Opposition by XIAMEN XIAOYUYAO TRADING Co., Ltd to registration of trade mark application 2364242 (11) –

[2025] ATMO 82

TRADE MARKS ACT 1995

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

Re:Opposition by XIAMEN XIAOYUYAO TRADING Co., Ltd to registration of trade mark application 2364242 (11) – BRIGHTOWN – in the name of Shenzhen Yue Er Hua Trading Co., Ltd.

Delegate:	Nicholas Smith
Representation:	Opponent: Kings Patent & Trade Marks Attorneys Pty Ltd Applicant: Intellectual Property Strategy Pty Ltd
Decision:	2025 ATMO 82 Trade Marks Act 1995 (Cth) - section 52 opposition: ss 42(b), 58, 60 and 62A considered – none established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by XIAMEN XIAOYUYAO TRADING Co., Ltd (‘Opponent’) to the registration of the trade mark which is the subject of the application detailed below in the name of Shenzhen Yue Er Hua Trading Co., Ltd (‘Applicant’): 

Application Number:	2364242
Filing Date[1]:	14 June 2023
Goods:	Class 11: Incandescent burners; Cooking apparatus and installations; Air-conditioning installations; Air purifying apparatus and machines; Fireplaces (domestic); Heating installations (‘Applicant’s Goods’)
Trade Mark:	BRIGHTOWN	(‘Trade Mark’)

[1] Also known in this decision as the ‘relevant date’.

1. 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.

2. Following the advertisement of the application’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose the registration on 15 January 2024 followed by a Statement of Grounds and Particulars (‘SGP’) on 14 February 2024.  The SGP raised grounds of opposition under ss 42(b), 58, 60 and 62A.  The Applicant filed a Notice of Intention to Defend on 21 March 2024. 

   Evidence

3. The parties filed the following evidence in this matter:

Declarant and Position	Date	Annexures or Exhibits
Evidence in support
Clinton Priddle, attorney with Kings Patent & Trade Mark Attorneys, the Opponent’s representative (‘Priddle declaration’)	26 June 2024	CP-1 to CP-6
Evidence in answer
Mira Jiang, Director of operations for the Applicant (‘Jiang declaration’)	20 September 2024	MJ-1 to MJ-29
Evidence in reply
N/A (none filed)

1. The entirety of the evidence filed by both parties, including publicly available information such as the public use of the Trade Mark by either party, is claimed to be confidential.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (albeit in respect of the opponent in that case) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[2]

   [2] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6] (Hearing Officer Thompson).

2. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  If in my summary of the evidence, I have disclosed information that is sensitive, then this is an issue that has arisen by that party not specifically identifying that information as sensitive.

3. 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 a hearing.  The Applicant requested that the matter proceed to a decision without a 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.

4. 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

5. The relevant claims/statements in the Priddle declaration can be summarised as follows:

   ·     The Opponent has been using the Trade Mark continuously in Australia since 15 December 2021 in relation to light fixtures/lamps/lanterns.  The Opponent has sold its products through Amazon Marketplace and received revenue for its sales.

6. The annexures to the Priddle declaration display evidence of sales for the Opponent of light fixtures through Amazon Marketplace under the Trade Mark from late 2021 including providing the Amazon listing images of product packaging displaying the Trade Mark.  The Opponent does not provide any evidence of any other marketing material, number of customers serviced per year, amount spent on advertising, or any third-party measurement of the reputation held by the Opponent in the marketplace. The Opponent’s evidence of sales revenue prior to the relevant date is miniscule, indeed the material provided suggests that the Opponent has made less than 100 sales under the Trade Mark prior to the relevant date.

   The Applicant

7. Given the paucity of evidence supplied by the Opponent, it is not necessary to summarise the Applicant’s evidence in great detail.  The Applicant is a company headquartered in Hong Kong that is a trader and retailer in the field of home decoration and home appliances.  

8. The relevant claims/statements in the Jiang declaration can be summarised as follows:

   ·     The Applicant was established in 2014 and from that date has used the Trade Mark internationally for a variety of products, having acquired registrations for the Trade Mark from the United States, Canada and European Union.

   ·     Since 2015 the Applicant has sold a variety of products through the Amazon Store under the Trade Mark, including for outdoor string lights.

   ·     The Opponent is selling counterfeit versions of the Applicant’s products under the Trade Mark in Australia; the image used by the Opponent was taken from a copyrighted image owned by the Applicant.

   ·     The Applicant has extensively promoted its Trade Mark including on social media.

9. The annexures to the Jiang declaration include evidence of its registrations of the Trade Mark in other jurisdictions and evidence of sales and promotion under the Trade Mark. 

   Grounds of Opposition, Onus and Standard of Proof

10. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60 and 62A.  To successfully oppose the application the Opponent needs to establish one of the nominated grounds.  

11. The onus of proof in an opposition rests upon the Opponent.[3]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[4]  The date at which the rights of the parties are to be determined is the relevant date, which is also the priority date for the purposes of s 60.[5]

    Discussion

    [3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [4] Following Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J), and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

    [5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’), see also s 29(1) Trade Marks Act 1995 (Cth).

    Section 58

12. Section 58 is reproduced below:

    Section 58. Applicant not owner of trade mark

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

    Note:For applicant see section 6.

13. The owner of a trade mark is the person who first uses it in Australia, or first files a trade mark application in Australia (while having an intention to use the applied-for mark), whichever is the earlier.  It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

    · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

    · that the Applicant’s Goods are the ‘same kind of thing’ as the goods for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

    ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

    [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

    [7] Re Hicks’ Trade Mark (1897) 22 VLR 636, 640 (Holroyd J).

    [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

14. The ground based on s 58 was particularised in the SGP as follows:

    The Opponent first used the trade mark (BRIGHTOWN) before the priority date of the opposed application in relation to the class 11 goods claimed.

    Accordingly, the Applicant is not the owner of the Trade Mark..

15. In respect of the second factor the delegate in Sola Tube Australia Pty Ltd v Gabriel Andrews[9] stated as follows:

    The “same kind of thing” in respect of the goods or services of the parties does not equate to goods or services which may be “of the same description” (the latter being a term of art for goods or services which are not the same but which consumers are likely to believe come from the same source). It is a narrower test that applies in the context of a claim to ownership[10].

    [9] Sola Tube Australia Pty Ltd v Gabriel Andrews [2014] ATMO 103, [14]-[18] (Hearing Officer Worth).

    [10] Colorado Group Limited v Strandbags Group Pty Ltd [2007] FCAFC 184; (2007) 74 IPR 246; Krone AG v Brook (t/as Cannon Watch Co) (1996) 34 IPR 340.

16. It is not necessary to consider the questions raised in the EIA about whether the Opponent is engaged in the sale of counterfeit versions of the Applicant’s Goods.  Taking the Opponent’s evidence at its highest, the only evidence of use provided by the Opponent is in respect of light fixtures which is self-evidently not the ‘same kind of thing’ as the Applicant’s Goods which are ‘Incandescent burners; Cooking apparatus and installations; Air-conditioning installations; Air purifying apparatus and machines; Fireplaces (domestic); Heating installations’.  The Applicant’s Goods are goods of a different nature, for a different purpose (primarily cooking and heating) and often produced by different companies (being in general, technically more sophisticated) than the goods for which the Opponent could demonstrate use of the Trade Mark for.  

17. As the Opponent has failed to establish the second factor (and must establish all three factors to succeed in the s 58 ground of opposition), I find that the Opponent has failed to establish the ground of opposition pursuant to s 58.

    Section 60

18. Section 60 is reproduced below:

    Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

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

    (a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

19. To establish a ground of opposition under s 60, an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.

20. Some of the relevant principles of s 60 are summarised in the recent case of Ragopika Pty Ltd v Padmasingh Isaac trading as Aachi Spices and Foods as follows:

    The first of these elements calls for a factual inquiry into the extent and nature of the reputation that had been acquired by the existing trade mark – here, the Aachi mark – in Australia. The second element calls for an assessment of the likelihood of deception or confusion arising from use of the new trade mark as a consequence of that reputation.

    The existing trade mark need not even be registered for s 60 to be engaged (Fry Consulting Pty Ltd v Sports Warehouse Inc [2012] FCA 81; 201 FCR 565 (Fry Consulting) at [121] (Dodds-Streeton J); Qantas Airways Ltd v Edwards [2016] FCA 729 (Qantas Airways) at [144] (Yates J)). The classes of goods and/or services in respect of which the existing trade mark has been used, and those in which the new trade mark is intended to be used, may be very relevant to the likelihood of confusion (see Qantas Airways at [143] and GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148] (Markovic J)), but the fact that the classes are not the same cannot be determinative. The reputation of the existing trade mark need not relate specifically to the goods or services that are the subject of the proposed application (Qantas Airways at [143]; Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923 (Rodney Jane Racing) at [87] (O’Bryan J)). The question is simply whether the reputation of the existing trade mark in Australia is such that the use of the new trade mark is “likely” to be deceptive or cause confusion.[11]

    [11] [2023] FCA 487, [20]-[21] (Kennett J)

21. In McCormick & Co Inc v McCormick[12], Kenny J considered what is intended by the word ‘reputation’ as used in s 60.  Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[13]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

    [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[14]

    [12] [2000] FCA 1335.

    [13] Ibid, [81].

    [14] (1992) 33 FCR 302, 343.

22. On the subject of reputation, Kenny J also referred to Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl GmbH & Co KG, where the Registrar’s delegate observed:

    [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 its 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.[15]

    [15] (1999) 47 IPR 423, 436 (Hearing Officer Thompson).

23. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered.  The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[16] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955 (Cth). That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless, the words of Heerey J provide some guidance:

    What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[17]

    [16] [2000] FCA 1587.

    [17] Ibid [91] (emphasis in original). Justice Heerey’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed, the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

24. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

    The trade mark/s had acquired reputation before the priority date of the trade mark being opposed

    The Trade Mark is identical to the Opponents BRIGHTOWN trade mark, which has acquired a reputation in Australia in relation to the class 11 goods, and was first used in Australia prior to the Priority Date of the Trade Mark.

    The Opponent's trade mark acquired reputation through extensive use, including on Amazon. In light of this reputation, use of the Trade Mark by the Applicant would be likely to deceive or cause confusion.

25. The Opponent had sold under 100 instances of its light fixtures in the 18 months prior to the relevant date in Australia.  It provides no evidence of marketing, advertising spend or other reputation in the market.  Noting the market for light fixtures in Australia is a broad one, this evidence is manifestly insufficient in establishing a reputation in the Trade Mark in Australia for light fixtures sufficient for the requirements under s 60(a). 

1. It is not necessary to consider the application of s 60(b).  I find that the Opponent has failed to establish the ground of opposition pursuant to s 60.

   Section 42

2. Section 42 is reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:
   (a) the trade mark contains or consists of scandalous matter; or
   (b) its use would be contrary to law.

3. The Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)).  The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[18]  The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[19]

   [18] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

   [19] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353 (Wilcox J).

4. The Opponent has particularised the ground of opposition in the SGP as follows: 

   Competition and Consumer Act 2010; Tort of passing off

5. As previously stated the Opponent has failed to establish a ground of opposition under s 60. The test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘ACL’) is a more stringent one than that for deception or confusion under s 60,[20] and consequently I find that the Opponent has also failed to establish that the Applicant’s use of the Trade Mark would be contrary to s 18 of the ACL.

   [20] See, e.g.: Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36] (Hearing Officer Williams); Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).

6. Paraphrasing the statement of the Registrar’s delegate in A G Professional Hair Care Products Ltd v Geagroup Invest SRL,[21] where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Justice Beaumont considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[22] Sections 52 and 53 of the TPA were, respectively, the equivalent provisions to ss 18 and 29 of the ACL. Justice Hill in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 52 of the TPA and passing off. His Honour considered that:

   The scope for the operation of s. 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s. 52 or s. 53 will invariably mean that proceedings for passing off would likewise fail.[23]

   [21] [2014] ATMO 65, [50] (Hearing Officer Wilson).

   [22] [2003] FCA 104, [107] (Beaumont J).

   [23] [1989] FCA 506, [40] (citations omitted).

7. For these reasons I am not satisfied that use of the Trade Mark by the Applicant would be contrary to law.  Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).

   Section 62A

8. Section 62A is reproduced below:

   62A Application made in bad faith

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

9. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   ·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;

   ·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;

   ·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

10. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A.  In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application:[24]

    Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.

    … The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[25]

    [24] [2004] EWCA Civ 1028; [2005] FSR 10 (Lord Justice Pill, Lady Justice Arden, Sir William Aldous).

    [25] [2012] FCA 81, [147].

11. Her Honour continued later in the same decision:

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[26]

    [26] Ibid [165]-[166].

12. The Opponent has particularised this ground of opposition in the SGP as follows:

    The Trade Mark is an obvious copy of the Opponent's BRIGHTOWN trade mark.

    The Applicant would have been aware of the Opponent's use of its BRIGHTOWN trade mark and appears to have sought registration of the Trade Mark as an attempt to hijack the Opponent's trade mark.

    Accordingly, the Trade Mark has been adopted in an attempt to trade off the reputation of the Opponent and the application has therefore been filed in bad faith and reflects this bad faith.

13. The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[27]  The Opponent provides no evidence why the Applicant, would be aware of the Opponent and its essentially non-existent reputation in Australia at the time it applied to register the Trade Mark.  Moreover, the Applicant gives evidence that it first used the Trade Mark in other jurisdictions in 2014 and has obtained registrations in those jurisdictions, well before any use by the Opponent of the Trade Mark.  In circumstances where the evidence in support of the s 62A ground of opposition is limited and the Opponent bears the onus, I am not satisfied the Applicant’s conduct in filing the application was unscrupulous, underhanded or unconscientious in character.  Consequently, I find that the Opponent has failed to establish the ground of opposition under s 62A.

    [27] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12] (Hearing Officer Nancarrow).

    Decision and Costs

14. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application number 2364242 may proceed to registration not less than one month from the date of this decision.  If the Registrar is 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.

15. 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 s 221 in the relevant amounts under Schedule 8 of the Regulations.

    Nicholas Smith
    Hearing Officer
    Delegate of the Registrar of Trade Marks
    6 May 2025