Re: Opposition by Brightflash USA LLC to registration of trade mark application 1885531 (9) - iWatchiT (Figurative) - in the name of China Trade Services Pty. Ltd

[2020] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Brightflash USA LLC to registration of trade mark application 1885531 (9) – iWatchiT (Figurative) – in the name of China Trade Services Pty. Ltd.

Delegate:

Nicholas Smith

Representation:

Opponent: Adams Pluck

Applicant: Y Intellectual Property

Decision:

2020 ATMO 121

Trade Marks Act 1995 (Cth) - Section 52 opposition: s 44 considered – not established – trade mark to proceed to registration

Background

1. This decision concerns an opposition brought by Brightflash USA LLC (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the trade mark which is the subject of the application detailed below in the name of China Trade Services Pty. Ltd. (‘Applicant’): 

Application Number:	1885531
Filing Date:	9 November 2017
Goods:	Class 9: Smart Watches (‘Applicant’s Goods’)
Trade Mark:	(‘Trade Mark’)

2.  Following the advertisement on 5 April 2018 in the Australian Official Journal of Trade Marks of the Trade Mark’s acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 4 June 2018.  The Opponent then filed a Statement of Grounds and Particulars on 28 June 2018 (‘SGP’). The SGP raised a ground of opposition under s44 of the Act. The Applicant filed a Notice of Intention to Defend on 31 July 2018.

Evidence

1. The Opponent filed the following evidence in support of its opposition:

   ·Declaration made on 18 October 2018 by Brian Elkington, Partner at Adams Pluck, the legal representative of the Opponent, with Annexures BE-1 to BE-8 (‘Elkington declaration’).

   4.  The Applicant filed the following evidence in answer:

   ·Declaration made on 23 January 2019 by Andrew Selim Petale, Principal Lawyer and Trade Marks Attorney of Y Intellectual Property, the representative of the Applicant, with Annexures AP-1 to AP-6 (‘Petale declaration’)

   5.  The Opponent did not file evidence in reply.

   6.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  By letter issuing from IP Australia on 16 May 2019 the parties were notified that as a hearing had not been requested the matter would be given to a delegate of the Registrar for a decision based on the written record.  The letter indicated that the parties had three months from the date of the letter to file any written submissions upon which they wished to rely.  The Opponent filed written submissions on 16 August 2019 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 16 August 2019 (‘Applicant’s Submissions’). 

   7. I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. 

   In doing so I take account of       the written record comprised of the materials mentioned in the preceding paragraphs.

   The Opponent

2. The Opponent is the owner of the registered trade mark and trade mark application listed below (‘Opponent’s Trade Mark/s’).  The goods for which the Opponent’s Trade Marks are registered or sought to be registered are collectively referred to as the ‘Opponent’s Goods’. 

Number	Trade Mark	Priority Date	Goods or Services
1886228	IWATCH	5 June 2013	Class 9: global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods; none of the aforementioned being credit card embossing machines (computer peripherals)
2064711	IWATCH	5 June 2013	Class 9: Computer software; computers; computer hardware; computer peripherals; wireless communication devices; accessories, parts, components, and cases for all of the foregoing goods; none of the aforementioned being credit card embossing machines (computer peripherals) or global positioning system devices or accessories, parts, components or cases for global positioning system devices

9. The present matter raises an unusual issue, namely that the only trade mark particularised in the SGP is Trade Mark No. 1886228 which was at the time of filing of the SGP sought to be registered for all of the Opponent’s Goods. But subsequent to the evidence and submissions being filed in this matter, the Opponent filed a divisional application, splitting its claims in class 9 by the creation of trade mark application number 2064711. Notwithstanding that Trade Mark Application No. 2064711 was not explicitly particularised in the SGP, I consider that the word IWATCH in respect of the Opponent’s Goods were effectively particularised in relation to the s 44 ground of opposition. As such it is now proper to take both of the Opponent’s Trade Marks into account for the purposes of the s 44 ground of opposition. Both parties have provided evidence and submissions on that basis. The fact that by virtue of the divisional process, that single mark has become two marks does not prejudice the Applicant in this matter.

10.     The Elkington Declaration consists of various annexures including extracts from the Macquarie Dictionary showing the meaning of ‘IT’ and ‘information technology’, as well as extracts from Wikipedia and the Macquarie Dictionary that purport to show the similarity between products described as ‘smart watches’ and information technology products.

The Applicant

11.     The Applicant provides no evidence of its own business.  The Petale declaration contains submissions as to the difference between watches and IT products and also submissions as to the descriptive nature of the Opponent’s Trade Mark.  The Petale declaration also extracts various articles that suggest that the Opponent is an affiliate of Apple, Inc. 

Grounds of Opposition, Onus and Standard of Proof

1. As indicated above in the SGP the Opponent nominated s 44 as the only ground of opposition in this matter and to succeed in this opposition the Opponent must establish this ground.

   13.     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 9 November 2017 (‘relevant date’), being the priority date of the application in Australia.[3]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133].

   [3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s 29(1) Trade Marks Act 1995 (Cth).

   Discussion

   Section 44

2. The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:

   Section 44 - Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)              a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)             a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   (2)…

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. 

   Note:  For limitations see section 6.

   (4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

   (a)beginning before the priority date for the registration of the other trade mark in respect of:

   (i)              the similar goods or closely related services; or

   (ii)             the similar services or closely related goods; and

   (b)ending on the priority date for the registration of the applicant's trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

   Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

   Note 2: For predecessor in title see section 6.

   Note 3: For priority date see section 12.

   Section 10 - Definition of deceptively similar

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

   15. To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies, being a trade mark registered by a person other than the Applicant:

   ·     has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);

   ·     is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and

   ·     is in respect of similar goods, and/or services which are closely related to, the Applicant’s Goods (‘the third requirement’).

   16. In the event that each of these requirements is satisfied by the Opponent it may still be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances which would make registration of the Trade Mark proper, or that the Applicant has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark. There is no evidence before me that would allow acceptance of this application pursuant to ss 44(3) and (4) of this Act: Should I find that s 44(1) is satisfied, the Opponent shall succeed in its opposition.

3. The Opponent has, in effect, particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Marks.  Each of the Opponent’s Trade Marks is registered or sought to be registered by an entity (the Opponent) other than the Applicant and has a priority date that is earlier than the priority date of the Trade Mark. 

   Similar goods

   18. Section 14 of the Act relevantly provides:

   14Definition of similar goods and similar services

   (1)For the purposes of this Act, goods are similar to other goods:

   (a)if they are the same as the other goods; or

   (b)if they are of the same description as that of the other goods.

   19.     McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Marks are or sought to be registered are goods of the same description as the Applicant’s Goods as follows:

   Whether the relevant goods are of the same description is essentially a question of fact.

   The authorities establish that there are three principal factors to be considered in this regard.  They are:  (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold.  As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade:  see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:

   The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive.  Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods:  see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner:  ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade.  In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold.  No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’:  Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.

   On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4] 

   [4] [2000] FCA 1335 [17].

   20.     In the present case the Applicant’s Goods are smart watches.  Trade Mark Application No. 2064711 is sought to be registered for goods including ‘computers; computer hardware; computer peripherals; wireless communication devices’.  A smart watch, as distinct from an ordinary watch (whose sole or primary function is to tell the time), is a wearable computer in the form of a wristwatch with various functions similar to a computer or a wireless communications devices.  As a smart watch is a form of computer it is similar to the Opponent’s Goods.  The fact that the Opponent’s Goods do not specifically include chronometric instruments and timepieces does not change this finding. The third requirement is satisfied.

   Substantially identical and/or deceptively similar

4. I will now consider whether the Trade Mark is substantially identical to the Opponent’s Trade Mark[5].  When considering substantial identity in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd Windeyer J said:

   [5] As the Opponent’s Trade Marks consist of the same trade mark, I will refer to them in the singular in this discussion.

   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.[6]

   [6] (1963) 109 CLR 407, 414.

   22.     The Trade Mark and the Opponent’s Trade Mark is set out below:

   IWATCH              

   23.     While I consider the minor stylization of the Trade Mark and differences in capitalization to be de minimis and unnecessary of further consideration when considering the total impression of resemblance or dissimilarity, on a side by side comparison there is a clear difference between the respective trade marks namely the addition of the letters ‘iT’ at the end of the Trade Mark.  The differences between the respective trade marks are sufficient for me to conclude that the respective trade marks are not substantially identical.  I move then to consider whether the Trade Mark and Opponent’s Trade Mark is deceptively similar.

   24.     The principal authority for guidance in determining whether trade marks are deceptively similar also comes from the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:

   On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

   Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[7]

   [7] Ibid [13].

   25.     Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd summarised the principles of deceptive similarity with reference to the authorities as follows:

   Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.

   First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[8] at [49]; Australian Woollen Mills[9] at 658.

   [8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.

   [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.

   Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[10] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.

   [10] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.

   Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].

   Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.

   Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[11] at 594 – 595.

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

   Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.

   Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.

   Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.

   Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].[12]

   [12] [2012] FCA 1022, [38]-[46].

1. In the present case the Trade Mark wholly incorporates the Opponent’s Trade Mark along with the addition of the letters ‘it’.  This alone is not sufficient to make the trade marks deceptively similar.  In some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar.  This was found to be the case in, for example, REBELLION vs SOUL REBELLION[13] and JOCKEY vs THROTTLE JOCKEY.[14]

   [13] Kingsley v Scott [2011] ATMO 10.

   [14] Jockey International Inc v Wilkinson [2010] ATMO 22.

2. The submissions differ as to how the ordinary consumer will perceive the addition of the ‘it’ element – either as the descriptive abbreviation ‘IT’, short for ‘information technology’ (the Opponent’s submission) or as a separate syllable ‘it’ (the Applicant’s submission).  In addition the Applicant submits that the term ‘iwatch’ is (and has been found by various overseas jurisdictions) descriptive of the Applicant’s Goods and hence must be discounted for the purpose of comparison.[15]  

   [15] This issue is yet to be resolved in Australia.

3. This matter can be resolved in this manner: To the extent that the ordinary consumer were to view the Trade Mark as a reference to the phrase ‘I watch it’, then, notwithstanding the incorporation of the Opponent’s Trade Mark in the Trade Mark, the Trade Mark conveys a clearly separate conceptual meaning to the Opponent’s Trade Mark and is aurally different.  The Opponent’s Trade Mark, seen as ‘I watch’ could be a reference to the user (‘I’) watching anything (TV, the sunset, a person, birds).  The Trade Mark conveys the meaning that the user is watching something specific and known to the user (‘it’) rendering its conceptual meaning more concrete than the Opponent’s Trade Mark. 

4. Considering the marks aurally, while the marks share aural similarities, the presence of the additional syllable ‘it’ adds an additional and distinctive aural element.  While there is case law to the effect that the first syllable is usually the most important syllable in considering confusion, in the present case, the word ‘it’ is short, memorable and by its nature unlikely to be slurred or otherwise mispronounced by person saying the name of the Trade Mark aloud.

5. To the extent that the ordinary consumer were to view the presence of the ‘it’ in the Trade Mark as an abbreviation for ‘information technology’ then it is also likely that they would recognize ‘watch’ as descriptive of the Applicant’s Goods, and indeed potentially consider ‘iWatch’ descriptive of the Applicant’s Goods, given the use, in some cases, of the letter ‘i’ to refer to information technology or other smart products.  In such circumstances the presence of the common element(s) ‘watch’ or ‘iwatch’ ought also to be given less weight in considering whether the respective marks are deceptively similar.  This is because either the consuming public will discount these elements as common to the trade[16] or because, to the extent confusion arises, it will do so due to the descriptive elements, as discussed below.

   [16] See Australian Meat Group Pty Ltd v JBS Australia Pty Ltd [2018] FCAFC 207, [85].

6. Stephen J observed[17] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:

   [17] Albeit in relation to trade practices.

   There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[18]

   [18] (1978) 140 CLR 216, 229.

7. In those cases, notwithstanding the limited difference between the marks, I find that any confusion that might occur would arise from the use of the descriptive term ‘watch’ and potentially descriptive term ‘iwatch’ in the respective marks and not from the deceptive similarity of the parties’ trade marks within the meaning of the Act. Even though ‘it’ may well also be descriptive in the eyes of the consumer, its addition would create a sufficient visual and aural difference that consumers will be able to distinguish the respective trade marks, after discounting the descriptive elements.

8. I find that the Opponent has failed to establish the ground of opposition under s 44.

   Decision

9. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP.  Trade mark application no. 1885531 may proceed to registration not less than one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued.  Otherwise the disposition of the application should be in accordance with the Court’s order or direction.

   Costs

10. The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    14 July 2020