Re: Opposition by Innovare Pty Ltd to registration of trade mark application 1932950 (35, 37) - Innovare - in the name of Zikos Holdings Pty Ltd

[2020] ATMO 116

TRADE MARKS ACT 1995

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

Re:Opposition by Innovare Pty Ltd to registration of trade mark application 1932950 (35, 37) – INNOVARE – in the name of Zikos Holdings Pty Ltd

Delegate:

Nicholas Smith

Representation:

Opponent: Dimitrios Eliades of Counsel instructed by O’Shea Partners

Applicant: Laura Thomas of Counsel instructed by Thompson Geer

Decision:

2020 ATMO 116

Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 58 and 60 considered, s 60 established – registration refused

Background

1. This decision concerns an opposition brought by Innovare Pty Ltd (‘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 Zikos Holdings Pty Ltd (‘Applicant’): 

Application Number:	1932950
Filing Date:	11 June 2018
Services:	Class 35: Business project management services for: Commercial Office Fitouts, Refurbishments works and making good of existing offices Class 37: Construction management, supervision, advisory, consultation and information services including in relation to: construction of offices, renovation and refurbishment of offices and services, installation of office partitioning, doors, glazing, Office Fitout services (including electrical, Data, Mechanical, Fire Hydraulics, Security and Audio Visual aspects), floor finishes, ceilings, equipment, installation of fixtures and fittings and joiner (‘Applicant’s Services’)
Trade Mark:	INNOVARE	(‘Trade Mark’)
Endorsement	The applicant has advised that the English translation of the ITALIAN word INNOVARE appearing in the trade mark is TO RENOVATE and TO INNOVATE.

2.  Following the advertisement on 1 November 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 7 November 2018.  The Opponent then filed a Statement of Grounds and Particulars on 7 December 2018 (‘SGP’). The SGP raised grounds of opposition under ss 42(b), 58, 60, 62 and 62A of the Act though the Opponent does not press the s 62 ground. The Applicant filed a Notice of Intention to Defend on 17 January 2019.

Evidence

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

   ·Declaration made on 23 April 2019 by Orazio Salvatore D’Arro, the Director of the Opponent, with Annexure A to U (‘D’Arro 1’).

   4.  The Applicant filed the following evidence in answer:

   ·Declaration made on 26 July 2019 by Dimitrios Jim Zikos, Sole Director and Company Secretary of the Applicant, with Annexures JZ-1 to JZ-28 (‘Zikos declaration’).

2. The entirety of the Zikos declaration, including publicly available information such as the Declarant’s connection to the Applicant and the status of the trade mark application is claimed to be confidential to the Applicant.  I adopt the approach of the Delegate in Source Homeloans Pty Ltd v Coles Group Ltd, who when in receipt of a similar claim (in that case in respect of the then opponent) stated:

   The confidentiality claim obviously extends to the whole of the evidence led in support of the opposition. It is not clear to me how I could decide this matter without discussing the evidence the opponent has served and filed in support of its opposition. The onus in these proceedings is on the opponent to establish its grounds of opposition, at least to my satisfaction. Seemingly barred from any discussion of the opponent’s statements and exhibits and the weight that I attach to them if I were to lend credence to the claim, my hands would appear to have been effectively tied. Prima facie, the easiest way out of the dilemma would be to accede to the opponent’s wishes and find that it has not established its opposition. Thus, if I were to take Mr Peter’s request (made within several declarations) at face value, that would be the end of these matters.

   This position, obviously, is extreme, since the opponent has filed this evidence in support of its opposition and must expect the evidence to be discussed and weighed. It will be sufficient for me to say, in setting out my reasons for my decision, that there are arguably commercially sensitive matters in the evidence that I do not need to discuss in detail (and, if I do, my consolation lies in the fact that the opponent in not being specific in its request has brought the problem upon itself). None the less, the evidence of the parties as a whole satisfies me of various things, which I will set out under the appropriate headings below.[1]

   [1] Source Homeloans Pty Ltd v Coles Group Ltd [2008] ATMO 17, [5]-[6].

3. I note that, if a party considers a piece of information to be commercially sensitive it must identify that information with specificity.  The Applicant has identified certain annexures with specificity and certain paragraphs, and I will treat them as confidential.   However with respect to the remaining aspects of the declaration if, in my summary of the Applicant’s evidence, I have disclosed information that is sensitive, then this is a problem that has arisen by that party not specifically identifying that information as sensitive.

4. The Opponent filed the following evidence in reply:

   ·Declaration made on 24 September 2019 by Orazio Salvatore D’Arro (‘D’Arro 2’);

   ·Declaration made on 2 December 2019 by Orazio Salvatore D’Arro, with Annexures A to LL (‘D’Arro 3’). D’Arro 3 was filed outside the time but was considered pursuant to the provisions of Reg 21.19 of the Trade Marks Regulations 1995 (Cth).  Following consideration of principles set out in paragraph 10 below I issued a direction to the part indicating that I would have regard to D’Arro 3.  Critical to my consideration was the fact that D’Arro 3 contained material relevant to the proceeding and in this case it was in the public interest that a delegate of the Registrar have access to this material; and

   ·Declaration made on 2 December 2019 by Victoria Ann Blair (‘Blair declaration’). The Blair declaration was filed outside the time but was considered pursuant to the provisions of Reg 21.19 of the Trade Marks Regulations 1995 (Cth).  The Blair declaration is a one page document that operates to support two aspects of D’Arro 3 and following consideration of principles set out in paragraph 10 below I issued a direction to the part indicating that I would have regard the Blair Declaration, as it essentially operated to support D’Arro 3 that I had already decided to have regard to. 

   8.  Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions.  On 22 October 2019 the Applicant requested an oral hearing.  The matter was set down for a hearing in Canberra on 19 May 2020 and the matter was allocated to me.  In line with usual practice, an email was sent to the parties on 12 March 2020 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing.  The Opponent filed written submissions on 5 May 2020 (‘Opponent’s Submissions’).  The Applicant filed written submissions on 12 May 2020 (‘Applicant’s Submissions’).  The hearing was held by video-conference.  At the hearing Laura Thomas of Counsel instructed by Hannah Scrivener of Thompson Geer represented the Applicant.  Dimitrios Eliades of Counsel instructed by Rose Maitland of O’Shea Partners represented the Opponent.

   9.  On 27 May 2020, after the hearing, the Opponent filed two additional declarations, being a Declaration made on 26 May 2020 by Orazio Salvatore D’Arro (‘D’Arro 4’) and a Declaration made on 26 May 2020 by Chiara D’Arro (‘Chiara Declaration’) along with supporting submissions as to why this late-filed evidence should be accepted. The Applicant opposed the admission of these declarations. The evidence that these declarations purport to show goes to the ground of opposition under s 58 of the Act and suggests that the intellectual property owned by Innovare Pty Ltd ACN 082 933 471 (‘Innovare 471’) had been transferred on 17 February 2010 to Chiara D’Arro as Trustee of the D’Arro Family Trust.

   10.   The Trade Mark Examiners Manual at Part 51, paragraph 2.6 provides a summary of considerations for the Delegate when deciding to have regard to late-filed evidence.  The considerations are stated below:

   The delegate will not consider out of time evidence as a matter of routine. The party filing the evidence must make a compelling case in favour of it being considered.

   Nevertheless, there may be instances where the failure to consider that evidence is not in the public interest of the register being a true reflection of the marketplace. It is also undesirable if the true owner of a trade mark at common law is unable to prevent it being registered by another party.  The Registrar acknowledges that sometimes it may be appropriate for the delegate deciding the merits of the opposition to take the information contained in evidence filed out of time into account.  The delegate may do so as he or she is not bound by the rules of evidence, but may be informed on any matter in a way that he or she reasonably believes to be appropriate (reg 21.15(4)).

   The issues the filing party needs to address in its submissions include:

   ·     Why the evidence was filed after the due date

   ·     If the evidence stage in proceedings has concluded and the matter is ready for determination, why the evidence was not filed earlier

   ·     What the evidence shows

   ·     Why that information is crucial to the delegate’s decision

   ·     Why it is in the public interest to have the information considered

   ·     What is the balance of convenience for the parties if the information is considered.

   11. Based on the considerations set out above I am not satisfied that it would be proper to have regard to the Chiara Declaration and D’Arro 4. The Opponent has raised the s 58 ground and at all times was aware that it bore the burden of proof to establish that, at the date at which the application was filed, another entity was the owner of the Trade Mark. It has been provided with a clear opportunity to file evidence in support of the s 58 ground (including evidence as to prior use and chain of title) and to allow this evidence to be included would amount, in effect, to an ‘additional bite of the cherry’. The additional evidence was available to the Opponent at all relevant times and could and should have been filed during the time allowed for filing evidence in support. Were I to admit this evidence after the hearing of this matter, the admission would cause significant delay to the proceedings and potential significant prejudice to the Applicant.

   12. I do not consider the information is crucial to my decision as it does not affect the outcome of this matter, nor would it affect the outcome of the s 58 ground of opposition. Taken at its highest the evidence shows that at 2010 the owner of any rights to the Trade Mark held by Innovare 471 was Chiara D’arro as Trustee of the D’Arro Family Trust however there is no evidence that Chiara D’arro as Trustee of the D’Arro Family Trust has continued to exercise those rights other than a single and unpersuasive sentence which states that she ‘allowed Orazio to use all the intellectual property, including trade marks, which were the subject of the Innovare Purchase Contract, in association with his business and construction business’. It is not in the public interest to allow the consideration of this late filed information. Additionally, there is insufficient explanation as to why the information could not have been filed during the time allowed for filing evidence in support Accordingly, I refuse to consider the information.

   13. 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 but not the Chiara Declaration or D’Arro 4.

   The Opponent

5. The Opponent is an Australian company incorporated on 23 December 2013.  

   15.     The relevant claims/statements in D’Arro 1 can be summarised as follows:

   ·     The Declarant has operated a property development, building and construction business based in Queensland under the Trade Mark since 1997 (‘Innovare Business’).  The Innovare Business is involved in the construction of homes, commercial buildings, renovations, commercial fit-outs and design and project management services.

   ·     When the Declarant commenced his Innovare business he engaged design consultant Victoria Blair to design a logo (‘Innovare Logo’ featured below) and other marketing materials.  The Declarant, either individually or under various corporate entities, including the Opponent, Innovare 471 and Innovare Marketing Pty Ltd ACN 138 746 559 (the latter two being the  ‘previous Innovare entities’), has used the Trade Mark as a word or part of various corporate logos since 1997.  

   ·     The Opponent and the previous Innovare entities have used the Trade Mark as part of their website at and as part of their business name registrations for Innovare Builders from 2002.  The previous Innovare entities have applied for and registered trade mark numbers 869757, 1055369, 1055366 and 1055367.  These trade marks were registered for goods and services in classes 20, 21, 36 and 37 and consist of the Innovare Logo and, in most cases, a descriptive word (builders, homes or lifestyle).  Each of these trade marks was removed from the Register due to renewal fees not being paid. 

   ·     The Opponent and its predecessors in title have licensed their rights in the Trade Mark to various entities, either through a formal licence agreement or an informal agreement to other companies controlled by the Declarant.

   ·     Since 1997 the Innovare Business has spent approximately $5,455,000 in marketing itself, including by engaging Victoria Blair, creating marketing booklets and brochures, placing advertisements in print media, creating online social media such as a Facebook and an Instagram account and providing sponsorships to a variety of community organisations.

   ·     Since 1997 the Innovare Business has completed a number of notable projects throughout Australia including commercial fit-outs of restaurants (Lone Star Australia, Hooters), commercial enterprises (Flight Centre, Place Estate Agents, Relationship Australia) and residential constructions.

   ·     The Innovare Business has won over 50 awards including awards from HIA and Master Builders Association.

   ·     In 2017 the Declarant received a telephone complaint from the building manager of 10 Eagle Street, Brisbane Australia in respect of a fit-out.  This fit out was not done by the Innovare Business rather it was done by a related entity of the Applicant. 

   ·     After the incident above, the Opponent instructed its representatives to write to the Applicant regarding its use of Innovare.  Following receipt of this letter the Applicant filed the trade mark application.  

   16.     The Annexures to D’Arro 1 display various marketing materials that use either the Trade Mark or the Innovare Logo.  They also display the ASIC records for the Opponent and the previous Innovare entities, which include Innovare 471, incorporated on 10 June 1998.  A liquidator was appointed to Innovare 471 on 22 March 2009 and the company was deregistered on 29 July 2012. 

   17.     The relevant claims/statements in D’Arro 2 can be summarised as follows:

   ·     The Applicant is incorrect in asserting that Innovare Australia Pty Ltd (i.e. the Applicant) has been the exclusive, authorised user of the INNOVARE name and the Trade Mark in Australia as there have been other uses of the Trade Mark, including by the Innovare Business and Myer Pty Ltd.

   ·     The Applicant’s entry into an exclusive licence deed with Innovare Australia Pty Ltd on 22 July 2019 appears to have been contrived for the purposes of assisting the Applicant to improve its position in the proceeding.  

   18.     D’Arro 3 essentially consists of additional evidence of use of of the Trade Mark by the Innovare Business.  The Blair declaration solely operates to confirm certain facts in D’Arro 1 and 2.

   19.     The Annexures to D’Arro 3 display various marketing materials that use either the Trade Mark or the Innovare Logo containing the trade mark.  This includes invitations dated 2000 for various home openings, featuring use of both the Trade Mark and the Innovare Logo, a remittance advice dated 2002, communications in the early 2000s, brochures, CDs and awards.  Each of these documents features one of the Trade Mark, the Innovare Logo or the company name Innovare Pty Ltd. 

   The Applicant

6. The Applicant is an Australian company registered on 26 July 2004.  It is a related entity to Innovare Australia Pty Ltd ACN 110 196 775 (‘Innovare Australia’).  The Declarant is the sole director and shareholder of both entities.

   21.     The relevant claims/statements in the Zikos declaration can be summarised as follows:

   ·     The Declarant has operated a in the project management and commercial office fitout industry since 1997 and in 2004 started a business under the Trade Mark.  The Applicant was established to hold the assets of the Declarant’s business, including intangible assets while Innovare Australia operated the business and was the exclusive authorised user of the Trade Mark in Australia.  On 22 July 2019 the Applicant and Innovare Australia executed an exclusive licence deed to record the existence of that licence.

   ·     The Applicant through Innovare Australia has used the Trade Mark continuously since 2004 in respect of over 150 projects throughout Australia.  These include various commercial fit-out projects and other office refurbishments.  Each of these projects have been provided under the Trade Mark, albeit in various stylised logo forms. 

   ·     The Applicant through Innovare Australia has used the domain name innovare.com.au as a website and the basis for e-mail addresses since August 2004.  It has used the Trade Mark in various marketing materials including site posters, capability statements, business cards and other forms of advertising.  The Applicant’s revenue since 2004 has been significant.

   ·     The Applicant was unaware of the Opponent until Innovare Australia received a letter from the Opponent’s solicitors dated 1 June 2018.  The Opponent was only incorporated in 2013 and a previous entity was deregistered in 2012, approximately 18 months earlier.  In response to the letter of 1 June 2018 the Applicant applied to register the Trade Mark.

   22.     The Annexes to the Zikos declaration display various marketing materials that use either the Trade Mark or a logo containing the trade mark.  They also display the ASIC company records for the Opponent and the previous Innovare entities, which include Innovare 471, incorporated on 10 June 1998 and deregistered on 29 July 2012. 

   Grounds of Opposition, Onus and Standard of Proof

7. As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 58, 60, 62 and 62A of the Act. To successfully oppose the application the Opponent needs to establish one of the nominated grounds. The Opponent does not press its grounds under s 62. Equally, while it formally presses the s 42(b) ground it notes in its submissions that it can only succeed on the s 42(b) ground if it also succeeds on the s 60 ground.

1. As will become apparent, the Opponent has successfully established the ground of opposition pursuant to s 60. Consequently, it is unnecessary that I consider the remaining grounds of opposition, though I have considered the s 58 ground as it was necessary to provide context to my findings under the s 60 ground. Of course, should the decision be appealed, it would remain open to the Opponent to plead any ground available to it under the Act in proceedings before the Court.

   25.     The onus of proof in an opposition rests upon the Opponent.[2]  The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3]  The date at which the rights of the parties are to be determined is 11 June 2018 (‘relevant date’), being the priority date of the application in Australia.[4]

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

   [3] 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].

   [4] 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 58 – Applicant not owner of trade mark

   26. Section 58 of the Act is reproduced below:[5]

   [5] In summarising the principles that apply with respect to s 58 of the Act I have paraphrased from Richard Khouzame v Melambada Pty Ltd (Unreported, Australian Trade Marks Office, 6 January 2017), [12].

   Section 58. Applicant not owner of trade mark

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

   Note:For applicant see section 6.

   27.     The owner of a trade mark is generally the person who first uses it in Australia, or first files a trade mark application in Australia, whichever is the earlier.  However, as noted above, the date at which the rights of the parties are to be determined is the relevant date and the question therefore is whether the Applicant was not the owner of the Trade Mark at the relevant date.  It is possible for an entity to have been the owner of the Trade Mark at a date prior to the relevant date but not the owner at the relevant date, having lost common law ownership rights through assignment of their rights or simply ceasing to exist.

   28.     It is now well established at law that in order to succeed under this ground of opposition the Opponent must establish three factors.  These are:

   · that the Trade Mark is identical, or substantially identical, to the trade mark(s) relied upon by the Opponent (‘the first factor’);[6]

   [6] Carnival Cruise Lines Inc. v Sitmar Cruises Limited (1994) 31 IPR 375.

   · that the Applicant’s Services are the ‘same kind of thing’ as the services for which the trade mark(s) relied upon by the Opponent was used (‘the second factor’);[7] and

   [7] Re Hicks’ Trade Mark (1897) 22 VLR 636.

   ·     that a person other than the Applicant has the earlier claim to ownership of the Trade Mark based on use of the trade mark(s) relied upon by the Opponent prior to whichever is the earlier of: (a) the application to register; or (b) any actual use of the Trade Mark by the Applicant (‘the third factor’).[8]

   [8] Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

   29. The ground based on s 58 of the Act was particularised in the SGP as follows:

   Orazio D’Arro engaged in business of property development, building and construction in south east Queensland trading with the name “Innovare” and “Innovare Builders” commencing in approximately June 1997.  Mr D’Arro traded the business, built good will and an association with the words “Innovate” and “Innovare Builders” among consumers and people in the building and construction industry since June 1997.  Mr D’Arro was therefore the first user of the “Innovare” and “Innovare Builders” names in the property development, building and construction industry.

   Innovare Pty Ltd ACN 082 933 471 (First Innovare Company) is a company which was incorporated on 10 June 1998 and was deregistered on 29 July 2012.  It was a company controlled by the same person (Orazio D’Arro) as Innovare Pty Ltd ACN 167 352 678 (Second Innovare), which was incorporated on 23 December 2013.

   The First Innovare Company, the Second Innovare Company, Orazio D’Arro, and their associated parties and licensees have traded a business known as “Innovare” and “Innovare Builders” since June 1997 in south-east Queensland.

   As part of endeavours to promote the said business’ goodwill, Orazio D’Arro and the Second Innovare Company have owned the domain and operated and promoted a website “ since 1998.

   The First Innovare Company was the registered owner of the following trademarks:

   i.869757 – I Innovare;

   ii.1055366 – I Innovare Homes;

   iii.1055367 – I Innovare Lifestyle;

   iv.1055369 – I Innovare Builders .

   The above trademarks expired at various times due to a failure to renew the trademarks but the First Innovare Company, the Second Innovare Company and Orazio D’Arro have continuously used the marks and the name “Innovare” and “Innovare Builders” in the carrying on of their property development, building and construction business since June 1997, which is before the priority date of the Application being opposed.

   Further, an associated entity of the First Innovare Company, the Second Innovare Company and Orazio D’Arro – RJ Springfield Pty Ltd ACN 138 746 559 – has been the registered owner of the business name “Innovare Builders” since 1 June 2011.  An extract of the business name register recording same is Attachment A to this annexure.

2. The first factor is satisfied.  The Opponent is relying on use of the Trade Mark or variants being substantially identical to the Trade Mark.  

3. I am satisfied that the services for which the Innovare Business has used the Trade Mark are the same kind of thing as the Applicant’s Services. In Anchorage Capital Partners Pty Limited v ACPA Pty Ltd[9], the Full Court summarised the authority as to the meaning of ‘same kind of thing’, noting the statements by the Full Court in Colorado that ‘Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name’[10] and ‘the question whether goods or services are of the same kind must be addressed in a practical and common sense way and by asking whether the relevant goods or services are essentially the same’.[11]

   [9] [2018] FCAFC 6.

   [10] Colorado, [6].

   [11] Ibid, [89].

4. The Applicant’s Services consist of fitout services, and other construction and advisory services relating to commercial and office fitouts.  The evidence in D’Arro 1 was that the Innovare Business was involved in a number of commercial and office fitouts prior to any date from which the Applicant could claim rights to the Trade Mark, including for Lone Star restaurants, real estate offices and a Flight Centre office.  As the Innovare Business was providing commercial fitout services and associated services relating to fitout services (such as construction services) I find that the second factor is satisfied.

5. The third factor is more complicated and involves several questions.  The first question relates to the date at which the Applicant commenced use of the Trade Mark and hence (in the absence of any claim to ownership of another party) would have commenced being the owner of the Trade Mark.  I am satisfied by the Zikos declaration that the Trade Mark has been used by the business that Mr Zikos is involved in for the Applicant’s Services since 2004.  The Opponent makes two submissions on this point, one of which is that the Applicant can never be the proper owner of the Trade Mark because the first user was the director of the Applicant, Dimitrios Jim Zikos.  The second is that the Applicant has never been the owner of the mark because all use of the Trade Mark was by Innovare Australia and not authorised by the Applicant.

6. I will address the first submission.  The Applicant and Innovare Australia were incorporated on 26 July 2004.  In paragraph 9 of the Zikos declaration Mr Zikos states ‘In about early 2004, I decided to start my own business for commercial fitouts and began brainstorming different names for my business… I felt that the name “Innovare” was appropriate for my line of business and began to use the name “Innovare” from about May 2004.’  The Opponent submits that, in reliance on the decision in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd[12], that the Applicant could never be the owner of the Trade Mark as Mr Zikos was a prior user of the mark and such a deficiency could not be cured by any assignment.  I do not consider this case to raise the same issues as Pham Global, which involved the question of whether an applicant (Mr Pham) who was not the owner of a trade mark could assign any rights in the application to the proper owner.  It does not prevent the assignment of any unregistered rights from one party to another upon the transfer of a business; such that the new business owner could apply for registration of a trade mark on the basis of a history of use by the predecessor in title.  Mr Zikos started the Applicant’s business in May 2004 which was incorporated in July 2004.  There is no documentary evidence that he made any use of the Trade Mark prior to July 2004 and to the extent he did have any rights to the Trade Mark they would have passed to the incorporated entities (along with the rest of the business) in July 2004.  As of the relevant date, Mr Zikos was not the owner of the Trade Mark.

   [12] [2017] FCAFC 83.

7. The Opponent then submits that the Applicant cannot be the owner of the Trade Mark because all use of the Trade Mark was by Innovare Australia. The Applicant submits that all use of the Trade Mark was authorised by the Applicant, which Mr Zikos says was established to hold the intangible assets of the business, including any trade mark rights. Under s 8 of the Act, authorised use requires use under the control of the trade mark owner. In the 2016 Full Federal Court decision of Lodestar Anstalt v Campari America LLC[13], Basenko J summarises the law at paragraph 63:

   [13] [2016] FCAFC 92.

   Section 8(1) of the Act defines a person who is an authorised user of a trade mark and the key concept in the subsection is that the trade mark is used in relation to goods or services under the control of the owner of the trade mark. Section 8(2) makes it clear that an authorised use only applies to the extent that the trade mark is used under the control of the owner of the trade mark. By reason of s 7(3) an authorised use is taken to be a use of the trade mark by the owner of the trade mark. Subsections 8(3) and (4) provide for two cases where the use of a trade mark is taken to be use under the control of the owner of the trade mark: the owner of the trade mark exercises quality control over the relevant goods or services or the owner exercises financial control over the other person’s relevant trading activities. Section 8(5) makes it clear that the meaning of the expression under the control of is not limited to the two cases identified in s 8(3) and (4) of the Act.

8. Basenko J later stated that:

   98.        … actual control will be a question of fact and degree. A licence agreement may contain a term that sets in detail a quality standard to be achieved. The details in the agreement may be such that it is not necessary for the registered owner to give directions or instructions from time to time. The licensee, aware of its obligations, may faithfully comply with those obligations without any entreaties or demands from the licensor. The primary judge had such a situation in mind when he referred to cases where there was obedience to the trade mark owner “so instinctive and complete that instruction was not necessary”.

9. In that same case, Katzmann J commented on the construction of section 8 as follows:

   169. Section 8 provides that whether a person is an authorised user of a registered mark and whether the use of the mark by that person is an authorised use depend on whether the person uses the mark under the control of the registered owner (subss (1) and (2)). Subsections (3)–(4) reveal that use will be taken to be use under the control of the owner where, for example, the owner “exercises quality control over goods or services ... dealt with or provided in the course of trade by another person ... and ... in relation to which the mark is used” or “exercises financial control over the other person’s relevant trading activities”. Subsection (5) states that subss (3)–(4) do not limit the meaning of the expression “under the control of” but this statement is ambiguous. It might signify that “control” is not limited to quality control or financial control. On the other hand, it might signify that control is not limited by the context provided by subs (3)–(4). The former construction is the preferable one. In my opinion, the examples given in subss (3) and (4) give colour to the concept of control in s 8. The language used in the two subsections strongly suggests that — regardless of the form control might take — it is the exercise of control that matters, not merely the right to do so.

   …

   184. In my opinion, under the 1995 Act the use of a registered trade mark by an authorised user will only be taken to be use by the registered proprietor of the mark if the registered proprietor exercises control over the use of the mark during the period in question so as to maintain a connection in the course of trade between the goods or services and the registered proprietor. In a case where a registered proprietor of a trade mark is relying on use by an authorised user, it is still necessary to demonstrate that the trade marks indicate a connection in the course of trade with the registered proprietor. The purpose of s 8 is to identify the means by which that is done. …
   185. A bare licence to use a trade mark, particularly a perpetual licence, would not be sufficient. Without more, it would amount to a divestment of control. But there is no reason in principle why control might not be exercised through conditions imposed by agreement on the use to which the trade marks might be put and, in the event of an application to cancel the registration for non-use, proved by evidence that the authorised user is complying with those conditions. Whether or not that is sufficient in any particular case, however, will depend on the terms of the agreement, most importantly whether the control is such as to maintain the registered proprietor’s connection with the marks. As the Act makes clear, that can be achieved if either quality control or financial control is exercised. If it is not, the registered proprietor (upon whom the burden of proof rests), must show that it has exercised some other form of control in the relevant period which maintains its connection with the marks.

   38.   In the recent Full Federal Court decision of Trident Seafoods Corporation v Trident Foods Pty Ltd[14], the Full Court at paragraph 45 noted that as a matter of practicality control could be found in circumstances where the two companies shared the same directors:

   [14] [2019] FCAFC 10.

   It must be inferred from the evidence that the two companies operated with a unity of purpose. Trident Foods held the trade marks. Manassen sold the products under the TRIDENT brand and thereby used the trade marks. In the primary judge’s view these arrangements showed nothing more than that Trident Foods acquiesced in Manassen’s use of the marks: PJ [179(4)] and [217]. In the present case, where there were common directors, the concept of mere acquiescence by the one company to the use by the other company (albeit that Manassen is the parent company) appears alien. As directors of Trident Foods, the directors had obligations to ensure the maintenance of the value in the marks. To that end Trident Foods necessarily controlled Manassen’s use of the marks by reason of the simple fact that it owned the marks and its directors, who were also Manassen’s directors, must have had one common purpose, being to maximise sales and to enhance the value of the brand.

   …

   …it is commercially unrealistic in the circumstances of the present case not to infer that the owner of the marks controlled the use of the marks because the common directors necessarily wished to ensure the maintenance and enhancement of the value of the brand.[15]

   39.     In the present case, while there is evidence of a written licence agreement, it was clearly created for the purposes of this proceeding and I pay it little regard.  What is relevant is the degree of factual control held by the Applicant over the use of the Trade Mark by Innovare Australia.  The Opponent seeks to distinguish this case by noting that in the Trident case, not only were there shared directors, there were shared company processes including a vendor company management system. 

   40.     While the present case differs from the facts in Trident, I find that the differences do not assist the Opponent.  I accept the evidence of Mr Zikos that the Applicant was established to hold the assets of the business, with Innovare Australia being the trading entity.  The parties shared a single common director.  As noted by the Applicant, it would be commercially unrealistic to expect there to be any documentary evidence of control, since that would, in essence, involve Mr Zikos, as the sole director of both companies, giving written instructions to himself.  The nature of the corporate structure of the Applicant and Innovare Australia is such that it must be inferred that the companies operated with a unity of purpose and that any use of the Trade Mark by Innovare Australia was directed by Mr Zikos, the sole director of the Applicant.  I find that as of the relevant date, the Applicant had been using the Trade Mark for the Applicant’s Services since at least July/August 2004 (‘Applicant use date’).

   41.     It is undisputed that the first use of the Trade Mark by the Innovare Business precedes the Applicant use date.  I find that the direct mail postcards referred to in Annexure B to D’Arro1, said to be in use since 1998 involve the use of the Trade Mark (in the bottom left hand of the postcards) in respect of services that are of the same kind of thing as the Applicant’s Services.  While they are undated, there are two witnesses who give evidence that they were prepared and used in 1998.  I am also satisfied that the materials in Annexures E, I, K, M to D’Arro 1 show use of the Trade Mark in respect of services the same kind of thing as the Applicant’s Services prior to the Applicant use date.  In summary I am satisfied by the evidence that Innovare 471 provided services that were the same kind of thing as the Applicant’s Services.  While for much of the time Innovare 471 provided its services under logos that are not substantially identical to the Trade Mark, I am satisfied that there is sufficient evidence that it also provided services under the word Innovare, or variants that are substantially identical to the Trade Mark.

   42.     The Applicant submits that the evidence of use by any entity other than the Opponent is not relevant as there is no evidence of any transfer of any rights from the earlier entities operated by Mr D’Arro to the Opponent.  The Opponent states that such a consideration is irrelevant as all that is necessary is to show some other person was the owner of the mark, not that the Opponent was the owner.  While the Opponent’s submission is technically correct, it does not answer the Applicant’s primary submission on this point, which is that if Innovare 471 was deregistered on 29 July 2012, it could not be the owner of the Trade Mark at the relevant date.  Given that as of 30 July 2012 the Applicant was actively using the Trade Mark for the Applicant’s Services, in order for me to be satisfied that at the relevant date the an entity other than the Applicant was the owner of the Trade Mark I must be satisfied that a company or individual in existence at the relevant date other than the Applicant held rights to the Trade Mark that predated the Applicant’s rights.

   43.     The Opponent has two answers to the question.  The first is that the Innovare Business has traded through a number of separate corporate entities and any trade mark rights held in the Trade Mark by Innovare 471 arising from its use from 1998 onwards has been transferred to the other corporate entities and eventually the Opponent.  The evidence does not support that conclusion.  Rather it appears that the Innovare Business was operated by Innovare 471 from 1998 to 2009.  Innovare 471 was then placed into liquidation on 22 May 2009 with its assets held by a liquidator.  There is no evidence that any subsequent entity operated by Mr D’Arro obtained any rights to the goodwill and other assets held by Innovare 471.  The Opponent was incorporated on 23 December 2013. 

   44.     While paragraph 12 of D’Arro 1 refers to some projects completed by the Innovare Business in 2012-13, there is no evidence that any entity operated by Mr D’Arro used the Trade Mark in any way between the liquidation of Innovare 471 in 2009 and 2012. While there are assertions that the Trade Mark was used between 2012 and 2014, these assertions are not supported by documentary evidence and even if there were such evidence there is no indication which entity would have used the Trade Mark during that time.  

   45.     I note Mr D’Arro’s suggestion in paragraph 10 of D’Arro 1 that he caused the transfer of IP assets in the Innovare Business from Innovare 471 to Innovare Marketing Pty Ltd ACN 138 746 559 in August 2009.  This was impossible.  At the date Innovare Marketing Pty Ltd ACN 138 746 559 was incorporated Mr D’Arro was no longer a director of Innovare 471 and indeed liquidators had been appointed to Innovare 471.

   46.     The second answer is that Mr D’Arro traded as a sole trader prior to the incorporation of Innovare 471.  Upon commencement of the business Mr D’Arro, as owner of the Trade Mark, entered into an unwritten agreement to licence the Trade Mark to the company until liquidation in 2009.  He then retained common law possession of the Trade Mark from 2009 to 2014, despite no use of the Trade Mark, and then entered into a second unwritten licence with the Opponent from 2014 onwards.

   47.     There is no direct evidence of Mr D’Arro using the Trade Mark prior to the incorporation of Innovare 471; however, his claim to having started the Innovare Business prior to incorporation is supported by some, very limited, documentary evidence (including an inscription on the back of a photograph and a 2008 article).  What is unsupported by any evidence whatsoever is that Mr D’Arro, rather than transferring all the assets (tangible and intangible) of the Innovare Business to Innovare 471 upon incorporation, entered into an unwritten agreement with Innovare 471 to licence the Trade Mark to the corporate entity.  Indeed it is specifically contradicted by Mr D’Arro himself in paragraph 10 of D’Arro 1 where he states that ‘I initially operated the Innovare Business as a sole trader and so owned its associated intellectual property in my personal capacity but over the years I have caused the intellectual property of the Innovare Business to be held by …From about June 1998 to August 2009, Innovare 471…’

   [15] Ibid [45].

1. In summary, if I were to accept the indirect evidence of use, Mr D’Arro was the first user of the Trade Mark and transferred ownership of the Trade Mark to Innovare 471 upon incorporation or some time thereafter. If I were not satisfied of this indirect evidence of use, then Innovare 471 was the first user of the Trade Mark. Innovare 471 was placed in liquidation in 2009 and there is no evidence of any transfer of any rights or goodwill held by Innovare 471 to any entity. Upon deregistration of Innovare 471 on 29 July 2012, the Applicant, which had actively used the Trade Mark for the Applicant’s Services since 2004, became the proper owner of the Trade Mark, a state of affairs that was in existence at the relevant date. I find that the Opponent has failed to establish the ground of opposition pursuant to s 58 of the Act.

   Section 60

2. Section 60 of the Act is reproduced below:

   Section 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.

3. To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[16]

   [16] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.

4. In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[17]  Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[18]

   [17] [2000] FCA 1335, [81].

   [18] (1992) 33 FCR 302, 343.

5. On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:

   [I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

   As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.

   It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[19]

   [19] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.

6. As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[20] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955.  That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’.  Nevertheless the words of Heerey J provide some guidance:

   What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[21]

   [20] (2000) 50 IPR 1.

   [21] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].

7. Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[22]

   [22] Qantas Airways Limited v Edwards [2016] FCA 729, [142].

8. The Opponent has particularised the ground of opposition in the SGP in the manner set out below: 

   The opponent repeats and relies on the above regarding the section 58 grounds. The First Innovare Company, the Second Innovare Company, RJ Springfield Pty Ltd and Orazio D’Arro have, through persistent commercial efforts, developed an association in south east Queensland with the names “Innovare” and “Innovare Builders” in the property development, building and construction industries since 1997. The Second Innovare Company, Orazio D’Arro and their associated entities and licensees presently have a business reputation which people in those industries in south east Qld associate with “Innovare” and “Innovare Builders”.

   The applicant also conducts a business in the property development, building and construction industry in Australia.  If the Applicant is permitted to trade mark and enjoy the consequential rights in the trade mark, there is a likelihood of deception and confusion to consumers and people in the industry because of the prior reputation that The First Innovare Company, the Second Innovare Company, RJ Springfield Pty Ltd, Orazio D’Arro and their associated entities have acquired.  The deception and confusion is that the applicant’s trade mark may be mistaken as being associated with the prior reputation that exists in the trade mark Innovare.

9. When considering the extent of the reputation acquired by the Trade Mark or ‘Innovare Builders’ (‘s60 Marks’) resulting from their use by the Opponent, I first note that any reputation which may have been acquired as a result of use of those marks by Innovare 471 would have dissipated in the 9 years between when Innovare 471 entered into liquidation and the relevant date. When assessing whether a reputation has been acquired by the Trade Mark I have only considered the evidence of use of the s60 Marks is by the Opponent over approximately 4.5 years prior to the registration date.[23]  I note that the word ‘builders’, in connection with the services with which we are concerned here is highly descriptive and lacks distinctiveness.  As a consequence, I consider use of ‘Innovare Builders’ by the Opponent to be use of a trade mark which is substantially identical to the Trade Mark.  Any use or promotion of ‘Innovare Builders’ therefore contributes to the acquisition of a reputation by the Trade Mark.

   [23] There is a lack of clarity in the Opponent’s evidence as to whether the use of the s60 Marks by Innovare Builders between 2014 and the relevant date was by the Opponent or its related entity Innovare Marketing Pty Ltd. I have treated the reputation as being held by the Opponent, however ultimately the question of whether the reputation in the s60 Marks was held by the Opponent, Innovare Marketing Pty Ltd or jointly by both related companies has no impact on the outcome of this ground.

10. The Opponent’s evidence is that during that time the Opponent spent approximately $300,000 in marketing expenses, including advertisements, sponsorship and the preparation of brochures and other marketing material. The Opponent has also used the s60 marks on its website, on signage in commercial projects, and in corporate documents. The Opponent has, under the s60 Marks, engaged in a number of significant commercial fit-out projects prior to the relevant date. As noted in subsequent paragraphs, the market for commercial fit-out projects is niche and fairly specialist and hence the number of people considered ‘significant or substantial’ is also fairly small. As such I am satisfied on the evidence before me that the s60 Marks had, as a result of their use by the Opponent, and before the relevant date, acquired a limited reputation in Australia for commercial fit out and related services, sufficient for the requirements under s 60(a) of the Act.

11. It is not sufficient that the Opponent merely establishes that the s60 Marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[24]

    [24] (1937) 58 CLR 641, 658.

12. In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:

    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 it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[25]

    [25] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.

13. In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:

    The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[26]

    [26] [2012] ATMO 124, [40].

14. While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[27]

    [27] [2016] FCA 729, [142].

15. In the present case the Trade Mark is substantially identical to both the s60 Marks. The Applicant’s submissions on this point, broadly taken are:

    -  that the nature of the Applicant’s Services are such that the clients are sophisticated commercial entities that generally receive tender documents prior to making a purchase and as such confusion is unlikely;

    - that the Opponent’s reputation is confined to Queensland and while it does commercial fit-out work much of its work is confined to retail fit out, rather than the office fit-out that the Applicant specialises in;

    - that the Applicant and Opponent use distinctive and quite different, stylised forms of the INNOVARE Mark; and

    - there is only one instance of confusion identified by the Opponent and it involved a building manager, not a prospective purchaser.

16. With respect third point, I note that the Applicant is not seeking to register a stylised form of the INNOVARE Mark, rather it seeks to register the Trade Mark as a word mark and hence the likelihood of confusion must be considered with respect to the word mark. While the Opponent does in some cases use a stylised form of the s60 marks, it also uses the s60 marks in plain word form and the stylised form is sufficiently close to the plain word form such that I find that the reputation of the s60 marks rests in their plain word form (rather than in the stylised form). While the Applicant may specialise in commercial office fit-outs, it seeks to register the Trade Marks for the Applicant’s Services and thus I must evaluate the likelihood of confusion when considering the notional use of the Trade Mark across the Applicant’s Services. While many of the Opponent’s commercial fit-outs relate to retail premises, it also provides commercial office fit-outs under the s60 Marks in direct competition with the Applicant.

17. In any event, I accept the Applicant’s submissions that, in the majority of cases the Applicant’s Services are high-value services purchased by sophisticated commercial entities, often by tender and thus there is a lessened likelihood of confusion. I also acknowledge that much of the Opponent’s reputation is in Queensland, though it is not exclusive to Queensland and I have considered this in determining the likelihood of confusion. However, the crux of the issue is this: the s60 Trade Marks are identical or substantially identical to the Trade Mark for identical services to the Applicant’s Services. Regardless of the level of commercial sophistication of the potential clientele and the other surrounding circumstances identified by the Applicant it is impossible to accept the Applicant’s Submissions that confusion simply will not occur.

18. Indeed, the Opponent has already identified one incident of confusion where a building manager contacted it regarding a fit out completed by the Applicant. Were that incident of confusion not remedied by the Opponent, it is quite possible that the Opponent’s reputation would have been damaged by reason of the building manager (and any other person involved in the fit-out issue) thinking that the Opponent was responsible for the seemingly imperfect fit-out completed by the Applicant. The fact that the Opponent has been able to identify only one instance of confusion does not, in my opinion, show that confusion is unlikely. It is entirely foreseeable that because of the reputation of the s60 marks the use of the Trade Mark in connection with the Applicant’s Goods would be likely to deceive or cause confusion. I find that the Opponent has established the ground of opposition pursuant to s 60 of the Act.

    Decision

    66. I have found the Opponent has established the ground of opposition it raised pursuant to s 60 of the Act. As the Delegate of the Registrar I accordingly refuse to register the Trade Mark. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

    Costs

    67. The Opponent 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 Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Nicholas Smith

    Hearing Officer

    Delegate of the Registrar of Trade Marks

    30 June 2020