfare, educational and medical programs and initiatives; providing of training; entertainment; sporting and cultural activities; consultancy and information services relating to all of the aforementioned services
1364858	MOTHER	1 June 2010	Class 33: Alcoholic beverages (except beers); distilled spirits; liqueurs; wines; wine based alcoholic beverages; spirit based alcoholic beverages
1408011	MOTHER LOADED ICED COFFEE	8 Feb 2011	Class 29: Milk and milk products; flavoured milk beverages; dairy products including milk and yoghurt based products and beverages with or without fruit additives; yoghurt; food supplements and nutritional supplements (other than for medicinal use); natural products in this class incorporating herbal preparations (other than for medicinal use); food supplements with herbs (other than for medicinal use); drinks flavoured with herbs and having a milk base Class 30: Coffee; tea; cocoa; chocolate; artificial coffee; ice cream; beverages in this class including coffee based beverages, tea based beverages and chocolate based beverages; herbal extracts (other than for medicinal purposes); herbal infusions (other than for medicinal use) and herbal tea (other than for medicinal use)

Section 44

1. Section 44 of the Act relevantly provides:

   (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.

   …

   (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.

2. The Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark with an earlier priority date, in the name of a person other than the Applicant, in respect of similar goods or closely related services.

3. The Opponent’s Trade Marks are relied upon as the basis for this ground of opposition. From the information set out at [13] of this decision, it is evident that the Opponent’s Trade Marks are held in a name other than the Applicant and each has a priority date  earlier than the Relevant Date.

4. Ms. Ryan did not submit that any of the Opponent’s Trade Marks are substantially identical to the Trade Mark. On a side by side comparison there are clear differences between each of the Opponent’s Trade Marks and the Trade Mark. I am satisfied that none of the Opponent’s Trade Marks are substantially identical to the Trade Mark.

5. The Opponent submits that each of the Opponent’s Trade Marks are deceptively similar to the Trade Mark. Section 10 of the Act defines deceptive similarity as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. In Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J provided the following insights on deceptive similarity:

   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 [trade mark].

7. Both parties acknowledge that each of the trade marks contains the word ‘Mother’ however, as is most often the case, they disagree as to the effect of this shared element. In the Opponent’s view ‘Mother’ is the essential and distinguishing element of each of the trade marks and the ‘sky’ suffix in the Trade Mark would be viewed as some kind of qualifier or variant. As I understand it, the Opponent’s position is the same as that expressed in John Fitton & Co. Ltd’s Application:

   With reference to the nature of the confusion alleged…[it] is directed not so much towards showing that the two marks ‘Jests’ and ‘Easyjests’ might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element ‘Jest’ in each mark, in traders and the public being induced to believe that two sets of goods sold under the marks emanated from one and the same source.

8. In support of this view, the Opponent points me to McDonald’s Corporation v Macri Distributors Pty Ltd where the delegate found the trade marks McSALAD and McFRESH to be deceptively similar to 17 registered trade marks all beginning with ‘Mc’. Notably, in that decision the delegate cautioned:

   The important proviso here is that the goods or services referred to, in the part word conjoined to the prefix Mc- in the trade mark, would also need to be seen to form a normal or usual part of the opponent’s business. Any food, or quality or characteristic of that food, which would be expected to form part of the opponent’s fast food operation would, therefore, qualify.

9. In this matter, I have great difficulty in comprehending why a consumer would view ‘sky’ as a qualifier or variant. ‘Sky’ is a word with a well understood meaning which is not descriptive or of any significance to the goods and services in question. Nor does it seem to have any relationship with the words that follow ‘Mother’ in the Opponent’s stable of trade marks. I am not swayed by the Opponent’s submission that there are ‘obvious conceptual synergies’ between the word ‘sky’ in the Trade Mark and ‘land’ in the Opponent’s MOTHERLAND trade mark. ‘Motherland’ is an ordinary English word defined by the Cambridge English Dictionary as ‘the country in which you were born, or the country which you feel most connected with’. Given that ‘Motherland’ has a meaning I am inclined to think that a person of ordinary intelligence and memory would recall ‘Motherland’ rather than the ‘land’ variant of the ‘Mother’ brand. The impression carried away by the consumer is that of a native country or homeland. This is a very different impression to that of the Trade Mark.

10. The impression a consumer would have of the Trade Mark is that of a single invented word with no ordinary meaning. The word ‘Mother’ is no more memorable in relation to the relevant goods and services than the word ‘sky’; they are equally as distinctive in relation to the relevant goods and services. It is an unusual combination of words which would not form part of the common stock of the English language. For these reasons the Trade Mark would be remembered as a whole, not by its component parts.

11. I also note that trade marks are more easily distinguishable when the comparison is between an invented word with no ordinary meaning and a word with an ordinary meaning. In addition to the definition of ‘Motherland’ given above, the ordinary meaning of ‘Mother’ is a female parent. Thus, a consumer would have the aid of these definitions when recalling the Opponent’s Trade Marks as compared to the Trade Mark which has no ordinary meaning.

12. I consider that the commonalities between the Trade Mark and the Opponent’s Trade Marks, when viewed as wholes, are such that there is not a real and tangible danger of confusion.

13. The s 44 ground of opposition has not been established.

    Section 60

14. Section 60 of the Act provides:

    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.

15. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

    Reputation

16. For the purposes of s 60 ‘reputation’ is the recognition of the trade mark by the public generally. Reputation cannot be assumed; it must be established as a matter of fact by the Opponent. In Rodney Jane Racing Pty Ltd v Monster Energy Company (‘Rodney Jane’) it was observed that:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally.

17. Turning to the reputation demonstrated in the evidence, it is deposed in Sacks 1 that in 2007, the Opponent’s predecessor in title began using the word ‘Mother’ in Australia in relation to energy drinks. It is declared that energy drinks bearing the word ‘Mother’ have been sold in retail outlets such as supermarkets, convenience and petrol stations and also in restaurants, bars, cafes, vending machines and cinemas throughout Australia. The Opponent has provided figures for ‘Mother brand retail sales’ from 2007 to 2015 and also for the number of 500ml cans sold bearing the word ‘Mother’ during that time period. I characterise these figures as substantial.

18. It is also declared in Sacks 1 that beverages bearing the word ‘Mother’ have been the subject of substantial marketing and promotional campaigns including television commercials, radio and magazine advertising, digital advertising on websites and social media, signage at shopping centres and point of sale material. The Opponent has provided promotional and advertising expenditure in relation to the marketing of products bearing the word ‘Mother’ from 2007 to 2016. These figures are substantial.  

19. The Opponent has also provided the details of numerous sponsorships and cross promotions including the ‘Mother’ energy drink being the official drink of the V8 Supercar Races from 2010 to 2012 and the sponsor of: the Hendry Speedway Team from 2008 to 2010 and Layton Craybrook V8 Utes from 2008 to 2010; ‘Merrick’s House Warming Party’ in partnership with the Triple M radio station in 2012; ‘The Ultimate MOTHER fueled Backyard Pool Challenge’ in 2012 and used in the promotion of the Call of Duty game ‘Ghosts’ in 2013. These events attracted media coverage including television and radio by which the ‘Mother’ brand received incidental exposure. The value of this type of indirect advertising has been acknowledged by the courts as establishing reputation ‘as well as, if not better than, direct advertising’.

20. The evidence described in the previous three paragraphs relates to various trade marks incorporating the word ‘Mother’. For the most part the Opponent’s evidence, and its submissions in respect of s 60, do not differentiate between those trade marks. This approach can be problematic because each of the trade marks is treated as a separate mark for the purposes of s 60. However, in this instance I am satisfied that the evidence is sufficient to demonstrate a substantial reputation in the following trade marks (‘the Mother Trade Marks’):

21. The reputation is limited to energy drinks. During this proceeding the Opponent has made varying references to energy drinks and associated products. The evidence before me shows the Opponent exclusively using the word ‘Mother’ in relation to energy drinks. The Opponent’s product range includes different flavours and dietary variants such as sugar free but the products are all energy drinks. I note that the Opponent provides point of sale merchandise such as inflatable cans and temporary tattoos emblazoned with the Mother Trade Marks. However this too is always in relation to promoting the Opponent’s energy drinks.

22. In summary, my assessment is that at the Relevant Date the Opponent had a reputation in the Mother Trade Marks amongst a substantial number of people in respect of energy drinks. I now need to determine whether in light of that reputation use of the Trade Mark for the Applicant’s Goods or Services would be likely to deceive or cause confusion.

    Likely to deceive or cause confusion

23. The concepts of ‘deceive’ and ‘cause confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Co v Hyline Chicks Pty Ltd, where Richardson J said:

    ‘Deceived’ implies 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. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.

1. Importantly, there must be a real and tangible danger of deception or confusion.

2. Section 60 of the Act does not require that the goods upon which the Opponent uses its trade marks be of a specified standard of similarity with the goods and services of interest to the Applicant, nor is there a requirement that the Mother Trade Marks are deceptively similar to the Trade Mark. However:

   Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent's trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

3. I do not intend to repeat the observations that I have already made in respect of the s 44 ground of opposition in relation to the comparison of the trade marks. Suffice to say, many of those observations are also relevant to the likelihood of deception or confusion under s 60.

4. The Opponent asserts that in determining the likelihood of deception or confusion I must have regard to the ‘full notional use of the mark, which could well involve [the Trade Mark] being presented in a style, font or colour scheme the same or similar to that used by Energy Beverages for its MOTHER brand’. Judicial authority indicates that I must consider use of the Trade Mark in a ‘fair and reasonable manner’. Where there is nothing before me to suggest that the Applicant intends to copy or mimic the Opponent’s get-up, to assume that the Trade Mark will be used in the same or similar style, font or colour scheme as the Mother Trade Marks would be to assume use apparently based on bad faith rather than use to which the Applicant could properly put the Trade Mark. 

5. The Opponent also asserts that the Applicant’s Goods and Services are goods that the Opponent is known to have a connection with or, are otherwise products or activities that consumers would regard as a natural and logical extension of the Opponent’s brand. The reputation in the Mother Trade Marks is in relation to energy drinks. There is no evidence before me to suggest that the Opponent has used the Mother Trade Marks on any other type of beverage or on any food items. Furthermore, the Opponent has not explained why consumers would regard the Applicant’s Goods and Services as a natural and logical extension of the Opponent’s brand. As pointed out by the Applicant, the Opponent has not identified any trade source of energy drinks which also provides coffee, coffee beans, chocolate or coffee roasting and grinding services.

6. In my opinion, the Opponent is ‘a victim of its own success’ as explained in Rodney Jane:

   The phrase is used in the figurative sense because the relevant company, here [the Opponent], is hardly a victim, being so successful from a sales and marketing perspective that consumers in general are familiar with its product.

   The evidence shows that the Mother Trade Marks (i.e. the word ‘Mother’ in gothic black and white script) are used in a consistent manner on all of the Opponent’s energy drinks and in the advertising of those products. Consumers are so familiar with the Opponent’s Mother Trade Marks in relation to energy drinks that a consumer of ordinary intelligence would notice that the word ‘Mother’ in the Trade Mark is not in gothic script and may also notice that the Trade Mark consists of two words ‘Mother’ and ‘sky’ run together; something which is not common in the Opponent’s branding strategy.  Also it must be remembered that the evidence only shows use on energy drinks; this is not a situation where the Opponent uses its trade marks (or parts of the trade marks) on other beverages or foodstuffs which might induce a consumer into believing that the Opponent has expanded into chocolate or coffee. The strength of the Opponent’s reputation in the Mother Trade Marks in relation to energy drinks reduces the likelihood of confusion or deception from the use of the Trade Mark on, or in relation to, the Applicant’s Goods and Services to something less than ‘real and tangible’.

7. I am not satisfied that use of the Trade Mark on or in relation to the Applicant’s Goods and Services, is likely to deceive or cause confusion because of the reputation of the Mother Trade Marks. The s 60 ground of opposition has not been established.

   Section 42(b)

8. Section 42(b) of the Act relevantly provides:

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

   …

   (b) its use would be contrary to law.

9. The Opponent must satisfy the Registrar that use of the Trade Mark would not could be contrary to law. As observed by Rangiah J in Primary Health Care Limited v Commonwealth of Australia:

   It is not enough for a party opposition registration to show that s 18 of the ACL or s 52 of the TPA [Trade Practices Act 1974] might be contravened. The opponent must prove, on the balance of probabilities, that the provision would be contravened by use of the trade mark.

10. This ground of opposition is particularised in the SGP as follows:

    The Opponent’s MOTHER trade marks are well known in Australia for beverages and related goods, including a range of energy drinks.

    …

    Based on the reputation in MOTHER trade marks in Australia in relation to beverages, including energy drinks and related goods and clothing and headgear, consumers are likely to be misled or deceived into believing that the goods and services offered and provided under the “MOTHERSKY” mark are those of the Opponent or somehow affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Offering and providing the goods specified in class 30 and services specified in class 40 of the opposed mark under the “MOTHERSKY” mark also suggests that the trade mark Applicant and its goods or services are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent’s sponsorship or approval to use the “MOTHERSKY” trade mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).

11. In the written submissions and at the hearing the Opponent also asserted that the Applicant’s use of the Trade Mark would amount to passing off. Although not set out in the SGP, I will address the tort of passing off as it does not affect the outcome of this matter.

    Australian Consumer Law

12. Schedule 2 of the ACL relevantly provides:

    Section 18: Misleading or deceptive conduct

    (1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

    Section 29: False or misleading representations about goods or services

    (1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

    …

    g.   (g)           make a false or misleading representation that goods or services have sponsorship approval, performance characteristics, accessories, uses or benefits;

    h.     (h)          make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation;

    …

13. The relevant provisions of the ACL require that I be satisfied that there is a likelihood that relevant consumers would be misled or deceived as to the true origin of the Applicant’s Goods or Services or as to it having some connection with the Opponent. This is a stricter requirement than s 60 which only requires conduct that would be likely to deceive or cause confusion.

14. As already indicated in respect of s 60, I am not satisfied that use of the Trade Mark is likely to cause deception or confusion. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

    Passing Off

15. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

16. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

    the scope for the operation of s 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 the name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.

17. Section 18 of the ACL is the equivalent of s 52 of the TPA. The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

18. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

19. The s 42(b) ground of opposition has not been established.

    Decision

20. Section 55(1) of the Act provides:

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

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

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

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

22. Accordingly trade mark application number 1819816 may proceed to registration one month from the date of this decision.

23. If the Registrar is 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 that the disposition of the application should otherwise be in accordance with the Court’s order or direction.

    Costs

24. The Applicant sought costs. As the successful party, it is so entitled.

25. I award costs against the Opponent as per s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995.

    Katrina Brown
    Hearing Officer
    Oppositions & Hearings
    Trade Marks & Designs
    18 October 2019