Pinnacle Strategic Holdings Pty Ltd v Trustd Figures Pty Ltd

[2023] ATMO 200

TRADEMARKSACT1995

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

ReOpposition by Pinnacle Strategic Holdings Pty Ltd to registration of the trade mark subject of application 2094011 (35, 36, 41, 42) – agentDesk. (fancy) – in the name of Trustd Figures Pty Ltd

DELEGATE:                 Robert Wilson

REPRESENTATION:       Opponent: Written submissions only, prepared by Sladen Legal Applicant: Paolo Tatti of Aitken Partners

DECISION:                   2023 ATMO 200

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b) and 58 considered – neither established – whether copyright subsists in trade mark – trade mark may proceed to registration

Background

1.This decision concerns an opposition to registration of the trade mark which is the subject of the application for registration detailed below. The application is in the name of Trustd Figures Pty Ltd (‘Applicant’). The opposition was brought by Pinnacle Strategic Holdings Pty Ltd (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth).

TradeMark:

(‘Trade Mark’)

ApplicationNumber:

2094011

FilingDate:

5 June 2020

Specification:

Class     35:     (including)     business     administration; advertising analysis; accounting services

Class 36: (including) real estate affairs; financial affairs

Class 41: (including) provision of training and education

Class 42: (including) information technology services provided on an outsourcing basis

Full specification appears in the annexure to this decision.

(‘Applicant’s Services’)

2.Unless otherwise indicated, any references to sections or regulations below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively.

3.Following advertisement of the application’s acceptance in the Australian Official Journal of Trade Marks, the Opponent filed a Notice of Intention to Oppose registration of the Trade mark, followed by a Statement of Grounds and Particulars (‘SGP’). The SGP nominated grounds of opposition under ss 42(b) and 58. The Applicant subsequently filed a Notice of Intention to Defend.

Evidence

4. The Opponent filed Evidence in Support of its opposition, being:

·     Declaration made on 14 July 2022 by Adam Richards, the Director of the Opponent, with Exhibits AR-01 to AR-09 (‘Richards 1’); and

·     Declaration made on 13 July 2022 by Martin Lewis, an independent creative designer who produces digital graphic artwork and brand assets, with Exhibits ML-01 to ML-02 (‘Lewis declaration’).

5. The Applicant filed Evidence in Answer, being:

·     Declaration made on 24 October 2022 by Nicole Kayeleen Johnston, the Director of the Applicant, with Exhibits NKJ-01 to NKJ-51 (‘Johnston declaration’).

6. The Opponent filed Evidence in Reply, being:

·     Declaration made on 23 December 2022 by Adam Richards (‘Richards 2’).

7.Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. Both parties requested to be heard.

8.I am a delegate of the Registrar of Trade Marks, and in this capacity, I heard the matter on 20 November 2023. Paolo Tatti of Aitken Partners appeared on behalf of the Applicant. Mr Tatti’s oral submissions were supplemented by written submissions which were filed prior to the hearing. In the end, the Opponent chose to rely on its written submissions only. The Opponent’s written submissions were prepared by Sladen Legal.

The Opponent

9. According to Richards 1:

[The Opponent] is the holding company of Pinnacle Dynamics Pty Ltd which trades under the business name Pinnacle Strategic Consulting (‘the Business’). …

[The Opponent] was incorporated in 2005 and owns and holds the IP assets of the Business and licences the same IP assets to the Business for use. These IP assets include trade marks, domain names and software …

The principal function of the Business is the development and provision of web-based software and digital solutions predominantly for real estate agents and other participants in the housing and property management industries. …

The Business has been involved in distribution for sale of software support applications since approximately 2010, with our first market release occurring in 2012 under the name ‘AgentInspect’.

As we concluded our initial development phases for ‘AgentInspect’, [the Opponent], developed and created the trade mark ‘Agent Desk’ in 2012 to be used as a trade mark for software and related services.

1. Mr Richards declared that he is the sole Director and Secretary of both the Business and the Opponent, and that the Business is wholly owned by the Opponent.

Agent Desk Pty Ltd

1. An entity of particular relevance to this matter is Agent Desk Pty Ltd (‘Agent Desk’). It is noted that sometimes the company name is rendered with a space between ‘Agent’ and ‘Desk’, other times without. Both Richards 1 and the Johnston declaration address the formation of this company. There is no significant difference between the two accounts; the account from the Johnston declaration is reproduced here:

   In or around August or September 2018, I met Adam Richards again at a software training event. I had first met Mr Richards at a similar software training event approximately 20 years earlier. At this 2^nd event in 2018 Mr Richards mentioned he was contemplating setting up an outsourced trust accounting business; and was seeking the participation of an operations manager and trust accounting expert to establish and execute the concept. Mr Richards asked me if I might have interest in the role … I came to agree to initiate the business with Mr Richards. …

   Mr Richards and I settled on the company name AgentDesk Pty Ltd …

2. It is apparent from Richards 1 that Agent Desk was incorporated on 11 October 2018. The company extract provided in AR-06 shows the company name with the space.

3. Agent Desk was the original applicant for registration of the Trade Mark. A request to record the assignment of the Trade Mark to the Applicant was filed with the Registrar on 25 August 2021. The request was accompanied by a Deed of Assignment between Agent Desk (in liquidation) and the Applicant. The deed was executed on behalf of Agent Desk

by the liquidator. The deed refers to ‘Relevant IP’ which is defined to mean ‘the IP Rights set out, described or referred to in Schedule 1’. Schedule 1 provides details of the application to register the Trade Mark and includes a representation of the Trade Mark. The deed purports to assign all Relevant IP to the Applicant.

The Applicant

1. According to the Applicant’s submissions, the Applicant was incorporated on 3 May 2021. It is also stated that the Applicant was incorporated as the vehicle to purchase the business of Agent Desk and did not trade prior to purchasing Agent Desk.

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b) and 58. The onus of proof in an opposition rests upon the Opponent.1 The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2 The date at which the rights of the parties are to be determined is 5 June 2020, being the filing date of the application (‘Relevant Date’).3

Discussion

Section 42(b)

1. The relevant provisions of s 42 are reproduced below:

   42 - Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a) …

   (b) its use would be contrary to law.

2. The onus is on the Opponent to establish that use of the Trade mark would be, rather than could be, contrary to law on the balance of probabilities.4 The relevant time for assessing whether the use of the Trade mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.5

¹ Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

² Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

³ Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2] (Kitto J).

⁴ Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683 (Madgwick J).

⁵ Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).

1. The ground of opposition pursuant to s 42 was particularised in the SGP as follows:

   The Applicant or the Applicant’s predecessor in title did not create or author the copyright subsisting in the Trade mark. As the Applicant does not own the copyright subsisting in the Trade mark, the Applicant was not entitled to seek the registration of the Trade Mark and its use and registration is an infringement of the author’s copyright in breach of the Copyright Act 1978 (Cth) [sic] and therefore contrary to law.

2. The Opponent submitted that the use of the Trade mark by the Applicant would be contrary to s 36 of the Copyright Act 1968 (Cth) (‘CA’). Section 36 is reproduced below:

36 Infringement by doing acts comprised in the copyright

(1)Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

(1A)In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:

(a)the extent (if any) of the person’s power to prevent the doing of the act concerned;

(b)the nature of any relationship existing between the person and the person who did the act concerned;

(c)whether the person took any reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.

(2)The next three succeeding sections do not affect the generality of this section.

1. For s 36 of the CA to have application in the present matter, the Trade Mark must be at least one of a literary, dramatic, musical or artistic work.6 Further, the work must be an original work in which copyright subsists. The Opponent submitted that the Trade Mark is either (or both) an original artistic work or an original literary work owned by the Opponent. I am not satisfied that the Trade Mark is either an artistic work or a literary work for the following reasons.

Trade Mark is not an artistic work

1. The definition of an artistic work in s 10(1) of the CA states that ‘artistic work means a painting, sculpture, drawing, engraving or photograph, whether of artistic quality or not’. There is no suggestion by the Opponent that the Trade Mark is a painting, sculpture, engraving or photograph—and it seems unlikely that the Trade Mark would fall into any of those categories. This leaves the question of whether the Trade Mark is a drawing.

⁶ Copyright Act 1965 (Cth) s 36(1).

1. For something to be considered a drawing, ‘no great complexity or … artistic quality is required’.7 In George Hensher Ltd v Restawile Upholstery (Lancs) Ltd, Lord Simon said:

   Not only is artistic merit irrelevant as a matter of statutory construction, evaluation of artistic merit is not a task for which judges have any training or general aptitude.8

2. In a similar vein Megarry J stated:

   It may be that something may be drawn which cannot fairly be called a diagram or a drawing of any kind: a single straight line drawn with the aid of a ruler would not seem to me a very promising subject for copyright. But apart from cases of such barren and naked simplicity as that, I should be slow to exclude drawings from copyright on mere score of simplicity.

3. Section 10(1) of the CA states that ‘drawing includes a diagram, map, chart or plan’. The Trade Mark is none of those things; however, there are obviously things which would readily be considered drawings which do not fit into those stated categories. The Macquarie Dictionary relevantly defines ‘drawing’ to mean:

   1.   representation by lines; delineation of form without reference to colour.

   2.   a sketch, plan, or design, especially one made with a pen, pencil, or crayon.

4. It was declared in Richards 2 that the image below (‘Concept Logo’) was ‘made myself in Microsoft Word using fonts available in Microsoft Word’.

1. It was further declared that Mr Richards provided the Concept Logo to a graphic designer who then provided the Trade Mark. It is apparent that the Trade Mark is nothing more than the Concept Logo with the words ‘Real estate support services’ deleted.

2. The Trade Mark is not a drawing within the commonly understood meaning of the term. The Trade Mark is simply two words and a full-stop assembled using a word processor. It is possible that a collection of words, letters and numerals etc might result in an artistic work; such was found to be the case in Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd (‘Elwood’).9 That case concerned words on a t-shirt as shown in the image below (‘Elwood t-shirt’).

⁷ Woodtree Pty Ltd v Zheng [2007] FCA 1922, [29] (Heerey J).

⁸ [1976] AC 64, 91.

⁹ [2008] FCA 447 (Gordon J).

1. The collection of words on the Elwood t-shirt is a completely different work to the Trade Mark: this is far more than two common words assembled in the manner described by Mr Richards.

2. In light of the case law and reasons discussed, I am not satisfied that the Trade Mark is a drawing or other artistic work for the purposes of the CA; therefore, I am not satisfied that copyright subsists in the Trade Mark on that basis.

Trade Mark is not a literary work

1. In University of London Press Ltd v University Tutorial Press Ltd, Peterson J stated, ‘the words “literary work” cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high’.10 Nevertheless, unlike the assessment of artistic merit, the courts have felt themselves equipped to assess whether a work has sufficiently literary quality or not. Claims to copyright have, at different times, failed owing to a lack of novelty, inventive originality, and substantiality.

2. For material to be considered a literary work for the purposes of the CA it must be substantial enough to convey meaning.11 There have been a number of cases which considered whether collections of a small number of words were literary works. Some examples are:

   ^·     ‘Splendid Misery’ was found to be a combination of words which was ‘hackneyed and common’ and lacked invention;12

¹⁰ (1916) 1B IPR 186, 191.

¹¹ Exxon Corp v Exxon Insurance Consultants International Ltd [1981] 2 All ER 495.

¹² [1881] 18 ChD 76, 88.

^·     ‘The Man Who Broke the Bank at Montey Carlo’ was found to lack inventive originality and substantiality;13

^·     ‘Help-Help-Driver-in-Danger-Call-Police-Ph.000’ was found to be too insubstantial to be a literary work;14

·     In Elwood, discussed above, the words on the Elwood t-shirt were found to be too insubstantial to be a literary work.

1. In light of the case law and for the reasons discussed, I am not satisfied that the Trade Mark is sufficiently substantial to be considered to be a literary work; therefore, I am not satisfied that copyright subsists in the Trade Mark on the basis that it is a literary work.

Conclusion on s 42(b)

1. I am not satisfied that the Trade Mark is a work covered by s 36 of the CA. As this ground of opposition was based upon the premise that use of the Trade Mark would be contrary to s 36 of the CA this ground is not established.

Section 58

1. The ground based on s 58 included the following in the SGP:

   [The Opponent], the director of the Opponent, Adam Richards, and/or Pinnacle Dynamics Pty Ltd, a related entity of the Opponent, first used the same, or a substantially identical trade mark in Australia in relation to goods and/or services that are the ‘same kind of thing’ as the services specified in the Application. …

   The Opponent licensed the use of the Applicant’s Trade Mark to the Applicant for use. The Applicant was not authorised to file an application to register the Applicant’s Trade Mark in the Applicant’s name and is not entitled to seek its registration. …

   The Applicant or the Applicant’s predecessor in title did not design or author the copyright subsisting in the Applicant’s Trade Mark. [On this basis] the Applicant is not the owner of the Applicant’s Trade Mark and is not entitled to seek its registration. …

2. Section 58 is reproduced below:

Section 58 - Applicant not owner of trade mark

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

Note:       For applicant see section 6.

1. The question of subsistence of copyright in the Trade Mark has been dealt with, above, and need not be considered further here. For the purposes of s 58, the owner of a trade mark for particular good/services is the person who first used it in Australia, or first filed

¹³ Francis Day and Hunter Ltd v Twentieth Century Fox Corp Ltd [1940] AC 112 (Wright LJ).

¹⁴ Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) (2009) 81 IPR 525 (Emmett J).

a trade mark application in Australia, whichever is the earlier in respect of those goods/services. It is well established that in order to succeed under this ground of opposition the Opponent must establish three factors. These are:

^·that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent;15

·that the Applicant’s Services are the ‘same kind of thing’ as the goods and/or services for which the trade mark(s) relied upon by the Opponent was used;16 and

^·that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant.17

1. The Opponent has not asserted that a person other than the Agent Desk (the original applicant to register the Trade Mark) applied to register the Trade Mark earlier than the Applicant. The Opponent asserts that a person other than Agent Desk used the Trade Mark, or a substantially identical trade mark, in connection with services similar to the Applicant’s Services prior to the Relevant Date. In particular, the Opponent asserts four uses, being:

   Use 1

   From as early as February 2017 to August 2018, [the Opponent] had advertised for sale [the Applicant’s Services] under the domain name < (‘Agent Desk Domain’), as a redirection site to <agentinspect.com> (‘Agent Inspect Website’)), such that [the Opponent] was using ‘agentdesk’ as a trade mark with respect to some of [the Applicant’s Services].

   Use 2

   From as early as February 2017 to 2019, [the Opponent] had advertised for sale the AgentInspect software and related services under the domain ‘agentinspect.com.au’ and ‘agentinspect.com’, such that [the Opponent] was using ‘agentinspect’ as a trade mark with respect to [the Applicant’s Services].

   Use 3

   From at least 2 March 2019 (some fifteen months before the Relevant Date) [AgentDesk] was authorised to use the Trade Mark from and under the direct financial or quality control of [the Opponent] such that this use is attributable to [the Opponent] and not [AgentDesk] before the Relevant Date in respect of [the Applicant’s Services].

   Use 4

¹⁵ Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375 (Gummow J).

¹⁶ Re Hicks’ Trade Mark (1897) 22 VLR 636 (Holroyd, à Beckett and Hood JJ).

¹⁷ Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413 (McGarvie J).

In providing the words ‘agent desk’ to Mr Lewis for the purpose of engaging him to design the Trade Mark, Mr Richards (in his capacity as director of [the Opponent]) used the words ‘agent desk’ (being a substantially identical mark to the Trade Mark) in the course of trade with respect to services of the same kind as [the Applicant’s Services].

Consideration of Use 1

1. The Opponent submitted the Agent Desk Domain ‘was used as a trade mark by redirecting internet traffic flow from the Domain to the Agent Inspect Website’. It was declared in Richards 1 that the Agent Desk Domain was registered ‘at least as early as 2014’. Exhibit AR-04 to Richards 1 is declared to be ‘extracts of sourced from the Internet Archive Machine “Wayback” … which demonstrates use of the Trade Mark … as early as February 2017 to 2019 as a redirect to the Agent Inspect Website’. Exhibit AR-05 is declared to be ‘extracts of sourced from ... “Wayback”’.

2. A relevant portion of a screenshot which appears in Exhibit AR-04 is shown below.

1. In respect of Use 1, the Applicant submitted that the Agent Desk Domain was not redirected to the Agent Inspect Website in the manner asserted by the Opponent. In the Johnston declaration it was declared:

   Mr Richards’ Exhibit AR-04 clearly shows the use of [the Agent Desk Domain], not as a re- direct, but as a non-published testing site hosting a copy of [the Agent Inspect Website]. The design is not intended for public consumption; rather for information technology purposes as a location to host a copy of agentinspect.com for purely testing purposes.

2. Exhibit NKJ-52 to the Johnston declaration is declared to be

   a document of screenshots sourced from the ‘WayBackMachine’ … that illustrates how a true re-direction is displayed and functions and demonstrates that at all times [the Agent Desk

Website], prior to [Agent Desk’s] first creation of the website, for all intensive [sic] purposes was un-used commercially and was simply housing a separate test copy of [the Agent Inspect Website].

1. A relevant portion of the screenshot which appears in NKJ-52 is reproduced below:

1. I am not satisfied that the Agent Desk Domain was used to redirect internet traffic flow in the manner asserted by the Opponent. Neither does the appearance of the website in the manner shown in Exhibit AR-04 constitute use of the Agent Desk Domain as a trade mark. For these reasons I am not satisfied that Use 1 constitutes use of the Trade Mark for the purposes of s 58.

Consideration of Use 2

1. The Opponent submitted that it was the first to use the word mark ‘agentinspect’ and/or the device trade mark shown below (‘Agent Inspect Trade Marks’). For this use to be considered use of the Trade Mark, the Agent Inspect Trade Marks must be substantially identical to the Trade Mark; the Opponent submitted that this is so.

1. When considering ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd, Windeyer J said:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.18

¹⁸ [1963] HCA 66, [12].

1. A finding of substantial identity ‘requires a total impression of similarity to emerge from a comparison between two word marks’.19 ‘Identical’ has been held to mean, ‘corresponding exactly in nature, appearance, manner, etc’.20

   The requirement of substantial identity recognises that the identity is not absolute but, as is clear from Shell, the question involves a consideration of the essential elements of the mark, the matters that are ‘exactly similar in everything that matters for all relevant purposes’ … 21

2. The ‘agent’ element common to the Agent Inspect Trade Marks and the Trade Mark is not sufficiently distinctive in connection with the Applicant’s Services that on a side by side comparison the ‘inspect’ and ‘desk’ elements can be discounted—those elements matter. As a result, there is a total impression of dissimilarity that emerges from the comparison and the respective trade marks are not ‘exactly similar in everything that matters’. Consequently, I am not satisfied that Use 2 constitutes use of the Trade Mark.

Consideration of Use 3

1. Use 3 is based upon the premises that copyright subsists in the Trade Mark and that there was an assignment of that copyright. I found, above, that copyright does not subsist in the Trade Mark; therefore, I am not satisfied that Use 3 constitutes use by the Opponent.

Consideration of Use 4

1. It is declared in Richards 2 that, ‘over 25 and 26 November 2018 … I provided the Concept Logo to Martin Lewis as part of my instructions to have the Trade Mark created by a professional designer’. In respect of Use 4 the Opponent submitted:

   [I]n providing the AgentDesk Mark to Mr Lewis to develop a logo which would ultimately be made available for use by [AgentDesk], the development of the Trade Mark between Mr Lewis and Mr Richards for Pinnacle was use in the course of trade with respect to all [of the Applicant’s Services].

   In providing the words ‘AgentDesk’ to Mr Lewis, [the Opponent] was using the Agent Desk Mark in respect of the scope of services it would be applied to once it was made available to [AgentDesk] …

1. It is noted that in the Opponent’s submissions, the plain words ‘Agent Desk’ are defined as ‘AgentDesk Mark’. However, according to Richards 2, it was not the AgentDesk Mark that was provided to Mr Lewis, but the Concept Logo. Use 4 is therefore based upon the premise that the provision of the Concept Logo to Mr Lewis by Mr Richards is use of the

¹⁹ Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, 391 (Gummow J) (‘Sitmar’).

²⁰ Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901, [58] (Bennet J).

²¹ Ibid (citation omitted).

Trade Mark in the course of trade. As will be seen, in the end, this distinction is immaterial.

1. The Opponent submitted:

   It is a well established that evidence of slight use is sufficient to establish ownership based on first use.22 Jacobs J in Thunderbird Products Corporation v Thunderbird Marine Products Ltd [‘Thunderbird’] observed that ‘any use at all on the Australian market will suffice’ to establish first user.23

2. Section 7 states that ‘use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services. Provision of the Concept Logo to Mr Lewis is not use in physical or other relation to any of the Applicant’s Services, or any services at all. This is so regardless of any intention regarding later use. Neither is the provision of the Concept Logo ‘use on the Australian market’ as referred to in Thunderbird. For these reasons, I am not satisfied that the provision of the Concept Logo is use of the Concept Logo as a trade mark—it is unnecessary, therefore, to go on to consider whether use of the Concept Logo would constitute use of the Trade Mark.

Conclusion on s 58

1. I am not satisfied that any of the uses relied upon by the Opponent constitutes use of the Trade Mark by a person other than the Applicant, or Agent Desk. This ground of opposition is, therefore, not established.

Decision

1. Section 55 relevantly provides:

(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.

1. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, trade mark 2094011 may proceed to registration after one month from the date of this decision. If the Registrar is served with a notice of appeal before that time,

22 Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56, [169] (Greenwood, Besanko and Katzman JJ) (‘Accor’).

²³ [1974] HCA 51, [16].

I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

1. The Applicant sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Robert Wilson Hearing Officer

Delegate of the Registrar of Trade Marks 5 December 2023

Annexure

The Applicant’s Services

Class 35: Business administration; business advisory services relating to the management of businesses, including real estate businesses; business management services; advertising analysis; provision of assistance with creating and placing advertising, including for real estate agents; administration relating to marketing; administration relating to sales methods; business administration advisory services; business consultancy relating to the administration of information technology; outsourcing services (business assistance); outsourced administration of companies; accounting services; computerised accounting services; outsourced accounting services; bookkeeping services; computerised bookkeeping services; outsourced management of cash accounts; tax services (business management and accountancy services); business auditing; payroll services; payroll advisory services; calculating and paying of commissions to personnel; assistance with, preparation and lodgement of tax documentation; corporate reporting services; business and company record keeping services; arranging of contractual trade services for others; company record-keeping; risk management consultancy (business)

Class 36: Real estate affairs; advisory services relating to operation of real estate agencies; consultancy services relating to real estate and operation of real estate agencies; outsourced real estate agency services; provision of real estate administration services; management of real estate; providing information, including online, in relation to real estate and real estate affairs; appraisal of real estate; financial affairs; provision of financial advice and assistance; superannuation services; provision of advice in connection with superannuation; research services relating to real estate; providing information, including online, about financial affairs and superannuation, including for operators of real estate agency services; trust accounting services; provision of trust accounting advice

Class 41: Provision of training and education, including in relation to real estate affairs and the operation of real estate agencies; educational services; training services; training consultancy services; provision of training courses; training in relation to operation of software

Class 42: Information technology services provided on an outsourcing basis; advisory services in relation to IT systems; IT helpdesk services; online provision of web-based applications (non-downloadable); software as a service (SaaS); online provision of software in relation to real estate affairs