Pamela Margaret Brown v Herron Pharmaceuticals Pty Ltd

[1998] ATMO 53

TRADE MARKS ACT 1995

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

Re:Opposition by Herron Pharmaceuticals Pty Ltd to the registration of trade mark applications number 661167 and 670215 in the name of Pamela Margaret Brown.

Background:

After examination, trade mark applications number 661167 and 670215 were advertised by the Trade Marks Office as having been accepted for registration.  The applicant is Pamela Margaret Brown (“the applicant”).

The applicant is proposing to register the following trade marks:

 

1. 670215

Herron Pharmaceuticals Pty Ltd ("the opponent") opposes registration of these applications.  In support of its case, the opponent relies on the declaration of Euan Forsyth Murdoch, a director of both the opponent company and of a related one, Karu Pty Ltd, ("Karu").  His declaration makes the following points:

In about 1910, a Mr J.C. Marconi started a business in Queensland in medicated liniments and salves.  After his death in 1922, the trade mark he had adopted continued to be used by his trustees.  The early business owned the following trade marks:

1. GOANNA

 

28306

These are still registered, for medicated articles, salve or ointment, liniment, pills and medicines for internal and external human use.  The registrations are now in the names of Mr Murdoch, the declarant, and Ms Barbara Kaye Murdoch, currently the major shareholders in Karu.

As to the clothing trade conducted by the opponent, it appears that, since 1982, articles of clothing bearing a goanna trade mark have been displayed for sale at the opponent's premises. In November and December 1993, such clothing was advertised for sale in the National Times, New Idea and the Sunday Mail.  Relevant items can be bought without buying medicated products.

The mark used by the opponent in relation to clothing is what Mr Murdoch refers to as "the Goanna trade mark". In the evidence before me, however, is clearly more than just the word GOANNA.  It is a device mark, typically the one registered for clothing as number 642573, reproduced below.  The words "GOANNA" OIL LINIMENT are prominent in the trade mark whenever it is used on clothing. 

From the evidence, Karu has arranged for the printing of T-shirts with various "GOANNA" OIL LINIMENT designs.  Items of clothing bearing the "GOANNA" OIL LINIMENT trade mark were distributed free, "for example to sporting teams and to media personalities".  Between 1982 and 1987, Mr Murdoch has estimated that 30% of Karu's distribution of clothing bearing the trade mark was by way of sale.  The rest was free distribution.

The relevant trade mark registrations, for "clothing, footwear and headgear" and "clothing and headgear" respectively, are:

• 447710:   GOANNA

• 642573:

Those registrations too are in the name of Mr and Ms Murdoch.  They have licensed Karu to use the registered trade mark on medicated products and on clothing, and it in turn has sub-licensed the opponent to use the trade mark for the same goods.

The evidence relied on by the parties also establishes a considerable amount about the activities of the applicant.  Some of this comes from the declaration of the applicant herself.  Other parts of it come from correspondence between the parties, on which the opponent relied in the evidence in support.  That material is, unless I indicate otherwise, uncontested and to be taken at face value.

From the evidence, Giddy Goanna, the cartoon character appearing in trade mark number 661167, is the centrepiece of an educational project which aims to raise awareness of farm safety.  The aim of the exercise is to do this by targeting children who live on farms.  The applicant, and the company of which she is a founder, see such children as being more open to education about safety and safe working practices than are their parents.

Grounds of opposition
Against this background, the opponent has various complaints, initially those set out in the notice of opposition.  These were a diverse set and several were not based on the specific provisions of the 1995 act.  As framed, several of the grounds do not recognise the fact that, under the 1995 act, an opponent can rely on, but only on:

• the grounds open to the registrar to consider prior to deciding to accept the application, other than that the trade mark is incapable of being represented graphically. These are set out in division 2 of part 4 of the act.

• any of the additional grounds open for the purposes of opposition.  These are set out in ss 58 - 62.

However, at the hearing, the opponent advised that it would pursue only five grounds.  These are that:

• the applicant does not intend to use its mark as a trade mark, ie as an indication of commercial origin of goods offered for sale

• the opposed trade marks are deceptively similar to the opponent's own registered trade marks

• the use of the applicant's marks would be contrary to law

• the use of the opposed trade marks would be likely to deceive or cause confusion

• because registration of another goanna mark would dilute the scope of the opponent's rights, the registrar should exercise his discretion adversely to the applicant and refuse the application.  To register it, in such a case, would be to allow the applicant a perfect defence against any infringement action the opponent may otherwise wish to take.

I will come to these one by one below but I will say at this point that the last of them is still outside the clear stipulation of s 52(5).

The opposition process has followed the course set out in the regulations.  Both sides served evidence to support their positions and the opposition came on for hearing and decision by me, as a delegate of the Registrar of Trade Marks.

At the hearing, the opponent was represented by its patent attorney, Mr Claude Anese of the attorney firm Cullen and Co.  The applicant was represented by Mr Andrew Crowe of counsel, instructed by Ms Kathryn Walker of the applicant's solicitors, Kathryn Walker and Associates. 

Discussion of the issues
1. Lack of intention to use the mark as a trade mark:
Here, s 59 is relevant.  It provides:

The registration of a trade mark may be opposed on the ground that the
applicant does not intend:
  (a) to use, or authorise the use of, the trade mark in Australia; or
  (b) to assign the trade mark to a body corporate for use by the body
corporate in Australia;
in relation to the goods and/or services specified in the application.

Mr Anese argued that the intention to be considered is the intention as at the filing date.  However, I do not think that this is so. Section 59 is clearly in the present tense.  It looks at current intention: if this is lacking, then the trade mark has been abandoned, irrespective of the circumstances in which the application may have been filed. 

A lack of intention to use at the time of filing can, however, be the basis of an attack on ownership.  Such an attack is launched under s 58.  As matters turn out below, the distinction does not matter in this case.  On the evidence before me, the applicant's current intentions are a mirror of its intentions at the time of filing.

I agree with Mr Anese that, to be registrable, a trade mark must be used, or intended to be used, as a trade mark.  As Mr Anese argued it, the opponent need only put up a prima facie case that this intention was lacking for the applicant to be under an onus to rebut that case.  I do not think the applicant, in such a case, need necessarily "prove", to quote Mr Anese, that it has the requisite intention.  It will, however, need to do whatever is necessary to rebut the opponent's case.

Under s 17 of the 1995 act, a trade mark is a mark used, or intended to be used, in the course of trade.  The words "in the course of trade" are crucial.  For a general description of what trade mark use is, I rely on Moorgate Tobacco Co Ltd v Philip Morris Ltd 3 IPR 545 at 557:

The court was referred to a large number of cases and to some administrative decisions in which consideration has been given to what constitutes a use or user of a trade mark for the purposes of the statutory notion of proprietorship of the mark before registration.  The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark.  It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark (Re Registered Trade Mark "Yanx"; Ex parte Amalgamated Tobacco Corporation Ltd, (1951) 82 CLR 199 at 204-5) or that the mark has been used in an advertisement of the goods in the course of trade (Shell Co of Australia v Esso Standard Oil (Australia) Ltd, (1963) 109 CLR 407 at 422). In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark in trade.

Mr Anese reminded me of Ferodo Ltd's application (1948) 62 RPC 111, and of HOSPITAL WORLD trade mark [1967] RPC 595. These cases argue that the distribution of free goods does not establish a trade in those goods. Mr Crowe countered that both applicant and opponent use their trade marks for "promotional purposes". He noted that, as Shanahan says at p 32 of Australian Law of Trade Marks and Passing Off, the concept of use "in the course of trade" is broad enough to take in free distribution of goods where this is a commercial undertaking to derive revenue. 

Hearing Officer Hardie, as she then was, adopted a similar line of reasoning in relation to the trade mark REALTOR.  Her decision looked at relevant overseas conclusions and is published as Re Estate Agents Co-operative Ltd (1991) AIPC 90-787. She said:

The views of the Supreme Court of Ireland as expressed in the Golden Pages case - [1985] FSR 27 - have been considered and approved in the United Kingdom by his Honour Justice Whitford in VISA Trade Mark, [1985] RPC 323. "The relevant question must I think be: 'does this applicant trade in these goods? If he does and there is no other bar, he ought to be entitled to the protection of registration both in his own interest and the interest of the public. The fact that he trades in the goods as part of a service is, in my judgment, wholly irrelevant."

Ms Hardie went on to say

The conclusions reached both by the Irish and the British Courts, is that a business which operates to provide a service can in the process of providing that service also generate a trade in goods notwithstanding the fact that there may be no direct charge for those goods, and that the goods are no more than what may be thought of as an adjunct to the service.  Estate Agents are clearly in the business of real estate.  In the course of that business, however, they produce a magazine which serves as an advertising vehicle for the members of their group.  The magazines are goods.  Having regard to the above cases, the fact that these goods are offered to the public to promote the applicant's business operations satisfies me that they are dealt with in the course of trade.  

Mr Crowe sought, at the outset, to portray the applicant's position as one where there is evidence of at least some sales and where all dealings in clothing were in the course of trade.

The applicant has declared that she has agreed to licence the use of "the trade mark Giddy Goanna" to Giddy Goanna Limited, of which she is one of five founding members. Her declaration goes on to refer to intended "registered user" arrangements.  This is a reference to the registered user provisions of the now-repealed 1955 act.  That, on its own, appears significant and could count for much in defeating the opponent's attempt at undermining.  But it is not alone.

The trade mark has been applied to merchandise, including a number of printed publications and clothing items.  That merchandise has been used to promote farm safety for children.  The trade mark has been printed and featured on T-shirts and caps distributed for promotional purposes to associations engaged in the promotion of farm safety for children.  A number of T-shirts and caps have been sold, it is said, to children who became members of the Giddy Goanna Club.  Apparently some 800 polo or T-shirts and 100 caps have been distributed since 1995, the year in which the applications were filed.  (The applicant declares that precise sales figures are not available as a large number of such items were given away and not sold.)

In all of this, there is no evidence that the applicant has ever conducted a trade in clothing items.  There is no suggestion that clothing has ever been offered for sale.  There is an assertion that caps have been sold to children who become members of the Giddy Goanna Club, but no detail as to how these transactions came about, when, or on what terms they occurred.  As Mr Anese argued at the hearing, it would be quite consistent with the evidence to say that the "sale" was no more than the giving away of such a cap to someone who paid to become a member of the Giddy Goanna Club. 

Against such a background, statements made in August 1997, about good intentions to licence a trade-mark under a piece of legislation that was repealed in January 1996, are bland and without sufficient force as evidence.  What the applicant means now to do to bring about such a licence is not clear, but what she means by "trade mark" is fairly clear, and well short of what the case law means.

Mr Crowe also sought to rely on a much-used argument: that there is a standing presumption that a mark sought to be registered is indeed sought to be used.  There can be no faulting this: the presumption exists, and recognition of it comes from Aston v Harlee Manufacturing Co, (1960) 103 CLR 391. It is up to the opponent to undermine that presumption.

The question of intention to use, when impugned in the opposition forum, was last looked at closely by the Trade Marks Office fairly recently.  In relation to the trade mark PENTIUM, application 711008, Hearing Officer Homann said that:

There are a number of cases in which registration has been refused or a mark expunged on the ground that the applicant or registered proprietor had no bona fide intention to use the mark.  These are Re Registered Trade Marks of John Batt & Co 15 RPC 534; In the Matter of Ducker's Trade Mark 45 RPC 397;  Rolewa Rentals Pty Ltd v Champagne Moet et Chandon (1985) AIPC 90 - 238 and Sharwood v Fuddruckers 15 IPR 188. In all of these cases, there was clear evidence that the proprietor of a registered mark or the applicant for registration could not have had a bona fide intention to use the mark either because they had trafficked in the marks or because they did not have the capacity in a business sense to carry out such an intention or because the application for registration was merely speculative. In each case the application was refused or the mark expunged in respect of all of the goods or services. It is not appropriate in opposition proceedings for the Registrar to instigate an investigation in detail of the use or intention to use in respect of each and every item which might be covered in the applicant's specification and the lodgment of the application and the applicant's statement of use or intention to use must on the principles explained in Aston v Harlee be accepted as prima facie evidence of the relevant use or intention to use.  The onus must be on the opponent to lead evidence showing a lack of intention or incapacity to use the mark for the relevant goods.

On the other hand, the presumption of an intention is no more than a prima facie one.  It needs to be decided, in each case, if the opponent has moved the burden it faces.  I do not think the opponent needs to do anything more than bring in clear evidence to impugn the applicant's intention to use its trade mark.  Once that evidence is in, the applicant's intention is then suspect and the onus shifts to it, to justify its claim to registration.

Mr Anese drew my attention to various pieces of evidence.  One is a letter, written to the opponent by the applicant's then solicitor, which stresses the altruistic nature of the applicant's business.  The letter says: "our client is not involved in the clothing manufacturing business and has no intention of becoming involved in the clothing manufacturing business.  Our client has sought to register in class 25 - clothing, footwear and headgear because such items as hats and shirts will be a significant part of the promotion of the objects of the organisation".

On its own, such a letter is of no great assistance in establishing a lack of intention to use a trade mark.  Traders can conduct a trade in goods they distribute but do not manufacture. 

Again, it does not necessarily matter that the applicant's former lawyer wrote:  "Our client and Giddy Goanna Limited are not interested in and will never be involved in the type of commercial enterprise in which your client is involved.  Any clothing, footwear or headgear, utilising our clients trade mark will be produced by Giddy Goanna Limited only to encourage participation in the project and for the positive promotion of health and safety issues".  Such a stance is compatible, though only to a limited degree, with a commercial interest in selling goods, or with a commercial aim to which, as in REALTOR, supra, the goods are at least ancillary. 

However, taking the applicant's evidence as a whole, two things are clear.  Firstly, the applicant's intention to use, which is tied up with the manner of use, has been at issue from day one.  The educational aspects of the applicant's use of the Giddy Goanna character were something that was, on the evidence, discussed between the parties, and those discussions are in evidence.  That being so, and given the grounds of opposition as initially stated, the applicant cannot say that it was unaware of the need to put its cards on the table.  It cannot complain, therefore, that the words of its former solicitor have been taken out of context: the applicant has had the chance to establish the context more fully, if it was able to do so.  Therefore, I should accept that the present evidence is sufficient for me to see, prima facie, how the applicant intends to use the mark.  I see nothing there of commercial use, of trade mark use.

That being so, Mr Crowe's picture will not stand up to close examination.  There is no evidence of the use of the alleged trade mark in a single sale and none of the dealings in clothing appear to me to be anything but incidental to a very commendable educational or community-service project. 

There is no dispute that the device in question has been applied to shirts and caps.  However, that was not done with any apparent commercial motive or intention or as an indication of trade origin.  Consistent with what the applicant's former solicitor has said, the applicant's uses appear to be educational, at the expense of commercial.  I do not think that this sort of transaction, without more, amounts to use, as an indication of trade origin of the goods in question, of the trade mark for which the applicant seeks registration.

The applicant and its licensee are clearly not interested in conducting a business in clothing, and have been quick to reassure the opponent of this.  Nor are they conducting any business in which the distribution of clothing could be seen as part of, or ancillary to, some other commercial activity.  Indeed, I will note at this point that Mr Anese stressed that the opponent does not object to the present activities of the applicant.  It was the placing of the applicant's mark onto the register, as a bona fide trade mark alongside its own, that the opponent objected to.

Beyond this, and in addition to what has been said about the intention behind the use of Giddy Goanna, the applicant has said not one word anywhere in relation to its other trade mark, Farmer Goanna.  Farmer Goanna appears, from what I can conjecture, to be no more than a character in some of the stories used to get across a message to children.  I am already satisfied that an intention to conduct a trade in goods is not any part of the applicant's brief.  However, the complete omission, in the evidence, of any reference to the trade mark FARMER GOANNA fortifies my conclusion in relation to that application.

I find that the opponent has successfully made out the ground of opposition that the applicant does not intend to use its marks as trade marks.  In terms of s 59, for completeness, I say that I am also satisfied that the applicant does not intend to assign them to a body corporate for use by that body as trade marks.

2. The opposed trade marks are deceptively similar to the opponent's own trade marks registered for the same goods

Under this heading, Mr Anese relied on s 44.  This provision reads:

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a)the applicant's trade mark is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar goods or closely related services; or

(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

"Deceptively similar" is defined in section 10: "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". Those words are simply a re-statement of the test under s 6(3) of the Trade Marks Act 1955.

The applicant's two registrations, numbers 447710 and 642573, both have priority dates earlier than the application.  Both cover at least clothing and headgear.  The matter comes down, therefore, to a comparison of the applicant's marks with the relevant trade mark registrations of the opponent.

opponent's registration 642573
Mr Anese noted the test, conveniently restated by Gummow J in Johnson & Johnson v Kalnin 26 IPR 435. The crucial test was that there must be no reasonable likelihood of deception and confusion among a substantial number of persons if the applicant uses his mark normally and fairly.

Mr Anese reminded me that the applicant's and opponent's trade marks both incorporate goannas.  According to Mr Anese, the idea of both marks is simply "goanna".  This, he said, would interlock with the fact that the words "giddy" and "farmer" in the applicant's marks were descriptive or evocative of either the goods or the nature of the intended users. 

There are of course many such well recognised examples of this principle in action: PAN/HYPERPAN, SOUTHERN MAID/WESTERN MAID, PERMALUX/PERMA.  These and other examples, with citations of appropriate authorities, are conveniently set down in Shanahan's Australian Law of Trade Marks and Passing Off, at p 181.

Mr Anese also reinforced his position by reference to a number of cases where registration of a distinctive element had precluded the subsequent registration of an elaboration on that theme: Coles Myer's Application 26 IPR 577 (BRATS/BONZA BRATS), Re Eau de Cologne 17 IPR 540 (MY MELODY/ MY MELODY DREAMS), and Sports Cafe Ltd v Registrar of Trade Marks 39 IPR 527 (SPORTS CAFE/ THE CIRCUIT SPORTS CAFE).

For my part, I am not convinced.  I agree with Mr Crowe, who argued that the opponent's trade mark showed a "real" goanna and was clearly memorable as such.  The opponent's mark also has unmistakable overtones, in the words OIL LINIMENT, of the medicinal business that was the genesis of the present business in clothing. 

The differences between the two marks are crucial, and at least as vivid in the recall as the similarities.  For all that there are precedents for refusal, the comparisons on which Mr Anese relied are not determinative for all marks. 

Here, the first impression, at issue in cases as diverse as Jafferjee v Scarlett (1937) 57 CLR 115, and Dial an Angel v Sagitaur Services Systems Pty Ltd 1990 AIPC 90-687, could not, in my view, be easily confused. As a practical thing, it is not a significant likelihood. There is no evidence to suggest that the opponent's device mark will be referred to simply as "goanna". If it is recalled simply by name, it is a "goanna liniment" mark. The additional speculations - "Goanna for farmers" etc - about the applicant's marks are not, in my view, particularly likely. I therefore conclude that there is no substantial risk of deception or confusion between either of the applied for trade marks and existing registration 642573.

opponent's registration 447710
Here, I think Mr Anese is on safer ground.  His client is entitled to full use of the word GOANNA as a trade mark on clothing.  I must assume a notional fair use of it, and of the applicant's marks, for any relevant goods - clothing, footwear and headgear.

No doubt many people will recall, quite clearly, the cartoon elements of the applicant's mark.  Those elements reinforce the words in the applicant's marks, "Giddy Goanna" and "Farmer Goanna" respectively.  The words, even without the cartoon devices, are strongly memorable and, in detail, are very different to the word GOANNA solus. At the outset, I note and appreciate the differences between the competing marks.  That, however, is not the end of the matter.  The established case law is that registration should be refused unless there is no reasonable, tangible risk of deception or confusion.  Undue carelessness is to be discarded, but the remaining diversity of perceptions is to be allowed for.

Against such a background, I note that the trade mark GOANNA is an unusual one.  The image of a goanna may not be seen by many people as particularly likely to be selected as a trade mark.  As a trade mark it is certainly what the High Court, in Southern Cross Refrigerating Co. v. Toowoomba Foundry Pty. Ltd., (1954) 91 CLR 592 at 608, called a mark of a " special character".

Nor does the opponent's mark have any device that could allow the stylised devices in the applicant's marks to be easily distinguished if recalled graphically, or even to inject an element of doubt.  The opponent's mark is simply GOANNA.  Even allowing for the fact that clothing is generally bought with the trade marks available for inspection, I am not satisfied that the risk of deception or confusion is low enough to be tolerable.  I believe that there are a significant number of people who would simply overlook the fact that GIDDY GOANNA or FARMER GOANNA (with or without device) was not GOANNA.  A second group of people would notice the difference but would conclude, for whatever reason, "there cannot be two GOANNA trade marks this close".  Taking both groups together, therefore, I find that the opposition, as based on registration 447710, succeeds in relation to both of the opposed applications.

3. Use of the applicant's marks would be contrary to law
Mr Anese based an argument, under this heading, on the proposition that use of the applicant's trade mark was, prima facie, an infringement of the opponent's registration.  He stressed that this did not require me to adjudicate a question of infringement.  That I certainly cannot do.  However, Mr Anese did stress that I was, prima facie, required to look at relevant law and form an opinion on relevant issues. 

It would not be the first time that either a hearing officer or an examiner of trade marks has been required to look at some other piece of legislation said to constrain the use of a particular mark.  In this case, Mr Anese simply argued that the use of the marks by the applicant would be contrary to the infringement provisions of the Trade Marks Act 1995.  However, I prefer to say that my finding on this ground has been overtaken by my conclusion that the applicant's marks are deceptively similar to registration 447710. 

4.  Use of the opposed trade marks would be likely to deceive or cause confusion
Here, Mr Anese relied on the prior reputation established through the extensive use of the trade mark in relation to medicinal products and, to a lesser extent, clothing.  This has been supported by promotional distribution of clothing to sporting groups and to prominent public figures.

Such a situation is dealt with under s 60, which provides that:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

I note Mr Murdoch's statement, in the evidence in support, that "regardless of any particular logo with which the GOANNA word mark has been used, the word GOANNA has always formed the prominent trade mark feature".  However, I agree with Mr Crowe that the evidence does not support that claim.  From the evidence before me, the opponent's reputation is bound up with the form of the trade mark used for medicinal products, and the similar trade mark used on clothing.

As it turns out, I do not need to decide the extent of the reputation of the opponent's trade mark.   That mark includes the prominent words "GOANNA" OIL LINIMENT, together with a realistic picture of a goanna.  That is very much after the style of the trade mark registered as number 642573.  I have already said, in terms of ss 10 and 44, that I am satisfied that trade mark 642573 does not resemble either of the applicant's trade marks to the extent that it would be likely to deceive or cause confusion.  That finding is equally applicable to the relevant mark of the opponent for the purposes of s 60.  Accordingly, I am also satisfied that the opponent has not established a ground under s 60.

The "discretionary" ground - dilution of trade mark rights.
"Dilution of trade mark rights" is not, in itself an appropriate ground of opposition under the Trade Marks Act 1995.  Mr Anese was, in my opinion, mistaken to argue it as a formal ground.  It can be used as an argument, but only under s 55 as a matter relevant to the decision of the fate of the application "having regard to the extent (if any) to which any ground on which the application was opposed has been established".  Having dealt with the allowable grounds on which Mr Anese relied, I turn to that question.

Conclusion:
In deciding an opposition, I must approach the matter in terms of s 55.  That is a general provision headed "Opposition Proceedings".  It reads:

55. Unless the proceedings are discontinued or dismissed, 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.

The specific grounds of opposition allowed under the 1995 act are framed to deal with, among other things, potential deception or confusion in the market, with unlawful conduct, and with disputes about ownership.  If none of them can be established, it seems to me that an opponent can have very little to fairly complain of.  In this case, however, the opponent has been successful in establishing two allowable grounds. 

That being so, I see no reason why registration should proceed.  In terms of s 55, therefore, I now decide that the application should be refused registration.  In so doing, I award costs, in accord with the official scale, to the opponent.

T. Williams

Hearing Officer.
13 November 1998