Seeley International Pty Ltd v Beau Frith

[2022] ATMO 66

TRADE MARKS ACT 1995

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

Re:Opposition by Seeley International Pty Ltd to registration of trade mark application number 1975366 (classes 6,11,19,37,42) – NATURAL COOL AIR (figurative) - in the name of Beau Frith

Delegate:

M.Cooper

Representation:

Opponent: Campbell Thompson of counsel instructed by Dentons Australia

Applicant: Edward Thompson of counsel instructed by Gorton IP

Decision:

2022 ATMO 66

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 44,58 and 60 grounds pressed – no ground established – trade mark to proceed to registration.

Background

1. This matter concerns an opposition by Seeley International Pty Ltd (‘Opponent’), under s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’), to registration of the trade mark detailed below in the name of Beau Frith (‘Applicant’):

Application Number 

1975366 

Trade Mark 

  (‘Trade Mark’) 

Filing date 

13 December 2018 

Goods and Services 

Class 6: Air diffusers of metal (vents, grills) for ventilating, heating and air conditioning installations; Air ducts of metal for buildings; Air grilles of metal; Air hose reels of metal (non-mechanical); Air pipes of metal for buildings; Air vents of metal for buildings; Channels of metal for transmitting air for ventilation; Control valves (manual) for controlling the flow of air (other than parts of machines); Metal frames for air pipes; Metal ventilation channels; Ventilators (vents) of metal for buildings   

Class 11: Air circulation apparatus; Air cleaning apparatus; Air cleaning filters (parts of air cleaning machines or installations); Air conditioners; Air conditioning apparatus for commercial use; Air conditioning apparatus for industrial use; Air conditioning apparatus for office use; Air conditioning apparatus for public buildings; Air conditioning apparatus for residential use; Air conditioning fans; Air conditioning filters; Air cooling apparatus; Air dehumidifiers; Air delivery apparatus for cooling buildings; Air delivery apparatus for heating buildings; Air delivery apparatus for ventilating buildings; Air deodorising apparatus; Air distribution installations; Air drying apparatus; Air filter installations; Air filtering apparatus; Air freezing apparatus for agricultural use; Air freezing apparatus for commercial use; Air freezing apparatus for industrial use; Air freezing apparatus for residential use; Air handling apparatus; Air humidifiers; Air inductor apparatus (air conditioning); Air inductor apparatus (ventilation); Air moisturisers; Air purification apparatus; Air recirculating apparatus; Air reheaters; Air separation apparatus; Air sterilisers; Air-conditioning apparatus; Air-conditioning fans; Air-conditioning installations; Apparatus for cleaning air; Apparatus for filtering breathing air; Apparatus for producing a curtain of air for insulating purposes; Apparatus for the distribution of air; Ventilation (air-conditioning) installations and apparatus; Installations for the distribution of air flow in buildings; Installations for the regulation of air flow in buildings; Cooling apparatus; Electric cooling apparatus; Electric cooling fans; Electric heating installations; Fans for ventilating; Ventilation apparatus; Ventilation grilles being parts of extractor fans; Ventilation hoods; Ventilation installations; Ventilation terminals; De-humidifiers; Humidifying apparatus, other than for medical use; Extractor fans; Electric ceiling fans; Electric fans for personal use; Electric fans for ventilation; Room fans; Table fans 

 Class 19: Air diffusers, not of metal, (vents, grills) for ventilating heating and air conditioning installations; Air ducts of non-metallic materials for buildings; Ducts, not of metal, for ventilating and air-conditioning installations; Non-metallic air ducts for buildings; Non-metallic air pipes for buildings; Non-metallic air vents for buildings; Non-metallic ducts for ventilating and air conditioning installations 

 Class 37: Installation and repair of air conditioning apparatus; Installation of apparatus for air-conditioning; Rental of air compressors; Building consultancy services; Repair, maintenance and installation advisory services; Repair, maintenance and installation consultancy services; Installation of apparatus for ventilating 

Class 42: Air flow consulting services; Air flow measurement services; Analysis of air; Design of commercial products; Design of industrial products; Design of products; Design services; Industrial design; Product design.

(‘Goods’ and ‘Services’)  

1. The Trade Mark was examined and advertised on 1 July 2019 in the Australian Official Journal of Trade Marks.

2. On 27 August 2019, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark. On 27 September 2019, a Statement of Grounds and Particulars (‘SGP’) was filed which cited opposition grounds under sections 42(b), 44, 58, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 11 December 2019. The parties then filed their evidence as detailed further below.

3. On 23 April 2021 the Opponent requested a hearing. I heard the matter by videoconference on 15 February 2022 as a delegate of the Registrar of Trade Marks (‘the Registrar’). Campbell Thompson of counsel, instructed by Elliott Sarre of Dentons Australia, appeared for the Opponent, accompanied by Paul Munster of the Opponent. The Applicant was represented by Edward Thompson of counsel instructed by Michelle Gorton of Gorton IP.

Evidence

1. The Opponent’s Evidence in Support was filed on 12 March 2020. It comprised declarations, dated 12 March 2020, of Frederic Frank Seeley, the Opponent’s founder and Chairman (including Exhibits COOLAIR-1 to COOLAIR-6) (‘Seeley’); Bill Threadgold, the Managing Director of Air Diffusion Agencies Pty Ltd (‘Threadgold’); and Sam Ceravolo, the Director of Quality Airconditioning & Heating (‘Ceravolo’). 

2. The Applicant’s Evidence in Answer was filed on 15 June 2020. It comprised the declaration of Beau Frith dated 15 June 2020 including Annexures BF-1 to BF-18 (‘Frith’). 

3. No Evidence in Reply was filed.  

4. In accordance with directions, the Opponent and Applicant filed written submissions. These and the evidence are discussed further below

Grounds and Onus

1. The Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities.[1] 

   [1] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

2. In its written and oral submissions, the Opponent pressed only its ss 44, 58 and 60 grounds of opposition. The date on which the grounds are to be assessed is the filing date of the opposed application, 13 December 2018 (‘the relevant date’), which is also the ‘priority date’ for ss 44 and 60 purposes.

Consideration and reasons

1. Seeley outlines the history of the Opponent’s business, from selling secondhand portable evaporative air-conditioners in 1963/4, including those branded ‘Coolair’ from 1967, to its current position as Australia’s largest air-conditioning manufacturer, employing over 550 people worldwide and owning several trade marks and patents.

2. Frith notes the commencement in 1992 of the business ‘Natural Cool Air’, which his father acquired and to which he was appointed Director in 2009. Among other things, annexures to Frith describe the business as ‘committed to designing, manufacturing and installing sustainable airflow products for a naturally cooler tomorrow’ and as ‘specializing in industrial cooling systems.’[2]

   [2] Frith, Annexure BF-17.

Section 44

1. Section 44 of the Act relevantly provides:

44. Identical etc. trade marks 

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

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

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

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

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

…

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

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

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

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

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

1. In the circumstances of this application, in order to establish the s 44 ground of opposition under s 44(1) or (2), the Opponent must demonstrate, subject to subsections (3) and (4), that the Trade Mark issubstantially identicalwith or deceptively similar to another registered (or sought to be registered) mark; is in respect of similar goods or closely related services (s 44(1)(a)) or similar services or closely related goods (s 44(2)(a)); and has a priority date not earlier than that of the other mark (s 44(1)(b) and s 44(2)(b)).

2. The Opponent particularised this ground in its SGP as follows:

   The Opponent is the owner of Trade Mark Registration 813748. The trade mark subject of Registration 813748 consists of the trade mark COOLAIR. The words COOL AIR are a significant element in the trade mark subject of Application 1975366. For this reason the trade mark subject of Application 1975366 is deceptively similar if not substantially identical to the trade mark subject of Registration 813748. The goods subject of Registration 813748 in Class 11 are “evaporative air conditioners and coolers, and parts and accessories therefore included in this class”. The goods subject of Application 1975366 in Classes 6, 11 and 19 are for the purpose of the cooling or treatment of air and are therefore the same as, or similar to, the goods in Class 11 subject of Registration 813748. The services subject of Application 1975366 in Classes 37 and 42 are for the installation and repair or the design and analysis of the goods subject of Registration 813748 and for this reason are closely related to those goods.

3. Trade mark 813748 for ‘COOLAIR’ (‘Opponent’s mark’) was registered on 1 December 1997, before the Trade Mark.

4. Section 14 of the Act provides that goods or services are ‘similar’ to other goods or services if they are the same, or of the same description, as the other goods or services. As noted above, the Opponent’s mark covers class 11 goods ‘evaporative air conditioners and coolers, and parts and accessories therefor included in this class’. I note the broad coverage of the Goods in class 11 for, among other things, ‘air conditioners, air conditioning apparatus.. air recirculating apparatus’ which do not reflect any relevant limitation or distinction in their application. Overall, I am satisfied that the Goods, in part at least, encompass and are relevantly similar to those covered by the Opponent’s mark (s 44(1)(a)).

5. In relation to the Services, as they include the installation and repair of air-conditioning apparatus, I am satisfied that they are closely related to the goods of the Opponent’s mark (s 44(2)(a)).[3]

   [3] Registrar of Trade Marks v Woolworths (‘Woolworths’) [1999] FCA 1020 [38, 41]; (1999) FCR 365 (French J). See also Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398, 405 (Needham J).

Substantial identity

1. In summary, the Opponent submits that the marks are substantially identical because the Opponent’s mark, which is wholly incorporated in the Trade Mark, is ‘the most distinctive branding cue’ and is its dominant cognitive cue. The Applicant notes the differences between the marks, contending that the word ‘Natural’ is ‘prominent and striking’ and, in combination with the device, they are ‘sufficient to distinguish the marks from one another.’

2. The assessment of substantial identity was identified by Windeyer J in Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited as follows:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66; (1963) 109 CLR 407, 415.

3. A side-by-side comparison is shown in the table below.  

Trade Mark	Opponent’s mark
COOLAIR

1. Self-evidently, the Trade Mark and the Opponent’s marks contain the same words, ‘cool’ and ‘air’[5] however on a side-by-side basis, the differences between the marks are apparent. There are more words and they are presented differently in the Trade Mark. The Trade Mark also includes a device (the fan).[6] Overall, I consider an impression of dissimilarity emerges such that the compared marks cannot be considered ‘substantially identical’.

   [5] See Gummow J’s determination in Carnival Cruise Lines Inc v Sitmar Cruises Ltd, [1994] FCA 936 [63], that there was no material distinction to be drawn between "FUN SHIP " and "FUNSHIP".

   [6]The use of colour in the Trade Mark is immaterial because there are no limitations to colour recorded and therefore it is taken to be registered for all colours (s 70 of the Act).

Deceptive similarity

1. The Opponent submits that the Trade Mark lacks distinguishing elements, that the fan/device ‘adds nothing (or very little)’ to its distinctive character and the word ‘natural’ is laudatory and directly descriptive of the characteristics of the Goods and ‘not a strong branding cue’. Consequently, by reason of the shared the dominant cognitive cue, the words ‘Cool Air’, and the low level of distinctiveness of its other elements, the consumer would be likely to wonder whether the goods bearing the Trade Mark ‘might not come from the same trade source as the goods supplied under the Opponent’s mark’ or that the Opponent has extended its ‘COOLAIR’ brand to include industrial fans.  

2. The Applicant contends that ‘Cool Air’ is neither the dominant cognitive cue nor an essential feature of the Trade Mark, submitting that an assessment of the marks as wholes is required and they are to be assessed in the context of their use and with the understanding that ordinary consumer will pay little attention to descriptive features.  The aversion of courts to register descriptive marks is also noted and, in this context, the Applicant contended, other features of the Trade Mark, such as the device, assume greater significance. Even if ‘Natural’ is considered to have a laudatory meaning, the Applicant maintains that it leaves a more striking impression that just ‘Cool Air’. It is presented with a large 3-bladed blue fan, beside which is ‘Natural’ in large font, and the words ‘Cool Air’ underneath it in smaller letters. In context, the words ‘Cool Air’ are neither prominent/dominant nor an ‘essential’ feature. Furthermore, as the Applicant observes, the Threadgold and Cerovolo declarations both state that consumers will typically research air-conditioners and they are relatively costly. It is a considered purchase and, the Applicant submits, tells strongly against the likelihood of any confusion between the marks. In addition, given that both marks have been in the market for several years, if there was a real tangible likelihood of confusion there would be evidence of it by now.

3. While both parties made ss 44(3) and (4) submissions, given my findings below, it is unnecessary to address them.

Consideration

1. Section 10 of the Act provides that a trade mark will 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.’

2. In assessing trade marks for deceptive similarity, the Full Federal Court in Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd succinctly summarised the test:

   The test of deceptive similarity …. is a comparison between one mark and the impression of another mark carried away and hypothetically recalled, paying due regard to the fact that recollection is not always perfect.[7]

   [7] [2020] FCAFC 186 [99] (Middleton, Yates and Lee JJ).

3. This comparison is to be made by reference to the standards of ordinary people ‘who should not be credited with high perception or habitual caution’ and in the context of the business and the way in which the particular class/es of goods are sold or services provided.[8] A possibility of confusion is not sufficient; there must be a real tangible danger of confusion.[9] A likelihood of confusion will exist if there ‘is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source.’[10] It is not necessary that the confusion persist up to, or contribute to inducing, a sale.[11] The use to be considered is notional use.[12]

   [8] Australian Woollen Mills v F S Walton and Co Ltd (‘Australian Woollen Mills’) (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ).

   [9] Registrar of Trade Marks v Woolworths Ltd (‘Woolworths’) (1999) 93 FCR 365; [1999] FCA 1020 [50] ( French J).

   [10] Ibid.

   [11] TiVo Inc v Vivo International Corporation Pty Ltd (‘TiVo’) [2012] FCA 252 [105] (Dodds-Streeton J).

   [12] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362.

4. In considering the notional fair use for the Goods and Services, given my finding above concerning the similarity/close relationship between them and those of the Opponent’s mark, I accept that the Applicant could potentially sell the same types of goods under the Trade Mark to the same customers and through the same trade channels as the Opponent.

5. In estimating the effect or impression produced on the mind of potential consumers, I note the comment in Clark v Sharp in relation to the appropriate comparison in the circumstances:

   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 results of such matters, but by judging the effect of the respective wholes.[13]

   [13] (1898) 15 RPC 141,146 (Byrne J).

6. Assessed as wholes, there are clear visual differences between the Trade Mark and the Opponent’s mark. Specifically, the Trade Mark contains a predominate, striking 3-blade fan device and comprises three words, the word ‘NATURAL’ appearing in larger, bolded font and on top of the final two words ‘COOL AIR’ in smaller print. Aurally and semantically the Trade Mark and the Opponent’s mark are also significantly different.

7. In relation to their resemblances, they share common word/s, ‘cool’ and ‘air.’ As ‘COOLAIR’ is the only element of the Opponent’s mark, it is the only word that could be recalled by consumers. It is however descriptive of the nature or function of many of the Goods and in context, in the Trade Mark, is in smaller print and not particularly prominent or memorable. As the delegate observed in Société Des Produits Nestle SA v Newman’s Chocolates Ltd, ‘consumers do not view descriptive matter as distinguishing between goods and look for other factors which do distinguish when making their purchases.’[14] Similarly, Shanahan observes of the authorities that, where trade marks contain a common element which is descriptive, its presence must be discounted to some extent when considering whether the compared marks are deceptively similar.[15]

   [14] [2004] ATMO 50 [35].

   [15] Shanahan’s Australian Law of Trade Marks & Passing Off (6^th ed. online) (Shanahan) [30.1545].

1. Having regard to the ‘idea’ of the marks, while the common element ‘COOL AIR’ suggests a product that cools the air, in light of the differences noted above, this is not sufficient in itself to create a deceptive resemblance between them. A proprietor of a mark is not entitled to a complete monopoly of all words conveying the same idea as that mark.[16] 

   [16] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15; (1952) 86 CLR 536 at 539.

2. Furthermore, as noted above, purchase of the Goods involves a relatively high expenditure, and in such a context I accept that consumers will exercise some care and attention in their purchase. Such scrutiny would mitigate any risk that consumers would be caused to wonder or infer that Goods sold or Services provided under the Trade Mark came from the same source or were otherwise associated with the Opponent.

3. Therefore, in assessing the overall impression based on recollection of the Opponent’s mark, I am not satisfied that the one common element in the marks, that is, the words ‘cool air’, constitutes sufficient similarity between them such that a person with an imperfect memory of the Opponent’s mark, on seeing the Trade Mark, will likely be caused to wonder if there is a connection or association between them. While I accept the Opponent’s submission that the Applicant’s objective evidence does not support his claim of over 30 years use of the Trade Mark, it does indicate its use as a trade mark since at least 2016.[17] In this context, the absence of evidence of confusion with the Opponent’s mark gives some support to the conclusion that there is little likelihood of any confusion arising between them.

   [17] Frith annexures BF-15, BF-16.

4. It follows that I do not consider the Trade Mark ‘so nearly’ resembles the Opponent’s mark in any material way such that its use would be ‘likely to deceive or cause confusion’ among ‘persons of ordinary intelligence and memory’, even allowing for imperfect recollection.

5. Accordingly, I am not satisfied that the s 44 ground of opposition has been established.In the circumstances there is no need to consider s 44(3) or (4).

Section 58

1. Section 58 provides:

   Applicant not owner of trade mark 

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

2. In its SGP, the Opponent particularised this ground as follows:

   The Opponent commenced use of the trade mark COOLAIR in 1969 which is prior to the date of the filing of Application 1975366 by Beau Frith on 13 December 2018. The trade mark subject of Application 1975366 is substantially identical to the trade mark COOLAIR. The Opponent commenced use of trade mark COOLAIR in connection with evaporative air conditioners and coolers, and parts and accessories therefore which are goods subject of Application 1975366.

3. To succeed on this opposition ground, an  opponent needs to establish that its mark is identical or substantially identical to the opposed mark, that its mark has been used in respect of goods and services that are ‘the same kind of thing’ as those covered by the opposed mark and that it has the earlier claim to ownership based on its use of its mark/s before the use of, or before the filing of an application to register, the opposed mark.[18] 

   [18] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, [50] (Greenwood, Jagot and Beach JJ).

4. For reasons discussed above, I do not consider the marks substantially identical. Given this it is unnecessary to consider the other elements of s 58 and, it follows, I am not satisfied that the Opponent has established this ground of opposition.

Section 60

1. Section 60 of the Act provides as follows:

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

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

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

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

2. Therefore, the Opponent must first establish that its mark has a reputation in Australia at the relevant date and, secondly, that because of that reputation, the Applicant’s use of the Trade Mark would be likely to deceive or cause confusion.  

3. The Opponent particularised this ground in its SGP as follows:

   The Opponent has acquired a substantial reputation in Australia in the trade mark COOLAIR in connection with the goods subject of Registration 813748. The trade mark subject of Application 1975366 is deceptively similar if not substantially identical to the trade mark COOLAIR. In view of the reputation acquired in the Opponent’s trade mark COOLAIR, the use of the trade mark subject of Application 1975366 on the goods and services subject of that Application is likely to deceive or cause confusion.

Reputation

1. In McCormick & Co Inc v McCormick Kenny J considered the meaning of reputation in s 60 as ‘the recognition of the [trade mark] by the public generally’[19] and observed, in relation to the measurement of reputation, as follows: 

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things.[20] 

   [19] [2000] FCA 1335 [81].

   [20] Ibid [86].

2. The Seeley declaration lists significant sales and modest advertising expenditure relating to the Opponent’s mark however, as the Applicant observes, these amounts are not supported by objective evidence. Even accepting the figures, they do not establish when or over what period they accrued or were incurred. Similarly the market share figure is not substantiated and does not identify the point in time to which it relates, i.e. whether before or after the relevant date. Of the many awards received by the Opponent, none are for the COOLAIR brand. They are either for the Opponent itself or for the Opponent’s other brands such as Breezair and Braemar. The evidence of marketing and promotional activities bearing the Opponent’s Mark is limited and, notwithstanding Seeley’s attestation as to the dates, the few brochures provided are either undated or post-date the relevant date.[21] While Threadgold and Ceravolo attest to relatively substantial average annual sales of COOLAIR branded products in SA and WA, they do not indicate to what period they relate or what they were at the relevant date. Ceravolo estimates COOLAIR has a 25-30% market share of the evaporative air-conditioning market in Western Australia however, in the absence of substantiating evidence (which would presumably be readily available), I do not consider this evidence particularly persuasive in an assessment of the Australia-wide reputation of the Opponent’s mark.

   [21] Seeley, Exhibits COOLAIR-4 and -5.

3. Therefore, while I accept the Opponent’s significant reputation in the air-conditioning field, the evidence indicates that it is its name and its other brands to which that reputation attaches. I am not satisfied that the Opponent’s evidence establishes any relevant reputation in the Opponent’s mark such that s 60(a) is enlivened.

4. It follows that the s 60 ground has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   Decision  

   (1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:  

   (a) to refuse to register the trade mark; or  

   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;  

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

2. The Opponent has failed to establish a ground of opposition. Accordingly, the Trade Mark may proceed to registration after one month from the date of this decision. If the Registrar is  served with a notice of appeal before that time, the disposition of the application should be in accordance with the Court’s order or direction.

Costs

1. Both parties sought costs. As the Applicant was the successful party, I award costs against the Opponent under s 221 of the Act in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Delegate of the Registrar of Trade Marks

29 April 2022.