Parkside Towbars Pty Ltd v Tow-Safe Pty Ltd - [2011] ATMO 17

TRADE MARKS ACT 1995

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

Re:Opposition by Parkside Towbars Pty Ltd to registration of trade mark application 1233708 (37) - TOW-SAFE - filed in the name of Tow-Safe Pty Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Susan Gatford of counsel instructed by Macpherson & Kelley Lawyers.

Applicant: David Stewart of Wrays Lawyers.

Decision:

2011 ATMO 17

Section 66 amendment to notice of opposition: inclusion of s44 – amendment allowed. Section 52 opposition: grounds pressed under ss 42(b), 44, 60 and 62A - honest concurrent use – other grounds not established - application to proceed to registration under s44(3)(a) – No award of costs.

Background

On 16 April 2008, Tow-Safe Pty Ltd (“the applicant”) applied to register as a trade mark the expression “TOW-SAFE” (‘the applicant’s trade mark”) for:
Class 37: Maintenance, repair and servicing of trailer vehicles
The application was examined and its acceptance was later advertised in the Australian Official Journal of Trade Marks on 14 August 2008. On 14 November 2008, Parkside Towbars Pty Ltd (“the opponent”) filed a notice of opposition to registration citing grounds of opposition including sections 39, 41, 42(b), 43, 58, 59, 60 and 62A of the Trade Marks Act 1995 (“the Act”).
Once both parties had filed and served their evidence the applicant asked to be heard on the opposition. On 2 November 2010 an official notice was sent to both parties advising of the scheduled hearing date. On 15 November 2010, the attorneys for the opponent sought to amend the notice of opposition by including section 44 as a ground of opposition with reference to the opponent’s trade mark registration no. 766231. The applicant objected to the amendment of the notice of opposition and requested to be heard on this matter as well. Both parties filed and served further evidence in relation to the proposed amendment.

Evidence

Evidence in Support

Statutory Declaration of Gregory Thomas dated 8 May 2009 with exhibits GJT-1 to GJT-13 (“Thomas 1”).

Evidence in Answer

Statutory Declaration of Roland Dipple dated 9 February 2010 with exhibits RRD-1 to RRD-27 (“Dipple 1”).

Evidence in Reply

Statutory Declaration of Gregory Thomas dated 23 April 2010 (“Thomas 2”).

Further Evidence

Statutory Declaration of Roland Dipple dated 25 November 2010 with attached exhibit RRD-1 (“Dipple 2”).
Statutory Declaration of Noelene Treloar dated 30 November 2010 with exhibit NMT-1 (“Treloar”).
Statutory declaration of Roland Dipple dated 3 December 2010 (“Dipple 3”).

On 6 December 2010 in Canberra, as a delegate of the Registrar of Trade Marks, I heard the parties on both matters. Susan Gatford of counsel appeared for the opponent instructed by Macpherson & Kelley Lawyers, and David Stewart of Wrays Lawyers appeared on the applicant’s behalf.

Amendment of notice of opposition

Section 66 of the Act provides:

The Registrar may, at the request of the person who has filed an application (other than an application for the registration of a trade mark), a notice or other document for the purposes of this Act or at the request of the person’s agent, amend the application, notice or document:

(a) to correct a clerical error or an obvious mistake; or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the circumstances of the case to do so.
Note:For file see section 6.

With regard to subsection 66(a), it is unclear whether the purported omission of section 44 was a clerical error or mistake on the opponent’s part as the attorney who previously had carriage of the matter is no longer working for that firm. However, the current attorney for the opponent submitted that while they only recently became aware that the notice of opposition did not include section 44, the intention from the outset was to argue that ground. In support of this argument, a letter of demand from the opponent to the applicant dated 4 April 2008[1] specifically mentions the conflicting trade mark no. 766231. That letter of demand predates the filing (but not the Australian use) of the applicant’s trade mark. As section 44 is a commonly argued ground of opposition, I find it unlikely for an opponent with a registered trade mark not to pursue that ground, especially when its evidence specifically refers to the conflicting trade mark.
[1] Exhibit GJT-13 of Thomas 1.
The relevant principles in exercising the discretion under section 66(b) include the inconvenience to the relevant parties and the desirability of operating the trade mark system efficiently and without unreasonable delay.[2] It is in the public interest and the interest of the involved parties to address pertinent grounds at the opposition stage. Those interests can be balanced with the relative inconvenience to the parties and ensuring that the applicant has had the opportunity to address the additional ground. In this matter, the opponent did not need to serve further evidence to support the new ground and the applicant was given an opportunity to provide further evidence to address section 44. In the end, the hearing of the substantive matters under section 52 of the Act was not delayed as a result of the opponent’s requested amendment.
[2] Margaret Kerr, Kent Sasse, Henry Arthur Sasse and Toddler Kindy Gymbaroo Pty Ltd v Invecon Australia Pty Ltd [2008] ATMO 102 (24 December 2008 [at 11].
To refuse this amendment to the notice of opposition would likely result in an appeal de novo to the Federal Court where the s44 ground may be argued by the opponent. Such an approach on behalf of the Registrar would not be conducting a hearing “…with as little formality and technicality, and with as much expedition, as the requirements of the Act and these regulations and a proper consideration of the matters before the Registrar, allow.”[3] Considering the above factors, I am satisfied that it is appropriate in the circumstances to allow the opponent to amend its notice of opposition as requested under section 66(b) of the Act.
[3] Trade Mark Regulations 1995 Reg. 21.15(7).
I am satisfied that it is fair and reasonable taking into account all the relevant circumstances, to amend the notice of opposition and include the section 44 ground of opposition in relation to trade mark registration no. 766231.

Onus and Reasons

Of the grounds nominated by the opponent in the notice of opposition, the only grounds pursued at the hearing were sections 44, 42(b), 60 and 62A of the Act. In order to succeed in the opposition, the opponent bears the onus of establishing at least one of these grounds on the balance of probabilities.[4]
[4] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 at [22] to [26]).

Section 44 - Identical etc. trade marks

Section 44(2) of the Act relevantly provides:
Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
In support of this ground, the opponent is relying on its trade mark registration no. 766231: “TOWSAFE” (“the opponent’s trade mark”) filed on 1 July 1998 for Towbars.
On a side-by-side comparison of the trade marks it is evident that the only difference is the addition of a hyphen between the two words. I am of the view that the applicant’s and the opponent’s trade marks are substantially identical to each other. The disputed issue is whether the Maintenance, repair and servicing of trailer vehicles are services that are closely related to Towbars.
While the applicant submits that it only services and repairs trailers and has never fitted or manufactured a towbar, the consideration of the goods and services of the trade marks is a notional one. The question is whether the goods are “closely related” to the services, which is a broader concept than “similar” goods or “similar” services. In making the following findings, I have taken into account the oft-quoted elements for the comparison of closely related goods and services considered by the Registrar’s delegate in Re Aussat Pty Ltd[5].
[5] Re Aussat Pty Ltd (1993) 27 IPR 309 (at 311).
The maintenance, repair and servicing of trailers could very well involve work directly on the maintenance or installation of towbars. The provision of towbars and the maintenance/servicing of trailers would be of matching technical complexity and require similar technical training. The nature of the goods and services is such that one would cease to exist without the other, as the sole purpose of a towbar is to tow trailer vehicles. Both goods and services would be commonly offered by the one company, that is, a company selling towbars is also likely to provide the service of correctly installing those towbars to ensure that a trailer can be attached safely. For these reasons, I find it likely that average consumers of the goods or services would regard the trade marks as originating from the same or closely related industries and confusion would likely ensue.
I find that the opponent’s and the applicant’s trade marks are substantially identical and the applicant’s services are closely related to the opponent’s goods. There is likely to be a real and tangible danger of confusion in the Australian marketplace between the two trade marks and the requirements of section 44(2) have been met.

Honest Concurrent Use

The applicant has not used its trade mark prior to the filing date for the opponent’s trade mark (1 July 1998), but claimed that its trade mark may instead be registered under the provisions of honest concurrent use. Relevantly, subsection 44(3)(a) of the Act provides:
(3)        If the Registrar in either case is satisfied:
(a)         that there has been honest concurrent use of the 2 trade marks; or
(b)         that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

A summary of the criteria required to satisfy honest concurrent use was set out in the case of John Fitton & Co. Ltd’s Application[6] as follows:

The honesty of the concurrent use
- The extent of the use in terms of time, geographic area and volume of sales.
- The degree of confusion likely to ensue between the marks in question
- Whether any instances of confusion have been proved; and
- The relative inconvenience that would ensue to the parties if registration were to be permitted.

In relation to the honesty of the trade mark use, the applicant declares that at the time of coining the expression “TOW-SAFE” in 2001 it had never heard of the opponent. However, the evidence shows the parties were aware of each other by at least February 2007. The applicant was the opponent’s customer as indicated by invoices for its purchase of trailer hitches (or towbars) from the opponent in February 2007 and February 2008.[7] Those invoices also establish that the applicant was using TOW-SAFE as its business name at that time. The use of a trade mark may be honest even though it began with knowledge of the existence of the prior trade mark.[8] I am satisfied the applicant’s initial use of the trade mark was honest. Since approximately five years elapsed between coining the expression and the applicant becoming aware of the opponent’s trade mark, I find that the applicant’s decision to continue to use its own established trade mark was also reasonable.
[7] Thomas 1, Exhibit GJT12.
[8] McCormick & Co Inc v McCormick (2000) 51 IPR 102.
The applicant declares that it first began trading using the trade mark TOW-SAFE in 2001 and that the use has mainly taken place in Western Australia. The evidence shows business cards displaying the trade mark were purchased in August 2002. Since that time, the use has been continuous as evidenced by magazine advertising from 2003 to 2007. The length of the applicant’s use of its trade mark is therefore significant. In much of the advertising material the trade mark appears as rather than the words solus. However, the substitution of the letter “O” with the tow ball device simply illustrates the word and does not substantially affect the identity of the trade mark. Consumers are still likely to identify the services provided under the trade mark with the words “TOW-SAFE”.[9] As a result, I consider that use of the above composite mark amounts to use of the opposed trade mark.
[9] See E & J Gallo Winery v Lion Nathan Australia Pty Limited [2010] HCA 15 at [69].
In respect of the extent of use of the trade mark, the applicant’s use need not be greater than the opponent’s, provided that the trade mark use has real commercial value.[10] The applicant’s revenue indicates significant growth for a small business, and the advertising expenditure is small with some growth from 2002 until 2008. The applicant submits it has established significant goodwill by conducting free trailer and caravan checks and inspections in a Roadwise Initiative on behalf of Wanneroo council, by advertising on boats, and by participating as volunteers in Western Australian special needs group events.
[10] London Rubber Co Ltd v Durex Products Inc AIR (1959) Cal 56 [1963] SC 1882.
The degree of confusion between the trade marks is high. However, no actual instances of confusion have been provided by the opponent, despite both trade marks having been used concurrently in Western Australia for 6 to 7 years in relation to closely related goods and services. The opponent’s points to its recent acquisition of the trade mark and the resulting lack of evidence from the opponent’s predecessor in title. Either the opponent’s predecessor was happy to allow the trade marks to coexist or it did not fully realise the implications of the applicant’s use of TOW-SAFE for closely related services. The opponent prefers the latter explanation, stating:[11]
I have made enquiries from the immediate former directors of the Opponent and believe that they were not aware of the existence of the Applicant or its business. I am informed and believe that the invoices referred to in RRD-27 were issued by an employee of the Opponent who was unaware of possible trade mark implications.
[11] At Thomas 2, paragraph 14.
Justice Kenny[12] has stated that “the likelihood of confusion is a relevant but not determinative factor” and in “Buler” Trade Mark[13] Graham J said:
…the degree of likely confusion is relatively unimportant… provided the honesty of the applicant is established and it is otherwise just in all the circumstances that his mark should be registered.
[12] McCormick & Company Inc v McCormick [2000] FCA 1335 per Kenny J at 51.
[13] “Buler” Trade Mark [1975] RPC 275 at 289 (UK Reg).
Turning to the relative inconvenience to the opponent and applicant in this matter, it is evident that both parties have well-established businesses using their respective trade marks and have attained goodwill. The opponent’s evidence only indicates use of its trade mark in relation to a series of towbars sold under Parkside Towbars. If the applicant’s trade mark was to be registered, the opponent would have the option of rebranding a particular series of a product it sells under the “Parkside Towbars” brand. However, if the trade mark does not proceed to registration, the applicant may need to re-brand the name of its entire business which is clearly pervasive on all its advertising material. The inconvenience to the applicant would, in my view, be that much greater.
Despite the high likelihood of confusion, it is clear that the opponent and applicant have been concurrently operating in similar industries using substantially identical trade marks since around 2002. The applicant appears to be the smaller business but the evidence indicates that it has expended a large amount of time and effort in establishing its TOW-SAFE brand. As a consequence, I am satisfied that it is appropriate to apply the provisions of honest concurrent use (s44(3)(a)) in relation to the opposed trade mark. The ground of opposition under section 44 has not been established.
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.
The opponent bears the onus of establishing that on 16 April 2008, its trade mark enjoyed a level of reputation in Australia such that the applicant’s use of its trade mark would be likely to deceive or cause confusion in the marketplace.
The opponent conducts a business in Western Australia that manufactures, sells, and installs towbars, hitches, trailers and other vehicles.[14] The opponent declares that it (or its predecessors in title) has used its trade mark “TOWSAFE” in relation to towbars and hitches since 1995.
[14] Thomas 1, paragraph 11.
Despite this declaration, the exhibited documents do not establish use from as early as 1995. Thomas 1 contains a number of unsubstantiated assertions and bald statements about use and reputation in the trade mark. The opponent accounts for the lack of supporting evidence by explaining[15]:
When TriMas purchased Parkside (on 31 January 2008) many historical advertising documents were either taken by the previous owners of the Opponent or are unable to be found. However, I have been able to retrieve a proportion of documents used.
[15] Thomas 1, paragraph 42.
The documents that have been produced consist of a brochure from 2001, an undated “Parkside Towbars” brochure advertising a “Towsafe Series” of towbar, product catalogues from 2006 and 2007 for “towsafe hitch receivers” (“GJT5-6”), an undated plastic bracket (to protect the towbar) bearing the words “TOW-SAFE by Parkside”, pages from the opponent’s current website, and Yellow Pages advertisements from 2000, 2004 and 2005. All of the above examples show the use of the opponent’s trade mark in some capacity.
Despite the lack of compelling evidence, it is important to note that in McCormick v McCormick[16], Kenny J said:
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.
[16] McCormick & Co Inc v McCormick (2000) 51 IPR 102 at 127.
The advertising figures provided by the opponent, while substantial, are approximate and the opponent states[17] that:
Of the amounts spent, almost all of the expenditure would be for the promotion of the Opponent’s Marks or for materials predominately bearing the Opponent’s Marks.
[17] Thomas 1, paragraph 64.
According to the opponent, a substantial number of the “TOWSAFE” units were sold in the 2007-2008 financial year, but that financial year period overlaps with the applicant’s priority date of 16 April 2008. Those revenue figures are approximate and derive from the provision of the opponent’s goods under its trade mark. At the hearing, the applicant highlighted a possible discrepancy in the revenue figures. Nevertheless, the revenue generated from 2000-2008 is quite substantial.

Despite the sales and advertising figures, the extent to which the opponent’s trade mark was used remains unconfirmed. The examples that have been provided include the opponent’s trade mark, but are overwhelmed by use of its main trade mark “Parkside Towbars”. “TOWSAFE” is used as the name of a series of towbar products sold under the opponent’s “Parkside Towbars” brand. As a result, the opponent’s trade mark would have been less visible and exposed to fewer customers, and the strength of any demonstrated reputation in the trade mark would be consequently reduced. In addition, Mr Stewart pointed to the opponent’s Yellow Pages advertisements where the trade mark appeared as “Towsafe Hitches” alongside other products offered such as: “Air Bag compatible, Roo Bars, Bull Bars & Nudge Bars” in an identical font to those items. In this respect, TOWSAFE would be less likely to be seen by consumers as the opponent’s badge of origin used to distinguish its product.
For a trade mark which has been in use for approximately 15 years and allegedly generated substantial revenue, the examples of actual use of the trade mark are far from persuasive. I find that a sufficient reputation in the opponent’s trade mark on 16 April 2008 such that the use of the applicant’s trade mark would cause confusion in the Australian marketplace, has not been demonstrated. The ground of opposition under section 60 has not been established.

Section 42(b): Trade mark use contrary to law
An application for the registration of a trade mark must be rejected if:
(b) its use would be contrary to law.
Ms Gatford submitted that the applicant was in breach of section 120 of the Act (Infringement of Trade Marks) and the use of the applicant’s trade mark would therefore be contrary to law under section 42(b). The grounds under which a trade mark application may be opposed are set out under Part 5 Division 2 of the Act, and are exhaustive. While the wording of section 42(b) is not restricted to any particular legislation, it is debatable whether that section is intended to create an avenue to other sections of the same Act. Decisions[18] by the Registrar’s delegates vary on whether section 120 should be considered under section 42(b). Under section 125(1), an action for infringement “may be brought in a prescribed court” (prescribed courts are detailed under section 190). However, section 125(2) also says that: “Subsection (1) does not prevent an action for infringement of a registered trade mark from being brought in any other court that has jurisdiction to hear the action.”
[18] See Citizen Tokei Kabushiki Kaisha v Micro Forte Pty Limited [2003] ATMO 64; Jockey International, Inc v Darren Wilkinson [2010] ATMO 22.
Despite this exception, an opposition hearing before the Registrar is not a court hearing, so it is unlikely that the Delegate has the jurisdiction to hear a section 120 action by virtue of section 42(b). In any event, the wording and effect of section 120 is similar to sections 44 and 60 of the Act. If it were appropriate for me to determine s120 (and I am of the view that it is not), the issues have already been adequately covered by the other grounds of opposition.
Ms Gatford also argued that the use of the applicant’s trade mark would breach sections 52 and 53 of the Trade Practices Act 1974 (“the TPA”). A successful ground under section 60 may not reach the threshold necessary for misleading or deceptive conduct under the TPA. Conversely, if the opponent lacks the reputation in its trade mark sufficient to satisfy section 60, it is extremely unlikely that a finding of misleading or deceptive conduct will be reached.
In addition, the requirement that the use of the trade mark “mislead or deceive” is more onerous than to “confuse or deceive”. As I have found that the opponent’s trade mark does not have a sufficient reputation for the use of the applicant’s trade mark to create confusion or deception under section 60, the opponent’s mark is unlikely to be known by the “reasonably significant number of persons”[19] for its use to amount to misleading or deceptive conduct. Mere confusion or uncertainty in the minds of the public in the sense that they “would be caused to wonder whether… the two products came from the same source”[20] is not sufficient to breach section 52. I am not satisfied that the use of the trade mark “would, not “could” be contrary to law[21]. Similarly, without the requisite reputation having been demonstrated in the opponent’s trade mark, the applicant’s use of its trade mark would not falsely represent to the Australian consumer that the goods/services have the sponsorship or approval of the opponent. Section 53 of the TPA has therefore not been breached. I find that the use of the above trade mark would not be contrary to law and section 42(b) has not been made out.
[19] Weitmann v. Katies Ltd (1977) 29 FLR 336, 343
[20] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at p100.
[21] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at 32 [28].
Section 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.
The opponent pressed the allegation that the trade mark application was made in bad faith on the following bases: that the applicant had prior business dealings with the opponent, that it had knowledge of the opponent’s trade mark at the time of filing, and that it only applied for the registration of the trade mark when the opponent sought to assert the rights in its own trade mark.
In Dippl 1, the applicant attests (emphasis added):
The Applicant has been using in good faith the Applicant’s Trade Mark and the Applicant’s marks since 2001 in respect of the services that the Applicant provides.
The Applicant has done so in the knowledge of the Opponent and without there being any evidence of confusion between the Applicant’s services and the Opponent’s goods being demonstrated by the Opponent.
One reading of the above statement may lead to the conclusion that the applicant had knowledge of the opponent when it adopted its trade mark in 2001 and continued to use it regardless. However, the applicant later clarifies the above statement by declaring (in Dippl 3):
I had never heard of the Opponent at all before coining the brand “TOW-SAFE” and establishing the business of the Applicant.
Therefore, the applicant became aware of the opponent after coining its brand and establishing its business, but prior to filing this trade mark application. The opponent states that the “Applicant is also a customer of the Opponent and has purchased towbars and hitches from the Opponent.”[22] The tax invoices from February 2007 and February 2008 are proof of a prior business relationship between the two companies. The case of William Leith New Century Marquees[23] indicated:
…Counsel also pointed to UK cases that indicate that bad faith will be established where someone has applied to register a mark which he has previously recognized as the property of another with whom that person has a course of dealing or some other relationship.
[22] Thomas 1, paragraph 87.
[23] William Leith New Century Marquees (SRISO/018/00, UK Registry) p.9
While there has been a course of dealing between the two parties, it appears the applicant did not recognise the trade mark as being the property of the opponent. The applicant believes that “the goods supplied by the opponent (can be) easily distinguished from the services provided by the Applicant” and “The Applicant and the opponent do not compete in the same marketplace.”[24] While in my opinion that belief is unsound, the businesses have been operating concurrently without apparent confusion for a number of years.
[24] Dippl 1, paragraphs 56-57.
The business relationship between the applicant and the opponent’s predecessor in title was such that neither party appeared to be concerned with the other’s use of TOWSAFE until 2008. Shortly after the ownership of Parkside Towbars changed hands in January 2008 and the sale of the opponent’s products to the applicant on 12 February of that year, the opponent became aware of the applicant. A letter of demand was subsequently sent to the applicant on 4 April 2008 alleging infringement of the opponent’s trade mark. The response on 10 April 2008 from the applicant’s attorney was followed shortly by the filing of this trade mark application.
In some instances, this conduct from an applicant would be suspect. However, the applicant’s desire to seek statutory protection for its established trade mark which was under threat from a competitor is understandable.
In summary, the business dealings and prior knowledge of the opponent’s trade mark are not sufficient for a finding of bad faith in the circumstances of this application. The issue is whether a reasonable person standing in the shoes of the applicant would have been aware that he ought not to apply for registration. Or, as in Harrison v Teton Valley Trading Co[25] case:
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 bad faith by persons adopting proper standards.
[25] Harrison v Teton Valley Trading Co [2004] EWCA Civ 213; [2005] FSR 10 per Sir William Aldous [at 26].
I am not satisfied that the applicant’s decision to apply for registration of its trade mark would be regarded as bad faith by persons adopting proper standards. As a consequence, the ground of opposition under section 62A has not been made out.

Decision

Section 55(1) provides:
(1) 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.
Note: For limitations see section 6.
While the opponent established a prima facie section 44(2) ground under the Act, I direct that trade mark application no. 1233709 may proceed to registration under the provisions of paragraph 44(3)(a) after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that registration shall not occur until the appeal has been discontinued, or in the event of a decision from the court, that the application be subject to that order.

Costs

As the trade mark application has been allowed to proceed to registration under the provisions of honest concurrent use, it may be argued that both parties have had a certain measure of success. Accordingly, I decline to make an award and find that each party should bear their own costs of these proceedings.

Heath Wilson

Hearing Officer

Trade Marks Hearings

17 February 2011