Opposition by Newmark Capital Limited to registration of trade mark application number 1852349 (Classes 14, 20, 21, and 41) – JamFactory - in the name of JamFactory Contemporary Craft & Design Incorporated.

[2021] ATMO 87

TRADE MARKS ACT 1995

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

Re:Opposition by Newmark Capital Limited to registration of trade mark application number 1852349 (Classes 14, 20, 21, and 41) – JamFactory - in the name of JamFactory Contemporary Craft & Design Incorporated.

Delegate:

Blake Knowles

Representation:

Opponent: Written submissions by Brian Goldberg of Trademark Ventures.

Applicant: Written submissions by Nicholas Linke of Dentons Australia Limited.   

Decision:

2021 ATMO 87

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition considered under sections 44, 58A, and 60 – s 44 partially established – no other grounds established - applicant given opportunity to amend goods – goods amended - trade mark to proceed to registration.

Background

1.     This is a decision on the opposition to registration of trade mark number 1852349 for JamFactory (‘Trade Mark’) by Newmark Capital Limited (‘Opponent’). On 16 June 2017 (‘Relevant Date’), JamFactory Contemporary Craft & Design Incorporated (‘Applicant’) filed an application (‘Application’) for registration of the Trade Mark for the following goods and services:

Class 14: Articles of jewellery; Custom jewellery; Items of jewellery; Jewellery; Jewellery ornaments

Class 20: Exhibition furniture; Furniture; Household furniture

Class 21: Articles of glass for household use; Articles of glassware; Artistic objects made of glass; Glassware; Works of art, of porcelain, ceramic, earthenware or glass; Articles of wood for household use; Ceramic figurines; Ceramics for household purposes

Class 41: Art exhibition services; Display of works of art (exhibitions, shows, museums, galleries); Museum exhibitions; Providing museum facilities (presentation, exhibitions); Museum services; Art gallery services for cultural or educational purposes; Arranging and conducting of workshops (training); Conducting workshops (training); Adult training; Providing courses of training; Provision of training courses; Providing courses of instruction; Provision of education courses

(‘Goods and Services’)

2.     As required by the Trade Marks Act 1995 (Cth)[1] the Trade Mark was examined. The Trade Mark was advertised for opposition purposes and the Opponent filed notice of its intention to oppose registration of the Trade Mark on 17 December 2018, and a statement of grounds and particulars (‘SGP’) on 20 December 2018. The Applicant filed notice of its intention to defend the Trade Mark from opposition on 21 March 2019.

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

3.     The parties had the opportunity to file evidence in accordance with the timetable set out in reg 5.14. The Opponent filed Evidence in Support on 27 June 2019. The Applicant filed Evidence in Answer on 26 September 2019. The Opponent did not file Evidence in Reply.   

4.     The parties were given an opportunity to be heard or file written submissions. Both parties elected to only file written submissions.

Grounds and onus

5.     The SGP nominated grounds of opposition under ss 44, 58A, and 60. The Opponent in submissions stated ‘we bring this opposition on the grounds outlined in Section 44 of the Trade Marks Act 1995.’ However, the Opponent does not expressly state that the grounds under ss 58A and 60 are not pressed. Further, the Applicant has addressed all three grounds in its written submissions. I will therefore address all three grounds of opposition.

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

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

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

Evidence

7.     The following evidence was filed under reg 5.14:

Evidence in Support (‘EIS’)

Declaration of Ms Louise Parker, Paralegal of Opponent, made on 27 June 2019 with Exhibits MJF-1 to MJF-14.

Evidence in Answer (‘EIA’)

Declaration of Mr Brian Parkes, CEO of the Applicant, made on 25 September 2019, with Exhibits 1 to 62.

8.     Ms Parker states in the EIS that the Opponent is the registered owner of trade mark number 1260102 (‘Opponent’s Registration’), for the trade mark JAM FACTORY (‘Opponent’s Mark’) in classes 25, 35, 36, 41, and 43, with a priority date of 1 September 2008. The full specification of goods and services of the Opponent’s Registration is attached in Annex A (‘Opponent’s Goods and Services’).

9.     Ms Parker states that the Opponent operates a shopping, entertainment, and dining complex located in Melbourne, Australia. The complex has been known as Jam Factory since 1979.  Prior to this date, the complex was home to an actual jam factory operated as the OK Jam Co from the later 19^th century. The Opponent’s Jam Factory complex includes numerous tenants operating a variety of retail and service businesses that one would normally expect in most contemporary shopping malls. The complex also includes a cinema. As expected, each of the tenants appears to trade under their own brands. The Jam Factory complex is also promoted via its website Ms Parker characterises the Jam Factory complex as being ‘Australia’s iconic hotspot for retail, dining, and entertainment’.

10.   Ms Parker states that the reputation and goodwill attained by the Opponent is ‘reflected in its widespread customer base, [and] google search that provides results relating to the information about the Opponent and its reputation.’ Annexures to the declaration include extracts from the Opponent’s website, the results of a Google search for ‘jam factory’ which indicates that the Opponent’s complex is the first organic search result, and an extract from the website Trip Advisor indicating there have been 62 reviews of the complex as of the date those webpages were downloaded.

11.   Mr Parkes states in the EIA that the Applicant is a not for profit incorporated association established by the South Australian Government as the ‘South Australia Craft Authority’ in 1973. In 1977, the Applicant’s name was changed to JamFactory Workshops Incorporated.

12.   Mr Parkes states that since 1977, the Applicant has provided a range of services under the Trade Mark including art exhibition services, provision of museum facilities and services, arranging and conducting of workshops, training, and courses for artists and designers, and sale of works of art and craft. The Applicant’s services have been provided from several locations in Adelaide, with the ‘flagship’ retail store, gallery, and studios being located since 1992 at the Applicant’s Morphett Street premises.

13.   Mr Parkes annexes various exhibits which demonstrate use of the Trade Mark (including with additions or alterations not substantially affecting its identity) from 1977, in respect of workshop and training services, gallery services, studio services, and sale of works of arts and crafts.  I note that some of the examples of use (flyers, advertisements and photographs) are not themselves dated, but are stated by Mr Parkes to have been produced at a particular date. However, I also note that the annexed Jam Factory Workshops Incorporated Gallery and Shop Policy (which refers to the purpose of the gallery and the retail store) is dated 4 July 1977 which corroborates the date of first use. Similarly, the remaining examples of use are consistent with the Trade Mark being used continuously since 1977, and there does not appear to be any reason to question the other dates provided by Mr Parkes for the various exhibits.

14.   Both parties also included in their declarations material that is effectively legal argument. This is not evidence. However, to the extent that the submissions relate to grounds of opposition, I have considered them in reaching my decision.

Discussion

Section 44

15.   To establish grounds of opposition under ss 44(1) or (2), the Opponent must rely on a pending or registered trade mark that has a priority date earlier than the Application, and which is in the name of a person other than the Applicant. The earlier mark must be substantially identical or deceptively similar to the Trade Mark. Further, the earlier mark must be filed or registered in respect of one or more of the following: (i) goods that are similar to the goods of the Application, (ii) services that are similar to the services of the Application, (iii) goods that are closely related to the services of the Application, or (iv) services that are closely related to the goods of the Application.

16.   However, even if grounds of opposition are established under ss 44(1) or (2), the Applicant may still succeed in obtaining registration under ss 44(3) or 44(4). Section 44(3) allows registration where the Applicant can demonstrate sufficient honest concurrent use of the Trade Mark before the Relevant Date, or other circumstances existing at the Relevant Date that justify registration. Section 44(4) allows registration where the Applicant can show it has used its Trade Mark before the priority date of the earlier trade mark relied on by the Opponent, with such use being continuous up until the Relevant Date. Generally, registration under either ss 44(3) or 44(4) would only be in respect of goods or services for which use of the Trade Mark can be demonstrated.

17.   The Opponent relies on the Opponent’s Registration as the basis for the s 44 ground.

18.   I will first consider whether the Opponent’s Mark is substantially identical or deceptively similar to the Trade Mark. The test for substantial identity requires trade marks to be assessed as follows:

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.[4]

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

19.   The Trade Mark (JamFactory) and the Opponent’s Mark (JAM FACTORY) differ only slightly. They sound identical, have the same meaning, and look almost identical. As such, a total impression of resemblance emerges from a comparison. I am satisfied they are substantially identical.

20.   I must now consider whether any of the Goods and Services are similar or closely related to any of the Opponent’s Goods and Services.

21.   The test for whether particular goods are similar to other goods requires a determination whether the goods being assessed are the same or ‘of the same description’.[5] The test for determining whether goods under comparison are of the same description as other goods is a practical judgement formed by looking at a number of factors, falling within the categories of the nature of the goods, their respective uses, and the trade channels through which they are commonly sold, with no single factor being determinative.[6] The same tests apply in determining whether particular services are of the description as other services.

[5] Trade Marks Act 1995, s 14.

[6] Re Jellinek’s Application (1946) 63 RPC 59, 70.

22.   The test for determining whether particular goods are closely related to services, or vice versa, requires a different analysis. The relevant considerations and supporting authorities were recently reviewed and stated succinctly by Hearing Officer Brown in Kicking Horse Coffee Co. Ltd, where she said:

The words ‘closely related’ are not defined in the Act. In the Registrar of Trade Marks v Woolworths French J made the following observations:

The term "closely related" recognises that goods and services are different things. There will be classes of goods which are similar to each other. There will also be classes of services which are similar to each other. But the word "similar" does not apply as between goods and services. So there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as "closely related"… it is a term of wider import than “similar”…

In 1979 around the time when the concept of closely related was first introduced into Australian trade mark legislation, FJ Smith, the then Registrar of Trade Marks explained the nature of the relationship between goods and services that would support a finding that they were closely related:

It will be an exercise of the Registrar’s judgement and ultimately of his discretion whether goods and services are closely related. The relationship would have to be close, not merely a tenuous or remote connection. Where the services are performed upon, or in relation to, or even by means of certain goods, this is a factor which would make deception or confusion between marks used in respect of those services and goods more likely.

In Woolworths French J stated that the ‘relationships may, and in perhaps most cases will, be defined by the function of the service with respect to the goods’. Similarly, in Caterpillar Loader Hire (Holdings) v Caterpillar Tractor Co Lockhart J stated that ‘confusion is more likely to arise where services protected by service marks necessarily involve the use or sale of goods’.[7]

[7] [2018] ATMO 193, [19]-[21] (citations omitted).

23.   The Opponent in submissions provides a table comparing the Goods and Services and the Opponent’s Goods and Services.  Aside from this, the Opponent’s submissions are somewhat limited on the issue of similarity of goods and services, merely asserting that the ‘identical nature of the classes highlight the real possibility and probability that consumers will confuse the two marks and cause interference to our brand’ and ‘further, the opposing Trademark operates in a retail industry. They provide retail goods. This has great potential to be confused with the brand of ‘Jam Factory’ which hosts retail stores in its Melbourne location and provides services in the retail industry’.

24.   The Applicant’s submissions engage more directly with the relevant tests, although the Applicant seems to focus the assessment more on the services actually provided by the Opponent, rather than on the specification of the Opponent’s Goods and Services.

25.   Turning first to the Applicant’s goods in Class 14, the items listed are all jewellery. The Opponent’s Goods and Services do not include jewellery. As such, the respective goods are not the same.

26.   However, the Opponent’s Goods and Services include a broad claim for retail and wholesale services in Class 35. This claim is unqualified, and therefore would include the retail and wholesale of jewellery. In Woolworths Limited v The Registrar of Trade Marks, Wilcox J acknowledged that the retail sale of particular goods, and the goods themselves, may be considered closely related. However, the closeness of the connection between goods and services may be diminished where the retailer (in that case, Woolworths), provides its retail services in respect of hundreds of different lines produced by numerous manufacturers.[8]  As such, in determining the relationship between retail services and particular goods, it is clear I cannot simply rely on the fact that the goods under consideration may be sold in a retail outlet. Regard must also be had to other factors which may contribute to the likelihood of confusion.

[8] [1998] FCA 1266 (

27.   With regards to jewellery, it is common for jewellery manufacturers and designers to sell their products through their own boutiques. Retailers of jewellery often refer to themselves as ‘jewelers’ and provide ancillary services such as custom making or modifying pieces of jewellery to customer specifications as part of their service. Retail assistants will also often spend considerable time consulting with a customer on a purchase. In addition, most items sold by a jeweler will usually be presented in a small padded box bearing the jewelers’ trade mark. Each of these factors renders the relationship between jewellery as a good and retail of a jewellery as a service as being particularly close. I therefore consider that the jewellery goods of the Applicant in Class 14, and the retail services of the Opponent in Class 35, are closely related. As such, prima facie, the s 44 ground of opposition is made out in respect of Class 14.

28.   Turning next to the Applicant’s goods in Class 20 and 21, these goods are not included in the Opponent’s Goods and Services. The only goods included in the Opponent’s Goods and Services are clothing and other apparel in Class 25. As such, the respective goods are not the same. I also do not consider the respective goods in Classes 20/21 and Class 25 to be of the same description. The Applicant’s goods in Classes 20 and 21 are essentially furniture, decorative items, and homewares. These goods are entirely dissimilar in nature and purpose to clothing and apparel in Class 25. While the respective goods may at times be sold through similar trade channels (e.g. a large general retailer such as Myers), invariably they would be sold in different locations within the relevant store. I also do not consider that the goods in Classes 20 and 21 are closely related to the retail or wholesale services (or any other services) in the Opponent’s Goods and Services. While furniture, decorative items, and homewares are sold through retail outlets, my understanding is that the goods are usually not manufactured by the retailer themselves but are usually sold under the manufacturer’s own brand. There are also no other factors of which I am aware which renders furniture, decorative items, and homewares as goods as having a particularly close relationship with retail services of such goods. As such, I am not satisfied that the s 44 ground has been made out in relation to Classes 20 and 21 of the Application.

29.   Turning to Class 41 of the Application, this class covers a range of art gallery and exhibition services, museum services, and provision of training and education services.  The very broad specification in Class 41 of the Opponent’s Goods and Services encompasses all of the Applicant’s services in Class 41. I am therefore satisfied that the ground of opposition, prima facie, is made out under s 44 in relation to Class 41.

30.   I must now consider whether it is appropriate to allow the trade mark under the provisions of ss 44(4) (prior and continuous use) and/or 44(3) (honest concurrent or other circumstances).

31.   The EIA demonstrates the Applicant has used the Trade Mark (including with additions or alterations not substantially affecting its identity) in relation to the services in Class 41 since 1977 continuously up until the Relevant Date. Given the Applicant has established prior and continuous use under s 44(4) in relation to the services in Class 41, the Opponent’s ground under s 44 in relation to Class 41 cannot be established.  

32.   However, I am not satisfied that the prior and continuous use of the Trade Mark by the Applicant can be demonstrated for the Applicant’s goods in Class 14. While the Applicant may have sold jewellery products in its retail stores, the evidence indicates that the goods sold by the Applicant are produced by individual artists, and not manufactured by the Applicant. As such, the trade of the Applicant in relation to those goods is more accurately characterised as a retail service, as opposed to use of the Trade Mark for the goods themselves. While such use would be relevant in determining registrability of the Trade Mark in Class 35 for retail services, it cannot be relied on to establish prior use or honest concurrent use under s 44(4) or 44(3) in relation to the Applicant’s goods in Class 14.  

33.   For the reasons given above, I am satisfied that the s 44 ground of opposition has been made out, but only in relation to Class 14 of the Application.

Section 58A

34.   To establish this ground, the Application must first have been accepted for registration under s 44(4) in respect of some or all of the Goods and Services in the face of the Opponent’s Mark, on the basis of prior and continuous use. If that is the case, the Trade Mark can be refused if the Opponent demonstrates that there has in fact been continuous use of the Opponent’s Mark for the same or similar goods or services commencing prior to the date of first use of the Trade Mark.

35.   In the present matter, Class 41 of the Application has been accepted on the basis of s 44(4). As such, it is appropriate to consider s 58A only for the services in Class 41 of the Application.

36.   The first use of the Opponent’s Mark is claimed to be from 1979. However, as discussed above  under the s 44 grounds, the Applicant’s first use dates from 1977. As the date of first use claimed for the Opponent’s Mark is after the date of first use of the Trade Mark, it is not necessary to consider this ground any further.

37.    As the Opponent has not established prior use, the ground under s 58A is not established.

Section 60

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

39.   The EIS states that the Opponent’s Mark has ‘extraordinary reputation and commercial goodwill’ and that the Opponent’s shopping complex is ‘Australia’s iconic hotspot for retail, dining, and entertainment’.  The EIS also includes detailed information regarding the range of stores and facilities offered at the Opponent’s complex, its commitment to the environment and sustainable development (including locating beehives on its roof), and its transition to waterless urinals and use of bamboo and recycled sugarcane toilet paper.

40.   Much of the EIS is either opinion or is not directly relevant to the grounds of opposition.  For instance, in determining whether reputation exists, a statement by Ms Parker in the EIS that the complex is ‘iconic’ by itself can be given very little weight. Further, while the Opponent’s environmental initiatives may be commendable (and may tangentially contribute in a small way towards reinforcing a pre-existing reputation), this information does not compensate for the lack of evidence of the sort usually necessarily to objectively determine that reputation exists.

41.   In McCormick & Co Inc v McCormick, Kenny J considered the requirements for establishing reputation. Her Honour said:

It may be correct to say, as counsel for Mary McCormick did, that the volume of the company’s sales does not directly establish that a significant number of people held the McCormick & Co marks, as distinct from the company’s products, in favourable regard. It does not follow, however, that the volume of sales and promotional expenditures are irrelevant. As Hearing Officer Thompson observed in Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG (1999) 47 IPR 423 (“Hugo Boss”) at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC ¶91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed. [9]

[9] McCormick & Company Inc v McCormick [2000] FCA 1335, [85]-[86].

42.   The EIS does state the length of use of the Opponent’s Mark. It also provides a TripAdvisor review which indicates there were approximately 60 reviews of the Opponent’s complex at the time the webpage was downloaded.

43.   However, there is no other relevant information provided by which to objectively judge reputation.  The Opponent has provided no figures for revenue generated under the Trade Mark, or related promotional expenditure. There are no figures regarding the annual numbers of customers who may visit the complex. There is no social media data, for instance, the number of persons who follow the Opponent’s social media accounts.

44.   While the EIS is indicative of some level of reputation in the Opponent’s Mark, it is insufficient to establish the extent of that reputation, and therefore the likelihood that use of the Trade Mark would lead to confusion. Even if the Opponent did provide sufficient evidence to determine the existence and extent of reputation in the Opponent’s Mark, I would not necessarily be persuaded that the existence of such a reputation would give rise to a likelihood of confusion with the Trade Mark. While consumers may expect that retailers or other service providers within a centre will provide an array of goods and services, they would not necessarily expect a wide range of goods and services to be provided by the operator of the shopping centre complex.  The business of a shopping centre complex is leasing accommodation to retailers and other businesses who in turn provide their goods or services to consumers. The shopping centre may also provide ancillary services to support its tenants and generate patronage. However, I am not aware of any notable instances of ‘brand extension’ where a shopping centre has used its trade mark in any meaningful way in relation to goods or services other than those one expects to be provided by the owner of a shopping centre complex. Put simply, there is no obvious nexus between the alleged reputation relied on by the Opponent and the likelihood of confusion required by s 60.  

45.   As the Opponent has not established reputation, and it is unlikely in any event that the existence of reputation would give rise to a likelihood of confusion, s 60 is not established.  

Resolution of opposition

1. In Apple Inc. v Registrar of Trade Marks, Yates J stated that:

   My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[10]

   [10] [2014] FCA 1304, [232].

2. In circumstances where an opposition has been established in respect of some, but not all, of the relevant goods and services the Registrar may proceed to reject the application in its entirety, under the principles outlined above. However, the Registrar also has a discretion to offer an amendment allowing an applicant to amend the application to remove goods and services for which a ground of opposition has not been established.

3. Given the limited range of goods for which the Opponent had established a ground of opposition, on 6 August 2021 I provided the Applicant with an opportunity to amend the Application by deleting the goods in Class 14.  The amendment has now been made and on that basis I find that the opposition has not been established for the Goods and Services in Classes 20, 21, and 41.

   Decision and costs

4. Following the amendment referred to above, I find that the Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  The Trade Mark may proceed to registration not less than one month from the date of this decision. 

5. 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.

6. As both parties have had a measure of success, I decline to award costs.

   Blake Knowles

   Hearing Officer

   Delegate of the Registrar of Trade Marks

   19 August 2021
   

   Annex A

   Opponent’s Goods and Services

   Class 25: Clothing, footwear, and headgear

   Class 35: Advertising, advertising in relation to retail and commercial property, advertising in relation to the provision and administration of retail and commercial property, auctioneering, bill-posting, demonstration of goods, dissemination of advertising matter, distribution of samples, organisation of exhibitions and trade fairs for commercial or advertising purposes, marketing research, marketing studies, modelling for advertising or sales promotion, on-line advertising on a computer network, outdoor advertising, rental of advertising space, rental of advertising time on communication media, retailing and wholesaling services, sales promotion for others, television advertising, television commercials; business management, business management in relation to retail and commercial property, business management in relation to the provision and administration of retail and commercial property, auditing, book-keeping, business management and organisational consultancy, business management advisory services, business management assistance, business management of hotels, business administration, business administration in relation to the provision and administration of retail and commercial property, business administration in relation to retail and commercial property, business appraisals, professional business consultancy, business information, business inquiries, business investigations, business research, relocation services for businesses, public relations, publicity, publicity agencies, office functions, office functions in relation to the provision and administration of retail and commercial property, office functions in relation to retail and commercial property, commercial information agencies, commercial or industrial management assistance, compilation and systemisation of information into computer databases, data search in computer files for others, document reproduction, office machines and equipment rental, opinion polling, payroll preparation, personnel recruitment, photocopying, word processing, purchasing goods and services for other businesses, radio advertising, radio commercials

   Class 36: Insurance, insurance in relation to domestic, retail and commercial property, insurance in relation to the provision and administration of domestic, retail and commercial property, insurance underwriting; financial affairs, financial affairs in relation to domestic, retail and commercial property, financial affairs in relation to the provision and administration of domestic, retail and commercial property, capital investments, financial and insurance consultancy, financial consultancy, financial evaluation, financial information, financial management, financial sponsorship, fund investments, guarantees, lease-purchase financing, trusteeship, fiscal valuations; monetary affairs, monetary affairs in relation to domestic, retail and commercial property, monetary affairs in relation to the provision and administration of domestic, retail and commercial property, banking, charitable fundraising, issue of tokens of value; real estate affairs, real estate affairs in relation to domestic, retail and commercial property, real estate affairs in relation to the provision and administration of domestic, retail and commercial property, real estate appraisal, real estate agencies, real estate brokers, real estate management, rent collection, real estate valuation, real estate leasing, rental of premises including domestic, retail and commercial property, apartments and offices; advisory, assistance, consultancy, examination, information (including online and over a global computer network), management, planning and research services relating to all of the foregoing

   Class 41: Entertainment, recreation (including sporting) and cultural activities; amusements; booking of seats for entertainment, recreation (including sporting) or cultural activities; providing casino and gaming facilities and services; providing cinema facilities; club services (education, training, entertainment, recreation (including sporting) or cultural); discotheque and nightclub services; displaying works of art for education, training, entertainment, recreation (including sporting) or cultural purposes including exhibitions, shows, museums and galleries; electronic desktop publishing and electronic publication of information on a wide range of topics (including online and over a global computer network); lending library and museum services; organisation of colloquiums, competitions, conferences, congresses, contests, events, exhibitions, fairs, festivals, forums and shows for educational, training, entertainment, recreation (including sporting) or cultural purposes, lectures, seminars, symposiums and workshops (training); providing entertainment, recreation (including sporting) and cultural facilities (and services relating thereto); presentation of awards for meritorious achievement; advisory, assistance, consultancy, examination, information (including online and over a global computer network), management, planning, rental and research services in relation to all of the foregoing

   Class 43: Services for providing food and drink including bar and bistro services, cafeterias, canteens, coffee shops and coffee bars, restaurants, snack bars; food and drink catering; mobile, self-service and take-away variations of all of the foregoing; temporary accommodation, hotel reservations, hotels, motels, rental of meeting rooms, rental of temporary accommodation, temporary accommodation reservations; advisory, consultancy, information (including online and over a global computer network) and preparation services in relation to all of the foregoing; rental of apparatus in relation to all of the foregoing