Opposition by Home Box Office Inc to registration of trade mark application number 2221447 (classes 32 and 33) - Lannister & Device - in the name of Lannister Group Pty Ltd

[2024] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Home Box Office Inc to registration of trade mark application number 2221447 (classes 32 and 33) - Lannister & Device - in the name of Lannister Group Pty Ltd

Delegate:	Anne Makrigiorgos
Representation:	Opponent: Chrysiliou IP Applicant: Moulis Legal
Decision:	2024 ATMO 92 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 43, 44, 60 and 62A pursued – ground of opposition established under s 62A - registration refused

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)¹ by Home Box Office Inc (‘Opponent’) to registration of the following trade mark:

Number:  2221447 (‘Application’)

Trade mark:   (‘Trade Mark’)

Applicant:  Lannister Group Pty Ltd (‘Applicant’)

Filing and Priority Date:        20 October 2021 (‘Relevant Date’)

Specification:  Class 32: Grape juice

Class 33: Still wines

(‘Applicant’s Goods’)

1. The Application was examined and advertised as accepted for possible registration on 21 March 2022.

2. On 23 May 2022, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 23 June 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the Opposition on 28 July 2022.

3. The Opponent filed Evidence in Support (‘EIS’) on 2 November 2022. The Applicant filed Evidence in Answer (‘EIA’) on 10 February 2023. The Opponent filed Evidence in Reply (‘EIR’) on 3 May 2023.

4. The parties were given the opportunity to either request an oral hearing or to file written submissions. An oral hearing was requested by the Opponent and heard by me as a delegate of the Registrar of Trade Marks on 14 March 2024 by video conference. Kerry Chrysiliou of Chrysiliou IP appeared for the Opponent. The Applicant did not appear and relied on written submissions by Shaun Creighton of Moulis Legal filed prior to the hearing. The Opponent’s oral submissions were supplemented by written submissions filed prior to the hearing. I have decided this matter based on the particulars set out in the SGP, the evidence, the written submissions of the parties and the oral submissions of the Opponent.

Grounds and onus

1. The SGP nominates grounds of opposition under ss 42, 43, 44, 60 and 62A.

2. The Opponent carries the burden of establishing at least one of the grounds of opposition² on the balance of probabilities.³ The rights of the parties are assessed as at the Relevant Date.⁴

Evidence

1. The following EIS was filed:

• First Declaration of Ryan Mellon (‘Mellon’), Vice President, Intellectual Property Counsel of the Opponent, dated 31 October 2022 with Exhibits RM-1 to RM-10 (‘Mellon 1’).

• Second Declaration of Mellon, dated 31 October 2022 with Exhibits RM-11 to RM-16.

• First Declaration of Kerry Chrysiliou (Chrysiliou’), the Applicant’s Attorney, dated 2 November 2022 with Exhibits KC-1 to KC-19 (‘Chrysiliou 1’).

• Second Declaration of Chrysiliou dated 2 November 2022 with Exhibits KC-20 to KC- 34, Confidential KC-35 and KC-36 to KC-45 (‘Chrysiliou 2’).

1. The following EIA was filed:

• Declaration of Hongyi Wu (‘Wu’), director of the Applicant, dated 9 February 2023 with Exhibits HW-1 to HW-25 and HW-29 to HW-42 (‘Wu Declaration’).

1. The following EIR was filed:

• Third declaration of Chrysiliou dated 3 May 2023 with Exhibits KC-46 to KC-57 (‘Chrysiliou 3’).

Summary of EIS

1. Mellon’s evidence can be categorised and summarised under the following headings:

Game of Thrones television series and Lannister family name

1. Mellon provides a great deal of evidence regarding the popularity and distribution of the fantasy book series, ‘A Song of Ice and Fire’, the first book being titled ‘A Game of Thrones’. ‘Game of Thrones’ (‘GoT’) and the eight seasons totaling 73 episodes of the television show of the same name (‘Series’) was released in Australia and worldwide. GoT is about a dynastic war among several families, one being House Lannister, fighting for the Iron Throne and to gain control over the fictional continent of Westeros. The fictional characters in House Lannister have Lannister as their surname which is claimed to be a coined name. House Lannister and Lannister are claimed to feature prominently throughout all eight seasons of the Series.

2. Mellon states that the Series is the most successful show in the Opponent’s history and is claimed to be one of the most popular television shows in the world with United States viewership alone averaging over 30 million an episode. In support, Mellon exhibits articles from various United States entertainment websites and copies of the Opponent’s press releases dated before the Relevant Date.

3. Mellon includes evidence of numerous awards, accolades, and nominations for the Series including actors who played members of the Lannister family. Mellon exhibits a list of awards for the Series from 2011 to 2020.

4. Mellon attests that the Opponent launched a second television series on 21 August 2022 titled ‘House of the Dragon’, which includes Lannister family members throughout the first season.

Use of the Opponent’s trade marks in respect of goods including alcoholic beverages

1. Mellon provides a great deal of evidence regarding the Opponent’s merchandising activities including licensing of the GoT intellectual property and partnerships. Mellon exhibits undated examples claimed to be use of the trade mark LANNISTER in Australia on a wide variety of goods. The trade mark LANNISTER is shown to be used on knives, pendants, earrings, messenger bags, mugs, caps, patches and Christmas stockings. Of these, the pendants, earrings, messenger bags and mugs also display the GoT trade mark.

2. Mellon demonstrates that the Opponent is active in licensing intellectual property from GoT in the alcohol space. The Opponent and alcohol brand Diageo released seven GoT-branded whiskeys in the United States in late 2018, six of which relate to the different houses in the Series including a whiskey named HOUSE LANNISTER. Mellon claims that in the subsequent months, the Opponent broadened the distribution of the whiskeys to Australia.

3. Mellon provides details of the Opponent’s trade mark registrations in Australia which appear in the table below:

Mark	Number	Priority Date	Goods and Services
HOUSE LANNISTER	1907764 (IR 1389091)	1 December 2017	Class 35: Online store services featuring t-shirts, glassware, mugs, hats.
2072158	27 February 2020	Class 33: Alcoholic beverages

Applicant’s dealings in China with the Opponent and a Chinese corporation

1. Mellon asserts that the Opponent has had several dealings with the Applicant in China by way of numerous trade mark oppositions before the Chinese Trade Mark Office but provides no supporting documentation.

2. Mellon states that the Applicant and employees of the Applicant have a relationship with a corporation in China named Ryan (Shanghai) Wine Import & Export Trade Co. Ltd (China) (‘Ryan Shanghai’). Mellon claims that the Applicant is related to Ryan Shanghai on the basis that several of the contact persons listed on the Applicant’s website at (‘Applicant’s Website’) are the same as those listed on the website of Ryan Shanghai at Mellon asserts that the contact persons 吴弘毅 (Wu Hongyi) and 杨霞 (Yang Xia) are the same on both websites. Mellon exhibits screenshots from the Applicant’s Website dated in 2020 and the Ryan Shanghai website dated in 2016, where I note that there are 2 contact names which appear to be in common, although the contact names on the Ryan Shanghai website are in Chinese characters. The common names are - James Wu, Managing Director and Penny Peng, Marketing Manager. Their email addresses are both at the @lannister.com.au domain. I also note that the contact phone numbers of James Wu and Penny Peng are the same on both websites. Finally, I note that there is a further contact person Carla Yang which has the same email address and phone number on both websites.

3. Mellon claims that Ryan Shanghai filed applications in China for trade marks which relate to the GoT Series notably Game of Thrones, Westeros and Targaryen⁵ in, inter alia, classes 32 and 33 and that the Opponent successfully opposed these applications in 2018. Mellon exhibits a copy of the Games of Thrones Class 33 decision and the Class 32 Targaryen decision and their English translations. I note that the oppositions were successful based on reputation in the GoT Series and Ryan Shanghai’s bad faith.

United States Copyright

1. Mellon provides a copy of a United States copyright registration certificate for the rampant lion device (‘Lannister Sigil’) depicted below:

1. Chrysiliou’s evidence can be categorised and summarised under the following headings:

Game of Thrones television series and Lannister family name

1. Chrysiliou provides a history of the five GoT books which were published in 2011. In these books, there is reference to House Lannister, amongst other houses, and the characters in House Lannister. Chrysiliou exhibits a number of extracts from the books showing references to House Lannister and the name Lannister.

2. Chrysiliou exhibits a report from Nielsen Bookdata which provides the number of GoT books that were sold in Australia between 2002 until 1 December 2012. The Nielsen Bookdata shows a total of 624,090 books sold in Australia representing total sales of almost AU$12 million.

3. Chrysiliou provides information regarding the Series which aired between 2011 and 2019 including the popularity of the Series in Australia. Series 1 to 7 was released on DVD in Australia in November 2017. The 8th series was streamed to Australia in 2019. The Series was still available for viewing in Australia on Foxtel as at 9 September 2021.

Use of the Opponent’s trade marks in respect of alcoholic beverages

1. Chrysiliou exhibits screenshots from a variety of websites referring to the release of the GoT themed whiskey, wines and beer between the years of 2014 to 2021. Much of this evidence relates to other names used in the GoT book and Series. In respect of the Australian specific websites and the name Lannister, I note reference to:

• April 2019 - GoT whiskey range launching in Australia with references to a House Lannister whiskey, claimed to be available for purchase at liquor stores nationwide.

• July 2014 - GoT wines named after clans and houses dated in 2014 including Lannister pinot noir.

• January 2020 and September 2021 - GoT ‘House Lannister’ whiskey still available for sale in from a number of Australian websites including Whisky Company, Costco, Winehaven, Shop My Local, Frootbat and Langton’s, amongst others.

• undated - GoT ‘House Lannister’ whiskey still available for sale online from a number of online outlets in Australia such as BWS, My Bottleshop and Vintage Direct amongst others.

• 2019 - GoT whiskey collection sold out in just four weeks in Australia.

1. Chrysiliou provides confidential retail sale figures for GoT ‘House Lannister’ whiskey for 2019 and 2020 and the number of bottles sold. I note that the retail sales in 2019 are substantial (even though the recommended retail price of a whiskey bottle is at least AU$130) but far less substantial in 2020 where bottle sales were only around 17% of the 2019 bottle sales.

2. Chrysiliou claims that GoT wines continue to be sold in Australia and exhibits a screenshot from a Google® search dated in September 2021 for ‘game of thrones wine australia’ where several wine merchants are listed including and While a number of wine merchants are listed, without a screenshot of the websites, it is not an indication that GoT wine was actually available for sale.

Information regarding the Applicant

1. Chrysiliou exhibits a company name search for the Applicant from the Australian Securities & Investments Commission database dated 24 June 2021 which shows that since 2012, Wu remains sole shareholder. I also note that he is the sole director of the Applicant which was incorporated on 5 December 2012.

Wu’s dealings in Australia with the Opponent

1. Chrysiliou provides reference to the following trade mark disputes between the Opponent and Wu and his wife Xia Yang:

• uncontested opposition by the Opponent to Australian trade mark application 1951015 for the trade mark  in classes 32, 33, 35, 41 and 43, in the names of Wu and Xia Yang.

• successful opposition by the Opponent to Australian trade mark application number 1974349 for the Trade Mark in classes 29, 32, 33, 35, 41 and 43 in the names of Wu and Xia Yang.⁶

• unsuccessful opposition by Wu and Xia Yang to Australian trade mark number 2072158  in class 33 in the name of the Opponent.⁷

• unopposed non use removal application by the Opponent against Australian trade mark registration number 1556622 in class 33 in the names of Wu and Xia Yang.

Wu’s trade mark registration in Australia

1. Chrysiliou also provides details of Australian trade mark registration 1806456 for the trade mark  in classes 32 and 33 filed in the names of Wu and Xia Yang in 2016.

Summary of EIA

1. Wu states that the Applicant was established in 2012 to start a wine producing, marketing and exporting business. Wu claims that the Applicant produces and buys wine for export to overseas countries and for sale in Australia and also sells grape juice all under the trade mark LANNISTER or the Trade Mark. Wu claims that the trade mark LANNISTER and the Trade Mark were chosen in December 2012, after having conducted clearance searches of the Australian trade mark register. Wu declares that at the time of adoption of the Trade Mark, the Applicant has no knowledge of the Opponent’s business and the Trade Mark was honestly adopted.

2. Wu states that the Applicant sourced graphic designers through Hutu.com (a Chinese language web portal) to develop the Trade Mark and various wine labels for Australian wine and exhibits English translations of details of contracts with graphic designers dated 20 December 2012 for the Trade Mark and 10 January 2013 for the wine labels.

3. Wu exhibits undated screenshots of the Applicant’s wines and grape juice and Wayback Machine screenshots⁸ taken from the Applicant’s Website. I note that of the Lannister wines listed almost all display the Trade Mark as applied for or in a slightly different format namely .

4. Wu provides:

• copies of sales invoices from the Applicant for the Applicant’s wine and grape juice between 2013 to 2017.

• sales figures in Australia for each of the years 2012-2013 to 2018-2019.

• copies of invoices from third parties to the Applicant in 2013 and 2014. examples of promotion and advertisement between 2012 and 2022, mainly in Adelaide, which is mainly supported by undated photographs.

• a single figure estimate of the Applicant’s advertising and promotional expenditure from 2012 to 2020.

1. Wu claims that Lannister is not a coined name but is a historical name and exhibits undated entries from the Ancestry.com and MyHeritage websites which claim to show sixteen and four entries respectively for Lannister. I note the Ancestry.com entry shows birth (1), death (5), census (5) and marriage and divorce (3) records but no further detail. I note the Myheritage.com entry shows four records, two of which appear to be repeats and unconfirmed information.

Summary of EIR

1. Chrysiliou states that she conducted searches of the surname Lannister on ancestry.com which located 1140 entries. Chrysiliou exhibits the first and second of twenty three pages of entries and comments on the entries being either incorrect or referring to the Lannister family from the Series. Chrysiliou claims to have checked all twenty three pages and other than eight names, they all appear to be names of the Lannister family from the Series.

2. Chrysiliou claims that the dollar value of sales figures in the Wu Declaration does not merely represent sales in Australia but also represents export sales, referring to Wu’s declarations filed in two other Australian trade mark oppositions for trade mark numbers 1974349 and 2072158. Chrysiliou provides copies of identical sales figure tables provided by Wu in both oppositions. I note that the sales figures are separated into export sales and sales in Australia. The sales in Australia are stated as only estimates and are not significant representing less than one percent of total sales. The export sales are substantial. I also note that together, the total sales are the same as the sales in the Wu Declaration.

Discussion and Reasons

Section 62A

1. Section 62A provides:

Application made in bad faith

The registration of a trade mark may be opposed on the ground that the application was made in bad faith

1. The SGP provides that:

• the Opponent’s LANNISTER mark is highly distinctive and well-known and has a strong reputation in Australia and the Applicant would have been aware of it prior to filing the Application.

• the Opponent has not licensed the use of the LANNISTER mark to the Applicant for the Applicant’s Goods.

• Wu and/or his wife Xia Yang have a history of applying, or assisting a third party to apply, to register trade marks that are not only strongly associated with the Opponent but also for which the Opponent holds a strong reputation including:

oAustralian trade mark registration 1806456 for the trade mark .

oAustralian trade mark application 1951015 for the trade mark .

oAustralian trade mark application 1974349 for the Trade Mark.

oremoved Australian trade mark registration 1556622 for the Trade Mark.

and that these demonstrate a pattern of registering and attempting to register marks which are already associated with the Opponent, to gain a commercial advantage for themselves or for corporations of which one or both are officers, demonstrating bad faith behaviour.

• The Application was filed with full knowledge of the Opponent and its rights in the LANNISTER mark.

1. In addition to the particulars in the SGP, the Opponent submits that:

• at the time the Trade Mark was first used by the Applicant in Australia on 27 October 2014, the word Lannister was well established as the name of one of the most important families in the GoT books and Series.

• the Trade Mark is a combination of the name Lannister which was unknown before the release of the GoT books and a shield device with a head of a lion which is very similar to the Lannister Sigil associated with the name Lannister in the GoT books and Series.

• Wu did not provide an explanation as to how he arrived at the Trade Mark.

• Adoption of the Trade Mark is conduct which falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the wine and grape juice areas.

• the knowledge of the Applicant was such that the decision to apply for registration would be regarded as bad faith by persons adopting proper standards.

1. The Applicant submits:

• the Applicant commenced use of the Trade Mark in December 2012 after obtaining a clear search of the Trade Mark Register.

• the Applicant had no knowledge of the Opponent’s business at the time of developing the Trade Mark.

• the Applicant has, and continues to, act in good faith when using the Trade Mark in relation to Applicant’s Goods.

• the Applicant's conduct in filing the Application was within the realm of ‘acceptable commercial behaviour’.

1. There have been two Federal Court decisions that substantively considered s 62A: Fry Consulting v Sports Warehouse Inc (No 2)⁹ (Fry Consulting) and DC Comics v Cheqout Pty Ltd¹⁰ (‘DC Comics’). The following propositions emerge from each of these two decisions relevant to the present opposition:

   (a)Bad faith for the purposes of s 62A must be [as at the priority date] and must relate to the making of the subject of each of the applications:¹¹

   (b)Section 62A does not require the opponent to establish that the trade mark’s use would result in deception or confusion. However, evidence to that effect may be persuasive in considering whether the application to register a mark was in bad faith:¹²

   (c)       The onus of proving bad faith rests upon the opponent:¹³

   (d)All of the circumstances surrounding the application to register the mark are relevant:¹⁴

   (e)The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading:¹⁵

   (f)While the seriousness of an allegation of bad faith that “impugns the character of an individual or collective character of a business” requires correspondingly cogent evidence, the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt:¹⁶

   (g)Conduct which falls “short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area” is sufficient. Dishonesty is not required. Bad faith requires both subjective and objective elements; it is a combined test:¹⁷

   (h)Circumstances where, following prolonged competition between the parties, there is a subsequent application to register a series of nearly identical trade marks can amount to conduct such that a reasonable person standing in the shoes of the applicant would have been aware that it ought not apply for trade mark registration:¹⁸

   (i)Subjective naivety does not exclude a determination of bad faith for the purposes of s 62A:¹⁹

   (j)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:²⁰

   (k)An act of bad faith cannot be cured by an action after the date of the application²¹.

1. (l)               Use of a trade mark together with other indicia associated with the trade mark owner may lead to an inference of bad faith:²²

1. The authorities referred to above do not require the Trade Mark to be either deceptively similar or substantially identical to any trade marks used by the Opponent in relation to class 32 or 33 goods. Nor does the Opponent need to show that they have any rights in the Trade Mark.

2. Whether an application was made in bad faith requires consideration of a subjective and an objective element. For the subjective element I must form a view of the actual knowledge of the Applicant at the time the Application was filed. The objective element then asks, would a person adopting proper standards, knowing what the Applicant knew, regard the act of filing the Application as being in bad faith? This is to be assessed by finding whether the act of filing ‘falls short of the standards of acceptable commercial behaviour’ in this industry.

3. To determine the Applicant’s subjective knowledge, I am required to look at the circumstances surrounding the filing of the Application. This includes the relevant actions of each party.

• On the basis of the Opponent’s significant amount of evidence regarding the success of the A Song of Ice and Fire books including the GoT book and the Series, the significant number of people in Australia and worldwide who are familiar with the books and Series (which has not been disputed by the Applicant) and the provenance of the name LANNISTER, I am satisfied of the following as at the Relevant Date:

• the fame and viewership of the Series was such that the people familiar with the books and Series would include employees or officers of the Applicant;

• the word Lannister was unknown until the A Song of Ice and Fire series of books were published and the Series was produced and broadcast. Therefore, the Lannister name is distinctive and is not a historical name;

• the name Lannister was not independently invented by the Applicant but rather the Applicant became aware of LANNISTER as a result of exposure to the books and/or Series;

• the name Lannister is distinctive; and

1. the popularity of the GoT whiskeys and in particular in the House Lannister whiskey in Australia would have been known to the Applicant given the extent of sales of House Lannister whiskey and the fact that the Applicant is in the alcohol industry.

2. The Opponent provides contact details for the Applicant and Ryan Shanghai which appear to be in common, namely James Wu and Penny Peng. While the contact names on the Ryan Shanghai website are in Chinese characters, I am aware from my own knowledge that Chinese nationals in Australia typically adopt westernised names. Given that James Wu is listed as managing director on the Applicant’s Website and Wu is the sole director of the Applicant, and given that the email addresses on the websites and the phone numbers are the same, I am satisfied that James Wu and Wu are the same person. Furthermore, the Applicant, being controlled by Wu as sole director, is taken to have the knowledge possessed by Wu. I am therefore also satisfied that the Applicant is connected with Ryan Shanghai, which I note has not been disputed by the Applicant or Wu.

3. While the Applicant and the Opponent have not previously had a relationship in the sense that the Applicant and the Opponent have not been involved in other Australian trade mark oppositions or non use removal actions, Wu certainly had such a relationship with the Opponent, as did his wife with respect to the Australian oppositions which were either uncontested by Wu or Wu has not succeeded in them. In addition, while none of the Australian oppositions were determined on the basis of bad faith and the removal application was not opposed, the oppositions in 2018 by the Opponent in China based on reputation in the Series and Ryan Shanghai’s bad faith for the trade marks Game of Thrones and Targaryen in, inter alia, classes 32 and 33, well before the Relevant Date, did find in favour of the Opponent at least partially on the basis of bad faith.

4. I am satisfied that the bases referred to in paragraphs 48 to 50 are surrounding circumstances which I can and have taken into account and that the Trade Mark was filed by the Applicant with the full knowledge of the Opponent, its business, and the name Lannister.

5. I also take into account the registration by Wu and his wife of the  trade mark, which is yet another invented name from the GoT book and Series.

6. Wu claims that Lannister is not a coined name but is a historical name but at no stage provides an explanation as to how and why the Trade Mark was adopted back in 2012. The Applicant also does not explain when and why the decision was made to file the Application at the Relevant Date, given that the Applicant’s previous registration for the identical Trade Mark had been removed 3 years prior.

7. The Applicant’s submissions that it commenced use of the Trade Mark in December 2012 after obtaining a clear search of the Trade Mark Register, and it had no knowledge of the Opponent’s business at the time of developing the Trade Mark (even if accepted), does not assist the Applicant. The s 62A ground is concerned with what the Applicant knew at that time of filing the Application, not what the Applicant knew at the time of commencing use. In my view the Opponent has provided cogent evidence as to the bona fides of the Applicant filing the Application and the Applicant has not answered that evidence. The Applicant has not provided any evidence or submissions on what the Applicant knew of the Opponent, its business or its trade marks when filing the Application. The Applicant only refers to what it knew of the Opponent, which it claims was nothing, at the time of commencing use.

8. While mere knowledge before the relevant date of another person’s business or trade marks without more does not in itself constitute a basis for a finding of bad faith,²³ awareness combined with other circumstances can collectively amount to bad faith. In the absence of any alternative explanation of the Applicant’s conduct in filing the Application, I am satisfied that the evidence establishes a pattern of behaviour on the Applicant’s (and Wu’s) part and its associated company Ryan Shanghai in seeking to register trade marks associated with the Opponent.

   ·     In the end, I am satisfied on the balance of probabilities that the Applicant’s act of filing for registration of the Trade Mark was in full knowledge of:

   ·      the fame of the Opponent’s Series,

   ·     the distinctive name Lannister from the GoT book and Series,

the use and extent of use by the Opponent of the trade mark House Lannister in respect of whiskey,

1. and this knowledge, combined with the pattern of the Applicant (and Wu) and its associated company Ryan Shanghai seeking to register trade marks associated with the Opponent in Australia and China, is indicative of behaviour that is unconscientious in character and is therefore conduct that falls short of the ‘standards of acceptable commercial behaviour observed by reasonable and experienced persons’.²⁴ As such, on the evidence, I am satisfied that the Applicant applied for the Trade Mark in bad faith and the Opponent has established the ground of opposition under s 62A.

2. As I have found the Opponent successful under the s 62A ground, it is unnecessary for me to consider the other grounds of opposition.

Decision

Section 55 relevantly provides:

Decision

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

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

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

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

1. Note:           For limitations see section 6.

1. As I have found the Opponent has established the ground of opposition it raised pursuant to s 62A, I accordingly refuse to register the Trade Mark. If the Registrar is served with a notice of appeal, I direct that registration 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.

Costs

Both parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Applicant under s 221 in the relevant amounts under Schedule 8 of the Regulations.

Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
20 May 2024

¹ Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995
(Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).
² Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
³ Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
⁴ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
⁵ Another GoT family name.
⁶ Home Box Office Inc v Hongyi Wu & Xia Yang [2021] ATMO 119 (Hearing Officer Brown).
⁷ Hongyi Wu and Xia Yang v Home Box Office Inc [2023] ATMO 56 (Hearing Officer Goldsworthy).
⁸ Taken from the Wayback Machine, a digital archive of the World Wide Web at [2012] FCA 81 (‘Dodds-Streeton J) (Fry Consulting).
¹⁰ [2013] FCA 478 (Bennett J) (DC Comics).
¹¹ Fry Consulting (n 9) [145].
¹² DC Comics (n 10). [76].
¹³ Fry Consulting (n 9). [145].
¹⁴ DC Comics (n 10). [62].
¹⁵ Ibid.
¹⁶ Fry Consulting (n 9). [145].
¹⁷ Ibid [147], [148] and [165].
¹⁸ Ibid [152].
¹⁹ Ibid [154] and [155].
²⁰ Ibid [156].
²¹ DC Comics (n 10), [62].
²² Ibid [73].
²³ Fry Consulting (n 9).
²⁴ DC Comics (n 10) [77].