Opposition by Luma Stiftung to registration of trade mark application 2041941 (41) – The Lume – in the name of Grande Projects Pty Ltd - [2021] ATMO 148

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Luma Stiftung to registration of trade mark application 2041941 (41) – The Lume – in the name of Grande Projects Pty Ltd

Delegate: Nicholas Smith

Representation: Opponent: Corrs Chambers Westgarth
Applicant: Kay & Hughes Pty Ltd

Decision: 2021 ATMO 148
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered and not established – trade mark to proceed to registration
Background

This decision concerns an opposition brought by Luma Stiftung (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Grande Projects Pty Ltd (‘Applicant’):

Application Number:

2041941

Filing Date:

10 October 2019

Services:

Class 41: advisory services relating to entertainment; arranging of entertainment; arranging of exhibitions for cultural purposes; arranging of exhibitions for educational purposes; arranging of exhibitions for entertainment purposes; arranging of exhibitions for training purposes; arranging of musical entertainment; art exhibition services; art gallery services for cultural or educational purposes; booking of entertainment; children's entertainment services; conducting of conventions; conducting of exhibitions for amusement purposes; conducting of exhibitions for educational purposes; conducting of exhibitions for entertainment purposes; conducting of exhibitions for recreation purposes; cultural activities; cultural information; cultural, educational or entertainment services provided by art galleries; entertainment; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; entertainment, cultural or sporting event booking or reservation services provided in relation to a frequent flyer scheme; event management services in relation to the organisation of educational, entertainment, sporting or cultural events; hospitality services (entertainment); live band performances; live entertainment; live entertainment production services; live music services; live show production services; management of concerts; management of cultural events; management of educational events; management of entertainment events; management of entertainment services; management of music halls; management of theatres; multimedia production, other than for advertising purposes; museum exhibitions; musical performances; organisation and conducting of dance, music and other entertainment festivals; organisation of ceremonial events; organisation of entertainment events; organisation of exhibitions for cultural or educational purposes; organisation of exhibitions for entertainment purposes; organisation of live shows; organisation of musical events; organisation of parties; organisation of promotions (entertainment events); organisation of recreational activities; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment; presentation of live performances; producing of motion pictures, plays and videos; production of animated cartoons; production of animated films and cartoons; production of audio and/or video recordings, other than advertising; production of audio entertainment; production of audio recordings, other than advertising; production of audio/visual presentations; production of films, other than advertising films; production of live entertainment; production of live performances; production of motion pictures; production of music; production of musical recordings, other than advertising; production of shows; production of sound recordings, other than advertising; production of special effects; production of video recordings, other than advertising; providing facilities for entertainment; providing facilities for recreation; providing museum facilities (presentation, exhibitions); providing motion picture facilities; providing recreation facilities; provision of entertainment facilities; provision of facilities for entertaining; provision of facilities for recreation; provision of facilities for the production of films; provision of indoor recreational facilities; provision of live entertainment; provision of recreational activities; provision of recreational events; provision of recreational facilities; provision of theatre facilities; rehearsal (recording) studio services; reservation services for concert tickets; reservation services for show tickets; reservation services for theatre tickets; theatre productions; theatre restaurants (entertainment); theatre ticket agency services; theatre ticket booking services; theatre ticket reservation services; ticket agency services (entertainment); video entertainment services; video production services, other than advertising

(‘Applicant’s Services’)

Trade Mark:

The Lume

(‘Trade Mark’)

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Following the advertisement of the application’s acceptance for possible registration in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose the registration followed by a Statement of Grounds and Particulars on 5 June 2020 (‘SGP’). The SGP raised s 44 as the sole ground of opposition. The Applicant filed a Notice of Intention to Defend on 6 August 2020.
Evidence
The Opponent did not file any evidence in support of its opposition.
The Applicant filed the following evidence:
·Declaration made on 23 February 2021 by Bruce Howard Peterson, Director and Company Secretary of the Applicant, with Attachments A to P (‘Peterson declaration’).
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing in this matter or a decision without hearing. The Applicant requested that the matter proceed to a decision without hearing and paid the appropriate fee. As a result the matter has been allocated to a delegate of the Registrar for a decision based on the written record.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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.
In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs.
The Opponent
The Opponent has not filed any evidence and as such I have no information about it other than what is set out on the Register.
The Opponent in its SGP has set out a list of 11 trade marks that it states are deceptively similar to the Trade Mark. These marks (‘s44 Trade Marks’) are set out at Annexure A. One of the s44 Trade Marks, being Trade Mark 1881192 LUMA THEATRE OF LEARNING, is registered to the Opponent, with the remainder being registered to third parties.
The Applicant
The Applicant is an Australian company that operates an immersive digital art gallery in Melbourne Australia
The Paterson Declaration consists of submissions as to whether the Trade Mark and the s44 Trade Marks are deceptively similar and evidence that it submits may be relevant to a finding of honest concurrent use, in the event that I find the Trade Mark to be deceptively similar to any of the s44 Trade Marks. As I have not found the Trade Mark to be deceptively similar to any of the s44 Trade Marks it is not necessary to summarise the evidence on honest concurrent use.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under s 44. To successfully oppose the application the Opponent needs to establish this ground.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is the filing date 10 October 2019 (‘relevant date’), which is the priority date of the Trade Mark.[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J), see also s 29(1) Trade Marks Act 1995 (Cth).
Discussion
Section 44
The relevant provisions are reproduced below:
Section 44 - Identical etc. trade marks
(1)…
(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.
Note 1: For deceptively similar see section 10.
Note 2: For similar services see subsection 14(2).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A. …
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)            the similar goods or closely related services; or
(ii)           the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.
Section 10 - Definition of deceptively similar
For the purposes of this Act, 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.
To successfully oppose the application pursuant to s 44 the Opponent must establish the requirements of s 44(2), i.e. that at least one of the trade marks upon which it relies, being a trade mark filed (and currently pending) or registered by a person other than the Applicant:
·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
·     is in respect of similar services, and/or goods which are closely related to, the Applicant’s Services (‘the third requirement’).
In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4), that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the s44 Trade Marks. Each of the s44 Trade Marks has a priority date that is earlier than the priority date of the Trade Mark. The Applicant’s services are a broad range of entertainment services in class 41. Each of the s44 Trade Marks are registered for similar entertainment services save trade mark No. 1175573 which is registered for services relating to a publishing house and No. 2015843 which is solely registered for social networking services in class 45. These services are of a different nature, used for a different purpose and sold through different trade channels than the Applicant’s Services and hence are not similar[4]. I refer to the remaining s44 Trade Marks as the (‘Remaining Marks’).
Substantially identical and/or deceptively similar
[4] See the test outlined in McCormick & Company Inc v McCormick [2000] FCA 1335, [17] (Kenny J).
I will now consider whether the Trade Mark is substantially identical to any of the Remaining Marks. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[5]
[5] (1963) 109 CLR 407, 414.
In the present case none of the Remaining Marks are substantially identical to the Trade Mark. Each of them shares the same first element ‘Lum’ but are otherwise different words with different meanings and do not contain the element ‘The’ which is part of the Trade Mark. I move then to consider whether the Trade Mark and any of the Remaining Marks are deceptively similar.
The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[6]
[6] Ibid [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[7] at [49]; Australian Woollen Mills[8] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[9] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[10] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[11]
[7] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[8] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[9] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[11] [2012] FCA 1022, [37]-[46].
There is a fundamental issue with the opposition in this case. The Applicant submits, in essence, that by reason of the shared element ‘lum’ the Trade Mark is deceptively similar to one or more of the 9 Remaining Marks. However the presence of at least 9 marks containing the shared element ‘lum’ and registered for similar entertainment services strongly suggests that it is highly unlikely that consumers will be confused between the marks merely by presence of the shared element ‘lum’ since they would be aware of different entities using marks with the lum- prefix for entertainment services. In any case the Trade Mark is clearly visually and aurally different to each of the Remaining Trade Marks, as it contains the definite article and a different suffix. Conceptually the Trade Mark and each of the Remaining Trade Marks marks are quite different with the effect of the definite article in the Trade Mark being used to indicate a place or entity called ‘Lume’ that provides the Applicant’s Services. The meaning of the Remaining Trade Marks is much harder to pin down, but most of them would be seen as an allusion to light in some way (i.e. lumen, luminosity luminescence illuminate). By reason of the practical co-existence of various lum-prefixed marks used in respect of entertainment services in the market, and the differences between the Trade Mark and each of the Remaining Marks, I find that it is unlikely that a consumer would see the Trade Mark and be ‘caused to wonder’ whether the Applicant’s Services come from the same source as the services provided by the holder of one of the Remaining Marks. The respective marks are not deceptively similar and I find that the Opponent has failed to establish the ground of opposition under s 44.
Decision and Costs

The Opponent has failed to establish the ground of opposition it nominated in the SGP. Trade mark application no. 2041941 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s order or direction.
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.
Nicholas Smith
Hearing Officer
Delegate of the Registrar of Trade Marks
1 December 2021
Annex A - s44 Trade Marks

Number

Trade Mark

Priority Date

Goods or Services

1175573

LUMAS

9 Mar 2007

Class 16: Paper, cardboard and goods made from these materials, included in this class; pamphlets; newspapers and magazines, postcards, calendars, books, prospectus, posters, catalogues, photographs, stationery; artists' materials, namely articles for drawing, painting and modelling; paint brushes; office requisites, included in this class; document files, letter trays, letter openers, writing-pads, desk sets; ink and Indian ink for writing, painting and drawing; instructional and teaching material (except apparatus); printers' type; printing blocks; lithographic works of art
Class 41: Services of publishing houses (except printing), not in the field of training in numerical mathematics; publication of publisher's products and printed matter, also in electronic form, also in the Internet, not in the field of training in numerical mathematics; entertainment; taking of photographs
Class 42: Licencing of intellectual property and copyrights; rental of storage space in the Internet, not in the field of training in numerical mathematics; authenticating works of art

1275455

LUMIA

4 Dec 2008

Class 41: Entertainment services, including cinemas, theatres, nightclubs, casinos; gambling services; provision of entertainment and recreation facilities, providing facilities for and arranging and conducting conferences, congresses and seminars, providing facilities for exhibitions, presentation of live performances and health club services; organisation of sporting, theatrical, musical, cultural and recreational events and spectacles; organisation of, and provision of information about, the aforementioned services over a global computer network
Class 43: Provision of food and drink; cocktail lounge services; bars; lounges; cafes; snack bar; restaurants; self-service restaurants; catering services; hospitality services

1496503

LUMOSITY

15 Jan 2012

Class 41: Entertainment and educational services, including providing online games (non-downloadable) and online publications, namely, questionnaires designed to improve learning, memory, attention, perception, cognitive abilities, processing speed, vocabulary and wellness

1633755

Lumeo

10 Jul 2014

Class 35: Advertising; Advertising agencies; Advertising agency services; Advertising analysis; Advertising by mail order; Advertising services provided by television; Advertising services provided over the internet; Advertising services provided via a data base; Advisory services relating to advertising; Arranging exhibitions for advertising purposes; Billboard advertising; Business advertising services relating to franchising; Business advice relating to advertising; Business consultation relating to advertising; Cinematographic film advertising; Classified advertising; Collection of information relating to advertising; Conducting exhibitions for advertising purposes; Consultancy relating to advertising; Demonstration of goods for advertising purposes; Direct mail advertising; Direct market advertising; Direct-mail advertising; Dissemination of advertising material; Dissemination of advertising matter; Distribution of advertising material; Electronic advertising services; Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Fashion show services (advertising or promotional services); Franchising services (group purchasing, group advertising); Graphic advertising services; Hire of advertising aids; Hire of advertising billboards; Hire of advertising equipment; Hire of advertising materials; Hiring of advertising materials; Information services relating to advertising; Layout services for advertising purposes; Market research for advertising; Modelling for advertising or sales promotion; Online advertising on a computer network; Organisation of exhibitions for commercial or advertising purposes; Organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; Organisation of trade expositions or shows for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Organising of prize draws for advertising purposes; Outdoor advertising; Outdoor advertising services; Pay per click advertising; Personnel recruitment advertising; Planning services for advertising; Preparation of advertising material; Press advertising consultancy; Press advertising services; Production of advertising films; Production of advertising material; Production of fashion shows for advertising or promotional purposes; Production of sound recordings for advertising purposes; Production of video recordings for advertising purposes; Production of visual advertising matter; Production, organisation and presentation of fashion shows for advertising or promotional purposes; Promotion (advertising) of business; Promotion (advertising) of concerts; Promotion (advertising) of travel; Promotional advertising services; Providing information, including online, about advertising, business management and administration and office functions; Provision of advertising information; Provision of advertising space; Provision of information relating to advertising; Radio advertising; Recruitment advertising; Rental of advertising apparatus; Rental of advertising billboards; Rental of advertising materials; Rental of advertising matter; Rental of advertising space; Rental of advertising space on the internet; Rental of advertising time on communication media; Research services relating to advertising; Response advertising; Television advertising; Updating of advertising material; Videotape film production for advertising films; Writing advertising copy; Compilation of advertisements for use as web pages on the internet; Compilation of directories for publishing on the Internet; Production of video recordings for marketing purposes; Production of video recordings for publicity purposes; Publicity film production
Class 41: Film production, other than advertising films; Layout services, other than for advertising purposes; Multimedia production, other than for advertising purposes; Production of audio and/or video recordings, other than advertising; Production of audio recordings, other than advertising; Production of films, other than advertising films; Production of musical recordings, other than advertising; Production of sound recordings, other than advertising; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Video production services, other than advertising; Videotape film production, other than for advertising films; Distribution (other than transportation) of videos; Producing of motion pictures, plays and videos; Video entertainment services; Video equipment hire; Videotape editing; Videotaping; Distribution (other than transportation) of films; Production of animated films and cartoons; Provision of facilities for the production of films; Provision of film studio facilities; Rental of cine-films; Rental of film recording apparatus; Rental of film reproducing apparatus; Rental of film studios; Rental of films, motion pictures and film production equipment; Showing of films

1853523

LUMA

28 Sep 2016

Class 41: Entertainment services, namely, production of live action and animated motion pictures and television programs; production of visual effects for live action and animated motion pictures and television productions.

1880050

LUMINOUS

13 Oct 2017

Class 9: Computer game software; video game software; sound recordings in the form of optical discs, magnetic discs, semiconductor ROMs featuring music and/or fictional stories; audio visual recordings in the form of optical discs, magnetic discs, semiconductor ROMs featuring music and/or animated fictional stories; prerecorded compact discs featuring music; prerecorded video discs featuring music and/or animated fictional stories; prerecorded video cassettes featuring music and/or animated fictional stories; decorative magnets; mouse pads; straps for cellular phones; sunglasses; blank memory cards; memory card cases; CD cases; computer keyboards; joysticks; downloadable image files; downloadable wallpapers for computers and/or mobile phones; downloadable screensavers for computers and/or mobile phones; downloadable video recordings; downloadable musical sound recordings; downloadable ring tones for mobile phones; electronic publications in the field of computer games, video games, cartoons and/or general entertainment
Class 16: Computer game strategy guidebooks; video game strategy guidebooks; books featuring fictional and/or fantasy stories; graphic art books; artbooks; song books; musical score books; comic books; magazines featuring video games and/or cartoons; posters; stickers; paper banners; calendars; postcards; stationery; collectors' cards; trading cards; photographs
Class 28: Dolls; toy figures; plush toys; stuffed toys; inflatable toys; toy scale models; toy vehicles; toy guns; toy swords; playing cards; card games; board games; jigsaw puzzles; hand held video game units; video game controllers
Class 41: Providing amusement facilities; amusement arcades; providing on-line computer games; providing on-line video games; providing information on computer game strategies and/or video game strategies via computer networks and/or global communication networks; providing information on entertainment in the field of computer games, video games, card games, animated cartoons, comics, novels and/or magazines; providing on-line non-downloadable comics; providing on-line non-downloadable magazines in the field of computer games, video games, cartoons and/or general entertainment; arranging, conducting and organization of concerts and music events; entertainment services, namely, providing images and pictures via telecommunication; entertainment services, namely, providing music, voices and audio via telecommunication; musical entertainment services; providing information on musical performances and presentation of films
Class 42: Meteorological information; computer software design; designing computer game software and video game software; computer programming; computer software consultancy; technical advice relating to performance, operation, installation, maintenance and repair of computers, automobiles and other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; technical advice relating to operation of computers and computer software; data conversion of computer programs and data (not physical conversion); computer system design; graphic arts designing; testing or research on electricity; testing or research on machines, apparatus and instruments; rental of computers; rental of computer software; rental of web servers; rental of storage area of computer servers, namely rental of web servers; providing temporary use of on-line non-downloadable computer software for computer game software and video game software; hosting computer web sites

1881192

LUMA THEATER OF LEARNING

27 Feb 2017

Class 41: Education and training services in the fields of arts, theater, music, culture and architecture; services involving organizing exhibitions and events in the field of arts, theater, music, culture and architecture; services involving organizing and conducting colloquiums, symposiums, conferences and workshops in the fields of arts, theater, music, culture and architecture; organization of musical concerts and of shows; entertainment in the fields of arts, theater, music and culture; services involving organizing and conducting training and further training workshops for artists, musicians, actors, creators of theater and audio-visual works; publication and edition of books, magazines, catalogues, brochures, photographs, paintings or drawings, reproduction of paintings or drawings, including in electronic format, downloadable or not; publication and edition of musical scores, including in electronic format, downloadable or not; artistic support and advice services in the fields of the arts, theater, music, culture, audiovisual arts, architecture; theater and audiovisual presentations; electronic publication services for others.

1916430

30 Oct 2017

Class 35: Production of visual effects for commercials; production and distribution of commercials
Class 41: Production of visual effects for motion pictures and television programs including feature films, new media, animated productions and other audiovisual works; production and distribution of motion pictures, animated motion pictures, television programs and other audiovisuals works including episodic, new media and mixed reality productions; Production of sound design; Music production

1997526

LUMOSITY

2 Jan 2019

Class 41: Entertainment services, namely, providing brain training games on-line and in mobile wireless form; entertainment services, namely, providing online computer games that help maintain an active brain and thus improve memory, speed of processing, and that provide a variety of cognitive benefits that positively impact quality of life; educational services, namely, providing cognitive fitness programs; education services, namely, providing online cognitive assessments and training programs that help identify cognitive strengths and weaknesses of an individual.
Class 42: Providing temporary use of non-downloadable cognitive stimulation computer programs that help maintain an active brain and thus improve memory, speed of processing, and that provide a variety of cognitive benefits that positively impact quality of life.

2015843

LUMEN

9 Jul 2018

Class 45: Social introduction, social networking and dating services; match making services; online dating, friendship, introduction and social networking services; Internet based dating services; location-based social introduction, social networking and dating services; social introduction, social networking and dating services provided via a software application for portable electronic devices; information, advisory and consultancy services relating to all the aforesaid.

2020079

LUMINARY

2 Jul 2019

Class 9: Downloadable software in the fields of entertainment and education; downloadable software for streaming and/or downloading audio and multimedia programs via the Internet and global communications networks; downloadable software for streaming audio and multimedia programs to mobile digital electronic devices; downloadable software for searching, organizing, and recommending audio and multimedia programs; downloadable software development tools for creating software and mobile applications.
Class 38: Streaming of audio, visual, and audiovisual material via the Internet; transmission and delivery of audio, visual, and audiovisual material via the Internet; video-on-demand transmission services.
Class 41: Entertainment and educational services, including, providing audio programs, not downloadable, via audio-on-demand transmission services and television programs, not downloadable, via video-on-demand transmission services; providing non-downloadable videos and audio recordings via a website; providing online information, reviews, and recommendations in the field of entertainment and education including movies, books, music, games, software, podcasts, television programs, radio programs, and live events.

Opposition by Luma Stiftung to registration of trade mark application 2041941 (41) – The Lume – in the name of Grande Projects Pty Ltd

[2021] ATMO 148

1 December 2021

Key Legal Topics

Areas of Law

Intellectual Property

Administrative Law

Legal Concepts

Standing

Statutory Construction

Costs

Appeal

Procedural Fairness

Delegate:	Nicholas Smith
Representation:	Opponent: Corrs Chambers Westgarth Applicant: Kay & Hughes Pty Ltd
Decision:	2021 ATMO 148 Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered and not established – trade mark to proceed to registration

Application Number:	2041941
Filing Date:	10 October 2019
Services:	Class 41: advisory services relating to entertainment; arranging of entertainment; arranging of exhibitions for cultural purposes; arranging of exhibitions for educational purposes; arranging of exhibitions for entertainment purposes; arranging of exhibitions for training purposes; arranging of musical entertainment; art exhibition services; art gallery services for cultural or educational purposes; booking of entertainment; children's entertainment services; conducting of conventions; conducting of exhibitions for amusement purposes; conducting of exhibitions for educational purposes; conducting of exhibitions for entertainment purposes; conducting of exhibitions for recreation purposes; cultural activities; cultural information; cultural, educational or entertainment services provided by art galleries; entertainment; entertainment, cultural or sporting event booking or reservation services provided in relation to a customer loyalty or frequent buyer scheme; entertainment, cultural or sporting event booking or reservation services provided in relation to a frequent flyer scheme; event management services in relation to the organisation of educational, entertainment, sporting or cultural events; hospitality services (entertainment); live band performances; live entertainment; live entertainment production services; live music services; live show production services; management of concerts; management of cultural events; management of educational events; management of entertainment events; management of entertainment services; management of music halls; management of theatres; multimedia production, other than for advertising purposes; museum exhibitions; musical performances; organisation and conducting of dance, music and other entertainment festivals; organisation of ceremonial events; organisation of entertainment events; organisation of exhibitions for cultural or educational purposes; organisation of exhibitions for entertainment purposes; organisation of live shows; organisation of musical events; organisation of parties; organisation of promotions (entertainment events); organisation of recreational activities; organising events for cultural purposes; organising events for entertainment purposes; organising of entertainment; presentation of live performances; producing of motion pictures, plays and videos; production of animated cartoons; production of animated films and cartoons; production of audio and/or video recordings, other than advertising; production of audio entertainment; production of audio recordings, other than advertising; production of audio/visual presentations; production of films, other than advertising films; production of live entertainment; production of live performances; production of motion pictures; production of music; production of musical recordings, other than advertising; production of shows; production of sound recordings, other than advertising; production of special effects; production of video recordings, other than advertising; providing facilities for entertainment; providing facilities for recreation; providing museum facilities (presentation, exhibitions); providing motion picture facilities; providing recreation facilities; provision of entertainment facilities; provision of facilities for entertaining; provision of facilities for recreation; provision of facilities for the production of films; provision of indoor recreational facilities; provision of live entertainment; provision of recreational activities; provision of recreational events; provision of recreational facilities; provision of theatre facilities; rehearsal (recording) studio services; reservation services for concert tickets; reservation services for show tickets; reservation services for theatre tickets; theatre productions; theatre restaurants (entertainment); theatre ticket agency services; theatre ticket booking services; theatre ticket reservation services; ticket agency services (entertainment); video entertainment services; video production services, other than advertising (‘Applicant’s Services’)
Trade Mark:	The Lume	(‘Trade Mark’)

Number	Trade Mark	Priority Date	Goods or Services
1175573	LUMAS	9 Mar 2007	Class 16: Paper, cardboard and goods made from these materials, included in this class; pamphlets; newspapers and magazines, postcards, calendars, books, prospectus, posters, catalogues, photographs, stationery; artists' materials, namely articles for drawing, painting and modelling; paint brushes; office requisites, included in this class; document files, letter trays, letter openers, writing-pads, desk sets; ink and Indian ink for writing, painting and drawing; instructional and teaching material (except apparatus); printers' type; printing blocks; lithographic works of art Class 41: Services of publishing houses (except printing), not in the field of training in numerical mathematics; publication of publisher's products and printed matter, also in electronic form, also in the Internet, not in the field of training in numerical mathematics; entertainment; taking of photographs Class 42: Licencing of intellectual property and copyrights; rental of storage space in the Internet, not in the field of training in numerical mathematics; authenticating works of art
1275455	LUMIA	4 Dec 2008	Class 41: Entertainment services, including cinemas, theatres, nightclubs, casinos; gambling services; provision of entertainment and recreation facilities, providing facilities for and arranging and conducting conferences, congresses and seminars, providing facilities for exhibitions, presentation of live performances and health club services; organisation of sporting, theatrical, musical, cultural and recreational events and spectacles; organisation of, and provision of information about, the aforementioned services over a global computer network Class 43: Provision of food and drink; cocktail lounge services; bars; lounges; cafes; snack bar; restaurants; self-service restaurants; catering services; hospitality services
1496503	LUMOSITY	15 Jan 2012	Class 41: Entertainment and educational services, including providing online games (non-downloadable) and online publications, namely, questionnaires designed to improve learning, memory, attention, perception, cognitive abilities, processing speed, vocabulary and wellness
1633755	Lumeo	10 Jul 2014	Class 35: Advertising; Advertising agencies; Advertising agency services; Advertising analysis; Advertising by mail order; Advertising services provided by television; Advertising services provided over the internet; Advertising services provided via a data base; Advisory services relating to advertising; Arranging exhibitions for advertising purposes; Billboard advertising; Business advertising services relating to franchising; Business advice relating to advertising; Business consultation relating to advertising; Cinematographic film advertising; Classified advertising; Collection of information relating to advertising; Conducting exhibitions for advertising purposes; Consultancy relating to advertising; Demonstration of goods for advertising purposes; Direct mail advertising; Direct market advertising; Direct-mail advertising; Dissemination of advertising material; Dissemination of advertising matter; Distribution of advertising material; Electronic advertising services; Event management services (organization of exhibitions or trade fairs for commercial or advertising purposes); Fashion show services (advertising or promotional services); Franchising services (group purchasing, group advertising); Graphic advertising services; Hire of advertising aids; Hire of advertising billboards; Hire of advertising equipment; Hire of advertising materials; Hiring of advertising materials; Information services relating to advertising; Layout services for advertising purposes; Market research for advertising; Modelling for advertising or sales promotion; Online advertising on a computer network; Organisation of exhibitions for commercial or advertising purposes; Organisation of housing and real estate displays and exhibitions for promotion or advertising purposes; Organisation of trade expositions or shows for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Organising of prize draws for advertising purposes; Outdoor advertising; Outdoor advertising services; Pay per click advertising; Personnel recruitment advertising; Planning services for advertising; Preparation of advertising material; Press advertising consultancy; Press advertising services; Production of advertising films; Production of advertising material; Production of fashion shows for advertising or promotional purposes; Production of sound recordings for advertising purposes; Production of video recordings for advertising purposes; Production of visual advertising matter; Production, organisation and presentation of fashion shows for advertising or promotional purposes; Promotion (advertising) of business; Promotion (advertising) of concerts; Promotion (advertising) of travel; Promotional advertising services; Providing information, including online, about advertising, business management and administration and office functions; Provision of advertising information; Provision of advertising space; Provision of information relating to advertising; Radio advertising; Recruitment advertising; Rental of advertising apparatus; Rental of advertising billboards; Rental of advertising materials; Rental of advertising matter; Rental of advertising space; Rental of advertising space on the internet; Rental of advertising time on communication media; Research services relating to advertising; Response advertising; Television advertising; Updating of advertising material; Videotape film production for advertising films; Writing advertising copy; Compilation of advertisements for use as web pages on the internet; Compilation of directories for publishing on the Internet; Production of video recordings for marketing purposes; Production of video recordings for publicity purposes; Publicity film production Class 41: Film production, other than advertising films; Layout services, other than for advertising purposes; Multimedia production, other than for advertising purposes; Production of audio and/or video recordings, other than advertising; Production of audio recordings, other than advertising; Production of films, other than advertising films; Production of musical recordings, other than advertising; Production of sound recordings, other than advertising; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Video production services, other than advertising; Videotape film production, other than for advertising films; Distribution (other than transportation) of videos; Producing of motion pictures, plays and videos; Video entertainment services; Video equipment hire; Videotape editing; Videotaping; Distribution (other than transportation) of films; Production of animated films and cartoons; Provision of facilities for the production of films; Provision of film studio facilities; Rental of cine-films; Rental of film recording apparatus; Rental of film reproducing apparatus; Rental of film studios; Rental of films, motion pictures and film production equipment; Showing of films
1853523	LUMA	28 Sep 2016	Class 41: Entertainment services, namely, production of live action and animated motion pictures and television programs; production of visual effects for live action and animated motion pictures and television productions.
1880050	LUMINOUS	13 Oct 2017	Class 9: Computer game software; video game software; sound recordings in the form of optical discs, magnetic discs, semiconductor ROMs featuring music and/or fictional stories; audio visual recordings in the form of optical discs, magnetic discs, semiconductor ROMs featuring music and/or animated fictional stories; prerecorded compact discs featuring music; prerecorded video discs featuring music and/or animated fictional stories; prerecorded video cassettes featuring music and/or animated fictional stories; decorative magnets; mouse pads; straps for cellular phones; sunglasses; blank memory cards; memory card cases; CD cases; computer keyboards; joysticks; downloadable image files; downloadable wallpapers for computers and/or mobile phones; downloadable screensavers for computers and/or mobile phones; downloadable video recordings; downloadable musical sound recordings; downloadable ring tones for mobile phones; electronic publications in the field of computer games, video games, cartoons and/or general entertainment Class 16: Computer game strategy guidebooks; video game strategy guidebooks; books featuring fictional and/or fantasy stories; graphic art books; artbooks; song books; musical score books; comic books; magazines featuring video games and/or cartoons; posters; stickers; paper banners; calendars; postcards; stationery; collectors' cards; trading cards; photographs Class 28: Dolls; toy figures; plush toys; stuffed toys; inflatable toys; toy scale models; toy vehicles; toy guns; toy swords; playing cards; card games; board games; jigsaw puzzles; hand held video game units; video game controllers Class 41: Providing amusement facilities; amusement arcades; providing on-line computer games; providing on-line video games; providing information on computer game strategies and/or video game strategies via computer networks and/or global communication networks; providing information on entertainment in the field of computer games, video games, card games, animated cartoons, comics, novels and/or magazines; providing on-line non-downloadable comics; providing on-line non-downloadable magazines in the field of computer games, video games, cartoons and/or general entertainment; arranging, conducting and organization of concerts and music events; entertainment services, namely, providing images and pictures via telecommunication; entertainment services, namely, providing music, voices and audio via telecommunication; musical entertainment services; providing information on musical performances and presentation of films Class 42: Meteorological information; computer software design; designing computer game software and video game software; computer programming; computer software consultancy; technical advice relating to performance, operation, installation, maintenance and repair of computers, automobiles and other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; technical advice relating to operation of computers and computer software; data conversion of computer programs and data (not physical conversion); computer system design; graphic arts designing; testing or research on electricity; testing or research on machines, apparatus and instruments; rental of computers; rental of computer software; rental of web servers; rental of storage area of computer servers, namely rental of web servers; providing temporary use of on-line non-downloadable computer software for computer game software and video game software; hosting computer web sites
1881192	LUMA THEATER OF LEARNING	27 Feb 2017	Class 41: Education and training services in the fields of arts, theater, music, culture and architecture; services involving organizing exhibitions and events in the field of arts, theater, music, culture and architecture; services involving organizing and conducting colloquiums, symposiums, conferences and workshops in the fields of arts, theater, music, culture and architecture; organization of musical concerts and of shows; entertainment in the fields of arts, theater, music and culture; services involving organizing and conducting training and further training workshops for artists, musicians, actors, creators of theater and audio-visual works; publication and edition of books, magazines, catalogues, brochures, photographs, paintings or drawings, reproduction of paintings or drawings, including in electronic format, downloadable or not; publication and edition of musical scores, including in electronic format, downloadable or not; artistic support and advice services in the fields of the arts, theater, music, culture, audiovisual arts, architecture; theater and audiovisual presentations; electronic publication services for others.
1916430	30 Oct 2017	Class 35: Production of visual effects for commercials; production and distribution of commercials Class 41: Production of visual effects for motion pictures and television programs including feature films, new media, animated productions and other audiovisual works; production and distribution of motion pictures, animated motion pictures, television programs and other audiovisuals works including episodic, new media and mixed reality productions; Production of sound design; Music production
1997526	LUMOSITY	2 Jan 2019	Class 41: Entertainment services, namely, providing brain training games on-line and in mobile wireless form; entertainment services, namely, providing online computer games that help maintain an active brain and thus improve memory, speed of processing, and that provide a variety of cognitive benefits that positively impact quality of life; educational services, namely, providing cognitive fitness programs; education services, namely, providing online cognitive assessments and training programs that help identify cognitive strengths and weaknesses of an individual. Class 42: Providing temporary use of non-downloadable cognitive stimulation computer programs that help maintain an active brain and thus improve memory, speed of processing, and that provide a variety of cognitive benefits that positively impact quality of life.
2015843	LUMEN	9 Jul 2018	Class 45: Social introduction, social networking and dating services; match making services; online dating, friendship, introduction and social networking services; Internet based dating services; location-based social introduction, social networking and dating services; social introduction, social networking and dating services provided via a software application for portable electronic devices; information, advisory and consultancy services relating to all the aforesaid.
2020079	LUMINARY	2 Jul 2019	Class 9: Downloadable software in the fields of entertainment and education; downloadable software for streaming and/or downloading audio and multimedia programs via the Internet and global communications networks; downloadable software for streaming audio and multimedia programs to mobile digital electronic devices; downloadable software for searching, organizing, and recommending audio and multimedia programs; downloadable software development tools for creating software and mobile applications. Class 38: Streaming of audio, visual, and audiovisual material via the Internet; transmission and delivery of audio, visual, and audiovisual material via the Internet; video-on-demand transmission services. Class 41: Entertainment and educational services, including, providing audio programs, not downloadable, via audio-on-demand transmission services and television programs, not downloadable, via video-on-demand transmission services; providing non-downloadable videos and audio recordings via a website; providing online information, reviews, and recommendations in the field of entertainment and education including movies, books, music, games, software, podcasts, television programs, radio programs, and live events.