Ruud Lighting, Inc v Shanghai Edge Industry Co., Ltd

[2010] ATMO 92

TRADE MARKS ACT 1995

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

Re:Opposition by Ruud Lighting, Inc to extension of protection of international registration designating Australia 1239120 - Edge Light - (international registration 959608) in class 9 - in the name of Shanghai Edge Industry Co., Ltd.

Delegate:	Michael Kirov
Representation:	Opponent: Written submissions by Nathan Sinclair of Shelston IP Holder: Did not provide an Australian address for service, seek to be heard, or file any written submissions
Decision:	2010 ATMO 92 Regulation 17A.29 opposition: Grounds under ss 44 and 60 (pursuant to reg. 17A.28) pressed –s 44 ground partially established– no relevant reputation (s 60 ground not established) - extension of protection to Australia refused in part.

Background

1. Application 1239120, an international registration designating Australia (“IRDA”), was filed in the name of Shanghai Edge Industry Co., Ltd (“the Holder”) under the Madrid Protocol on 31 March 2008.  IP Australia was notified of this on 8 May 2008 and, following examination of the IRDA, advertised on 31 July 2008 its intention to extend protection to Australia.

2. Details of the IRDA are as follows:

   Application Number:                1239120
   International Number:              959608
   Priority Date:      31 March 2008  (“the Priority Date”)

   Goods:  Class 9:  Optical discs; electronic tags for goods; light boxes; electronic notice boards; light-emitting electronic pointers; advertising machines, automatic; converters, electric; inverters (electricity); lighting ballasts; solar batteries 

   (“the Holder’s Goods”)

   Trade Mark:  Edge Light  (“the Holder’s Trade Mark”)

3. On 30 January 2009 Ruud Lighting, Inc (“the Opponent”) lodged Notice of Opposition (“the Notice”) to extension of protection of the IRDA to Australia.

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

   ·    Statutory Declaration by Christopher A Ruud made on 14 December 2009; and

   ·    Statutory Declaration by Nathan John Sinclair made on 16 December 2009, with Annexures NJS-1 and NJS-2.

5. Since the Holder did not have an address for service in Australia the Opponent was not required to serve a copy of its evidence on the Holder, in accordance with regulation 17A.33 (3) Trade Marks Regulations 1995 (“the Regulations”).

6. The Holder did not file any evidence in answer, although I note for the record that IP Australia wrote to it directly on 20 January 2010 advising that the Opponent had filed its evidence in support and inviting it to nominate an address for service in Australia and to serve and file any evidence it wished to be taken into account.

7. The matter was scheduled to be heard before me as delegate of the Registrar of Trade Marks on 23 July 2010 in Sydney.  By email sent on 28 June 2010, however, the Opponent’s attorneys advised neither the Opponent nor they would be attending but would instead rely on written submissions.  Those written submissions, prepared by the Opponent’s Australian attorney Nathan Sinclair, were emailed to IP Australia on 23 July 2010 (“the Submissions”).

8. As at the date of this decision the Holder still did not have an address for service in Australia and I confirm the Holder did not seek to rely on any written submissions.

   Grounds of Opposition and Onus

9. While the Notice specified several grounds, the Opponent confirmed in the Submissions that it was only pressing grounds based on ss 44 and 60 of the Trade Marks Act 1995 (“the Act”).

10. I confirm I am proceeding on the basis that the Opponent need only establish one (or both) of its grounds of opposition on the balance of probabilities.[1]

    [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 at [22] to [26].

    The Evidence

11. As mentioned, Nathan Sinclair is the Opponent’s Australian attorney.  He annexes to his declaration details of the Opponent’s Australian trade mark registration 1201777 THE EDGE, summarised below:

    Registration Number:               1201777
    Registration Date:                   27 September 2007

    Priority Date:  27 April 2007

    Goods:Class: 11 Commercial and industrial luminaires for outdoor use using light-emitting diodes as light source, and commercial and industrial luminaires using light-emitting diodes as light source for indoor factory, warehouse and loading-dock area illumination or for indirect lighting for commercial office spaces

    (“the Opponent’s Goods”)

    Trade Mark:  THE EDGE  (“the Opponent’s Trade Mark”)

12. Mr Sinclair also annexes two “advertising brochures distributed that feature [the Opponent’s Trade Mark]” and says that he “is instructed by [the Opponent] that use of these brochures in Australia commenced in 2007”.  I note in passing that it is apparent the annexed brochures were printed in 2007 and 2008 respectively.

13. Christopher Ruud is President of the Opponent and has been employed by the Opponent for some 23 years.  He holds a Bachelor of Science degree (majoring in Computer Science and Mathematics), as well as a Masters of Business Administration, and indicates that because of his tertiary study, work history and employment he has “a thorough knowledge of the lighting industry in which [the Opponent] operates, and of [its] use of [the Opponent’s Trade Mark]”.

14. The matters relevant to my decision to which Mr Ruud attests are redacted below:

    Based on my experience and knowledge of lighting apparatus and the lighting industry, I believe that there is a clear and close relationship between [the Opponent’s Goods] and goods covered by [the Holder’s Goods].  In particular, the goods optical discs, light boxes, electronic notice boards, automatic advertising machines, lighting ballasts and solar batteries are goods that I consider very similar to [the Opponent’s Goods].

    …companies such as General Electric and Phillips that sell industrial and commercial luminaires also typically sell related products including “solar batteries”, “lighting ballast” and “optical discs” through the same outlets.  In my experience of lighting apparatus “solar batteries” are increasingly used as a power source for commercial and industrial luminaires, particularly those in remote and/or outdoor areas, and they are used by [the Opponent] in relation to the outside products described in [the Opponent’s Goods].

    …I am aware that in the lighting industry “optical discs” is a description that can be used to refer to flat lenses that can be placed like a sheet over LED and other illumination sources.  Such goods are typically utilised as parts of [the Opponent’s Goods].

    …I am aware that “light boxes” are lighting apparatus with a back-lit frame with a translucent face of plastic or glass used to transmit light through an image.  Light boxes can be utilised as parts of commercial or industrial luminaires.  They can be used for lighting commercial advertising and public signs.

    …I am aware that “lighting ballast” is used to control current flow in lights, particularly high powered commercial lighting.

    I am aware that there are commercial lighting products, including commercial LED lighting products, that would fall within the descriptions “automatic advertising machines” and “electronic notice boards”.

    …

    [The Opponent] has used [the Opponent’s Trade Mark] in Australia continuously from at least 24 August 2007 to date [14 December 2009] in respect of [the Opponent’s Goods].

    [The Opponent] has promoted [the Opponent’s Trade Mark] throughout Australia since April 2007.

    Discussion

    Section 44

15. The ground based on s 44 is indicated in the Notice as follows:

    The Trade Mark is substantially identical with or deceptively similar to one or more trade marks which have an earlier priority date and which are registered or seek registration for similar goods and/or closely related goods/services, including without limitation, the following application(s)/registration(s):

    NUMBER  TRADE MARK  CLASS

    1201777  THE EDGE  11

    1138883 (IR 895113)          LIGHTEDGE            09

16. Details of registration 1201777, which is owned by the Opponent, are set out in paragraph 11 above. Details of the second Australian trade mark registration nominated in relation to the s 44 ground, which is an IRDA owned by a third party, are summarised below:

    Holder:  FXC Inc  (“FXC”)
    Registration Number:               1138883
    International Number:              895113
    Registration/Priority Date:        18 April 2006

    Goods:Class: 9 Wavelength division multiplexer; statistical multiplexer; optical connector; optical coupler; optical signal transmitter-receiver; integrated optical circuits; fiber optics cables

    (“the FXC Goods”)

    Trade Mark:  LightEdge  (“the FXC Trade Mark”)

17. So much of section 44 as is relevant to this matter is reproduced below:

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

    (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

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

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

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

    Note 1:  For deceptively similar see section 10.

    Note 2:  For similar goods see subsection 14(1).
    Note 3:  For priority date see section 12.
    Note 4:  The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

18. The priority dates of FXC’s registration 1138883 and the Opponent’s registration 1201777 are 18 April 2006 and 27 April 2007 respectively, both dates being before the 31 March 2008 priority date of the opposed IRDA. To establish its s 44 ground the Opponent therefore needs to establish on the balance of probabilities that:

    •the opposed IRDA covers “similar goods”[2] to those covered by registration 1201777 and/or by registration 1138883; and

    •the Holder’s Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Trade Mark and/or the FXC Trade Mark, (as the case may be).

    [2] As defined in s 14(1) of the Act, namely the same goods and/or goods of the same description.

19. Mr Sinclair argues in the Submissions that in the context of at least some of the goods covered by the opposed IRDA (and by registration 1138883)[3] the Holder’s Trade Mark is “substantially identical” with both the Opponent’s Trade Mark and the FXC Trade Mark. While the words “substantially identical” are not defined in the Act, he refers to the generally accepted test for assessing substantial identity as set out by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd[4], where his Honour said:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

    [3] Namely lighting products, since then the element LIGHT appearing in the relevant marks, to the extent it was considered entirely descriptive, might effectively be ignored.

    [4] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 (at 414-415); (1963) 1B IPR 523 (at 528)

20. In the event I were to find the marks in question were not substantially identical, Mr Sinclair submitted they were at least “deceptively similar”, again this being in the context of at least some of the goods covered by the opposed IRDA and by registrations 1138883 and 1201777.

21. Before considering the relevant marks in detail, it is useful firstly to set out more generally what needs to be considered in assessing deceptive similarity under the Act. Section 10 of the Act says that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.  Here the trade marks should not be compared side by side[5].  Rather, they are to be considered by their look and sound, with due allowance for imperfect recollection.  As highlighted in the Submissions,

    An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought…The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or aural description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part.[6]

    [5] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (op. cit. at CLR 415; IPR 529)

    [6] Australian Woollen Mills Ltd v F.S. Walton & Co (op. cit. at 658)

22. In Registrar of Trade Marks v Woolworths Limited[7] (“the Woolworths Metro case”) French J (as he then was) said of deceptive similarity:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

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

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

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.".

    [7] Registrar of Trade Marks v WoolworthsLimited (1999) 45 IPR 411 (at 428)

23. As was further pointed out[8] by French J in the Woolworths Metro case[9], the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. Indeed, French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[10] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”. In the present opposition the opposed IRDA and registrations 1138883 and 1201777 all of course cover goods only, but I believe their Honours’ observations are just as relevant in the context of “similar goods” as defined in s 14(1) of the Act. It is thus appropriate to firstly consider the goods covered by the respective trade marks before moving on, (if necessary), to a comparison of the marks themselves.

    [8] In the context of closely related goods and services.

    [9] Registrar of Trade Marks v Woolworths Limited (op. cit. at 425.

    [10] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)

24. Based upon the (unchallenged) evidence of Mr Ruud set out in paragraph 14 above, upon the Submissions and upon my own research[11] and knowledge, I am satisfied on the balance of probabilities that some of the goods covered by the opposed IRDA are at least goods of the same description as some of the goods covered by registrations 1138883 and 1201777.  Given this is an uncontested opposition, I do not propose to set out my reasoning here in detail, but confirm I have concluded the following goods fall into this category:

    [11] That is, brief research via the Internet as to the meanings and usage of terms such as “optical discs”, “light boxes”, “light emitting electronic pointers”, “advertising machines”, “lighting ballasts”, “solar batteries”, “luminaires” and “multiplexers”.

Opposed IRDA 1239120	FXC’s registration 1138883
optical discs	optical connector; optical coupler; optical signal transmitter-receiver; integrated optical circuits; fiber optics cables
Opposed IRDA 1239120	Opponent’s registration 1201777
light boxes, electronic notice boards; light-emitting electronic pointers; advertising machines, automatic; lighting ballasts; solar batteries[12]	commercial and industrial luminaires for outdoor use using light-emitting diodes as light source

[12] Notwithstanding Mr Ruud’s view, I confirm I have decided that the “optical discs” covered by the opposed IRDA are not goods of the same description as (or the same as) any of the Opponent’s Goods.

1. It follows that I do not believe the goods covered by the opposed IRDA described as “electronic tags for goods”, “converters, electric” or “inverters (electricity)” are goods of the same description as, (nor of course the same as), any of the FXC Goods or the Opponent’s Goods. The s 44 opposition ground is accordingly not established as far as these particular goods are concerned. It is necessary now to consider the similarity of the marks in question before deciding whether the s 44 ground might be established in relation to the remaining goods identified in the above tables.

2. Dealing firstly with a comparison of the Holder’s Trade Mark and the FXC Trade Mark (in the context of the goods identified in the above table), Mr Sinclair submitted the marks are “substantially identical and/or deceptively similar” because:

   ·    The “essential, distinguishing and memorable feature” of both marks is the element EDGE, with the element LIGHT being in effect descriptive in relation to the relevant goods identified in the table above.

   ·    Both marks consist of the identical elements, albeit in reverse order, and both convey the same idea.  (Here he referred to Macquarie Bank Limited v Great Southern Loan (SP) Pty Ltd[13], where the marks FORWARD THINKING and THINKING FORWARD were held deceptively similar (but not substantially identical) in the context of financial and related services in Class 36.)

   ·    Given the possibility of consumers’ imperfect recollection, the two marks could easily be confused.

   [13] [2007] ATMO 45

1. I do not however believe the marks should be considered either substantially identical, or, in the context of “optical discs” and “optical connector; optical coupler; optical signal transmitter-receiver; integrated optical circuits; fiber optics cables”, deceptively similar.

2. The Edge Light and LightEdge trade marks are of course “similar” in the ordinary English sense of the word. They share the essentially identical elements, albeit in reverse order. In my view, however, this is not of itself sufficient reason to characterise the marks as “deceptively similar” as defined in s 10 of the Act and in the sense discussed by the Courts in the cases quoted above.

3. The initial elements of the marks, EDGE and LIGHT, neither look alike nor sound alike and it has long been held that, as was said in London Lubricant’s (1920) Application[14], “…the first syllable of a word is, as a rule, far the most important for the purpose of distinction”.

   [14] (1925) 42 RPC 264 (at 279)

4. Moreover, it has likewise long been held that marks must be compared as wholes and in this regard too the marks as wholes neither look alike nor sound alike.  As was said in Clark v Sharp[15]:

   One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.

   [15] (1898) 15 RPC 141 (at 146)

5. Nor, to my mind, do the two marks, considered as wholes, convey the same meaning or “idea”, although it is in any event well established that this would not of itself be determinative of deceptive similarity.  That is to say, to the extent that the Edge Light mark does convey a similar idea to that of the mark LightEdge in the context of the relevant goods, this would not of itself dictate a finding of deceptive similarity.  This is particularly so where the idea is itself a common one or entails a tinge of descriptiveness.  In concluding the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), the High Court noted in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[16] that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”.  As previously mentioned, the elements the parties’ marks share notwithstanding, the marks are readily distinguishable both visually and aurally in my opinion.

   [16] (1952) 86 CLR 536 (at 539)

6. When the foregoing matters are weighed up and I attempt to assess the marks’ likely effect or impression in the minds of relevant consumers, I am not satisfied deception or confusion amongst a significant number of such consumers was likely as at the relevant date.  I do not on balance believe there was a real tangible danger of a number of such persons being left in doubt or caused to wonder whether the Holder’s “optical discs” and FXC’s “optical connector; optical coupler; optical signal transmitter-receiver; integrated optical circuits; fiber optics cables” dealt with under their respective trade marks came from the same source.

7. The s 44 opposition ground is accordingly not established as far as the “optical discs” covered by the opposed IRDA are concerned.

8. I turn now to a comparison of the Holder’s Trade Mark and the Opponent’s Trade Mark, in this case in the context of “light boxes, electronic notice boards; light-emitting electronic pointers; advertising machines, automatic; lighting ballasts; solar batteries” and “commercial and industrial luminaires for outdoor use using light-emitting diodes as light source”.

9. Mr Sinclair submitted the Edge Light and THE EDGE marks are “substantially identical and/or deceptively similar” because:

   ·    The “essential, distinguishing and memorable feature” of both marks is the element EDGE, with the element LIGHT in the Holder’s Trade Mark being “purely descriptive and/or non-distinctive” (and therefore “should be discounted to a significant extent”) in relation to the relevant goods.

   ·    The element THE in the Opponent’s Trade Mark “does not substantially alter the overall impression and/or identity of the mark.

   ·    “Given the identical nature of the essential feature of both marks, the idea conveyed by them is the same or very similar.  Thus, the general effect or overall impression in consumers’ minds is also very similar.”

   ·    Given the possibility of consumers’ imperfect recollection, “the most likely element to be recalled will be the essential and most memorable feature of both marks, namely ‘EDGE’”.

10. I do not believe it is necessary in this case to determine whether, in particular, the Holder’s Trade Mark is “substantially identical” to the Opponent’s Trade Mark, as opposed to being (merely) “deceptively similar” to it, since such determination would have no bearing on whether or not the s 44 ground is established in relation to the “light boxes, electronic notice boards; light-emitting electronic pointers; advertising machines, automatic; lighting ballasts; solar batteries” covered by the opposed IRDA. It is sufficient to confirm that I agree the marks are at least deceptively similar in the context of the relevant goods, essentially for the reasons submitted by Mr Sinclair. That is to say, I do not believe the addition of the descriptive or non-distinctive elements THE or LIGHT to the parties’ respective marks is sufficient to obviate a real tangible risk of a number of persons being caused to wonder whether it might not be the case that the goods identified in the above table, sold under the two trade marks, come from the same source.

11. To summarise, the Opponent has partially established its s 44 ground, but has been unsuccessful in relation to the goods “optical discs; electronic tags for goods; converters, electric; inverters (electricity)”.

    Section 60

12. The ground based on s 60 is indicated in the Notice as follows:

    Use of the Trade Mark would be likely to deceive or cause confusion because of the reputation that another trade mark had in Australia, before the priority date for registration of the Trade Mark.  Reference in this ground of opposition to “another trade mark” includes reference to the Opponent’s trade mark THE EDGE.

13. Section 60 of the Act is reproduced below:

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

    (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
    (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

    Note:  For priority date see section 12.

14. In the Submissions Mr Sinclair argues that, as at the 31 March 2008 priority date of the opposed IRDA, the Opponent’s trade mark THE EDGE had acquired the requisite reputation in Australia necessary to underpin the s 60 ground. As with the s 44 ground discussed above, what needs to be considered in the case of s 60 is the notional use the Holder might make of its Edge Light trade mark, assuming use in a “fair and reasonable manner”[17].  The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the THE EDGE trade mark as at the relevant date.

    [17] These being the often quoted words of Evershed J (as he then was) in Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, at 101.

15. There is however virtually no evidence before me that might enable me to assess what reputation, if any, the Opponent’s THE EDGE mark may have had in Australia as at 31 March 2008.  There is, for example, no evidence before me of any actual revenue generated through use of the trade mark.  Nor is there any information as to how the mark may have been advertised or promoted in Australia, other than Mr Sinclair’s statement concerning the two brochures annexed to his declaration (printed in 2007 and 2008) that, “I am instructed that use of these brochures in Australia commenced in 2007.”

16. Moreover, Mr Ruud confirms in his declaration that the THE EDGE trade mark had only been in use in Australia for less than a year as at the relevant date.

17. I am thus unable to say whether the Opponent’s mark in fact enjoyed the kind of reputation contemplated by s 60 as at the relevant date (or at all). Nor am I able to speculate on the issue. As was noted by the Registrar’s delegate in Sara Lee Corporation v Bali Blue Pty Ltd[18]:

    The reputation in Australia cannot be assumed — it must still be established as a question of fact — per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 ; 106 ALR 465 ; 23 IPR 193.

    [18] (2003) 59 IPR 619 (at 624)

18. I accordingly find that the Opponent has not established its s 60 ground.

    Decision

19. The Opponent has, in terms of reg. 17A.34, partially established its s 44 ground of opposition. I accordingly refuse to extend protection of the IRDA to Australia in respect of the goods:

    light boxes, electronic notice boards; light-emitting electronic pointers; advertising machines, automatic; lighting ballasts; solar batteries

20. I confirm, however, that protection of the IRDA to Australia may be extended one month from the date of this decision in respect of the goods:

    optical discs; electronic tags for goods; converters, electric; inverters (electricity)

21. If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued, or as the Court may direct.  If the Registrar has not been served with a notice of appeal within the relevant period the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accord with Regulation 17A.34(2).

    Costs

22. As the Opponent has only been partially successful I have decided not to award costs against either party.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    24 September 2010