PEM Studios Melbourne Pty Ltd v Kalliso Holding Pty Ltd
[2025] ATMO 176
•3 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by PEM STUDIOS MELBOURNE PTY LTD to registration of trade mark application number 2359091 (class 41) - PERDEKAMP EMOTIONAL METHOD - in the name of Kalliso Holding Pty Ltd
Delegate: | Anne Makrigiorgos |
Representation: | Opponent: Kelly Hazell Quill Pty Ltd Applicant: Kings Patent & Trade Marks Attorneys Pty Ltd |
Decision: | 2025 ATMO 176 Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 41, 42(b), 43, 44, 58A, 60 and 62A considered – no ground of opposition established – trade mark to proceed to registration |
Background
This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by PEM STUDIOS MELBOURNE PTY LTD (‘Opponent’) to registration of the following trade mark:
[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
| Trade mark number | 2359091 (‘Application’) |
| Trade mark | PERDEKAMP EMOTIONAL METHOD (‘Trade Mark’) |
| Applicant | Kalliso Holding Pty Ltd (‘Applicant’) |
| Filing date | 24 May 2023 (‘Relevant Date’) |
| Specification | Class 41: Advisory services relating to entertainment; Arranging and conducting of in-person educational forums; Arranging and conducting of seminars; Dissemination of educational material; Consultancy services relating to education; Education academy services; Education services; Advisory services relating to education; Educational advisory services; Health education; Providing facilities for educational purposes; Providing information, including online, about entertainment activities; Providing information, including online, about education activities; Provision of educational courses; Provision of educational information; Publication of educational materials; Arranging and conducting of workshops (training); Mentoring (education and training); Training (‘Applicant’s Services’) |
The Trade Mark was examined and advertised as accepted for possible registration on 23 November 2023.
On 23 January 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 22 February 2024, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 15 April 2024. No evidence was filed by either of the parties.
The parties were given the opportunity to either request an oral hearing or to file written submissions. While neither party elected to be heard, the Applicant requested a decision without a hearing. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I have decided this matter based on the particulars set out in the SGP.
Grounds and onus
In the SGP, the Opponent particularised grounds of opposition under ss 41, 42(b), 43, 44, 58A, 60 and 62A. The Opponent carries the burden of establishing at least one ground of opposition[2] on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the Relevant Date.[4]
Discussion
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [4] (Kitto J) (‘Southern Cross’).
Section 41
Section 41 relevantly provides (some notes omitted):
Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
A crucial issue in analysing a potential ground of opposition under s 41 requires consideration be given to the extent, if any, of a trade mark’s inherent adaptation to distinguish the goods and services. According to Kitto J in Clark Equipment Co v Registrar of Trade Marks this is assessed:
[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess- will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[5]
[5] 1964] HCA 55; (1964) 111 CLR 511, 514.
The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited[6] explained that the test for inherent distinctiveness under s 41 involves a two-step process. Firstly, to ascertain what is the ordinary signification of the trade mark in Australia to persons who will purchase, consume or trade in the goods.[7] Secondly, once the ordinary signification is established, to ask whether other traders might legitimately desire to use the trade mark, or some mark nearly resembling it, for the sake of its ordinary signification in respect of the same or similar goods.[8]
[6] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ) (‘Cantarella’).
[7] Ibid [70].
[8] Ibid [71].
What will inform this enquiry is how the word or words are understood by the target audience, being those who purchase, consume or trade in the goods and services. The relevant enquiry is whether the trade mark as a whole (i.e. the combination of elements in the manner in which they are arranged) is capable of distinguishing the relevant goods or services. When the trade mark consists of several elements, the enquiry is not whether each element is separately registrable.[9] Nor is it a requirement that the words comprising a trade mark be totally meaningless for a trade mark to be registrable.[10]
[9] Diamond T Motor Car Co’s Application (1921) 38 RPC 373, 380 (Lawrence J).
[10] Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 (Wilcox J).
In summary, the SGP alleges that the words in the Trade Mark are purely descriptive of training services taught in the field of theatre, screen and dramatic arts training, or training derived from such services. Other traders dealing in these services have a genuine need, without improper motive, to use the words Perdekamp Emotional Method, or similar expressions, to describe their services. The Trade Mark is thus not to any extent adapted to distinguish the Applicant’s services, let alone the broader array of services claimed in the Application.
The Opponent has not provided any evidence or made any submissions to support the claim that the Trade Mark is not inherently adapted to distinguish. There is no evidence that the Trade Mark indicates the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic of the Applicant’s Services. The word Perdekamp does not have a meaning in English[11] and while the words Emotional and Method are common English words, in the absence of any evidence in support of the statements made in the SGP, I am satisfied that the combination Perdekamp Emotional Method has no ordinary signification and is capable of distinguishing the Applicant’s Services. As such, I find that the Opponent has failed to establish the ground of opposition under s 41.
[11] Macquarie Dictionary and Oxford Dictionaries (online at 1 September 2025).
Section 43
Section 43 provides:
Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
To establish a ground of opposition under s 43, there must be an inherent connotation within the trade mark. As Gyles J in Pfizer Products Inc v Karam commented:
‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question... [12]
[12] [2006] FCA 1663, [53].
In Winton Shire Council v Lomas Spender J said:
Section 43 is directed to the mark itself. It is not concerned with any deception or confusion caused by the reputation in Australia of some other trade mark. That aspect of the matter is dealt with under s 60. [13]
[13] [2002] FCA 288, [19].
In Primary Health Care Limited v Commonwealth of Australia Jagot J stated:
Insofar as use of a trade mark would be likely to deceive or cause confusion is concerned (the s 43 issue, on which the respondents bear the onus):
(1) The section:
looks to the inherent qualities of the trade mark of which registration is sought for the purpose of identifying whether the use of the trade mark would be likely to deceive or cause confusion... (Woolworths at [79]).
(2) “In order for s 43 to apply, the Court must be satisfied that there is a reasonable likelihood of deception or confusion arising because of the connotation within the mark, having regard to the nature of the goods or services to which it is to apply and other relevant considerations” (McCorquodale v Masterson at [26]).
(3) The purpose of s 43:
is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks... (Pfizer Products at [53]).
(4) “Whether there is a likelihood of deception or confusion is to be answered ‘not by reference to the manner in which the applicant for registration has used its mark in the past, but by reference to the use to which it can properly put the mark if it becomes registered’: Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 at 362” (Scotch Whisky Association v De Witt [2007] FCA 1649; (2007) 74 IPR 382 (Scotch Whisky Association) at [52]). Deceptive similarity must be considered against the “background of the usages in the particular trade” (Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 410).
(5) “The probability of deception or confusion must be finite and nontrivial. There must be a ‘real tangible danger of its occurring’ - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1955] HCA 15; (1954) 91 CLR 529 (sic) at 594-5 per Kitto J” (Woolworths at [43]). As such, the mere possibility of confusion is insufficient (Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592 (Southern Cross Refrigerating) at 595). Further, that “exceptionally stupid or careless consumers might be confused does not suffice” (Scotch Whisky Association at [61]).
(6) “In order for s 43 to apply, the connotation must be clear and there must be a real and tangible danger that the trade mark, in the context of the relevant services, would be likely to deceive or cause confusion. It would be sufficient if there is ‘real and tangible danger’ of consumers having ‘reasonable doubt’ or being ‘caused to wonder’ about this issue: cf Southern Cross Refrigerating...at 595, per Kitto J” (Accor Australia at [269]).
(7) All surrounding circumstances must be considered including the circumstances in which the marks will be used, the circumstances in which the services will be provided, and the character of the probable users of the services (Southern Cross Refrigerating at 595).
(8) The test is not confined to a particular method of use of the marks; the question is “what can the applicant do if he obtains registration?” (Southern Cross Refrigerating at 595).[14]
[14] [2016] FCA 313, [17].
The operative test is the secondary meaning which arises from the reasonable expectations of the consumer after considering the meaning in the context of the goods or services provided. It does not follow that all trade marks containing descriptive matter would attract a s 43 objection. Only if there is a real and tangible danger that the trade mark would cause consumer’s expectations to be false and result in confusion as to the inherent nature of the goods or services themselves, would s 43 be triggered.
In summary, the SGP alleges that Perdekamp Emotional Method forms part of the Opponent’s name and is a core component of Opponent’s business services. The use of the Trade Mark in relation to acting training is likely to confuse the market as to the existence of an affiliation with the Opponent’s business, and/or implies the Opponent has endorsed the Applicant’s business and/or services.
Firstly, I note that the Opponent’s name does not contain any of the words Perdekamp Emotional or Method. Secondly the Opponent has not provided any evidence or made any submissions to support either of the claims that the Trade Mark is a core component of Opponent’s business services or that the use of the Trade Mark is likely to confuse the market as to the existence of an affiliation with the Opponent’s business, and/or implies the Opponent has endorsed the Applicant’s business and/or services. In fact, the Opponent has not provided any evidence or submissions regarding the nature of the Opponent’s business at all and nor has the Opponent provided evidence or submissions as to any secondary meaning implied by the Trade Mark. As such, I find that the Opponent has failed to establish the ground of opposition under s 43.
Section 44
Section 44 relevantly provides (some noted omitted):
Identical etc. trade marks
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
The SGP nominates the Opponent’s registration number 2256903 (‘Prior Mark’) details of which appear below:
| Trade mark | Services | Priority Date |
| PEM[15] | Class 41: Arranging and conducting of seminars; Conducting of cultural events; Cultural activities; Cultural information; Demonstration (for instructional purposes); Academies (education); Advisory services relating to education; Conducting of educational courses; Conducting of educational events; Dissemination of educational material; Educational and cultural advisory services relating to art; Educational seminars; Educational services; Entertainer services; Entertainment; Information services relating to education; Information services relating to entertainment; Instruction services; Presentation of live performances; Providing information in the field of entertainment; Providing information, including online, about cultural activities; Providing information, including online, about education activities; Providing information, including online, about entertainment activities; Teaching; Adult training; Advisory services relating to training; Providing information, including online, about training activities; Provision of training; Training; Vocational education; All of the aforementioned services relating to acting, theatre, media, professional development and wellbeing, and the arts; None of the aforementioned services relating to education and training in respect of machinery, or professional development in medical fields. | 17 March 2022 |
[15] Endorsement: Evidence and/or other circumstances provided under subsection 41(4).
To successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:
the Prior Mark has a priority date which is earlier than the Relevant Date and are held in a name other than that of the Applicant (‘first requirement’);
the Trade Mark is substantially identical with or deceptively similar to the Prior Mark (‘second requirement’); and
the Applicant’s Services are similar to the services of the Prior Mark (‘third requirement’).
I am satisfied that the priority date of the Prior Mark is earlier than the Relevant Date and that the Prior Mark is in a name other than the Applicant. Therefore, the first requirement is satisfied.
I move then to consider whether the Trade Mark is substantially identical with or deceptively similar to the Prior Mark. Under the s 44 ground, the SGP claims that the Prior Mark is an earlier similar trade mark and therefore I am required to consider both substantial identity and deceptive similarity.
I do not consider the Trade Mark to be substantially identical to the Prior Mark. Compared side by side as a whole,[16] the Trade Mark has obvious visual and aural differences to the Prior Mark and as a consequence, there is a total impression of dissimilarity.[17]
[16] The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, [13] (‘Shell’).
[17] Carnival Cruise Lines Inc v Sitmar Cruises Limited [1994] FCA 936, [62] (Gummow J).
Next, I will consider whether the Trade Mark is deceptively similar to the Prior Mark. Section 10 provides a definition of deceptively similar being that ‘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’.
Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[18]
[18] Shell (n 16).
The respective trade marks must be compared as wholes,[19] having regard to essential or distinguishing features,[20] and considering the marks visually and aurally, and in the context of the relevant surrounding circumstances.[21] What must be considered is the overall impression that the notional buyer, being a person of ordinary intelligence and memory, would likely have of the Trade Mark and the Prior Mark, having regard to the look, sound, and ideas conveyed by the respective marks, and allowing for imperfect recollection.[22]
[19] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50]. See also, Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).
[20] Crazy Ron’s Communications v Mobileworld Communications [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).
[21] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd [1989] FCA 124; (1989) 86 ALR 549, 589 (Gummow J).
[22] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).
In Southern Cross, Kitto J noted the following regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[23]
[23] Southern Cross (n 4), 594.
Deceived implies the creation of an incorrect belief or mental impression; ‘causing confusion’ may merely involve ‘perplexing or mixing up the minds’ of potential customers.[24]
[24] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).
In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side-by-side comparison of, on the one hand, the Trade Mark, and on the other, the Prior Mark. Rather, I am required to take all of the surrounding circumstances into consideration, including those in which the Trade Mark and the Prior Mark are used and the circumstances in which the services are and will be provided.
In my view, the Trade Mark is not deceptively similar to the Prior Mark. The Prior Mark is one word and the Trade Mark three. The only visual similarity between the respective marks is that the Prior Mark and the first word of the Trade Mark start with the letters PE. Other than that, visually, aurally and conceptually the respective marks are vastly different. Further, the mere fact that the first letters of the Prior Mark are the same as the first letters of the words that comprise the Trade Mark is not a sufficient basis to find deceptive similarity in this case. This is particularly the case in the absence of any evidence that PEM is commonly used as an abbreviation of the words that comprise the Trade Mark.
A consideration of deceptive similarity is not concerned with the mere possibility of deception or confusion between trade marks but a real, tangible danger of it occurring. After consideration of the stark differences between the respective marks and allowing for imperfect recollection, as a matter of impression and common sense the Trade Mark generates an overall visual, aural and conceptual impression of difference.
I am not satisfied that consumers viewing or hearing the Trade Mark would be caused to wonder whether the Applicant’s Services originate from the same trade source as the Opponent, or that the trade marks are otherwise connected in some way. I find that there does not exist a real, tangible danger of deception or confusion between the two. The s 44 ground is therefore not established.
Section 58A
Section 58A is only applicable where a prima facie ground of opposition has been established under s 44, and the Applicant has successfully overcome the ground of opposition by reliance on evidence of prior and continuous use under s 44(4).
The Opponent has failed to establish the ground under s 44. As such the ground under s 58A cannot be established.
Section 60
Section 60 provides:
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.
Note: For priority date see section 12.
Section 60 relies upon a likelihood of consumer confusion and/or deception occurring because of the reputation of another trade mark. What must be shown by the Opponent is at least one trade mark which had a reputation in Australia at the Relevant Date, and because of that reputation, use of the Trade Mark would be likely to confuse or deceive.
The SGP claims:
Trade mark no 2256903 has been in continuous use by the opponent from 10 October 2017, and the opponent has provided the following services, Arranging and conducting of seminars; Conducting of cultural events; Cultural activities; Cultural information; Demonstration (for instructional purposes); Academies (education); Advisory services relating to education; Conducting of educational courses; Conducting of educational events; Dissemination of educational material; Educational and cultural advisory services relating to art; Educational seminars; Educational services; Entertainer services; Entertainment; Information services
The Opponent has identified the Prior Mark and has claimed that the Opponent has a reputation in this trade mark in respect of the services identified in the SGP. As the Opponent has not put on any evidence, these claims are unsubstantiated.
Therefore, I am not satisfied that the Opponent had developed a reputation in the Prior Mark in respect of any goods or services including those identified in the SGP at the Relevant Date amongst any consumers. I find that the s 60 ground of opposition has not been established.
Section 42(b)
Section 42(b) provides that a trade mark must be rejected if its use would be contrary to law.
The SGP simply asserts ‘tort of passing off’. The Opponent bears the onus to establish that use of the trade mark would (not could) be contrary to law and therefore the Opponent must establish the elements of passing off. The Opponent has not provided any supporting evidence to support of a claim that the use of the Trade Mark would amount to passing off. Accordingly, the Opponent has not established its ground of opposition under s 42(b).
Section 62A
Section 62A provides:
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
As stated by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):
The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[25]
[25] [2012] FCA 81, [167].
In DC Comics v Cheqout Pty Ltd,[26] Bennett J noted that
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards
[26] [2013] FCA 478, [62].
The SGP claims:
The applied-for trade mark is purely descriptive of an acting method taught in the fields of theatre, screen and dramatic arts, or services derived from such training. Other traders dealing in these services have a genuine need to use the words 'Perdekamp Emotional Method', or similar expressions, to describe their services. The applicant has acted in bad faith by filing the application and seeking to unfairly restrain other traders, including the opponent, from marketing their services.
The Opponent’s claims are unsubstantiated. As the Opponent has not provided any supporting evidence or submissions that the Applicant’s filing of the Application falls below the standard of acceptable commercial standards, the Opponent has not established the ground of opposition under s 62A.
Decision
Section 55 relevantly provides:
Decision
(1) Unless subsection (3) applies to the proceedings, 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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade mark application number 2359091 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.
Costs
The Applicant sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations.
Anne Makrigiorgos
Hearing Officer
Delegate of the Registrar of Trade Marks
3 September 2025
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