Peter Alexander Sleepwear Pty Ltd v Harmont & Blaine SpA

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Peter Alexander Sleepwear Pty Ltd to extension of protection under regulation 17A.33 of the Trade Marks Regulations 1995 of trade mark number 2194738 (International Registration number 1602806) (classes 18, 25 & 35) – harmont&blaine (fig.) - in the name of Harmont & Blaine SpA

Delegate:

Tracey Berger

Representation:

Opponent: Peter Creighton-Selvay of Counsel, instructed by DLA Piper

Holder: Jessie McKenzie of Counsel, instructed by Griffith Hack

Decision:

2024 ATMO 54

Trade Marks Act 1995 (Cth) – opposition to extension of protection under regulation 17A.33 – ss 42(b) and 60 pursued – s 60 established – extension of protection refused

Background

This is a decision on the opposition under reg 17A.33 of the Trade Mark Regulations 1995 (Cth)[1] to the extension of protection of International Registration 1602806 designating Australia under trade mark number 2194738 (‘IRDA’) in the name of Harmont & Blaine SpA (‘Holder’) for the trade mark detailed below:
[1] Any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
Trade Mark:
Filing Date:  26 April 2021
Priority Date:  16 April 2021
Specification:                  Class 18: Bags; travel baggage; handbags; clutches [purses]; valises; pocket wallets; leather purses; purses; school bags; document cases of leather; travelling trunks; key-cases of leather and skins; vanity cases, not fitted; garment carriers; rucksacks; umbrellas; walking sticks; saddlery
Class 25:Clothing; coats; mantles; raincoats; dust coats; pelisses; dresses; suits; skirts; jackets [clothing]; knitwear [clothing]; trousers; short sets [clothing]; bermuda shorts; denim jeans; waistcoats; shirts; tee-shirts; tops [clothing]; chemisettes; jerseys [clothing]; sweaters; blazers; cardigans; stockings; socks; underwear; corsets [underclothing]; brassieres; underpants; nighties; shift dresses; pyjamas; bath robes, bathing suits; coverups; sunsuits; blousons; waterproof clothing, parkas; cagoules; gym suits; neckties; scarves; shawls; mufflers [clothing]; foulards [clothing articles]; caps being headwear; hats; hoods [clothing]; gloves [clothing]; puttees; footwear; beach shoes; sports shoes; boots; shoes; slippers.
Class 35:Retail services, provided also on-line, in relation to cosmetics, perfumes, solid perfumes, antiperspirants [toiletries], soap, soaps in liquid form, cakes of toilet soap, bath foam, dentifrices, shampoos, ethereal oils, hair care lotions, permanent waving and curling preparations, cosmetics in the form of gels, tints for the hair, face creams for cosmetic use, mascara, eyeliner, eyelid shadow, make-up pencils, facial packs for toilet purposes, lipsticks, make-up foundations, body cream, nail varnish, preparations for reinforcing the nails, nail varnish removers, oils for cosmetic purposes, suntan creams, prescription eyeglasses, sunglasses, spectacle frames, lenses for eyeglasses, contact lenses, spectacle cases, spectacle chains, optical apparatus and instruments, flip covers for smart phones, cases adapted for computers, cases adapted for mobile phones, leather cases for mobile phones, mobile telephone cases made of leather or imitations of leather, leather cases for smartphones, leather cases for tablet computers, bags adapted for laptops, carrying cases for cellular phones, electronic book reader covers, cases for spectacles and sunglasses, cases for smartphones, cases for tablet computers, cases for telephones, camcorder covers, flip covers for tablet computers, covers for tablet computers, mobile telephone covers made of cloth or textile materials, tablet computers, mobile telephones, cell phone straps, hands-free headsets for cell phones, headsets for mobile telephones, wireless headsets for use with mobile telephones, cell phone covers, flip covers for mobile phones, usb flash drives, usb chargers, e-books, smartwatches, waterproof cases for smart phones, smartglasses, smartphones in the shape of a watch, wearable smart phones, smartbands, smartphones, wristwatches, pocket watches, alarm clocks, digital clocks, clock cases, watch chains, watch glasses, watch bands, chronographs for use as timepieces, jewellery, paste jewellery, bags, travel baggage, handbags, clutches [purses], valises, pocket wallets, leather purses, purses, school bags, document cases of leather, travelling trunks, key-cases of leather and skins, vanity cases, not fitted, garment carriers, rucksacks, umbrellas, walking sticks, saddlery, apparel fabrics, textiles for furnishings, towels of textile, bath linen, except clothing, linens, bed linen, table linen not of paper, bed blankets, bed throws, covers for cushions, textile tissues, pillowcases, sheets [textile], furniture coverings of textile, cloth, curtains of textile or plastic, table napkins of textile, fabrics for textile use, clothing, coats, mantles, raincoats, dust coals, pelisses, dresses, suits, skirts, jackets [clothing], knitwear [clothing], trousers, short sets [clothing], bermuda shorts, denim jeans, waistcoats, shirts, tee-shirts, tops [clothing], chemisettes, jerseys [clothing], sweaters, blazers, cardigans, stockings, socks, underwear, corsets [underclothing], brassieres, underpants, nighties, shift dresses, pyjamas, bath robes, bathing suits, coverups, sunsuits, blousons, waterproof clothing, parkas, cagoules, gym suits, neckties, scarves, shawls, mufflers [clothing], foulards [clothing articles], caps being headwear, hats, hoods [clothing], gloves [clothing], puttees, footwear, beach shoes, sports shoes, boots, shoes, slippers.
(‘Holder’s Goods and Services’)
As required by the Trade Marks Act 1995 (Cth)[2], the IRDA was examined, accepted for possible extension of protection and advertised for opposition purposes on 17 September 2021.
[2] Each reference to a section in these reasons is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) and each reference to a regulation in these reasons is a reference to a section of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Opponent filed a Notice of Intention to Oppose the IRDA on 27 October 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 24 November 2021. The Holder filed Notice of its Intention to Defend the IRDA from opposition on 14 February 2022.
On 16 May 2022, the Opponent filed its evidence in support of the Opposition consisting of a Declaration of Judy Coomber, Managing Director of the Opponent, made on 12 May 2022 with Exhibit JC-1 and Confidential Exhibit JC-2 (‘Coomber 1’). The Holder then filed its evidence in answer on 18 August 2022 comprising a Declaration of Daniele Ondeggia, Chief Operating Officer of the Holder, made on 9 August 2022 with Annexures 1 to 6 (‘Ondeggia Declaration’). As evidence in reply, the Opponent filed a further Declaration of Judy Coomber made on 21 October 2022 with Exhibits JC-3 to JC-10 (‘Coomber 2’).
Once the evidence stage had ended, the parties had an opportunity to request a hearing or decision on the written record. The Opponent asked for a hearing by written submissions. The parties then entered into a 12 month cooling off period. After the expiration of the cooling off period, both parties asked to be heard at an oral hearing.
I heard this matter via videoconference as a delegate of the Registrar of Trade Marks on 5 March 2024. Prior to the hearing, the parties each filed a written summary of their submissions. At the Hearing, Peter Creighton-Selvay of Counsel, instructed by Brigette Ciampoli and Nicole Harrowfield of DLA Piper appeared for the Opponent. Jessie McKenzie of Counsel, instructed by Gavin Adkins and Sally Shrimpton of Griffith Hack appeared on behalf of the Holder.
Grounds and Onus
The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A. At the hearing, the Opponent abandoned the s44 and 62A grounds of opposition and pursued only the grounds under ss 42(b) and 60.
The Opponent bears the onus of establishing one or more of the grounds of opposition on the balance of probabilities.[3] The time at which a ground of opposition must be established is the filing date of the application being for registration 26 April 2021 although the rights of the parties are to be assessed as at the priority date of 16 April 2021 (‘Relevant Date’) for the purpose of s 60.
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
Opponent’s Evidence
The Opponent was founded in 1987 and describes itself as a ‘lifestyle company’ which designs, produces, distributes and sells a wide range of goods including clothing, footwear, headgear, pet products, personal care products, eye masks, phone covers, purses, bags, wallets, passport holders, cosmetic cases, luggage tags, shoe care kits, kitchen items, homewares, candles, diffusers, heat pillows, bedding and bath products, toys, bibs, baby sleeping bags, printed items, gift cards and packaging/wrapping materials (‘Opponent’s Goods’). The Opponent’s Goods are sold through its 106 retail stores, online including since 2000 via its website at (‘Opponent’s Website’) and previously through Myer and David Jones. The Opponent’s Goods and retail services are collectively referred to as the ‘Opponent’s Goods and Services’.
In 1997, the Opponent adopted its dachshund logo shown below which it uses alone and in combination with the word trade mark PETER ALEXANDER:

(‘Opponent’s Logo’).

The Opponent’s Logo was first used in 1997 in relation to sleepwear and shapewear but has been consistently used across the Opponent’s Goods and Services since 2001. The Opponent contends that it has used the Opponent’s Logo extensively in relation to 90% of the Opponent’s Goods in many different ways for a wide range of goods. Coomber 1 annexes various examples of use of the Opponent’s Logo including on labels, swing tags, door handles to the stores, store signage, packaging, catalogues, the Opponent’s Website, social media accounts as well as printed, embroidered and embellished on garments in different sizes, locations and orientations. The Opponent claims that its logo is an ‘omnipresent part of the Opponent’s branding strategy’. To reinforce the association by consumers of the Opponent’s Logo with the Opponent, the Opponent also utilises images of dachshunds in numerous aspects of its retail services including on the Opponent’s Website, in advertising campaigns and on carry bags.
Sales of the Opponent’s Goods are extremely substantial and the Opponent invests considerable sums annually in promoting its goods and retail services. Examples of third party media articles about the Opponent and the Opponent’s own promotional activities are provided.
Coomber 2 details online enquiries conducted to demonstrate that the Holder does not have a physical presence in Australia, provides updated information about the Opponent’s business including stores, revenue and advertising figures and annexes the Holder’s evidence in answer filed in the Opponent’s opposition to the Holder’s New Zealand application for the Trade Mark.
Holder’s Evidence
The Holder is an Italian company founded in 1995 specialising in the design, production and distribution of premium casual apparel and accessories with a distribution network of 99 monobrand stores, 464 multibrand boutiques and 58 department stores across 34 countries.
The Holder is the owner of the following Australian registration:

Number

Trade Mark

Priority Date

Classes

1255501

(‘Holder’s Earlier Mark’)

4 Dec 2007

3, 9, 14, 18, 24 & 25

The Ondeggia Declaration claims that the Holder’s Earlier Mark has been continuously used in Australia since 2001. A single invoice dated 20 June 2001 issued by PDM srl which does not feature the Trade Mark is provided in support of this claim. The Trade Mark is a ‘refresh of the Holder’s Earlier Mark’.
Examples of use of the Trade Mark on packaging, labels, swing tags, on social media and in catalogues which the Holder claims circulate in Australia are provided. Annual revenue from online sales of the Holder’s Goods bearing the Trade Mark for 2012 to 2016 in Australia is specified (which I note is minimal) and as well as global revenue from 1995 to 2020.
Further, the Ondeggia Declaration provides a list of other Australian registrations for marks including or consisting of images of dachshunds. I note that there is no evidence that any of these marks are in use.
Discussion
Section 60
Section 60 provides:
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.
To establish this ground, the Opponent must establish:
(a) there was ‘another trade mark’;
(b) which had acquired a reputation in Australia before the priority date; and
(c) because of that reputation, the use of the Trade Mark would be likely to deceive or cause confusion.
This opposition ground was particularised in the SGP as follows:
At the priority date of the application for registration of the Trade Mark (Priority Date), the [Opponent's Logo] enjoyed a significant reputation in respect of a wide range of goods and services including clothing, footwear, headgear, accessories, personal care products, jewellery cases, bags, homewares, bedding, pet products, toys, cards, packaging and retailing (Opponent's Goods and Services) and that reputation continues today.
The Opponent adopted the [Opponent’s Logo] in 1997 and it has become an integral part of the Opponent's branding. The logo has appeared extensively on and in relation to the Opponent's products and services, and the Opponent has built up a high degree of exclusivity around the device of a dachshund in relation to the Opponent's Goods and Services, both as at the Priority Date and today.
The reputation enjoyed by the [Opponent's Logo] at the Priority Date meant that the [Holder’s] use of the Trade Mark at the Priority Date (and since that time) would be likely to deceive or cause confusion. Consumers and traders would perceive the Trade Mark as indicating goods or services which originate from, or otherwise have the approval of, the Opponent.
Reputation
Reputation in the context of section 60 refers to the ‘recognition of [the Trade Mark] by the public generally’.[4] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[5]
[4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’)
[5] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J).
There are a variety of ways the reputation of a trade mark may be established, including by demonstrating a significant number of people have been exposed to the trade mark,[6] or providing evidence of high volume of sales,[7] advertising expenditure or other promotion of goods or services to which the trade mark applies.[8] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[9]
[6] Ibid [118].
[7] McCormick (n 4) [86].
[8] Ibid.
[9] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J) ('Rodney Jane’).
Generally, the relevant reputation must be amongst a significant or substantial number of persons.[10] What amounts to a significant or substantial number of people is informed by the relevant market and the nature of the goods or services in question.[11]
[10] Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin, Goldberg JJ) (‘Renaud Cointreau’).
[11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).
In support of its claim to a reputation in the Opponent’s Logo, the Opponent relies on:
·the ‘lengthy period of sales’[12] of the Opponent’s Goods in connection with the Opponent’s Logo for more than 2 decades before the Relevant Date;
[12] Renaud Cointreau (n 10) [62].
·very substantial annual turnover of the Opponent;
·‘monumental’ sales of goods, 90% of which involve use of the Opponent’s Logo;
·use of the Opponent’s Logo in relation to the wide range of the Opponent’s Goods and Services;
·the numerous and diverse ways the Opponent’s Logo is used to give an ‘immersive dachshund logo experience’ including in three-dimensional door handles to stores;[13] dressing room hangers;[14] chocolates in the shape of the Opponent’s Logo,[15] use of the logo in different orientations, sizes and applications as illustrated by way of example below;
·substantial, sustained and widespread advertising and promotion;
·consistent and prominent use of dachshund images in connection with the marketing and sale of the Opponent’s Goods[16];
·reinforcement by mainstream media of association between the Opponent and Opponent’s Logo or dachshunds generally which refer to the Opponent’s Logo as the ‘famous dachshund logo’[17] or similar; and
·use of the Opponent’s Logo in conjunction or close proximity to other brands such as Glasshouse Fragrances,[18] Sesame Street[19], Marval superheroes[20] and other famous characters[21], or other words.[22]
[13] Coomber 1 Exhibit JC-1, pp 2, 3 and 145.
[14] Ibid p54.
[15] Ibid p143, p 151.
[16] Ibid pp1, 44, 74, 91-92, 104, 142, 153, 159 and 160 by way of example.
[17] Ibid pp 64, 171 and 176.
[18] Ibid p 34, pp 50, 52, 53 and 86 by way of example.
[19] Ibid p 37.
[20] Ibid p 87.
[21] Ibid p 25 (Bambi), p 37 (Garfield), p 38 (Winnie the Pooh).
[22] Ibid p 95
The Holder argues that the ‘character of the reputation is as important as the quantum’[23] and that the Opponent’s reputation in its logo is inseparable from the brand PETER ALEXANDER. The Holder also contends that many uses of the Opponent’s Logo are not use as a trade mark and that the logo is predominantly used with PETER ALEXANDER. Further, when the Opponent’s Logo is used separately from PETER ALEXANDER, it is in a setting where the consumer is already aware it is in the ‘Peter Alexander universe’ such as being in one of the Opponent’s stores, on the Opponent’s Website or its social media accounts. The Holder says the situation is similar to that in Community First Credit Union Limited v Bendigo and Adelaide Bank Limited[24] (‘Bendigo Bank’) where it was found that Bendigo and Adelaide Bank Limited had not established a reputation in the mark COMMUNITY BANK because in ‘almost all cases’ that mark appears with B BENDIGO BANK or BENDIGO BANK and ‘is rarely, if ever, used on its own.[25] In my view the present case differs significantly from Bendigo Bank. In particular, the nature of the marks in question is different and there are numerous examples of use of the Opponent’s Logo alone.
[23] Matthew Wherrett v Holley Performance Products [2004] ATMO 9, [21] (Hearing Officer Williams).
[24] [2019] FCA 1553 (Markovic J).
[25] Ibid [414].
I consider that the Opponent’s evidence demonstrates that the Opponent has extensively used, advertised and promoted the Opponent’s Logo in Australia for 20 years before the Relevant Date. By any measure, sales of the Opponent’s Goods in relation to the Opponent’s Logo is substantial with massive growth and the Opponent spends a considerable sum annually on marketing. Although there is a large market for the Opponent’s Goods, I am satisfied that the Opponent’s advertising and promotion reaches a significant proportion of the Australian public through various means including its stores, sizable number of visits to the Opponent’s Website, direct email marketing, social media accounts and third party media articles. The association of the Opponent with the Opponent’s Logo is also reinforced by the use of dachshunds in its marketing. Even though many of the Opponent’s sales and advertising also involve the PETER ALEXANDER brand, there is significant use of the Opponent’s Logo alone or with equal prominence. The use of the Opponent’s Logo has been of a longstanding, varied and extensive nature such that I believe the Opponent’s Logo has come to be recognised by consumers as indicating the Opponent’s Goods and Services even when used alone or with other indicia.

On my assessment of the Opponent’s evidence, I am satisfied that the Opponent had a reputation in the Opponent’s Logo for the Opponent’s Goods and Services, and that reputation is substantial particularly for clothing and wearables and the retail of such goods, at the Relevant Date amongst a significant section of the Australian public. I now turn to the question of whether, given that reputation, there is a real tangible danger of deception or confusion from use of the Trade Mark.[26]
[26] Monster Energy Company v Mixi Inc [2020] FCA 1398, [22] (Stewart J).
Likelihood of Deception or Confusion
The question of whether use of the Trade Mark is likely to cause confusion or deception is to be assessed by considering whether a notional consumer of the Holder’s Goods having an awareness of the Opponent’s Logo and having never encountered the Trade Mark is caused to wonder whether the Holder’s Goods and Services are associated with the Opponent.[27]
[27] Rodney Jane (n 9) [84(e)].
It was held in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd that:[28]
The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[28] [2010] ATMO 5, [39] (Hearing Officer D Lyons)
The Holder’s Goods and Services are essentially the same as the Opponent’s Goods and Services. Both being fashion items such as clothing and bags and the retail of such goods.
In terms of the similarities of the marks, the Opponent claims that given the similarities in the Opponent’s Logo and dachshund device of the Trade Mark (‘Dachshund Device’) and reputation in the Opponent’s Logo, the inclusion of harmont&blaine in the Trade Mark will not dispel a misconceived notion that there is some association or endorsement by the Opponent of the Holder’s Goods and Services offered under the Trade Mark The Opponent claims that the two dachshunds are strikingly similar in that both are stylised representations of a dachshund standing from a side view with the dog’s nose pointing forward and its tail extending backwards with the ear on the visible side flopped down. The Holder contends that its Dachshund Device is more realistic, represented as a solid form and that the text harmont&blaine is a clear, distinctive characteristic of the Trade Mark. I do not find the Holder’s arguments about the differences in the dogs to be persuasive given the diverse manners of use of the Opponent’s Logo which includes solid forms as well as the use of images of real dachshunds in its advertising and on carry bags.
The Opponent made a number of arguments that the present matter for consideration is akin to that in Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd (‘BBNT’).[29] This case involved a claim by Bed Bath N’ Table Pty Ltd (‘BBNT’) that Global Retail Brands Australia Pty Ltd’s (‘GRBA’) use of the mark shown below infringed its registrations for BED BATH N’ TABLE (‘BBNT Marks’), constituted passing off and contravened the Australian Consumer Law (‘ACL’):
(‘HOUSE B&B Mark’)
[29] [2023] FCA 1587 (Rofe J).
GRBA was found not to have infringed the BBNT Marks because the House B&B Mark is not deceptively similar to BED BATH N’ TABLE.[30] However, GRBA was found to have engaged in misleading and deceptive conduct and breaches of the ACL and engaged in passing off despite BBNT having no independent reputation in BED BATH or BED & BATH.[31] Given BBNT’s substantial reputation in the BBNT Marks and taking into consideration the context of GRBA’s use, Rofe J was satisfied that consumers would assume there to be some association between goods and services offered under the HOUSE B&B Mark and BBNT despite GRBA having a reputation in its mark HOUSE.
[30] Ibid [442].
[31] Ibid [120].
Applying the rationale of BBNT to the present circumstances, the Opponent claims that the risk of confusion or deception is higher as the Holder does not have any reputation in Australia, consumers will recognise the Dachshund Device as that of the Opponent and despite the words harmont&blaine will assume the Holder’s Goods and Services are a collaboration, cobranding or otherwise associated with the Opponent. The Opponent says that this is particularly the case because the Holder also uses its Dachshund Device alone in similar locations on clothing to the Opponent. According to the Opponent, the risk of deception is increased by the myriad of ways in which it uses the Opponent’s Logo in different locations on items, in different styles, and with different words or brands as the notational consumer will understand that variations in the depiction of the Opponent’s Logo do not affect the trade origin; all renditions of a dachshund logo for the Opponent’s Goods and Services indicate that they emanate from or are associated with the Opponent.
The Holder contends that the different ways in which the Opponent uses dachshund images weighs against a likelihood of confusion and that the situation here is different from that in BBNT. In particular, the Holder notes that one of the factors which Justice Rofe believed would reinforce the assumption that the House B&B Mark is associated with BBNT was the similarities in store get-ups[32] and change in the look of the stores bearing the HOUSE B&B Mark compared to the traditional HOUSE stores.[33] In this instance, the Holder says the context is different as PETER ALEXANDER is the major branding on the Opponent’s stores. However, this was only one factor considered in the immediate and broader contexts in which GRBA’s conduct was judged. Moreover, the test under s 60 as to whether there is a likelihood of deception or confusion is less stringent than that under the ACL or passing off.[34]
[32] Ibid [515].
[33] Ibid [517].
[34] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198 (Gibbs CJ). This case was decided under the superseded s 52 Trade Practices Act 1974 (Cth) the equivalent provision to the current s 18 of the ACL.
In my opinion, the effect of the Opponent’s use of dachshund images and devices in different ways is to reinforce the Opponent’s reputation in the Opponent’s Logo. I am satisfied that as a result of the Opponent’s reputation in the Opponent’s Logo that there is a real tangible risk that use of the Holder’s Trade Mark would result in confusion with the Opponent’s Logo in causing consumers to wonder if the Opponent is associated with the Holder’s Goods and Services.
Decision
The Opponent has established a ground of opposition under s 60. Accordingly, I refuse to extend protection to Australian designation number 2194838 (IR 1602806). If the Registrar is served with a notice of appeal, I direct that the disposition of the IRDA should otherwise be in accordance with the court’s order or discretion.
It is usual for costs to follow the event and I award costs against the Holder in accordance with s 221 in the amounts set out in Schedule 8 of the Regulations.
Tracey Berger
Hearing Officer
Delegate of the Registrar of Trade Marks
25 March 2024

Number	Trade Mark	Priority Date	Classes
1255501	(‘Holder’s Earlier Mark’)	4 Dec 2007	3, 9, 14, 18, 24 & 25

[2024] ATMO 54

25 March 2024