Re: Opposition by Adrian Moses to registration of trade mark application number 1888216 (class 41) - the World Cup Of Film in the name of Matutino Films Pty Ltd

[2020] ATMO 112

TRADE MARKS ACT 1995

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

Re:Opposition by Adrian Moses to registration of trade mark application number 1888216 (class 41) – THE WORLD CUP OF FILM - in the name of Matutino Films Pty Ltd

Delegate:

M. Cooper

Representation:

Opponent: Frankel Lawyers

Applicant: Self-represented

Decision:

2020 ATMO 112

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42, 58, 60 and 62A grounds pressed – section 58 ground established – registration refused.

Background

1.     This matter concerns an opposition by Adrian Moses (‘Opponent’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Matutino Films Pty Ltd (‘Applicant’):

Application Number: 1888216

Trade Mark:  THE WORLD CUP OF FILM (‘Trade Mark’)

Filing Date:     17 November 2017

Specification of Goods and Services:

Class 41: Organisation of competitions (education or entertainment); Management of entertainment services; Provision of entertainment services via an online forum; Video entertainment services; Video game entertainment services; Production of motion pictures; Production of television programs; Distribution of motion picture films (rental services); Distribution of television programmes (rental of programme material); Multimedia production, other than for advertising purposes; Publication of multimedia material online; Educational services; Conducting seminars; Conducting workshops (training); Motion picture production; Motion picture rental; Producing of motion pictures, plays and videos; Rental of films, motion pictures and film production equipment; Rental of motion pictures; Distribution (other than transportation) of television programmes; Pay television entertainment; Production of cable television programmes; Providing television programmes, not downloadable, via video-on-demand transmission services; Rental of television programmes; Television entertainment; Television programme distribution (other than transportation); Organisation and conducting of dance, music and other entertainment festivals; Cinema presentations; Conducting of exhibitions for entertainment purposes; Entertainment; Management of entertainment events; Organisation of contests (education or entertainment); Organising charitable fundraising events being the provision of entertainment, sporting and cultural services; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Conducting of exhibitions for educational purposes; Display of works of art (exhibitions, shows, museums, galleries); Organisation of exhibitions for cultural or educational purposes; Organisation of exhibitions for entertainment purposes; Publication of music; Music publishing services; Book publishing; Magazine publishing; Publishing by electronic means; Publishing of books; Publishing of stories; Providing digital music (not downloadable) from the Internet; Provision of non-downloadable games on the Internet; Electronic publication of information on a wide range of topics, including online and over a global computer network; Online (electronic) publication of news; Providing online videos, not downloadable; Publication of electronic books and journals online; Film production, other than advertising films; Production of audio and/or video recordings, other than advertising; Production of video recordings, other than advertising; Production of webcasts, other than advertising; Arranging of talent quests and contests; Arranging of award ceremonies; Career advisory services (education or training advice); Mentoring (education and training); Association services being the provision of training and education to members of the association; Organisation of promotions (entertainment events); Game services provided online (from a computer network); Movie rental services; Movie studios; Cultural activities; Event management services in relation to the organisation of educational, entertainment, sporting or cultural events; Management of cultural events; Organisation of entertainment events; Organising events for cultural purposes; Providing online electronic publications (not downloadable); Screenplay writing; Production of audio/visual presentations

(‘Services’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 12 April 2018 in the Australian Official Journal of Trade Marks.

3.     On 8 June 2018, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 5 July 2018, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under ss 42, 58, 60 and 62A of the Act. On 13 September 2018, the Applicant filed a Notice of Intention to Defend.

Evidence

4.     The Opponent filed its Evidence in Support (‘EIS’) on 24 December 2018. It consists of the declarations of the Opponent, Adrian Moses, dated 21 December 2019 with Annexures 1-19 (‘Moses declaration’) and Ben Pietor also dated 21 December 2019 (‘Pietor declaration’).

5.     The Applicant did not file its Evidence in Answer (‘EIA’) by the due date. In an earlier decision I declined to allow the Applicant’s late filed material into evidence.[1]

[1] Adrian Moses v Matutino Films Pty Ltd [2020] ATMO 91.

Opponent’s evidence

6.     In his declaration, Mr. Moses claims that in or around November 2014 he began working with Ben Pietor to develop his proposal for an international film-making competition entitled “20 Worlds – The World Cup of Film”. He outlines the development of the project and attaches various documents from 2015 to 2017 which reference the event variously as ‘The World Cup of Film’ or ‘The World Cup of Film-making’ and which are frequently accompanied by his registered trade mark ‘20 Worlds’[2]. He states that he met the Applicant’s director at film school and in December 2016 hired him to work on the project however they had several disagreements and in September 2017 he ended the relationship. He further claims that the Applicant had breached his copyright and engaged in passing off and misleading and deceptive conduct. In relation to s 62A, the Opponent stated that he believed the Applicant applied for the Trade Mark ‘because he [the Applicant’s director] was unhappy that I had ended our business relationship and he wished to cause me harm and difficulty in the continuing development of my project.’ He asserts that the Applicant was aware of his interest in the Trade Mark and its behaviour fell short of acceptable standards. Mr. Moses notes that he registered the domain name ‘worldcupoffilm.com’ in April 2017, and the Applicant registered ‘theworldcupoffilm.org’ in its name in November 2017.

[2] Registered Trade Mark no 1893214, also held by the Opponent.

7.     Mr. Pietor states that in or around June 2015 he and the Opponent ‘created the trade mark ‘World Cup of Film’ and another derivation ‘The World Cup of Film-making’ which ‘describe the project competition and event services and goods.’

Submissions

8.     Only the Opponent filed submissions. These are addressed further below.

Grounds, onus and standard of proof

9.     The Opponent bears the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[3]

[3] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

10. As noted above, the opposition grounds pursued by the Opponent are those under ss 42, 58, 60 and 62A of the Act.

11.     The time at which a ground of opposition must be established is the date of filing of the application for registration.[4] In this case that date is 17 November 2017 (‘the relevant date’).

Consideration and reasons

[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 58

12. Section 58 of the Act provides:

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.

13. Having regard to s 58, the Full Federal Court in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd identified the relevant principles.[5] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s trade mark, that this mark has been used in respect of goods and/or services that are ‘the same kind of thing’ as the applicant’s trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.

[5] (2017) 251 FCR 379, 390-1.

14.     The Opponent claims ownership of the trade mark ‘The World Cup of Film’. Therefore the requirement that the ‘other’ mark be identical or substantially identical to the Trade Mark is met.

15.     The Opponent’s SGP in relation to this ground states as follows:

The Opponent first used the trade mark in October 2015 and continuously since, in relation to the services of organisation of competitions; provision of entertainment services via an online forum; publication of multimedia material online; organisation of production and distribution of video recordings, motion pictures, television entertainment, cinema presentations and festivals; providing information, including online, about education, training, entertainment, entertainment and cultural activities; arranging award ceremonies, organisation of cultural and entertainment events, all before the priority date of the opposed Application.

16.     In written submissions the Opponent contended that he first badged his event/project as ‘The World Cup of Filmmaking’ on 15 October 2015. In May 2016 he began using ‘The World Cup of Film’ in relation to the services listed above in the SGP (‘Opponent’s services’). He submitted that the Applicant only became aware of the Trade Mark ‘when it was supplied to him by the Opponent on 14 December 2016 in a Marketing document created by the Opponent.’ He further claimed that the Applicant only applied for the Trade Mark after the Opponent informed him in September 2017 that he no longer wanted to work with him on the project.

Prior use

17.     In relation to the question of prior use, Deane J said in Moorgate Tobacco Co Ltd v Philip Morris Ltd (No.2):

The prior use of a trade mark which may suffice, at least if combined with local authorship, to establish that a person has acquired in Australia the statutory status of ‘proprietor’ of the mark, is public use in Australia of the mark as a trade mark, that is to say, a use of the mark in relation to goods for the purpose of indicating or so as to indicate a connexion in the course of trade between the goods with respect to which the mark is used and that person.[6]

[6] (1984) 156 CLR 414, 432.

18.     The various annexures[7] to the Moses declaration show his use of the phrase ‘The World Cup of Film’ over the period 2015 to 2017, much of which might be characterised as use in a descriptive sense. I also note that the Opponent’s trade mark ‘20 Worlds’ frequently accompanies the Opponent’s use of ‘The World Cup of Film’ however this does not necessarily deprive it of appropriate characterisation as trade mark use. As Murphy J accepted in Pinnacle Runway Pty Ltd v Triangl Ltd, ‘different layers of marketing can distinguish goods in multiple ways, with different degrees of strength and subtlety’[8] As the Court said in Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (‘Anchorage Capital’)

For present purposes we would emphasise the following two related points that emerge from the authorities: first, whether or not the use of a mark constitutes trade mark use depends on the context in which such use occurs; secondly, a mark may be used as a trade mark even though it simultaneously performs a number of functions only one of which is to act as a badge of origin.[9]

[7] See annexures 10,12, 16 and 19 to the Moses declaration.

[8] [2019] FCA 1662 [187].

[9] [2018] FCAFC 6 [56]

19.     Annexure 4 to the Moses declaration is a 2016 marketing/publicity brochure which illustrates the relationship between ‘20 Worlds’ and the ‘World Cup of Film’. The phrases are displayed side-by-side, with equal prominence, and describe ‘20 Worlds’ as ‘a modern sustainable, social enterprise film business model promoting cultural identity, local creative economy development, regional unity, and global skill sharing’ and ‘The World Cup of Film’ as the vehicle for ‘finding and funding twenty “culturally meaningful” feature-length films through an international competitive-event structure.’ In my view, this example demonstrates the use of ‘The World Cup of Film’ to identify the Opponent’s services and operates to distinguish those services from other film competitions. It indicates ‘a connexion in the course of trade’ between the services with respect to which the mark is used and the Opponent. As such I am satisfied that use of ‘The World Cup of Film” in the 2016 brochure constituted trade mark use by the Opponent.

20.   While the Opponent’s evidence of this use does not demonstrate actual delivery of the event, it does show a highly developed project proposal, promotional activities and the solicitation of sponsors/consumers for the supply of services in relation to it. As the Full Court stated in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd  ‘it is clear that there need not be a transaction (an actual dealing in goods or the provision of services) to ground “actual use”. Equally clearly, an offer to provide the services or an advertisement for the services is enough.’[10]

[10] [2017] FCAFC 56 [197]. See also [167-168].

21.     The evidence also indicates that, while the Applicant’s director was involved in the development of the project and that he and the Opponent lodged joint US applications for the Trade Mark[11], this involvement post-dated the Opponent’s first use of the Trade Mark in Australia.

[11] A USPTO search confirms the Trade Mark was applied for on 31 July 2017 in both names but was abandoned on 1 May 2018: accessed 16 June 2020.

22. In this context I have also had regard to the Pietor declaration (paragraph 7) which clearly intimates that he is joint author of the Trade Mark. It is unnecessary for me to make any findings in this regard however as the establishment of s 58 only requires that another person/entity has the earlier claim to ownership based on its use of the Trade Mark before the filing or use of an applicant’s mark, not that the opponent is that person or entity.

23.     The Opponent’s evidence satisfies me that he, or he and Pietor, coined and used the Trade Mark in relation to the Opponent’s services prior to the relevant date and before any use of it by the Applicant.

Same kind of thing

24.     As also noted above, in order to establish ownership, it is necessary to establish that the use claimed was ‘in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration.’[12]

[12] Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd [2018] FCAFC 6 [49].

25.     What constitutes goods or services ‘of the same kind’ was considered by Allsop J in Colorado Group Ltd v Strandbags Group Pty Ltd (‘Colorado’):

The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article. For example, use of a mark on hatchets or small axes, created proprietorship in relation to axes: Jackson v Napper 35 Ch D 160. This approach recognises ownership or proprietorship in a mark beyond the very goods on which the mark is used, to goods ‘though not identical... yet substantially the same’ (Hemming HB, Sebastian’s Law of Trade Marks (4th Ed) p 91) or ‘goods essentially the same... though they pass under a different name owing to slight variations in shape and size’ (Kerly DM and Underhay FG, Kerly on Trade Marks (3rd Ed) p 206). This approach is conformable with the terms of the 1995 Act.[13]

[13] Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 [88-9].

26.     The Services as designated generally describe a wide range of activities, cover a broad area, and appear to frequently overlap. Taking a practical view, they could be described, in summary, as encompassing the development, promotion and delivery of multimedia through a wide variety of means, including through competitions and awards, and involving educational and cultural elements. The Opponent’s evidence demonstrates the wide reach of the event he proposes, covering not just film, but also its distribution and promotion through a variety of media, including television and with a strong focus on mentoring and cultural diversity. Similarly, the evidence establishes Trade Mark use by the Opponent for the organisation, management and provision of entertainment services which embraces many of the other individually listed services such as ‘cinema presentations’ and ‘management of cultural events’. Therefore, I am satisfied that the Opponent’s evidence of Trade Mark use is in relation to Services, ‘though not identical... yet substantially the same’ as the Opponent’s services. 

27.     For the above reasons, I am satisfied that the Opponent has demonstrated, prior to the relevant date, use by a person other than the Applicant of another mark, identical to the Trade Mark, in relation to the same kind of Services as the Opponent’s services.

28.     Other designated Services however are not readily characterised as ‘the same kind of thing’. They include ‘Book publishing; Magazine publishing; Publishing by electronic means; Publishing of books; Provision of non-downloadable games on the Internet; Publication of electronic books and journals online; Game services provided online (from a computer network)’ which I will describe as the ‘identified Services’.

29.     In the circumstances, it is appropriate that I consider the additional grounds of opposition.

Section 60

30. Section 60 provides as follows:

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.

31.     Therefore, the Opponent must establish that the Trade Mark on which it relies had a reputation in Australia at the relevant date and that, because of that reputation, the Applicant’s use of the Trade Marks would be likely to deceive or cause confusion.

32.     The Opponent claimed in the SGP as follows:

The Opponent first used the trade mark in [sic] “The World Cup of Film” in March 2016 and continuously up to the present, on his Twitter page, marketing and proposal documents, websites and in presentations to organisations, businesses and consumers including without limitation, Screen Australia, Miller Tripods, UNESCO, Adobe, Sony Corp, Tracy Mair Publicity, etc, and has established a reputation for the following services in the film, television and entertainment market:  organisation of competitions; provision of entertainment services via online forums; publication of multi-media material online; organisation of the production and distribution of video recordings, motion pictures, television programmes and entertainment, cinema presentations and festivals; providing information, including online, about education, training, entertainment and cultural activities; arranging award ceremonies; and organisation of cultural and entertainment events. The above services were supplied using the trade mark “The World Cup of Film” before the priority date of the opposed Application being 17 November 2017, as the Applicant, via its director, Sacha Rodriguez, only became aware of the trade mark when it was supplied to him by the Opponent on 14 December 2016 in a Marketing document created by the Opponent. There is a real and tangible danger of deception or confusion by participants in the film, television and entertainment market between the Opponent’s trade mark and the Application, especially since the Applicant was engaged by the Opponent to work with the Opponent on the trade mark’s services prior to the priority date of the Application.

Reputation

33.     Kenny J’s remarks in McCormick & Co Inc v McCormick[14] in relation to s.60 and the measurement of reputation are relevant in this respect:

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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

[14] (2000) 51 IPR 102; [2000] AIPC 91-637; [2000] FCA 1335 [127].

34.     In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[15]

[15] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].

35.     The Opponent’s submissions in this respect reflect the SGP.

36.     The evidence demonstrated that the Opponent used the Trade Mark in his social media and in his several contacts with various entertainment industry personnel and companies, as well as UNESCO. While I accept that he may have been developing a reputation in the relevant market, the evidence falls far short of establishing that the Opponent’s mark was one of which a significant number of people in that market were aware at the relevant date.

37. It follows that I am not satisfied that at the relevant date the Opponent’s mark had acquired a reputation sufficient to enliven s 60(a). In the circumstances it is unnecessary to consider s 60(b).

38. The Opponent has failed to establish the s 60 ground of opposition.

Section 42(b) 

39. Section 42(b) of the Act provides:

Trade mark scandalous or its use contrary to law

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

(a) …; or

(b)  its use would be contrary to law.

40.     In its SGP the Opponent particularised this ground as follows:

Use of the trade mark would be contrary to law because the Opponent provided the trade mark to the Applicant on 14 December 2016 (before the priority date) in a promotional booklet that has the copyright notice in the Opponent’s business name on every page. The Applicant derived and copied the Application mark from the Opponent’s trade mark constituting an infringement of the Opponent’s copyright and therefore the Applicant’s use of the trade mark would be contrary to law.

41. In submissions the Opponent also asserted passing off and breaches of the Australian Consumer Law. As these alleged breaches were not particularised in the SGP I have not considered them.

42.     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[16].

[16] Advantage Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24, 28.

43. Regarding the breach of copyright claim, s 32(1) of the Copyright Act 1968 (Cth) relevantly provides that ‘copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author was a qualified person at the time when the work was made’. The only category in which the Trade Mark might qualify is as a literary work. As noted in Shanahan ‘copyright is unlikely to subsist in a word and even a short collocation of words will generally be too insubstantial to qualify as a literary work.’[17] The Opponent has provided no evidence or submissions suggesting how or why the Trade Mark should be regarded as a literary work within the meaning of the legislation. Consequently, I am not satisfied it has established that the Applicant’s use of the Trade Mark would be a breach of copyright and therefore contrary to law.

[17] Shanahan’s Australian Law of Trade Marks and Passing Off (6^th Ed, Online) (‘Shanahan’) [10.4005]

44. Accordingly, the s 42(b) ground of opposition has not been established.

Section 62A

45. Section 62A of the Act 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.

46.     The Opponent particularised this ground as follows:

The Opponent engaged the Applicant in December 2016 to provide services associated with the trade mark created and used by the Opponent since October 2015. The Applicant and His USA attorney encouraged the Opponent to apply for registration of the trade mark in the USA in their joint names in July 2017 (see which has since lapsed. The business relationship between the Opponent and the Applicant ceased in September 2017. The Applicant made the Application in Australia in November 2017 in bad faith to hinder the business of the Opponent.

47. Section 62A was considered in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Fry Consulting’) where Dodds-Streeton J relevantly said:

It is clear that bad faith for the purposes of s 62A must be at the time of the application in this case (22 December 2006) and must relate to the making of the subject of that application… Further, the onus of proving bad faith rests on the Opponents. While the seriousness of an allegation of bad faith that ‘impugns the character of an individual or collective character of a business...’ requires correspondingly cogent evidence … the standard of proof is the balance of probabilities, rather than that of beyond reasonable doubt.[18]

[18] [2012] FCA 81 [145].

48.     And after examining the various UK and Australian authorities Dodds-Streeton J concluded:

Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character….

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.[19]

[19] [2012] FCA 81 [165]–[167].

49.     The Opponent in the SGP notes that he and the Applicant made a joint application for the Trade Mark in the US. Although he claims that if he had independent advice he would not have consented to this, there is no evidence that he was under any particular disadvantage in this regard and/or that he was coerced into making this application. While the application has lapsed, the fact that it was made suggests that at least at some stage of their commercial relationship the Applicant’s director and the Opponent agreed to joint ownership of the Trade Mark. Furthermore, the email at annexure 14 from the Applicant to the Opponent clearly implies an agreed collaborative approach. There is no evidence before me of the reasons for, or the terms under which, the relationship between them ceased. 

50.     In the circumstances I am not satisfied that, given the seriousness of the allegation, there is sufficient objective cogent evidence to find that the Applicant’s conduct in applying to register the Trade Mark might be said to constitute a ‘falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons’ or of an ‘unscrupulous, underhand or unconscientious character’.[20]

[20] Fry Consulting [165]–[166].

51. It follows that the s 62A ground of opposition has not been established.

Conclusion

52. I return to my above findings in relation to s 58. In such a situation the reasoning of Yates J in Apple Inc. v Registrar of Trade Marks Yates J is applicable:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.[21]

[21] [2014] FCA 1304 [232].

53.     Similarly, I do not need to be satisfied that the Opponent’s Trade Mark use is in relation to all the Services to be satisfied that this element of the s 58 ground of opposition is established. The finding that some of the Services are the ‘same kind of thing’, along with the Opponent’s satisfaction of the other elements of s 58, means that the ground is established for the bulk of the Services and, as there is no separate application for the remaining identified Services, the application fails as a whole.

54.     While a discretion exists for the Registrar to offer the Applicant an opportunity to amend its application for registration, in the current circumstances, where there is no persuasive evidence of the Applicant’s use or intention to use the Trade Mark for the identified Services, there is little utility in offering such an amendment and I decline to do so.

55.     It follows that I am satisfied that the Opponent has demonstrated, prior to the relevant date, use by a person other than the Applicant of another mark, identical to the Trade Mark, in relation to the same kind of Services. Therefore, the Applicant was not relevantly the owner of the Trade Mark at the date it filed the application.

56. It follows that the Opponent has established the s 58 ground of opposition.

Decision

57. Section 55 of the Act 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.

58.     Subsection (3) does not apply to these proceedings. Accordingly, I refuse to register trade mark application 1888216.

Costs

59. The Opponent sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has established a ground of opposition, I award costs against the Applicant under section 221 of the Act in the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

26 June 2020