Re: Opposition by Caterpillar Inc. to registration of trade mark application number 1780644 (classes 35 and 37) IRONCAT and trade mark application number 1780646 (classes 35 and 37) IRONCAT Tyres and tiger device...

[2020] ATMO 16

TRADE MARKS ACT 1995

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

Re:Opposition by Caterpillar Inc. to registration of trade mark application number 1780644 (classes 35 and 37) – IRONCAT – and trade mark application number 1780646 (classes 35 and 37) – IRONCAT TYRES and tiger device – both in the name of Sayvest Pty Ltd

Delegate:	Adrian Richards
Representation:	Opponent: Jennifer Wrigley, Jürgen Bebber and Stella Likouresis of Corrs Chambers Westgarth Applicant: Written submissions
Decision:	2020 ATMO 16 Trade Marks Act 1995 (Cth) – oppositions to two trade marks under section 52 – grounds of opposition under sections 42(b), 44 and 60 considered – grounds of opposition established under sections 44 and 60 for one trade mark, no grounds established for the other

Background

1. These reasons concern the opposition to registration of two trade marks. The oppositions are based partly on prior registrations, and partly on prior use, of other trade marks.

2. On 30 June 2016 (‘Relevant Date’) Gill-Bevin Pty Ltd filed applications for two trade marks (‘Trade Marks’). One was for the plain word IRONCAT (‘Word Mark’). This was allocated application number 1780644. The other was given application number 1780646 and was for the composite mark set out below:

(‘Composite Mark’)

1. The Trade Marks each claim the following goods and services (‘Goods and Services’):

   Class 12:Tyres; rims; inner tubes; wheels; repair kits for repairing tyres and inner tubes; treads for tyres; wheel covers; shock absorbers for vehicles; tyre valves; suspension parts for vehicles

   Class 35:Retailing of vehicle maintenance and repair products; Retailing and wholesaling of vehicle parts including tyres and rims; sale and marketing of vehicle tyres and rims; business advisory services provided to vehicle owners regarding vehicle tyres and rims and associated parts

   Class 37:Maintenance, replacement, repair and/or installation services associated with vehicle tyres and wheels including tyres and wheels of cars, earthmoving equipment, forklifts, trucks, and motorbikes; maintenance and repair services of vehicles including cars, earthmoving equipment, forklifts, trucks, bobcats and motorbikes; vehicle servicing; wheel alignment and balancing services; tyre re-treading services; tyre re-grooving services; emergency breakdown services for motor vehicles including such services relating to tyres for motor vehicles; repair, relining and adjustment of motor vehicle brakes; motor vehicle steering repairs and adjustment; motor vehicle shock absorber replacement; battery replacement services; maintenance and repair services associated with vehicles including those provided by a mobile call out service

1. Both Trade Marks were examined and subsequently accepted for possible registration. As required by s 34(b) of the Trade Marks Act 1995 (Cth) (‘Act’),[1] both acceptances were advertised for on 24 November 2016 so that any third party could oppose their registration.

   [1] Trade Marks Act 1995 (Cth) (‘Act’).

2. Caterpillar Inc. (‘Opponent’) filed notices of intention to oppose on 24 January 2017, and its statements of grounds and particulars followed on 24 February 2017. This office gave a copy of the statements of grounds and particulars to Gill-Bevin Pty Ltd, who responded on 5 May 2017 by filing notices of intention to defend the Trade Marks from opposition. The oppositions were effectively put on hold for a year due to joint requests from the parties under the cooling-off period provisions.[2] The Opponent filed its evidence in support on 4 September 2018. This office gave the Gill-Bevin Pty Ltd an opportunity to file evidence in answer which it did not take up. With this confirmation that all of the evidence had been filed, this office invited the parties to seek a hearing on these oppositions.

   [2] Trade Marks Regulations 1995 (Cth) reg 5.16 (‘Regulations’).

3. The Opponent asked that an oral hearing take place. These matters were allocated to me to hear, and both were scheduled to be heard together on 22 July 2019. I wrote to the parties on 21 June 2019 asking about their planned attendance at the hearing. Gill-Bevin Pty Ltd responded indicating that it would not attend but would be filing written submissions. The Opponent filed an outline of its submissions on 8 July 2019. Three days later, this office was asked to record an assignment of the Trade Marks in favour of Sayvest Pty Ltd (‘Applicant’). The Applicant filed its outline of submissions the next day, on 12 July 2019. I held the hearing as scheduled in my capacity as a delegate of the Registrar of Trade Marks. Jennifer Wrigley, Jürgen Bebber and Stella Likouresis of Corrs Chambers Westgarth attended on the Opponent’s behalf.

Evidence

1. The sole item filed as evidence is a declaration of Stephen Straub, Attorney in the Intellectual Property Law and Public Policy section of the Legal Services Division of the Opponent. It was executed on 3 September 2018 and includes annexures SAS-1 to SAS-15.

2. Aside from setting out Mr Straub’s qualifications to give evidence on behalf of the Opponent, his declaration is almost exclusively concerned setting out the extent of the reputation enjoyed by the Opponent’s trade marks. The exceptions to this are a brief introduction to the history of the Opponent, a short discussion of the Opponent’s registered trade marks, and Mr Straub’s opinion that use of the Trade Marks would give rise to deception among Australian consumers. I have set out more information from the evidence in my discussion of the ss 44 and 60 grounds of opposition below.

Grounds and onus

1. The statement of grounds and particulars nominates grounds of opposition under ss 42(b), 44, and 60 of the Act. The onus is on the Opponent to show on the balance of probabilities that it has established one of those nominated grounds of opposition.[3] The rights of the parties are to be determined as they were at the Relevant Date.[4]

   [3] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

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

Discussion: s 44

1. The aspects of this provision that are relevant to my reasoning are set out below:

   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)  the applicant’s trade mark 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).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

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

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

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

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

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

   Note 1:       For deceptively similar see section 10.

   Note 2:       For similar services see subsection 14(2).

   Note 3:       For priority date see section 12.

   Note 4:       The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.[5]

   [5] Act (n 1) ss 44(1)-(2).

2. The Opponent is the proprietor of over 150 Australian trade mark registrations. In its written submissions and at hearing, the Opponent sought to rely on four, each consisting of the plain word CAT (‘Opponent’s Marks’). While their priority dates differ, all four are significantly earlier than the Relevant Date. Each of the registration numbers of the Opponent’s Marks together with their specifications of goods/services in classes 12, 35 and 37 is set out below:

   275050           Class 12: All goods in Class 12

   1246277Class 35: Advertising; business management; business administration; office functions; business management and consultation; provision of business information; logistics consulting services, including supply chain design and management; compilation and systemization of information into computer databases; management and compilation of computerized databases; retail rental store services not related to medical, health, beauty, nutritional and pharmaceutical products; on-line retail store services not related to medical, health, beauty, nutritional and pharmaceutical products; retail store services not related to medical, health, beauty, nutritional and pharmaceutical products; providing searchable computer databases, websites, and on-line information services relating to purchasing, renting, financing, repair, and maintenance of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment

   327454Class 37: Engineering construction; maintenance work; maintenance and repair of machinery; service, maintenance and repair of engines, of electrical generation equipment, of electrical machinery and accessories, of earthmoving, construction and materials handling machinery, of land vehicles and equipment; all other service, maintenance and repair services relating to land vehicles; rental and leasing services in respect of tractors, bulldozers, excavators and other earthmoving and construction equipment; and all rental and leasing services in this class in respect of machines and equipment

   1185047Class 37: Building construction; repair; installation services; service, maintenance, and repair of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, engines, and power generation equipment, and control units for the aforementioned; machinery installation, maintenance, and repair; rental of earth moving, earth conditioning, material handling, construction, mining, paving, agricultural, and forestry vehicles, equipment, and machinery, and power generation equipment; remanufacturing of engines, transmissions, power train components, power generation units, land vehicles, earth moving and conditioning machinery, material handling machinery, agricultural machinery, paving and construction equipment, electronic components of the foregoing, and consumer electronics

3. The Applicant has not sought to argue that the goods and services above are dissimilar to the Goods and Services, conceding instead that ‘a number of [the Opponent’s] goods and services are similar to [the Goods and Services]. My own view is that the Goods and Services are indeed eclipsed by the above specifications.

4. The remaining question under this ground of opposition is whether the marks in comparison are too close, with the tests prescribed in both ss 44(1)(a) and 44(2)(a) being that the marks are ‘substantially identical’ or ‘deceptively similar’. The meaning of each term is mostly contained in the decided cases. The Opponent does not contend that CAT is substantially identical with either of the Trade Marks. For completeness I find that neither of the Trade Marks is substantially identical with the Opponent’s Marks in accordance with the well-established side by side comparison test.[6] I make that finding because the inclusion of the element IRON in the Trade Marks (and, in the Composite Mark, the additional graphical elements) is sufficient to conclude that neither is substantially identical with the Opponent’s Marks. The parties’ point of contention is whether the marks in comparison are deceptively similar, which is defined in the statute in the following terms:

   [6] The Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, 414 (Windeyer J).

   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.[7]

   [7] Act (n 1) s 10.

5. Confusion presents a lower bar than deception. Unlike deception, it does not imply that consumers likely be led into error. It is enough to show that they would be caused to wonder whether it might possibly be the case, for example, that the Goods or Services offered under the Trade Marks come from the Opponent.[8] This is of course tempered by the requirements that these persons typically be neither exceptionally careless nor discerning,[9] and the danger of any confusion occurring must be real and tangible as opposed to mere possibility.[10]

   [8] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 608 (Dixon CJ, McTeirnan, Webb, Fullagar and Taylor JJ).

   [9] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592, 595 (Kitto J).

6. The context in which this likelihood of deception or confusion is considered is of impression and imperfect recollection:

   An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device … The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.[11]

   [11] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

7. In gaining an appreciation of the impression of a mark it is important to consider ‘the idea which the mark will naturally suggest to the mind of one who sees it’.[12] The approach taken requires that all of the surrounding circumstances be considered.[13] In particular, the look and sound of the marks, the nature of the goods and services and of the customers who are likely to purchase them.[14]

   [12] Jafferjee v Scarlett (1937) 57 CLR 115, 121 (Latham CJ).

   [13] Re Application by Pianotist Co Ltd (1906) 1A IPR 379, 380.

   [14] Ibid.

8. Comparing first the Word Mark with the Opponent’s Marks, they both share the ordinary English word CAT. This word has several uses, but it is most likely taken as a reference to a species of furry animal kept as a pet in many homes around the country. It follows that this is the most likely idea of the Opponent’s Marks. Sharing the word CAT also means that the marks share some visual and audible similarity, with the obvious difference being that the Word Mark begins with IRON. Indeed the Word Mark readily divides into its two syllables IRON and CAT, since both are commonplace English terms. To my estimation this means that the most likely idea of the Word Mark is that of a feline made, or having some properties of, a ferrous metal. That the idea of the Word Mark is inescapably a reference to a cat means that the marks share some conceptual similarity. This is particularly consequential to the present enquiry for reasons to which I now turn.

9. The first syllable of a trade mark is ‘most important for the purpose of distinction’.[15] On that approach these marks are obviously different. That general approach is not followed where some later aspect of a mark is more distinctive.[16] As I have discussed above the identity of the marks presently in comparison relate back to the same small furry animal. The Goods and Services concern heavy machinery—vehicles, parts and maintenance thereof. This type of machinery very commonly has as a major element iron and its alloys. The word iron is also used to describe anything that is hard, strong, rigid, unyielding or the like, or of something that is capable of great endurance, or something that is extremely robust or hardy.[17] In this context IRON as it appears in the Word Mark is mildly descriptive of the Goods and Services, drawing out once again the element CAT as the more distinctive element.

   [15] Re London Lubricants (1920) Ltd (1925) 42 RPC 264, 279 (Sargant LJ).

   [16] Re Coles Myer Ltd (1993) 26 IPR 577 (Hearing Officer Thompson).

   [17] Macquarie Dictionary, iron (online edition, 2019) <>

   It is of course possible for confusion to arise not due to some direct visual, aural or conceptual similarity of two marks themselves, but because the context in which they will appear calls into question their respective provenance. For example, in a market where JESTS had been registered for medicated sweets, EASYJESTS used on identical goods was found to bring about ‘a definite likelihood that a substantial number of persons would assume that the two sets of goods sold under the marks emanated from the same trade source’.[18] Or, closer to the present facts, where there were registered marks including the Opponent’s Marks in relation to tractors and the trade mark LANDCAT with a paw device in respect of identical goods had been applied for, the following was held:

   Thus, deception or confusion between the marks is likely to be caused in view of the purely descriptive word ``land'’ in the applicant's mark and the presence of the word ``cat'’ in each of the marks, rather than by any perceived visual or phonetic similarities between the marks.[19]

   [18] Re John Fitton & Company Limited (1949) 66 RPC 110 (Assistant Comptroller Chisolm).

   [19] Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407, 414 (Hearing Officer Zars).

10. The Applicant points out that the purchaser of the Goods and Services would be concerned with safety and reliability. This care is likely to extend to some research on whether Goods and Services offered under the Word Mark are those of the Opponent. But this would be too late—the prospective purchaser would have already been caused to wonder. It is clear enough from the decided cases that even where this state of wonderment is unlikely to persist up to the point of sale, or to induce a sale, confusion has still occurred.[20] As such, I find the Word Mark is deceptively similar to the Opponent’s Marks. There is no need to consider the evidence based exceptions to s 44, found in ss 44(3)-(4) of the Act. There is no suggestion from the Applicant that it has, for example, used its Word Mark since before the priority date of any of the Opponent’s Marks.

    [20] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252, [105] (Dodds-Streeton J).

11. Turning to the Composite Mark, the comparison does not follow the same path. The emphasis once again is very much on the CAT. But this time it’s a big cat—a tiger. Here IRON and CAT do not naturally separate. The meaning of the coined term IRONCAT is communicated visually to be this powerful creature depicted in the device. A second word TYRES, while very much descriptive of much of the Goods and Services, is also illustrated, forming the ring from which the tiger emerges. In such a context, in relation to the Goods and Services, TYRES and the tyre device are unlikely to provide distinctive character, but the idea of a tiger and its complementary word IRONCAT are very likely to be retained by the relevant consumer as the distinctive element of the Composite Mark. In my estimation were this striking device and coined word used in relation to the Goods and Services, consumers familiar with the Opponent’s Marks would not be caused to wonder whether the two might not be related. I therefore find the Composite Mark is not deceptively similar to the Opponent’s Marks.

Discussion: s 60

1. This provision is reproduced below:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

   Note:          For priority date see section 12.

1. As can be seen from the text of the section, there are two major steps in applying this ground of opposition. The first requires an examination of the evidence to discover whether the earlier mark (at the Relevant Date) had a reputation enough for the purposes of this ground. The second applies the consequence of that reputation to an analysis very similar to the one I engaged with above for the purposes of s 44.

2. Evidence of consumer appreciation is the most direct route to uncovering the reputation in a trade mark, however the costs involved with collecting and collating the views of large numbers of people means that it this is generally difficult to provide in practice. More readily available business records showing ‘a high volume of sales, together with substantial advertising expenditures and other promotions’ in relation to the trade mark are routinely used as a means to infer reputation.[21] It is this second species of evidence that the Opponent has provided. This evidence shows that the Opponent has used a variety of trade marks consisting of or incorporating the word CAT, in relation to the Goods and Services, in Australia since 1949. It has, since 2010, generated extremely large revenues from sale with commensurate sums expended advertising CAT branded goods and services to the Australian market every year for over half a century. It is safe to conclude that some version(s) of the Opponent’s CAT trade marks carry a very weighty reputation in relation to heavy vehicles and machinery. Where the parties differ is whether that reputation is enjoyed by the plain word CAT, and whether the reputation extends beyond vehicles and machinery to the Applicant’s main area of interest: tyres.

   [21] McCormick & Co Inc v McCormick (2000) 51 IPR 102, 129 [86] (Kenny J).

3. The Applicant points to what it describes as a ‘compounded form of reputation’ which involves the use of three brand elements in close proximity. That being a ‘consistent yellow colouring get up’, what it describes as ‘the CATERPILLAR house mark’ and ‘the CAT mark’. An example of this type of use from the Opponent’s 2015 annual report is reproduced below:

1. While this appears to be a fairly common trade dress of the Opponent’s large construction machinery, it is by no means the only style in evidence. For example, the same annual report is replete with examples of machines bearing only the CAT device pictured above. The Opponent’s evidence also includes many examples of use of the plain word CAT used in relation to variety of goods and services which are the same or similar to the Goods and Services.

2. I am aware of two recent decisions of this office that have taken opposite views of the reputation in the plain word CAT.[22] Of course, I do not have the same evidence before me as was before the Hearing Officers in those earlier decisions, so they are of limited utility in the present enquiry. However, it is comforting to note that in the decision where no reputation was found in the plain word, the goods involved were not exactly the Opponent’s main line of business, being concerned with things like luggage, umbrellas and wallets in class 18.[23] In the other case, the reputation attaching to the plain word CAT was an enquiry in relation to the Opponent’s core goods of motor vehicles, engines and parts thereof in class 12.[24] I note also that a much earlier decision from this office held that the plain word CAT had established a reputation in relation to tractors.[25] It is difficult to grasp how that reputation might have eroded in 20 years, when the Opponent has during that time outlaid significant effort and funds promoting it. At any rate, on the evidence provided in the present matter, the Opponent has established that the plain word CAT enjoys the requisite reputation for the purposes of s 60 of the Act. The plain word and the  device are used often and interchangeably. For example, the local Australian dealers of the Opponent’s goods and services are Cavpower CAT, WesTrac CAT, Hastings Deering CAT and Williams Adams CAT. Whenever those dealers refer to themselves they are as likely to use the plain word as they are to use the device. The same can be said of much of the Opponent’s own marketing and other corporate material. I see no reason to accord all of the reputation to the device and none to the plain word.

   [22] Caterpillar Inc v Puma SE [2019] ATMO 99 (Hearing Officer Wilson), and Caterpillar Inc v FCA US LLC [2019] ATMO 148 (Hearing Officer Cooper).

   [23] Caterpillar Inc v Puma SE [2019] ATMO 99 (Hearing Officer Wilson).

   [24] Caterpillar Inc v FCA US LLC [2019] ATMO 148 (Hearing Officer Cooper).

   [25] Caterpillar Inc v Amco (Vic) Pty Ltd (2000) 49 IPR 407, 414 (Hearing Officer Zars).

3. Having made that finding, and noting that this reputation most definitely attaches to large machinery and other vehicles, it is a small step beyond to recognise that it extends to the servicing and spare parts of those goods. The Opponent has led evidence of its local distributors offering assorted CAT solid rubber tyres (which are also branded with the line identifier FLEXPORT). Whether the reputation reaches all the way to these specialist tyres is ultimately an academic concern. Section 60 does not require a reputation in the same (or even similar) goods or services, though a closer alignment will often result in a higher risk of deception or confusion occurring. It is sufficient for me to assume for now that the reputation extends to these solid rubber tyres, along with everything else noted above, and then ask whether use of the Trade Marks would, with this pre-existing reputation in the word CAT, bring about a likelihood of deception or confusion.

4. At this point find it hard to express any significant deviation from my analysis in relation to the ground of opposition under s 44. If anything, with this assumed reputation as the starting point of the analysis the outcome seems even more assured. The risk of confusion where use of the Word Mark is concerned is no different, and the risk of confusion for use of the Composite Mark is roughly the same, even slightly more remote. The Opponent voiced some concerns about a similar colouring of its particular shade of yellow (or yellow/gold as it puts it) used on its goods and trade dress to that of the tiger appearing in the Composite Mark. Not only is the tiger in the Composite mark orange, but, save a handful of expressions of the white recessive gene, tigers in nature are orange. There is very little risk that the significant reputation in relation to ‘yellow iron’[26] would for the relevant consumer, upon seeing an orange tiger, result in confusion. I find this ground is established for the Word Mark and not established for the Composite Mark.

   [26] As it is expressed in some of the Opponent’s marketing materials.

Dicsussion: s 42(b)

1. Section 42(b) of the Act reads:

   42  Trade mark scandalous or its use contrary to law

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

   …

   (b)  its use would be contrary to law.

2. The specific laws that the Opponent submits use of the Trade Marks would be contrary to ss 18 and 27 of the Australian Consumer Law,[27] and the tort of passing off. In each case the Opponent seeks to rely on the reputation I have already discussed in relation to the s 60 ground of opposition. Where a ground of opposition under s 60 is unsuccessful, reputation-based claims under ss 18 and/or 27 of the Australian Consumer Law will also fail, as will proceedings for passing off.[28] This means that this ground of opposition in respect of the Composite Mark cannot be established. With respect to the Word Mark, having already found grounds of opposition established under both ss 44 and 60, it is unnecessary for me consider whether this ground of opposition is also established. For the sake of brevity, I will move straight on to my disposition of these oppositions.

   [27] Competition and Consumer Act 2010 (Cth) sch 2.

   [28] See Riding for the Disabled Association of Australia Limited v Pony Club Australia Pty Ltd [2019] ATMO 63, [63]-[64] (Hearing Officer Richards).

Decision and costs

1. Section 55(1) of the Act is reproduced below:

   55  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.

2. The Opponent has established grounds of opposition under ss 44 and 60 in relation to the Word Mark (application number 1780644) and it has not established the grounds of opposition pursued under ss 42(b), 44 or 60 in relation to the Composite Mark (application number 1780646). As such, I refuse registration of trade mark application number 1780644, and trade mark application number 1780646 may proceed to registration. Both of these decisions should be put into effect one month from the date of this decision. But if the Registrar is served with a notice of appeal for either before that time, I direct that registration, or refusal, or both as the case may be, shall not occur until the appeal has been determined. If either of these oppositions is subject to an appeal then further disposition of the application should be in accordance with the Court’s order or direction.

3. Both parties have requested an award of costs. It is usual for costs to follow the event. In the present matter, both parties have had a measure of success. As such I consider it appropriate that the parties bear their own costs.

Adrian Richards
Hearing Officer
Delegate of the Registrar of Trade Marks
5 February 2020