Red Nose Limited v National Cancer Foundation

[2024] ATMO 137

TRADE MARKS ACT 1995

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

ReOppositions by Red Nose Limited to applications by National Cancer Foundation Limited for removal of trade mark 1276629 (25) – RED NOSE plus eight other trade marks in the names of Red Nose Limited and SIDS & Kids Limited

Delegate:                 Robert Wilson

Representation:       Opponent: Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd

Applicant: Luke Merrick SC, instructed by Richards & Evans Commercial Lawyers

Decision:                   2024 ATMO 137

Trade Marks Act 1995 (Cth) - Section 96 opposition: oppositions to applications for removal of nine trade marks pursuant to ss 92(4)(a) and 92(4)(b) – merger of sub-ss (a) and (b) in each case – one opposition entirely unsuccessful – one opposition entirely successful – use in respect of some goods/services for the remaining trade marks – not appropriate to exercise the Registrar’s discretion – one trade mark to be removed entirely – one trade mark to remain unamended – the specifications of the remaining trade marks to be amended accordingly – interplay between s 234 and s 92 considered

Background

1. This decision concerns oppositions to applications for removal of nine trade marks by Red Nose Limited (‘Opponent’). The Opponent is the registered owner of the following trade mark registrations:[1]

[1] Note: trade marks numbers 1730666 and 1730667 are in the name of SIDS and Kids Limited which is the former name of the Opponent. For the sake of convenience, both entities will be simply referred to as the ‘Opponent’.

Registration Number	Trade Mark	Classes of goods and services covered by registration:[2]
490285	36
756801	RED NOSE DAY	9, 16, 25, 28, 35, 41
909947	16, 20, 24, 25, 28, 30, 35, 36, 41
1022837	RED NOSE DAY	36, 45
1276629	RED NOSE	25
1276630	RED NOSE	9, 16, 28, 35, 36, 41, 45
1528114	RED NOSE	3, 5, 10, 11, 12, 16, 18, 20, 21, 24, 25, 29, 30
1730666	3, 5, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, 29, 30, 35, 36, 41, 45
1730667	3, 5, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, 29, 30, 35, 36, 41, 45

[2] The full specification of each registration appears in the annexure to this decision.

2. In this decision, the various trade marks of the Opponent, listed above, will be referred to, collectively, as the ‘Opponent’s Trade Marks’. Individually, each of the trade marks will be referred to by the last three digits of its registration number, for example, the ‘285 Trade Mark’. The goods and/or services for which a particular trade mark is registered will be referred to by the last three digits of the registration number, for example, the ‘285 Goods’, or the ‘801 Goods and Services’ (as indicated in the Annexure to this decision).

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

The Applications for Removal

4. On 2 June 2022 (‘Relevant Date’), National Cancer Foundation Limited (‘Applicant’) filed applications for removal of each of the Opponent’s Trade Marks from the Register of Trade Marks. The removal applications were made under both ss 92(4)(a) and 92(4)(b). The Applicant alleged, in each case, that on the corresponding filing date the Opponent had no intention in good faith to use (etc) its trade mark in Australia in relation to certain of the goods and/or services for which it is registered: s 92(4)(a). The Applicant also alleged, in each case, that the trade mark was not used by the Opponent in good faith in relation to the same goods and/or services at any time during the three year period ending on 2 May 2022 (‘Relevant Period’): s 92(4)(b). The goods and/or services relevant to each application for removal are indicated in the table below.

Registration Number

Goods and/or services to which application for removal apply

490285

All of the 285 Services

756801

All of the 801 Goods and Services

909947

All of the 947 Goods and Services

1022837

Only financial services and distribution of funds in Class 36

All services in Class 45

1276629

All of the 629 Goods

1276630

All goods and services in Classes 9, 16, 28, 35 and 41

Only financial services, distribution of funds and financial services offered in conjunction with or on behalf of charities in Class 36

Only personal and social services rendered by others to meet the needs of individuals, licencing of intellectual property and mediation services in Class 45

1528114

All of the 114 Goods and Services

1730666

All goods and services in Classes 3, 5, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, 29, 30, 35, 45

Only financial services, distribution of funds and financial services offered in conjunction with or on behalf of charities in Class 36

Only sporting and cultural activities including in relation to raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases in Class 41

1730667

All goods and services in Classes 3, 5, 9, 10, 11, 12, 16, 18, 20, 21, 24, 25, 28, 29, 30, 35, 41

Only financial services, distribution of funds and financial services offered in conjunction with or on behalf of charities in Class 36

Only personal and social services rendered by others to meet the needs of individuals, licensing of intellectual property and mediation services in Class 45

5. The Opponent filed a Notice of Opposition in respect of each application for removal. Each notice consisted of a Notice of Intention to Oppose and a Statement of Grounds and Particulars (‘SGP’). The Applicant subsequently filed a Notice of Intention to Defend each application.

Evidence

6. The Opponent filed the same Evidence in Support in respect of each application for removal being:

·Declaration made on 21 December 2022 by Keren Ludski, the Chief Executive Officer of the Opponent, with Exhibits KL-1 to KL-38 (‘Ludski declaration’).

7. The Applicant did not file any evidence.

Hearing

8. Once the time allowed for filing evidence had ended both parties requested to be heard in respect of each matter. In my capacity as a delegate of the Registrar of Trade Marks, I heard the matters together on 22 April 2024. Ed Heerey KC, instructed by Davies Collison Cave Pty Ltd, appeared on behalf of the Opponent. Luke Merrick SC, instructed by Richards & Evans Commercial Lawyers, appeared on behalf of the Applicant. Counsel’s oral submissions were supplemented by written summaries of submission which were filed prior to the hearing.

The Opponent

9. According to the Ludski declaration:

The Sudden Infant Death Research Foundation Inc., subsequently known as SIDS and Kids Limited and now known as [the Opponent], was founded by Kaarene Fitzgerald in 1977, following the death of her son, Glenn to SIDS. [The Opponent] has grown from small volunteer self-help roots into a vital and vibrant organisation that supports bereaved families and educates parents, health professionals and the community throughout Australia.

In 2016, SIDS & Kids changed its name to Red Nose Australia, with five formerly state-based organisations coming together to form the national Red Nose organisation. The state-based organisations in South Australia, Tasmania and the Northern Territory chose not to join the national organisation, and they continue on as independent SIDS and Kids organisations in their state. …

[The Opponent] … is a charitable organisation which has, inter alia, the objectives of raising funds to fund research, deliver prevention messaging and advocacy and build awareness of pregnancy and infant loss whilst delivering bereavement support programs to those impacted by the death of a baby or child. [The Opponent] also provides a national safe sleeping education programme which is evidence based to reduce the risk of sudden infant death syndrome (SIDS) and fatal sleeping accidents to the public and health professionals.

[The Opponent] is largely self-funded, and a significant percentage of its revenue is derived from the RED NOSE DAY fund raising campaign and associated activities.

The Applicant

10.     There is little before me from which I might provide a background of the Applicant; however, it is stated in the Applicant’s submissions that ‘the parties have been in dispute for some years’.

Legal Framework

11.     Part 9 governs the removal of trade marks from the Register for non‑use. The sections of Part 9 which are most relevant to the case in hand are ss 92, 96, 100 and 101.

12.     As indicated above, the applications for removal were made under the provisions of both ss 92(4)(a) and 92(4)(b). Section 92 relevantly provides:

Section 92.  Application for removal of trade mark from Register etc

(1)  … a person may apply to the Registrar to have a trade mark that is … registered removed from the Register.

(2)  The application: 

(a) must be in accordance with the regulations; and

(b) may be made in respect of any or all of the goods and/or services in respect of which the trade mark may be, or is, registered.

…

(4)  An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds: 

(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non‑use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner: 

(i) used the trade mark in Australia; or

(ii) used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates. 

13.     The applications to register the Opponent’s Trade Marks were all filed prior to 24 February 2019. The legislation in force at the time states that an application under s 92(4)(a) may be made at any time after the filing date in respect of the application for registration of a trade mark; and an application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register a trade mark.[3] I confirm that five year period had passed in respect of all of the Opponent’s Trade Marks when the removal applications were made.

[3] Per s 93(2) prior to the amendments made to the Act as a result of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) as applies in the present matter.

Merger of sections 92(4)(a) and (b)

1. Sections 92(4)(a) and 92(4)(b) provide distinct and alternative grounds for removal. Because of the specifics of these provisions, paragraph (a) merges with paragraph (b) once a challenged trade mark has been registered for five years.[4] As all of the Opponent’s Trade Marks had been registered for a period longer than five years as at the Relevant Date it is necessary only for me to consider the applications for removal under s 92(4)(b). Section 92(4)(a) need not be considered further in this decision—although the provision is discussed briefly in connection with s 234, below.

   [4] Mark Davison, Tracey Berger and Annette Freeman, Shanahan’s Australian Law of Trade Marks and Passing Off (Lawbook Co., 4^th ed, 2008) [70.510].

   Onus and discretion

   15.     Sections 100(1)(c) and 100(3) indicate that the Opponent bears the onus of rebutting the allegations made under s 92(4)(b), either by establishing that each of its trade marks (or each with additions or alterations which do not substantially affect its identity) was used in good faith in Australia during the Relevant Period for the relevant goods/services, or that there was a relevant obstacle to use. The Opponent has not asserted that there was a relevant obstacle to use, and no such obstacle is apparent, so that question need not be considered further. I proceed on the basis that the standard of proof required is that based on the balance of probabilities.[5]

   [5] Following Gyles J’s approach in Pfizer Products Inc v Karam (2006) 70 IPR 599 with respect to oppositions under s 52 of the Act. See also the recent decision of the Full Federal Court in Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelmann JJ) affirming Gyles J’s approach.

   16.     Section 101(1) provides the Registrar with the discretion, in each case, to remove the Opponent’s Trade Marks from the Register ‘in respect of any or all of the goods and/or services to which the [removal] application relates’. Section 101(3) explicitly provides that the Registrar has the discretion not to remove a challenged trade mark (if the Registrar is satisfied that it is reasonable to do so), even if the grounds on which the application was made have been established.

   Consideration of issues

   17.     To successfully rebut the allegations of non-use, the Opponent must establish in each case that it, as the owner of the trade marks used each in the course of trade in respect of the goods and/or services for which removal is sought. The use must be in good faith, and must have occurred during the Relevant Period. It is necessary that the Opponent provide evidence of use which is clearly dated and shows use during the Relevant Period. Evidence of use which falls outside of the Relevant Period is generally of little or no assistance to the Opponent in establishing use during the Relevant Period.

   18.     In its submissions, the Opponent stated:

   The Opponent is a not-for-profit charitable organisation established in 1977 and which has since become an iconic part of Australian society. [The Opponent’s] annual ‘Red Nose Day’ fundraiser has been a fixture on the Australian calendar for over 30 years. …

   [The Opponent’s] branding has evolved over time with the initial use of ‘SIDS and Kids’ until 2016, and the evolution to a national body under the umbrella brand ‘Red Nose’. However, through this entire period, [the Opponent] has consistently used the words ‘Red Nose’ and ‘Red Nose Day’ such that the Australian public have come to associate the words SIDS and Kids, Red Nose and Red Nose Day as interchangeable descriptions for [the Opponent].

   19.     The Opponent submitted that the removal applications should be ‘rejected in their entirety’ because the evidence establishes that there has been ‘significant good faith use’ of all of the Opponent’s Trade Marks. However, the Opponent further submitted that where it has not provided evidence of use within the Relevant Period, or has not provided evidence of use ‘within a particular class description’ the discretion available to the Registrar not to remove a trade mark should be exercised in the Opponent’s favour.

   The 285 Trade Mark and s 234

   20.     The Opponent submitted that the 285 Trade Mark is not able to be the subject of an application for removal under either s 92(4)(a) or 92(4)(b) as it was registered in Part A of the old register, has not ceased to be registered, and has been registered for a period of more than seven years. The Opponent relied on s 234 to support this view. Section 234 is reproduced below.

   234 Registration conclusive after 7 years

   (1)This section applies in relation to:

   (a)   a registered trade mark that:

   (i)immediately before 1 January 1996, was registered in Part A of the old register; and

   (ii)has not at any time on or after that day ceased to be registered; and

   (b)   a registered trade mark:

   (i)whose application for registration in Part A of the old register had been accepted under the repealed Act and was still pending immediately before 1 January 1996; and

   (ii)that has not at any time on or after that day ceased to be registered.

   Note 1: For registered trade mark and old register see section 6.

   Note 2: For pending see subsection 11(2).

   (2)In any legal proceedings:

   (a)   the original registration under the repealed Act of a trade mark referred to in paragraph (1)(a); or

   (b)   the original registration under this Act of a trade mark referred to in paragraph (1)(b);

   is taken to be valid in all respects after a period of 7 years from the date of registration of the trade mark unless it is shown that:

   (c)   the original registration was obtained by fraud; or

   (d)   the registration of the trade mark would be contrary to section 28 of the repealed Act; or

   (e)   the trade mark did not, at the commencement of the proceedings, distinguish the goods or services of the registered owner in relation to which the trade mark is used from the goods or services of other persons.

   Note 1: For date of registration see section 6.

   Note 2: Section 28 of the repealed Act provided as follows:

   “28. A mark:

   (a) the use of which would be likely to deceive or cause confusion;

   (b) the use of which would be contrary to law;

   (c) which comprises or contains scandalous matter; or

   (d) which would otherwise be not entitled to protection in a court of justice;

   shall not be registered as a trade mark.”.

   21.     The Applicant submitted, and I agree, that s 234

   creates a presumption that the mark was validly registered [but] says nothing in relation to whether such a mark may be removed for non-use and there is nothing in s 234 which expressly or impliedly ousts or limits the operation of Part 9 of the Act.

   22.     The effect of the section is not to prevent an application for removal under s 92(4)(b) in respect of a trade mark which satisfies the requirements of s 234(1)(a) and that has been registered for longer than seven years (sub-s (2)). Section 234 might have the effect of preventing an application for removal under s 92(4)(a), however, this is a moot point here due to the provision in s 234(2) that it is necessary for a trade mark to have been registered for seven years before its registration is taken to be ‘valid in all respects’ and the effect of the merger of ss 92(4)(a) and 92(4)(b) after a trade mark has been registered for five years, as discussed above. Any trade mark which satisfies the provisions of s 234(1), will have been registered for longer than seven years; this, of course, includes the 285 Trade Mark. Consequently, the present application for removal of the 285 Trade Mark under s 92(4)(b) is valid and will be considered further.

   Use of substantially identical trade marks

   23.     The Opponent has, in some instances, relied upon use of a trade mark which it submits is substantially identical to a challenged trade mark. Section 7 provides that the Registrar may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark. For convenience, this type of use will be referred to as ‘s 7 use’). This is essentially a consideration of whether the trade marks in question are substantially identical.[6] In considerations of substantial identity, mere changes in typeface,[7] and other minor graphic variations,[8] have been permitted; however, use of only the word component of a complex device has not been permitted.[9] It was stated by Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd that:

   [6] Re Effem Foods Pty Ltd [1999] ATMO 80 (Thompson).

   [7] Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135, [117] (Bennett J).

   [8] See for example: Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380 [256]–[258] (Yates J); P & T Basile Imports Pty Ltd v Aceto Balsamico del Duca di Adriano Grosoli SRL [2011] ATMO 44, [23]–[28] (Windsor).

   [9] See for example: 1-800-FLOWERS.COM, Inc. v Flowerscorp Pty Ltd [2013] ATMO 11 (Lyons); Liliana Forza v Jaimex Nominees Pty Ltd [2016] ATMO 5 (Worth).

   [W]hether a person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark requires a side by side comparison of the trade mark with the alleged use, assessing the importance of their similarities and differences having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[10]

   [10] [2010] FCA 664, [154].

   The relevant trade marks of the Opponent will be considered below.

   24.     The Opponent relied on use of the words RED NOSE DAY as constituting use of the 285 Trade Mark. Those two signs are juxtaposed below.

285 Trade Mark Example of sign relied upon

25.     On a side by side comparison, it is apparent that RED NOSE DAY is an essential feature of both signs. However, this alone is not sufficient to mean the signs are substantially identical. The head device in the 285 Trade Mark is significant, and an essential feature of the sign. While the head device might allude to RED NOSE DAY it is not sufficiently illustrative of the words that its presence can be significantly discounted in this comparison. There is not a total impression of resemblance which emerges from the comparison of the two trade marks. For this reason, I am not satisfied that use of the sign RED NOSE DAY is use of the 285 Trade Mark with an alteration which does not substantially affect its identity. Consequently, use of RED NOSE DAY in the Opponent’s evidence will not be taken to be use of the 285 Trade Mark.

26.     The Opponent submitted that use of the words SIDS AND KIDS constituted use of the 947 Trade Mark. The Opponent referred to use on page 333 of the Ludski declaration as an example of this use (which appears in Exhibit KL-12 of the declaration). The plain words SIDS AND KIDS appear on that page. The sign shown below right also appeared on that page. It is my view that the sign shown below right is the high water mark in this comparison, so it is that sign which will be discussed.

947 Trade Mark ‘SIDS AND KIDS sign’

27.     It is apparent on a side by side comparison of the two signs shown above that the 947 Trade Mark includes the words RED NOSE DAY and that these words are absent from the SIDS AND KIDS sign. RED NOSE DAY is a distinctive and significant element of the 947 Trade Mark and its absence substantially affects the identity of the trade mark. I am of the view that use of the SIDS AND KIDS sign is use of the 947 Trade Mark with alterations which significantly affect its identity. Consequently, use of the SIDS AND KIDS sign will not be taken to be use of the 947 Trade Mark.

28.     The Opponent submitted that use of RED NOSE DAY constituted use of the 630 Trade Mark. The Opponent relied, in particular, on use of RED NOSE DAY on page 333 of the Ludski declaration. The only apparent use of RED NOSE DAY on that page is as part of the sign shown below right, where it is juxtaposed with the 630 Trade Mark.

630 Trade Mark	‘Visit RND Site sign’
RED NOSE

29.     As a starting point, I am not satisfied that when used in the context in which it appears in the evidence, the use of the words RED NOSE DAY within the Visit RND Site sign is use of those words as a trade mark. This is not use in the course of trade in connection with any goods or services, rather the sign is merely a label on a ‘button’ which provides a link to another website. For this reason, it is not necessary to consider whether RED NOSE DAY is substantially identical to RED NOSE. Consequently, use of RED NOSE DAY in the above context will not be considered to be use of the 630 Trade Mark.

30.     The Opponent relied upon use of the sign shown below right as use of the 801 Trade Mark.

801 Trade Mark	‘RED NOSE DAY in a circle sign’
RED NOSE DAY

31.     The Applicant accepted that use of the RED NOSE DAY in a circle sign was use of the 801 Trade Mark with additions or alterations which do not substantially affect the identity of the 801 Trade Mark. I am prepared to proceed on that view. Consequently, use of the RED NOSE DAY in a circle sign will be taken as use of the 801 Trade Mark.

32.     The Opponent appears to assume, without specific discussion on the point, that use of the 667 Trade Mark constitutes use of the 666 Trade Mark; those trade marks are juxtaposed below. The Applicant appears, from its submissions, to accept that use of the one constitutes use of the other. While I have reservations that the two trade marks are, in fact, substantially identical, given the Applicant’s concession I am prepared to proceed on the basis that use of the 667 Trade Mark constitutes use of the 666 Trade Mark, and vice versa.

666 Trade Mark 667 Trade Mark

Consideration of evidence of use during Relevant Period

33.     This section of this decision will consider whether there is use of each of the Opponent’s Trade Marks during the Relevant Period. The Opponent has drawn my attention to examples of use outside of the Relevant Period; however, this is not considered in this section of the decision.

285 Trade Mark

34.     The Opponent did not assert that the 285 Trade Mark was used during the Relevant Period, rather it relied upon the asserted s 7 use discussed above. I found that the use relied upon by the Opponent was not s 7 use, and could not be relied upon by the Opponent. The Ludski declaration does not demonstrate use of the 285 Trade Mark during the Relevant Period; consequently, I am not satisfied that the 285 Trade Mark was used during the Relevant Period for any of the 285 Services.

801 Trade Mark

35.     The Opponent submitted that the 801 Trade Mark was used during the Relevant Period in respect of a subset only of the 801 Goods and Services. I will consider each class in turn.

Class 9

There was no assertion of use at all in respect of the Class 9 goods.

Class 16

The Applicant conceded there was use in respect of stationery, but did not concede any other use. I accept the conceded use here and any conceded use in the remainder of the decision.

The Opponent submitted there was use in respect of a ‘Digital resources kit including fundraising guide, posters, bunting and games’, and referred to page 361 of Exhibit KL-14 to support this use. The exhibit refers to ‘our new digital resources kit’ and indicates that the kit is ‘jam packed with [items including] our comprehensive fundraising guide, posters, bunting, cool games and more!’. A link is provided to a web page where the digital resources kit might be downloaded.

From the description, it is apparent that the digital resources kit is a digital file that could be downloaded, following which a person might then turn all or parts of that digital file into hard copy by the use of a printer—thereby producing printed matter. I am not satisfied that use in respect of such a digital file is use in respect of printed matter, notwithstanding that a person might produce the same from the file. I am also not satisfied that the existence of, say, a printable poster in a digital file is the same good as posters that appear in Class 16. Class 16 is for such goods that are already in hard copy form. Downloadable posters is an item that appears in Class 9, as are other downloadable items such as downloadable publications and downloadable educational material. For this reason, I am not satisfied that use in respect of the digital resources kit constitutes use in respect of the remaining Class 16 goods.

Class 25

The Applicant conceded there was use in respect of all of the Class 25 goods.

Class 28

The Applicant conceded there was use in respect of toys.

The Opponent referred to use in respect of ‘red noses’—being the familiar sort of thing that a clown might put on their nose for comic effect, or a person might put on their nose to show solidarity with the Opponent’s cause. Many people will be familiar with the large versions of red noses which are put on the front of motor vehicles for the same reasons. The Applicant submitted that the Opponent’s red noses ‘do not meet the description of games and other playthings, playing cards’ rather ‘they are a form of promotional merchandise used for fundraising’. That a good is sold as promotional merchandise does not, of itself, change the character of the good. For example, a mug bearing a logo and sold as merchandise is still a mug. A red nose is not games, nor is it playing cards; however, I am satisfied that it falls into the category of other playthings: although the distinction between toys and other playthings is one that eludes me. Indeed, the Macquarie Dictionary definition of a toy includes ‘a plaything’. The definition also includes ‘a small imitation of some familiar thing, for children or others to play with, or otherwise derive amusement’. I am satisfied that a red nose fits the description of both a toy and an other plaything.

To support use in respect of games the Opponent referred to page 361 of Exhibit KL‑14. This is a reference to the games included in the digital resources kit discussed above. Class 28 is similar to Class 16 in that it includes games which are physical items. Electronic publications featuring games is an item which appears in Class 9. For these reasons I am not satisfied that use in connection with the games which are included in the downloadable digital resources kit is use in connection with games that appear in Class 28 of the 801 Goods and Services.

I am satisfied that the evidence shows use in respect only of toys and other playthings in Class 28.

Class 35

The Opponent has not asserted use of the 801 trade mark in connection with any of the Class 35 services during the Relevant Period.

Class 41

The Applicant conceded there was use in respect of all of the Class 41 services during the Relevant Period.

801 Trade Mark use summary

Classes 9 and 35: none

Class 16: Stationery

Class 25: Clothing, footwear, headgear

Class 28: Toys and other playthings

Class 41: Education and entertainment services, being services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome

947 Trade Mark

36.     The Opponent submitted that the 947 Trade Mark, ‘is the only mark which has not been used extensively within [the Relevant Period] but has extensive use outside of the [Relevant Period] for the majority of claimed goods and services’. The Opponent submitted that the 947 Trade Mark was used during the Relevant Period in respect of only a subset of the 947 Goods and Services; each class will be considered in turn.

Class 16

The Applicant conceded there was use in connection with stationery.

The only asserted use during the Relevant Period of the remainder of the goods was in respect of ‘posters’ and ‘display boxes’—both being printed matter. In both cases the Opponent relied on page 291 of Exhibit KL-12. KL-12 is declared to be

current extracts from [the Opponent’s] current online store … a selection of historical extracts … a selection of photographs and a selection of snapshots from [the Opponent’s] Instagram and Facebook pages.

Page 291 shows a photograph of what appears to be a person sitting at a small table with various items on display, some within display boxes. The photograph appears on a social media web page and is dated within the Relevant Period. In the centre of the table is a poster. While it is somewhat unclear, it is accepted that the trade mark appears at the top of the poster and the display boxes. The poster appears to be advertising an event of the Opponent. Use of the trade mark in this manner is not use in connection with goods—the poster and the display boxes are not, for example, for sale. It was submitted by the Applicant, that this use is rather, ‘in respect of [the Opponent’s] fundraising and awareness activities’. I agree with this submission. I am not satisfied this demonstrates use of the trade mark in respect of printed matter.

I am satisfied of use during the Relevant Period only in connection with stationery.

Class 20

The Opponent conceded there was no use in connection with any of the Class 20 goods, at any time.

Class 24

The Opponent conceded there was no use in connection with any of the Class 24 goods, at any time.

Class 25

The Opponent asserted use outside of the Relevant Period only.

Class 28

The Opponent conceded there was no use, at any time, of the trade mark in connection with sporting equipment. The Applicant conceded use only in connection with ‘toys’.

The only asserted use in respect of the remaining goods during the Relevant Period was in respect of ‘red noses’. The Opponent referred to page 291 of Exhibit KL-12. This page was described above in respect of Class 16. There appear to be ‘red noses’ for sale on the table. For the reasons discussed above, I am satisfied that use of the trade mark in respect of red noses constitutes use in respect of toys and other playthings.

Class 30

The Opponent conceded there was no use of the 947 Trade Mark in connection with any of the Class 30 goods, at any time.

Class 35

The Opponent asserted use outside of the Relevant Period only.

Class 36

The Opponent asserted use outside of the Relevant Period only.

Class 41

The Opponent asserted use outside of the Relevant Period only.

947 Trade Mark use summary

Classes 20, 24, 25, 30, 35, 36, 41: none

Class 16: Stationery

Class 28: Toys and other playthings

837 Trade Mark

37.     The Opponent submitted that the 837 Trade Mark was ‘used extensively’ in connection with the 837 Services during the Relevant Period. As indicated above, the Applicant has sought removal in respect of all of the Class 45 Services; however, at hearing the Applicant conceded that the Opponent had shown use in respect of those services and did not press that aspect of its claim. The Applicant sought removal in respect of only financial services and distribution of funds in Class 36. This leaves charitable fund-raising services in Class 36 unchallenged.

38.     The use relied upon by the Opponent to establish use in respect of the challenged Class 45 services was ‘acceptance of donations’, to support financial services, and ‘investment in research and education’, to support distribution of funds. The Applicant did not dispute that the evidence showed use in respect of the supplied services; however, the Applicant submitted that neither of the services relied upon supported the Opponent’s case with respect to financial services or distribution of funds.

39.     The Applicant submitted that ‘acceptance of donations’ does not constitute the provision of a financial service, rather ‘it is a means of members of the community providing support to the causes pursued by [the Opponent]’. I am inclined to the Applicant’s view. Simply because the acceptance of donations involves acceptance of money does not make it a financial service. The acceptance of donations is similar, in my view, to the acceptance of money by a trader as payment for goods and services provided—it is unlikely to be suggested that a trader in such circumstances is providing a financial service. I am not satisfied that the Opponent has established use in respect of financial services.

40.     As to whether ‘investment in research in education’ constitutes distribution of funds, the Applicant submitted:

The phrase ‘distribution of funds’ suggests services akin to those provided by a trustee, rather than the use of funds raised for charitable purposes. The use of funds to achieve the objectives of [the Opponent] does not itself constitute the ‘distribution of funds’.

I am, again, inclined to the Applicant’s view. A charity will typically receive donations and use those to meet a broad range of its expenses, for example, wages and salaries, rent, electricity bills, insurance, etc. Such expenses are necessary for the functioning of the charity. Use of donated funds to pay such expenses is not in my view ‘distribution of funds’. The Opponent’s expenditure on ‘investment in research and education’ are simply other expenses that the Opponent incurs in carrying out its business.

837 Trade Mark use summary

Class 36: Charitable fund-raising services

Class 45: Counselling services; grief counselling, bereavement services

629 Trade Mark

41.     The Applicant conceded that the Opponent had shown use of the 629 Trade Mark in respect of all of the 629 Goods and did not press that aspect of its claim.

630 Trade Mark

42.     The Opponent submitted that the 630 Trade Mark had ‘enjoyed significant use’ during the Relevant Period. Each class will be considered in turn.

Class 9

The Opponent conceded it had not used the trade mark during the Relevant Period in respect of the Class 9 goods.

Class 16

The Applicant conceded that the Opponent had used the trade mark in respect of stationery.

As evidence of use in respect of the balance of the Class 16 goods, the Opponent relied on use of the trade mark in connection with a ‘digital resources kit (etc)’, and referred to page 361 of Exhibit KL-14. That use was discussed in respect of Class 16 of the 801 Goods and Services and did not satisfy me that the use was in connection with printed matter, nor does it satisfy me of use in respect of the remainder of the Class 16 goods, here.

The Opponent also relied on use of the 630 Trade Mark in connection with ‘display boxes’ to support use in connection with balance of the Class 16 goods, and referred to page 306 of Exhibit KL-12. ‘Display boxes’ were discussed, above, in respect of Class 16 of the 947 Goods and Services. For the same reasons discussed there, I am not satisfied that use demonstrated in KL-12 constitutes use of the trade mark in respect of printed matter, or any of the remaining Class 16 goods.

I am satisfied of use during the Relevant Period only in connection with stationery.

Class 28

The Opponent conceded it did not use the trade mark in respect of gymnastic and sporting articles; decorations for Christmas trees; synthetic Christmas trees; Christmas tree ornaments; and sporting goods. I accept there was no use in respect of those goods.

The Applicant conceded use by the Opponent in respect of toys and did not press that aspect of its claim.

The Opponent relied on use in connection with ‘red noses’ to support use in connection with the rest of the Class 28 goods. The Class 28 goods are qualified with none being novelty noses. For this reason, use in respect of ‘red noses’—being novelty noses—cannot support use of the trade mark.

The Opponent relied on page 323 of KL-12 which shows use of the trade mark in connection with a soft toy. I am satisfied that this constitutes use in connection with toys and other playthings.

The Opponent relied on page 361 of KL-14 to support use in connection with games. This use was discussed in connection with the Class 28 goods of the 801 Goods and Services. For the reasons discussed there I am not satisfied that this constitutes use in connection with games.

There is no use demonstrated in respect of playing cards.

I am satisfied only of use of the trade mark in connection with toys and other playthings; none being novelty noses.

Class 35

The Applicant conceded that the Opponent used the trade mark in respect of retail, wholesale and online selling in relation to fundraising for charitable organisations.

The Opponent’s asserted use in connection with the balance of the services in this class falls outside of the relevant period.

I am satisfied only of use in connection with the services conceded by the Applicant.

Class 36

As indicated above, the Applicant has not sought removal in respect of charitable fund-raising services.

The nature of the balance of the services in this class were discussed in connection with the Class 36 services of the 837 Services. For the reasons discussed there, I am not satisfied that the trade mark was used in connection with those services.

Class 41

The Applicant conceded that the Opponent demonstrated use in connection with education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases and did not press that aspect of its claim.

To support use in connection with the balance of the services, the Opponent relied upon page 361 of Exhibit KL-14, being the digital resources kit discussed above in connection with Class 28 of the 801 Goods and Services. It is my view that the digital resources kit is a good, rather than a service. The Applicant submitted, ‘insofar as it appears to relate to an activity, it is fundraising activity’. I concur with the Applicant.

I am satisfied of use only in connection with the services conceded by the Applicant.

Class 45

A indicated above, the Applicant has not sought removal in respect of counselling services; and grief counselling, bereavement services.

The Opponent conceded it did not use the trade mark in respect of licensing of intellectual property and mediation services.

In respect of the remaining services, being personal and social services rendered by others to meet the needs of individuals, the Opponent relied on page 118 of Exhibit KL-5. KL-5 is declared to be ‘a copy of the Red Nose Annual Report 2021-2022’. The particular page referred to is headed ‘Get Involved’. Beneath the heading appears the statement, ‘By supporting Red Nose, you are making a profound impact on the lives of thousands of Australian families’. The page appears to be trying to encourage readers of the report to get involved by, for example, making donations, leaving a bequest, being involved in fundraising, and volunteering. The Applicant submitted that the ‘scope’ of the claimed services ‘is unclear’—it is certainly extremely broad. Nevertheless, I am not satisfied that attempting to encourage a reader to undertake an activity or action, such as those indicated, is of itself providing a service. Consequently, I am not satisfied that the exhibit supports use in connection with the balance of the Class 45 services.

630 Trade Mark use summary

Class 9: none

Class 16: Stationery

Class 28: Toys and other playthings; none being novelty noses

Class 35: Retail, wholesale and online selling in relation to fundraising for charitable organisations

Class 36: Charitable fund-raising services

Class 41: Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases

Class 45: Counselling services; grief counselling, bereavement services

114 Trade Mark

43.     The Opponent submitted that the 114 Trade Mark has ‘enjoyed significant use’ during the Relevant Period ‘for the majority of categories’.

Class 3

The Applicant conceded use of the trade mark in connection with wipes incorporating cleaning preparations; baby wipes; and wipes for cleaning skin.

The Opponent did not assert use in respect of the balance of the goods.

Class 5

The Opponent conceded it did not use the trade mark in connection with any of the Class 5 goods.

Class 10

The Opponent conceded that it did not use the trade mark in respect of surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; dummies for babies, baby bottles, teething rings; covers for baby feeding bottles; nipples for babies feeding bottles; teats, parts, fittings and accessories for the aforesaid goods; apparatus for the treatment of babies; and non-spill medicine spoons for infants.

To support use in connection with the remainder of the Class 10 goods, the Opponent relied upon pages 449 and 450 of Exhibit KL-18. It was declared in the Ludski declaration that, ‘Red Nose has a partnership with MyBub’ and that ‘Red Nose and MyBub were in partnership during the Relevant Period’. KL-18 is declared to be ‘historical screenshots taken from [an internet archive service]’ of websites ostensibly belonging to Dunlop Foams and Clark Rubber, and the Facebook pages of Clark Rubber and Red Nose. Page 449 of the exhibit shows a page of Dunlop Foams website which includes the trade mark ‘MyBub’. A statement on the page reads, ‘We are proud to support Red Nose Australia and their safe sleep recommendations’. Page 450 is from the Opponent’s Facebook page and indicates ‘Until Tuesday 13 June, Shop Red Nose is offering up to 30% off all My Bub products’. None of the goods bear the trade mark. I am not satisfied that this shows use of the trade mark in connection with the goods themselves. It is, rather, a simple reference to the partnership, and potentially use in connection with retailing services.

I am not satisfied the trade mark was used in connection with any of the Class 10 goods.

Classes 11 and 12

The Opponent conceded that it did not use the trade mark in connection with any of the Class 11 or Class 12 goods.

Class 16

The Applicant conceded that the trade mark was used in connection with stationery.

The Opponent conceded it did not use the trade mark in respect of babies' bibs of paper; paper wipes; wipes made of tissue (other than impregnated or for medical use); and paper bibs.

In respect of the remainder of the Class 16 goods the Opponent relied on page 361 of Exhibit KL-14 and page 306 of KL-12. Both of these pages were discussed above, and for similar reasons I am not satisfied that these support use of the balance of the Class 16 goods here.

I am satisfied of use only in connection with stationery.

Class 18

The Opponent conceded it did not use the trade mark in connection with bags and baby carriers (slings or harnesses); baby slings; and pouch baby carriers.

To support use in connection with the remainder of the goods, being carrying bags (other than disposable carrier bags), the Opponent referred to page 486 of KL-20. It was stated in the Ludski declaration:

Together with its partners … [the Opponent] has provided a range of Goods and Services to maximise the impact of [the Opponent’s] prevention, support and advocacy work over a number of years and in the Relevant Period. These Goods include but are not limited to [bags].

KL-20 is declared to be ‘further images and snapshots referring to the above Goods and Services’. Page 486 of KL-20 is an image showing three people apparently standing behind a display table. The people appear to be wearing aprons. The trade mark appears on the aprons. One person is also holding a mug which bears the trade mark. On the display table are two display boxes which bear the trade mark. On the table between the boxes appears to be a small pile of large paper bags, the top one of which bears what appears to be the 947 Trade Mark. The 114 Trade Mark does not seem to appear on the bag. I am not satisfied that this constitutes use of the trade mark in respect of carrying bag (other than disposable carrier bags) as the nature of such a paper bag is that it is disposable. Behind one of the display boxes appears to be a cloth carrying bag; however, no trade mark is apparent on the bag and it is unclear whether this item is for sale or is the personal property of one of the people standing behind the table. I am not satisfied that the exhibit shows use of the trade mark in connection with remainder of the goods.

Class 20

The Opponent conceded it did not use the trade mark in respect of the following goods in this class:

furniture including office furniture; divans, couches, chairs, armchairs, settees, sofas; beds and bedding for animals and household pets; sleeping bags, crib bumpers; mirrors, picture frames; decorative wall plaques; mobiles (decoration), interior window blinds, decorative bead curtains; wind chimes; infant walkers; seats; bassinets; cradles; cribs; booster seats; change tables for infants, play pens; toy chests, nesting boxes; high chairs for babies; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; parts, fittings and accessories for the aforesaid goods in this class; baby nests in the nature of padded baby carriers; stands for baby baths; babies' baskets; babies' bouncing chairs; babies' cradles; chairs for babies; changing tables for babies; furniture for babies; high chairs for babies; playpens for babies; seats adapted for babies; support cushioning for use in car safety seats for babies; supports to hold babies in reclining or sitting positions; cots; travel cots; mats for infant playpens; nursery furniture for use by infants

To support use in respect of the following goods the Opponent relied upon pages 449 and 450 of Exhibit KL-18. Those pages were discussed in respect of the Class 10 claim for this trade mark. For similar reasons, I am not satisfied the pages support use in connection with the following goods.

beds, pillows, mattresses and bedding (except linen) in this class; cushions, bolsters; furniture, beds, pillows, mattresses and bedding (except linen) for babies, children and infants; cot mattresses, bassinet mattresses, mats for infant playpens, support pillows for use in baby seating; bedding for cots (other than bed linen); cotton change pads, folding change pads, vinyl change pads, baby changing mats in this class; pregnancy support pillows, pregnancy support mattresses, nursing pillows, baby head support pillows.

I am not satisfied the trade mark was used in connection with any of the Class 20 goods.

Class 21

The Opponent conceded that it did not use the trade mark in connection with any of the Class 21 goods.

Class 24

In respect of the Class 24 goods, the Opponent relied upon pages 435 and 439 of Exhibit KL-17. It is stated in the Ludski declaration that, ‘In 2014 Sheridan became the first Australian bed linen partner of [the Opponent] … The two organisations were in partnership during the Relevant Period’. Exhibit KL-17 is declared to be ‘extracts from Sheridan’s website … [the Opponent’s] website … and Sheridan’s Facebook Page’. Page 435 of KL-17 shows what appears to be a post on a social media site. The post is dated during the Relevant Period. The post includes a photograph of a baby wearing a bathrobe and holding a soft toy dog. The dog is wearing a red nose, and the baby is holding one. The following text appears above the photograph:

Sheridan is proud to be the first Australian bed linen partner of Red Nose. Devoted to quality, Sheridan baby designs are crafted for safety, adhering to international standards.

Page 439 of KL-17 shows what appears to be a page from the Opponent’s website. The page refers to the partnership with Sheridan, and states that ‘Sheridan baby products are displayed in stores with the Red Nose Friedly logo’. The single photograph on the page shows a cot in a room which has some bedding on it. The Applicant submitted that the pages, while referring to the partnership, do not show use of the trade mark in connection with the Class 24 goods. I agree.

Class 25

The Opponent conceded there was no use of the trade mark during the Relevant Period in connection with babies’ bibs (other than of paper); bibs, not of paper.

In respect of the balance of the goods in this class, the only evidence of use during Relevant Period upon which the Opponent relied was pages 427 and 341 of Exhibit KL-16. The Ludski declaration stated that the Opponent ‘has partnered with Bonds for baby clothing and infant wear’. Exhibit KL-16 is declared to be historical screenshots taken from Bond’s website, Bond’s Facebook page, the Opponent’s website, and the Opponent’s Facebook page. The individual pages referred to by the Opponent suffer from similar shortcomings found in respect of other partnership evidence of the Opponent (discussed above); in the Applicant’s words, ‘they do not show any usage of the trade mark … in respect of the Class 25 goods claimed, but rather show that there is an arrangement whereby Bonds is a “preferred partner” of [the Opponent]’.

I am not satisfied the trade mark was used in connection with any of the Class 25 goods.

Classes 29 and 30

The Opponent conceded it did not use the trade mark in respect of either the Class 29 or Class 30 goods.

114 Trade Mark use summary

Classes 5, 10, 11, 12, 18, 20, 21, 24, 25, 29, 30: none

Class 3: Wipes incorporating cleaning preparations; baby wipes; wipes for cleaning skin

Class 16: Stationery

666 Trade Mark

44.     The Opponent submitted that the 666 Trade Mark ‘enjoyed significant use inside [the Relevant Period] for the majority of categories’; nevertheless, the Opponent conceded it did not use the trade mark at all during the Relevant Period in relation to any of the goods in Classes 5, 9, 10, 11, 12, 20, 21, 29 and 30. The remainder of the classes will be considered in turn.

Class 3

The Opponent conceded that it did not use the trade mark in respect of baby bath preparations (non-medicated); baby body milks; baby lotions; baby oil; baby shampoo; and non-medicated baby care products.

The Applicant conceded that the Opponent used the trade mark in respect of the balance of the Class 3 goods, being, wipes incorporating cleaning preparations; baby wipes; and wipes for cleaning skin.

Class 16

The Applicant conceded that the Opponent used the trade mark in respect of stationery.

In respect of the balance of the Class 16 goods the Opponent relied upon page 306 of Exhibit KL-12 and page 361 of Exhibit KL-14. Those pages were discussed in respect of Class 16 of the 630 Goods and Services, and Class 16 of the 801 Goods and Services, respectively. For the same reasons discussed in those places, I am not satisfied that these pages demonstrate use in respect of the balance of the Class 16 goods.

Class 18

The Opponent conceded that it did not use the trade mark in respect of bags and baby carriers (slings or harnesses); baby slings; and pouch baby carriers.

In respect of the balance of the Class 18 goods the Opponent relied upon page 486 of Exhibit KL-20. That evidence was discussed in respect of Class 18 of the 114 Goods and Services, above. For the reasons discussed there, I am not satisfied that this constitutes use in connection with the balance of the Class 18 goods.

Class 24

To support use of the trade mark in connection with the Class 24 goods, the Opponent relied upon page 438 of Exhibit KL-17. KL-17 was discussed in respect of Class 24 of the 114 Goods and Services; I refer to the description of the exhibit there. Page 438 of the exhibit shows a screenshot from Sheridan’s website. The page shows the trade mark and refers to Sheridan’s partnership with the Opponent. The Applicant submitted, and I agree, that the page does not show use of the trade mark in connection with any of the Class 24 goods.

Class 25

The Opponent conceded it did not use the trade mark in connection with babies’ bibs (other than of paper) during the Relevant Period.

The Applicant conceded that the trade mark was used in connection with clothing but submitted it was not used in connection with the balance of the Class 25 goods.

In respect of use in connection with footwear, and headgear the Opponent relied on pages 286 and 302 of Exhibit KL-12. KL‑12 was described in connection with Class 16 of the 947 Goods and Services; I refer to that description. Page 286 of the exhibit appears to be a screenshot of one of the Opponent’s social media pages. It is dated within the Relevant Period and the trade mark appears at the top of the page. The words ‘Give the gift of delightfully polka-dotted feet … Now reduced from $15 to $10’ appear below the trade mark. A photograph of a boy holding up a pair of socks appears on the page. I am satisfied that this shows use of the trade mark in connection with socks. The Macquarie Dictionary defines ‘footwear’ as ‘articles for wearing on the feet, especially boots, shoes, slippers, etc’. While perhaps not what immediately comes to mind when footwear is considered, ‘socks’ fit within the definition of footwear. I am, therefore, satisfied that this shows use of the trade mark in connection with those goods. Page 302 of KL-12 appears to be a screenshot of one of the Opponent’s social media pages. The page includes a photograph which is dated within the relevant period. The photograph shows two children wearing hats. One of the hats shows the trade mark. I am satisfied that this shows use of the trade mark in connection with headgear.

In respect of babies' undergarments; clothing for babies; footwear for babies; waterproof babies' pants; articles of disposable underclothing; bibs, not of paper; infants' clothing the Opponent relied upon pages 428 and 431 of Exhibit KL-16. KL-16 was described, above, in connection with Class 25 of the 114 Goods and Services; I refer to that description. Page 428 of the exhibit appears to be a screenshot of a page of Bonds’ website. There are a number of photographs of babies wearing clothing. The words ‘red nose approved’ appear in some of the photographs. The exhibit refers to the partnership between the Opponent and Bonds, but I am not satisfied it shows use of the trade mark in connection with the goods shown on the page. For similar reasons, page 431 of KL-12 does not show use of the trade mark in connection with the remainder of the Class 25 goods.

I am satisfied the trade mark was used only in connection with clothing, footwear and headgear.

Class 28

The Opponent conceded it did not use the trade mark in connection with gymnastic and sporting articles; sporting goods; decorations for Christmas trees; synthetic Christmas trees and Christmas tree ornaments.

The Applicant conceded use in respect of toys and did not press that aspect of its claim; I accept this use.

In respect of the balance of the Class 28 goods—being toys, games and other playthings; playing cards; none being novelty noses—the Opponent relied upon page 323 of Exhibit KL-12, and page 361 of Exhibit KL-14. Page 323 of KL-12 was discussed, above, in connection with Class 28 of the 630 Goods and Services. For similar reasons as discussed there, I am satisfied this shows use in connection with toys and other playthings. Page 361 of KL-14 was discussed in connection with Class 28 of the 801 Goods and Services. For the reasons discussed there I am not satisfied that this constitutes use in connection with games.

There is no use demonstrated in respect of playing cards.

I am satisfied only of use of the trade mark in connection with toys and other playthings; none being novelty noses.

Class 35

The Opponent conceded it did not use the trade mark in connection with retail, wholesale and online selling services including in relation to the sale of storage medium for sounds and/or images, including compact discs, video tapes, audio tapes, pre-recorded compact discs, pre-recorded audio and video tapes.

The Applicant conceded that use was shown in connection with retail, wholesale and online selling in relation to fundraising for charitable organisations; however, the Applicant submitted that otherwise, the usage identified by the Opponent does not show use of the trade mark in connection with the services claimed.

To support use in connection with retail, wholesale and online selling services including in relation to the sale of printed matter, stationery, books and other publications, posters, photographs, and playing cards the Opponent relied upon page 359 of Exhibit KL-13 (a colouring sheet), and page 477 of KL-20 (a safe sleeping resources kit with printed materials). It was declared in the Ludski declaration:

To support the work of [the Opponent], The Wiggles, Headstart and Big W came together during the Relevant Period to create a limited edition RED NOSE cuddly toy. Attached and marked Exhibit KL-13 are images taken from social media pages showing the cuddle toy … Also included under Exhibit KL-13 are RED NOSE Wags colouring sheets.

Page 359 appears to be a page from a social media web site which bears the trade mark and is dated during the Relevant Period. The text on the page includes, ‘To celebrate the release of Red Nose Wags, our friends The Wiggles have created this fantastic Red Nose Wags colouring sheet! Save the picture, print it, and don’t forget to colour his nose Red’. The nature of a downloadable digital file versus printed matter was discussed, above, in connection with Class 16 of the 801 Goods and Services. For the same reasons discussed there I am not satisfied that the downloadable ‘Wags colouring sheet’ is printed matter. In any event, the availability of this free downloadable file does not demonstrate use in connection with retail, wholesale and online selling services.

Exhibit KL-20 was described, above, in relation to Class 18 of the 114 Goods and Services. Page 447 of the exhibit shows a screen capture of the Opponent’s website obtained from an internet archive service which shows the trade mark and is dated during the Relevant Period. The page shows, for sale, a ‘Safe Sleeping Resource Kit for Early Childhood Educators’. The kit is indicated to include a number of publications and ‘posters for display in your centre’. It is stated on the page that the kit ‘is presented in an easy to store folder with contents index for easy reference’. It is apparent from this statement the good is a downloadable digital file. For reasons discussed above, sale of such an item does constitute sale of printed matter; however, I am satisfied that this does show use of the trade mark in connection with retail and online selling services in relation to books and other publications. I am not satisfied that the page shows use in connection with wholesale services.

To support use in connection with retail, wholesale and online selling services including in relation to the sale of, clothing, footwear, headgear, toys, games and other playthings, the Opponent relied upon page 303 of Exhibit KL-12 (‘merchandise including iconic red nose, T, socks, car nose’), and page 323 of KL-12 (‘toys’). Exhibit KL-12 was described, above, in connection with Class 16 of the 947 Goods and Services; I refer to that description here. Page 303 of the exhibit shows a page from the Opponent’s web site which was obtained from an internet archive service. The page bears the trade mark and is dated during the Relevant Period. The page shows what are described as ‘merchandise’ for sale including a ‘red nose’, aprons, socks and a ‘car nose’. Page 303 shows a screen capture of a social media page. The page is dated within the Relevant Period and the trade mark appears on the page. The page shows the ‘Wiggles’ soft toy described earlier. The nature of ‘red noses’ was discussed, above, in connection Class 28 of the 801 Goods and Services. The nature of socks was discussed, above, in connection with Class 25, above. For the reasons discussed in both of those places there, I am satisfied that the Opponent has demonstrated use of the trade mark in connection with retail and online selling services in relation to the sale of, clothing, footwear, toys and other playthings, but not in relation to games. There is nothing on the pages that supports use in connection with wholesale services.

I am satisfied the trade mark was used only in connection with retail and online selling services including in relation to books and other publications, clothing, footwear, toys and other playthings; retail, wholesale and online selling in relation to fundraising for charitable organisations.

Class 36

Charitable fund-raising services were excluded from the non-use application.

In connection with the remainder of the services in this class the Opponent relied upon page 68 of KL-4. That page was purported to show ‘acceptance of donations’ and ‘investment in research and education’ to support use in connection with financial services, distribution of funds and financial services offered in conjunction with or on behalf of charities. The nature of ‘acceptance of donations’ and ‘investment in research and education’ was discussed, above, in connection with the 837 Services. For similar reasons, I am not satisfied that page 68 of KL-4 demonstrates use in connection with the remainder of the Class 36 services.

Class 41

Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases were excluded from the non-use application.

To support use in connection with the remainder of the Class 41 services, the Opponent relied upon page 361 of KL-14. That page, and the ‘digital resources kit’ was discussed, above, in connection with Class 16 of the 801 trade mark. The Applicant submitted, and I concur, ‘that kit (and the instance of use referred to) is not a sporting or cultural activity’. For this reason, I am not satisfied that the Opponent has established use in connection with the remainder of the Class 41 services.

Class 45

The Applicant did not press its claim in respect of counselling services; grief counselling and bereavement services.

The Opponent conceded it did not use the trade mark in respect of licensing of intellectual property services and mediation services.

In respect of the balance of the services the Opponent relied upon page 118 of Exhibit KL-5. That evidence was discussed, above, in respect of Class 45 of the 630 Goods and Services. For similar reasons as discussed there, I am not satisfied that the page demonstrates use in connection with the balance of the Class 45 services.

666 Trade Mark use summary

Classes 5, 9, 10, 11, 12, 18, 20, 21, 24, 29, 30: none

Class 3: Wipes incorporating cleaning preparations; baby wipes; wipes for cleaning skin

Class 16: Stationery

Class 25: Clothing, footwear, headgear

Class 28: Toys and other playthings; none being novelty noses

Class 35: Retail and online selling services including in relation to books and other publications, clothing, footwear, toys and other playthings; retail, wholesale and online selling in relation to fundraising for charitable organisations

Class 36: Charitable fund-raising services

Class 41: Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases

Class 45: Counselling services; grief counselling, bereavement services

667 Trade Mark

45.     The 667 Trade Mark has the same specification as the 666 Trade Mark. There are very slight differences between the respective removal applications, and the evidence relied upon by the Opponent. The implications of those differences are discussed below. In the end, the outcome in each class is the same.

Class 25

The Applicant conceded that the trade mark was used in connection with clothing, footwear and headgear but submitted it was not used in connection with the balance of the Class 25 goods.

Class 41

While originally included in the removal application, the Opponent did not press its claim in respect of education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases.

Class 45

Counselling services, grief counselling services, and bereavement services were excluded from the Applicant’s claim.

667 Trade Mark use summary

Classes 5, 9, 10, 11, 12, 18, 20, 21, 24, 29, 30: none

Class 3: Wipes incorporating cleaning preparations; baby wipes; wipes for cleaning skin

Class 16: Stationery

Class 25: Clothing, footwear, headgear

Class 28: Toys and other playthings; none being novelty noses

Class 35: Retail and online selling services including in relation to books and other publications, clothing, footwear, toys and other playthings; retail, wholesale and online selling in relation to fundraising for charitable organisations

Class 36: Charitable fund-raising services

Class 41: Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases

Class 45: Counselling services; grief counselling, bereavement services

Determination of the opposed applications

46.     Section 101 deals with the determination of the opposed applications for removal. Section 101(1) states, essentially:

If the Registrar is satisfied that the grounds on which the application was made have been established, the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.

47.     The inclusion of ‘may decide to remove’ in s 101(1) indicates that the decision of the Registrar to remove a trade mark from the Register is discretionary. Section 101(2) provides a similar discretion to ‘the court’. Section 101(3) explicitly states, seemingly redundantly, that there is a discretion available to the Registrar; although the discretion under s 101(1) is expressed as a discretion to remove, whereas the discretion under s 101(3) is expressed as a discretion not to remove.

48.     In the present matter, the Opponent has submitted that where it has not rebutted the allegation of non-use of a trade mark for the entirety of the goods and/or services for which it is registered, the Registrar ought to exercise her discretion not to remove that trade mark from the Register.

Consideration of the Registrar’s Discretion 

49.     The discretion available to the Registrar is ‘limited only by the subject-matter, scope and purpose of the legislation and, in particular, by the subject-matter, scope and purpose of Part 9 of the Act’.[11] ‘[T]he discretion is broad and exceptional circumstances need not be shown’ before it is invoked in favour of an opponent.[12] Nevertheless, the subject-matter, scope and purpose of Part 9 is the removal of unused trade marks from the Register and this should be the starting point of any consideration of the exercise of the discretion. Where an opponent has not established that a challenged trade mark was used during the relevant period, the exercise of the discretion in favour of the opponent is not one which should be exercised lightly: there must be good reason to do so. As stated by Jacob J in Laboratoire De La Mer Trade Marks:

There is an obvious strong public interest in unused trade marks not being retained on the registers of national trade mark offices. They simply clog up the register and constitute a pointless hazard or obstacle for later traders who are trying actually to trade with the same or similar marks. They are abandoned vessels in the shipping lanes of trade.[13]

[11] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35] (Jacobson, Yates and Katzmann JJ).

[12] Ibid [69].

[13] [2002] FSR 51 (Ch) 790, [19].

50.     While considering the discretion in E & J Gallo Winery v Lion Nathan Australia Pty Limited,[14] Flick J stated:

Although the ‘guiding principle behind the discretion is public interest, particularly in the integrity of the register’,[15] the private commercial interests of both [parties] remain matters which may be taken into account when exercising the discretion. Trade mark law, it has been recognised, is more complex than is suggested by the proposition that the supreme—or at least—a predominant interest is the maintenance of the integrity of the Register.[16] Speaking of the 1955 Act, Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ there pointed out the balance struck by the legislation between various interests. Both the interests of the consuming public and the interests of traders have to be recognised.[17]

[14] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934.

[15] Kowa Co Ltd v Organon [2005] FCA 1282, [92] (Lander J).

[16] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [40].

[17] E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 934, [210] (Note that Flick J’s decision was overturned on appeal to the Full Federal Court, although not on this point).

51.     Justice Flick also referred to a non-exhaustive list of factors which may provide some assistance in considering the discretion, they are:

·whether there has been abandonment of the trade mark;

·whether the registered proprietors of the mark still had a residual reputation in the mark;

·whether there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;

·whether the applicant for removal had entered the market without having taking steps to ascertain from the Register whether anyone had a right to exclude their use of the mark.[18]

[18] Ibid, [202]–[203].

52.     The Opponent bears the onus of establishing that the discretion should be exercised in its favour: it is not for the Applicant to establish that it should not.[19]

[19] Austin Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [44] (Jacobson, Yates and Katzmann JJ).

53.     With the exception of the 947 Trade Mark (see discussion re residual reputation, below), the Opponent has not individually addressed the discretion in respect of its trade marks; rather, it has broadly submitted that:

(a)[The Opponent] has a residual reputation in marks used prior to [the Relevant Period].

(b)By reason of the reputation acquired by [the Opponent] in the [Opponent’s Trade Marks], if [the Opponent’s Trade Marks] (or registrations that are substantively (sic) identical or deceptively similar thereto) were to be used by a third party in relation to any of the claimed goods and services, deception or confusion would result.

(c)[The Opponent] has used [the Opponent’s Trade Marks] in relation to similar/closely related goods and services within the meaning of s 101(4) of the TMA.

(d)[The Opponent] intends to use [the Opponent’s Trade Marks] in the future in relation to the claimed goods and services.

(e)[The Opponent] has not abandoned [the Opponent’s Trade Marks].

(f)[The Opponent] has an interest in preserving the full extent of its registration, particularly given its status as a charitable organisation.

(g)[The Applicant] does not have, and has not adduced any evidence to establish that it has, any legitimate interest in the removal of [the Opponent’s Trade Marks].

Abandonment

54.     The Opponent’s submissions, numbered (d) and (e) above, that it intends to use its trade marks in the future and that it has not abandoned its trade marks, are largely similar and will be dealt with together under this heading. The Opponent referred to the Ludski declaration in which it is stated:

[The Opponent] and its predecessors in title have extensively used and/or authorised/licensed the use of trade marks containing the element RED NOSE since as early as 1988 and continuing to the present date in Australia in relation to a wide range of goods and services. This also includes discussions with third parties around future partnerships.

For example, [the Opponent] is currently engaged in active and ongoing confidential discussions with food companies to launch a RED NOSE DAY specific food products (sic) which will be available in Australia’s major supermarkets in 2023. [the Opponent] is also exploring partnerships with bedding and furniture companies regarding cot furniture and pillows in the future.

55.     The statement from the Ludski declaration reproduced above, refers non-specifically to ‘trade marks containing the element RED NOSE’. The statement also refers to contemplated future commercial partnerships. There were a number of examples of past partnerships discussed in the discussion regarding use during the Relevant Period, above. It was found there that those partnerships did not amount to use of the trade marks discussed in connection with the partnership goods. There is nothing before me that satisfies me that any future partnerships would differ.

56.     The Opponent submitted that given ‘the extensive evidence of use’ of the Opponent’s Trade Marks ‘it cannot be suggested’ that the Opponent has abandoned its trade marks, and that the Opponent ‘has prominently used its marks for a broad range of goods and services over a period of more than 30 years’. Many of the Opponent’s Trade Marks have very broad specifications and it is conceded, or apparent, that the Opponent has never used its trade marks in respect of many of those goods and services. There is nothing before me that indicates that the Opponent intends to use those trade marks in respect of the unused goods and services.

57.     It is possible to abandon the use of a trade mark in respect of some only of its specification, just as it is possible to have an intention to use in the future a trade mark in respect of some only of its specification. The Applicant submitted that the above statements from the Ludski declaration, ‘are bereft of detail and insufficient to maintain broad specifications of the type held by [the Opponent]’; I concur with those submissions.

Residual reputation

58.     This decision concerns nine trade marks, which have, to vary extents, been used prior to and during the Relevant Period. In its submissions regarding residual reputation, the Opponent focussed on the 947 Trade Mark, with little beyond a general reference to the remainder of the Opponent’s Trade Marks. The Opponent submitted that the 947 Trade Mark ‘is the only one of [the Opponent’s Trade Marks] which has not been used extensively [during the Relevant Period] but has extensive use outside [the Relevant Period]’. The Opponent further submitted that the 947 Trade Mark, ‘was the mark under which [the Opponent] was first introduced to the Australian public and which was front and centre at least once a year … for approximately 26 years’, and that, ‘by virtue of [the Opponent’s] extensive education program … Australians have come to understand that [the Opponent’s] primary focus is raising funds for SIDS’.

59.     When considering residual reputation, it is important to bear in mind in connection with which goods and/or services any reputation might have been acquired. A trade mark can only acquire a reputation in connection with good or services for which the trade mark has been used. In the case of the 947 Trade Mark, it was used only in connection with a tiny subset of its specification. It is accepted that the trade mark has acquired a reputation in respect of at least some of those goods and services; however, residual reputation is only one factor to be considered in the exercise of the discretion. The Applicant noted that the Opponent transitioned away from the 947 Trade Mark in 2016, that the 947 Trade Mark is no longer in use and there is no evidence of any intention to resume use of it. The Applicant submitted that in these circumstances, ‘There is no need for this disused mark to remain on the Register’.

60.     Apart from the 285 Trade Mark (which was not used at all during the Relevant Period) the remainder of the Opponent’s Trade Marks were used during the Relevant Period but only in respect of a subset of the goods and/or services for which they are registered. In many cases, the trade mark was never used in respect of some of the balance of the specification, in other cases there was some use in respect of some of the specification. There are very limited submissions before me which directly address the residual reputations in respect of goods and services for which no use was demonstrated; in the absence of such submissions, I am not satisfied that any of the remainder of the Opponent’s Trade Marks has a residual reputation in connection with any of the goods and services for which they were not used during the Relevant Period.

Opponent’s interests / Applicant’s interests

61.     The Opponent submitted that it ‘has an interest in preserving the full extent of its registration (sic), particularly given its status as a charitable organisation’ (emphasis added). Counsel for the Opponent stressed a number of times during the hearing that the charity work the Opponent undertakes is particularly laudable—the apparent suggestion being that this should be taken into account in considering the exercise of the discretion. It is my view that it is not appropriate for the Registrar to take this into account. To take such a factor into account suggests that one entity’s trade mark ought not to be removed because it is a laudable charity, whereas another entity’s trade mark should not be so favourably considered because the entity is not so laudable—perhaps because it is simply a ‘for profit’ business—this is not a supportable proposition. Further, to take such matters into account would require the Registrar to enter into an assessment of factors such as the moral, ethical, and social worth of a trade mark owner’s business. At the very least, such assessments are highly subjective and might vary greatly depending on the personal views of the delegate making the assessment. Accordingly, the laudability of the Opponent’s business will not be taken into account in deciding the exercise of the discretion.

Class 29: Meat, fish, poultry and game; seafood; preserved, dried, cooked or processed fruits; preserved, dried, cooked or processed vegetables including vegetable mixes; canned fruit and canned vegetables, frozen fruit and frozen vegetables; stir fry vegetables; beans; baked beans; dairy products; drinks made from dairy products; soups, broths and broth concentrates, consommes and soup preparations; sweet spreads, jams, marmalade; savoury spreads, pickles, vegetable extract spreads; salads; fillings in this class; snack foods; prepared meals and constituents for meals; prepared meals including vegetable and carbohydrate mixes with or without sauces and/or flavourings; frozen prepared meals consisting of one or more of vegetables, meat, seafood with or without sauces and seasonings; prepared meals including dairy products or meat, poultry or seafood with or without sauces and/or flavourings; meat, chicken, seafood or vegetable stock; dips; microwaveable meals; tomato paste; edible oils and fats; eggs; nuts and nut products; all included in class 29

Class 30: Rice, pasta, noodles and couscous; cereals and cereal preparations; meals made predominantly from rice, pasta or noodles; rice cakes; rice crackers; tea, coffee, cocoa, coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, crackers, crispbread, bread, bread sticks; ices, ice cream, ice cream products, frozen confections, frozen yoghurt; desserts including chilled desserts, canned desserts, mousses, sorbets; bread; pastry; fillings in this class; sweet spreads, honey, treacle, maple syrup; savoury spreads, yeast extract spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; prepared meals in a can; chocolate; sauces, ketchup, tomato sauce, soy sauce, chilli sauce, oyster sauce; simmer sauces; stir fry sauces; sauces in a pouch; pizza, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressing; mayonnaise; dips; spices; seasonings, marinades, condiments; dessert toppings; flavourings (other than essential oils) for adding to food and/or beverages; salsa; prepared entrees and meals including spring rolls, curry puffs, dim sims, samosas, wontons, wonton skins; capers; cooking sauces; microwaveable meals; frozen prepared meals consisting predominantly of noodles or rice with or without sauces and seasoning; chilled desserts; pasta sauces made predominantly from goods in this class; all included in class 30

(‘114 Goods and Services’)

1730666 Registration

Class 3: Baby bath preparations (non-medicated); baby body milks; baby lotions; baby oil; baby shampoo; non-medicated baby care products; wipes incorporating cleaning preparations; baby wipes; wipes for cleaning skin

Class 5: Medicated baby care products; babies' beverages; dietetic substances for babies; foodstuffs for babies; medicated preparations for the care of babies; milk powder for babies; sanitary products for babies; washes for teats (of babies bottles); impregnated antiseptic wipes; wipes for hygienic (medical) purposes; infants' foods; baby diapers and nappies; diapers and nappies; babies disposable diaper pants of cellulose; babies' disposable diaper pants of paper; nappies of cellulose for babies; nappies of paper for babies; disposable paper diapers; babies absorbent pants; babies napkins of textile; babies nappies (diapers) of textile; textile liners for babies (diapers); baby foods in this class

Class 9: Life saving and teaching apparatus and instruments; cinematography apparatus and instruments; computer hardware, firmware and software; storage medium for sounds and/or images, including compact discs, DVDs video tapes, audio tapes; pre-recorded compact discs, DVDs, pre-recorded audio and video tapes; audio and visual equipment

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; chiropractic apparatus and instruments including pressure rings, cushions, back chair cushions; medical mattresses, beds, bedding and pillows; pregnancy support pillows and mattresses (for therapeutic use), dummies for babies, maternity belts, mattresses for childbirth, nursing pillows; baby bottles, teething rings; parts, fittings and accessories for the aforesaid goods; baby dummies; baby teething rings; covers for baby feeding bottles; dummies (baby soothers); babies' bottles; nipples for babies feeding bottles; teats; apparatus for the treatment of babies; non-spill medicine spoons for infants

Class 11: Toilet seats; toilets; sanitary covers for baby bottle warmers; baby food warmers; babies' baths (parts of sanitary installations); sterilisers for babies' feeding bottles

Class 12: Baby carriages; covers for baby carriages; babies' strollers; safety seats for babies for use in vehicles; wheeled transporters for babies

Class 16: Paper goods; printed matter, stationery, books and other publications, posters, photographs, office requisites; pamphlets; brochures; promotional materials of paper

Class 18: Bags and Baby carriers (slings or harnesses); baby slings; pouch baby carriers; carrying bags (other than disposable carrier bags)

Class 20: Beds, pillows, mattresses and bedding (except linen) in this class; furniture including office furniture; divans, couches, chairs, armchairs, settees, sofas; cushions, bolsters; beds and bedding for animals and household pets; mirrors, picture frames; decorative wall plaques; mobiles (decoration), sleeping bags, interior window blinds, decorative bead curtains; wind chimes; toy chests, infant walkers; seats; bassinets; cradles; cribs; booster seats; change tables for infants, play pens; nesting boxes; high chairs for babies; crib bumpers; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; furniture, beds, pillows, mattresses and bedding (except linen) for babies, children and infants; cot mattresses, cotton change pads, folding change pads, mats for infant playpens, vinyl change pads, bassinet mattresses, pregnancy support pillows, pregnancy support mattresses, nursing pillows, baby head support pillows; parts, fittings and accessories for the aforesaid goods in this class; baby changing mats in this class; baby nests in the nature of padded baby carriers; stands for baby baths; support pillows for use in baby seating; babies' baskets; babies' bouncing chairs; babies' cradles; chairs for babies; changing tables for babies; furniture for babies; high chairs for babies; playpens for babies; seats adapted for babies; support cushioning for use in car safety seats for babies; supports to hold babies in reclining or sitting positions; bedding for cots (other than bed linen); cots; travel cots; mats for infant playpens; nursery furniture for use by infants

Class 21: Baby baths (portable); babies' potties; brushes for cleaning babies' feeding bottles; cleaning wipes; dispensers for paper wipes (other than fixed); disposable cloths for wiping; infants' drinking cups (other than bottles); potties

Class 24: Linen including bed linen; bed covers, sheets, pillow slips; mattress and pillow protectors; blankets, coverlets, eiderdowns; bed linen for babies, children and infants; textiles and textile goods, not included in other classes; bed and table covers; textile mats, mattress protectors for cots and bassinets; overlays; comforters, quilts, bed spreads, bed linen, receiving blankets, cot blankets, sleeping sacks, curtains of textile or fabric; parts, fittings and accessories for the aforesaid goods

Class 25: Clothing, footwear, headgear; babies' bibs (other than of paper); babies' undergarments; clothing for babies; footwear for babies; waterproof babies' pants; articles of disposable underclothing; bibs, not of paper; infants' clothing

Class 28: Toys, games and other playthings; gymnastic and sporting articles; decorations for Christmas trees; synthetic Christmas trees; Christmas tree ornaments; sporting goods; playing cards; none being novelty noses

Class 29: Meat, fish, poultry and game; seafood; preserved, dried, cooked or processed fruits; preserved, dried, cooked or processed vegetables including vegetable mixes; canned fruit and canned vegetables, frozen fruit and frozen vegetables; stir fry vegetables; beans; baked beans; dairy products; drinks made from dairy products; soups, broths and broth concentrates, consommes and soup preparations; sweet spreads, jams, marmalade; savoury spreads, pickles, vegetable extract spreads; salads; fillings in this class; snack foods; prepared meals and constituents for meals; prepared meals including vegetable and carbohydrate mixes with or without sauces and/or flavourings; frozen prepared meals consisting of one or more of vegetables, meat, seafood with or without sauces and seasonings; prepared meals including dairy products or meat, poultry or seafood with or without sauces and/or flavourings; meat, chicken, seafood or vegetable stock; dips; microwaveable meals; tomato paste; edible oils and fats; eggs; nuts and nut products

Class 30: Rice, pasta, noodles and couscous; cereals and cereal preparations; meals made predominantly from rice, pasta or noodles; rice cakes; rice crackers; tea, coffee, cocoa, coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, crackers, crispbread, bread, bread sticks; ices, ice cream, ice cream products, frozen confections, frozen yoghurt; desserts including chilled desserts, canned desserts, mousses, sorbets; bread; pastry; fillings in this class; sweet spreads, honey, treacle, maple syrup; savoury spreads, yeast extract spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; prepared meals in a can; chocolate; sauces, ketchup, tomato sauce, soy sauce, chilli sauce, oyster sauce; simmer sauces; stir fry sauces; sauces in a pouch; pizza, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressing; mayonnaise; dips; spices; seasonings, marinades, condiments; dessert toppings; flavourings (other than essential oils) for adding to food and/or beverages; salsa; prepared entrees and meals including spring rolls, curry puffs, dim sims, samosas, wontons, wonton skins; capers; cooking sauces; microwaveable meals; frozen prepared meals consisting predominantly of noodles or rice with or without sauces and seasoning; chilled desserts; pasta sauces made predominantly from goods in this class

Class 35: Retail, wholesale and online selling services including in relation to the sale of storage medium for sounds and/or images, including compact discs, video tapes, audio tapes, pre-recorded compact discs, pre-recorded audio and video tapes, printed matter, stationery, books and other publications, posters, photographs, playing cards, clothing, footwear, headgear, toys, games and other playthings; retail, wholesale and online selling in relation to fundraising for charitable organisations

Class 36: Financial services; distribution of funds; charitable fund-raising services; financial services offered in conjunction with or on behalf of charities

Class 41: Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases; sporting and cultural activities including in relation to raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases

Class 45: Counselling services; grief counselling, bereavement services; personal and social services rendered by others to meet the needs of individuals; licensing of intellectual property; mediation services

(‘666 Good and Services’)

1730667 Registration

Class 3: Baby bath preparations (non-medicated); baby body milks; baby lotions; baby oil; baby shampoo; non-medicated baby care products; wipes incorporating cleaning preparations; baby wipes; wipes for cleaning skin

Class 5: Medicated baby care products; babies' beverages; dietetic substances for babies; foodstuffs for babies; medicated preparations for the care of babies; milk powder for babies; sanitary products for babies; washes for teats (of babies bottles); impregnated antiseptic wipes; wipes for hygienic (medical) purposes; infants' foods; baby diapers and nappies; diapers and nappies; babies disposable diaper pants of cellulose; babies' disposable diaper pants of paper; nappies of cellulose for babies; nappies of paper for babies; disposable paper diapers; babies absorbent pants; babies napkins of textile; babies nappies (diapers) of textile; textile liners for babies (diapers); baby foods in this class

Class 9: Life saving and teaching apparatus and instruments; cinematography apparatus and instruments; computer hardware, firmware and software; storage medium for sounds and/or images, including compact discs, DVDs video tapes, audio tapes; pre-recorded compact discs, DVDs, pre-recorded audio and video tapes; audio and visual equipment

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; chiropractic apparatus and instruments including pressure rings, cushions, back chair cushions; medical mattresses, beds, bedding and pillows; pregnancy support pillows and mattresses (for therapeutic use), dummies for babies, maternity belts, mattresses for childbirth, nursing pillows; baby bottles, teething rings; parts, fittings and accessories for the aforesaid goods; baby dummies; baby teething rings; covers for baby feeding bottles; dummies (baby soothers); babies' bottles; nipples for babies feeding bottles; teats; apparatus for the treatment of babies; non-spill medicine spoons for infants

Class 11: Toilet seats; toilets; sanitary covers for baby bottle warmers; baby food warmers; babies' baths (parts of sanitary installations); sterilisers for babies' feeding bottles

Class 12: Baby carriages; covers for baby carriages; babies' strollers; safety seats for babies for use in vehicles; wheeled transporters for babies

Class 16: Paper goods; printed matter, stationery, books and other publications, posters, photographs, office requisites; pamphlets; brochures; promotional materials of paper

Class 18: Bags and Baby carriers (slings or harnesses); baby slings; pouch baby carriers; carrying bags (other than disposable carrier bags)

Class 20: Beds, pillows, mattresses and bedding (except linen) in this class; furniture including office furniture; divans, couches, chairs, armchairs, settees, sofas; cushions, bolsters; beds and bedding for animals and household pets; mirrors, picture frames; decorative wall plaques; mobiles (decoration), sleeping bags, interior window blinds, decorative bead curtains; wind chimes; toy chests, infant walkers; seats; bassinets; cradles; cribs; booster seats; change tables for infants, play pens; nesting boxes; high chairs for babies; crib bumpers; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; furniture, beds, pillows, mattresses and bedding (except linen) for babies, children and infants; cot mattresses, cotton change pads, folding change pads, mats for infant playpens, vinyl change pads, bassinet mattresses, pregnancy support pillows, pregnancy support mattresses, nursing pillows, baby head support pillows; parts, fittings and accessories for the aforesaid goods in this class; baby changing mats in this class; baby nests in the nature of padded baby carriers; stands for baby baths; support pillows for use in baby seating; babies' baskets; babies' bouncing chairs; babies' cradles; chairs for babies; changing tables for babies; furniture for babies; high chairs for babies; playpens for babies; seats adapted for babies; support cushioning for use in car safety seats for babies; supports to hold babies in reclining or sitting positions; bedding for cots (other than bed linen); cots; travel cots; mats for infant playpens; nursery furniture for use by infants

Class 21: Baby baths (portable); babies' potties; brushes for cleaning babies' feeding bottles; cleaning wipes; dispensers for paper wipes (other than fixed); disposable cloths for wiping; infants' drinking cups (other than bottles); potties

Class 24: Linen including bed linen; bed covers, sheets, pillow slips; mattress and pillow protectors; blankets, coverlets, eiderdowns; bed linen for babies, children and infants; textiles and textile goods, not included in other classes; bed and table covers; textile mats, mattress protectors for cots and bassinets; overlays; comforters, quilts, bed spreads, bed linen, receiving blankets, cot blankets, sleeping sacks, curtains of textile or fabric; parts, fittings and accessories for the aforesaid goods

Class 25: Clothing, footwear, headgear; babies' bibs (other than of paper); babies' undergarments; clothing for babies; footwear for babies; waterproof babies' pants; articles of disposable underclothing; bibs, not of paper; infants' clothing

Class 28: Toys, games and other playthings; gymnastic and sporting articles; decorations for Christmas trees; synthetic Christmas trees; Christmas tree ornaments; sporting goods; playing cards; none being novelty noses

Class 29: Meat, fish, poultry and game; seafood; preserved, dried, cooked or processed fruits; preserved, dried, cooked or processed vegetables including vegetable mixes; canned fruit and canned vegetables, frozen fruit and frozen vegetables; stir fry vegetables; beans; baked beans; dairy products; drinks made from dairy products; soups, broths and broth concentrates, consommes and soup preparations; sweet spreads, jams, marmalade; savoury spreads, pickles, vegetable extract spreads; salads; fillings in this class; snack foods; prepared meals and constituents for meals; prepared meals including vegetable and carbohydrate mixes with or without sauces and/or flavourings; frozen prepared meals consisting of one or more of vegetables, meat, seafood with or without sauces and seasonings; prepared meals including dairy products or meat, poultry or seafood with or without sauces and/or flavourings; meat, chicken, seafood or vegetable stock; dips; microwaveable meals; tomato paste; edible oils and fats; eggs; nuts and nut products

Class 30: Rice, pasta, noodles and couscous; cereals and cereal preparations; meals made predominantly from rice, pasta or noodles; rice cakes; rice crackers; tea, coffee, cocoa, coffee essence, coffee extracts, mixtures of coffee and chicory, chicory and chicory mixtures, all for use as substitutes for coffee; non-medicated confectionery; pastries, cakes, biscuits, crackers, crispbread, bread, bread sticks; ices, ice cream, ice cream products, frozen confections, frozen yoghurt; desserts including chilled desserts, canned desserts, mousses, sorbets; bread; pastry; fillings in this class; sweet spreads, honey, treacle, maple syrup; savoury spreads, yeast extract spreads, mustards, relishes; snack foods; prepared meals and constituents for meals; prepared meals in a can; chocolate; sauces, ketchup, tomato sauce, soy sauce, chilli sauce, oyster sauce; simmer sauces; stir fry sauces; sauces in a pouch; pizza, pizza bases; sauces and toppings for pizzas; sauces for pasta and rice; salad dressing; mayonnaise; dips; spices; seasonings, marinades, condiments; dessert toppings; flavourings (other than essential oils) for adding to food and/or beverages; salsa; prepared entrees and meals including spring rolls, curry puffs, dim sims, samosas, wontons, wonton skins; capers; cooking sauces; microwaveable meals; frozen prepared meals consisting predominantly of noodles or rice with or without sauces and seasoning; chilled desserts; pasta sauces made predominantly from goods in this class

Class 35: Retail, wholesale and online selling services including in relation to the sale of storage medium for sounds and/or images, including compact discs, video tapes, audio tapes, pre-recorded compact discs, pre-recorded audio and video tapes, printed matter, stationery, books and other publications, posters, photographs, playing cards, clothing, footwear, headgear, toys, games and other playthings; retail, wholesale and online selling in relation to fundraising for charitable organisations

Class 36: Financial services; distribution of funds; charitable fund-raising services; financial services offered in conjunction with or on behalf of charities

Class 41: Education, training and entertainment services including such services provided to assist in raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases; sporting and cultural activities including in relation to raising awareness in relation to infant health and mortality including Sudden Infant Death Syndrome and other children and infant diseases

Class 45: Counselling services; grief counselling, bereavement services; personal and social services rendered by others to meet the needs of individuals; licensing of intellectual property; mediation services

(‘667 Goods and Services’)