SG Fleet Salary Packaging Pty Ltd v Finlease (Australia) Pty Ltd

[2011] ATMO 71

TRADE MARKS ACT 1995

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

Re:Opposition by SG Fleet Salary Packaging Pty Ltd to application under section 92 of the Act by Finlease (Australia) Pty Ltd to remove trade mark number 736646 (36) - FINLEASE - in the name of SG Fleet Salary Packaging Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: No appearance Applicant: Christian Dimitriadis of Counsel, instructed by John Macnamara of MWA Lawyers
Decision:	2011 ATMO 71 Section 92(4)(b) opposition: No relevant use or relevant obstacles to use shown. No reason for exercise of discretion in Opponent’s favour. Trade mark to be removed. Costs awarded against Opponent.

Background

1. SG Fleet Salary Packaging Pty Ltd (“the Opponent”) is the registered owner of trade mark registration 736646, relevant details of which are as follows:

   Trade mark number:  736646
   Registered from:                   12 June 1997

   Services:Class  36: Financial affairs

   Trade mark:  FINLEASE

2. Hereafter I refer to the FINLEASE trade mark as “the Trade Mark” and to the services covered by registration 736646 as “the Services”.

3. On 16 October 2009 Finlease (Australia) Pty Ltd (“the Removal Applicant”) filed an application under section 92(4)(b) of the Trade Marks Act 1995 (“the Act”) seeking removal of the Trade Mark from the Register, alleging it had not been used in good faith in relation to any of the Services during the three year period ending on 16 September 2009 (“the Non-use Period”)[1].

   [1] The removal application sought in the alternative removal pursuant to s 92(4)(a) of the Act, but this was not pursued at the Hearing.

4. On 25 January 2010 the Opponent filed Notice of Opposition to the removal (“the Notice”) raising a single ground of opposition, namely that:

   The trade mark is used in the business of SG Fleet.  It identifies a product SG Fleet offers being Finance Lease.

5. I note that whether or not the Trade Mark was being used as at 25 January 2010 is of course not of direct relevance to the question of whether it was being used during the Non-use Period.  Nor is the entity specified as “SG Fleet” anywhere defined in the Notice.  However, I proceed on the basis that the Opponent intended to indicate it used the Trade Mark (either directly or through an “authorised user”[2]) in relation to the Services during the Non-use Period.

   [2] “authorised user” is defined in s 8 of the Act, which is reproduced in paragraph 15 below.

6. The Opponent’s evidence in support consists of a Statutory Declaration by Annie Margossian-Kenny made on 22 January 2010, with Exhibits 1 and 2.  Ms Margossian-Kenny is the “General Manager, Risk & Resource Development” at a company named SG Fleet Australia Pty Ltd (“Fleet Australia”), which she says wholly owns the Opponent.

7. The Removal Applicant’s evidence in answer consists of a Statutory Declaration made on 9 April 2010 by Mark Terence O’Donoghue, sole Director of the Removal Applicant, with Exhibits MOD 1 to MOD 15.

8. The Opponent did not file any evidence in reply.

9. I heard the matter as delegate of the Registrar of Trade Marks in Sydney on 5 April 2011.  Christian Dimitriadis of Counsel, instructed by John Macnamara of MWA Lawyers, appeared for the Removal Applicant.  Mr Dimitriadis’ oral submissions were also supplemented by written submissions tendered at the hearing.  The Opponent did not appear and was not represented at the hearing, nor did it file any written submissions.

   The Law

10. Insofar as relevant to this matter, section 92 of the Act is reproduced below:

    92 Application for removal of trade mark from Register etc.

    (1) Subject to subsection (3), a person may apply to the Registrar to have a trade mark that is or may be 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.

    (3) An application may not be made to the Registrar under subsection (1) if an action concerning the trade mark is pending in a prescribed court, but the person aggrieved may apply to the court for an order directing the Registrar to remove the trade mark from the Register.

    Note:  For prescribed court see section 190.

    (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) …

    (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.

    Note 1:  For file and month see section 6.

    Note 2:  If non-use of a trade mark has been established in a particular place or export market, then instead of the trade mark being removed from the Register, conditions or limitations may be imposed under s.102 on the registration of the trade mark so that its registration does not extend to that place or export market.

    (5) …

11. Section 93(2) of the Act specifies that an application under s 92(4)(b) “may not be made before a period of 5 years has passed from the filing date in respect of the application for the registration of the trade mark”. This requirement is clearly satisfied here since registration 736646 was filed in 1997 and the removal application was not filed until 2009.

12. Sections 100(1)(c) and 100(3) of the Act provide that the party opposing removal bears the onus of rebutting an allegation made against it under s 92(4)(b), either by establishing that the trade mark (or the trade mark with additions or alterations not substantially affecting its identity) was used in good faith during the Non-use Period, or that there was an obstacle to use during that period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities[3].

    [3] 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 [27] and Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40].

13. In this case Ms Margossian-Kenny says the Trade Mark “has been used” for relevant services by an authorised user, namely by the company of which she is a General Manager, Fleet Australia.  As regards “authorised use”, “Note 1” to s 100 states:

    If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).

14. Section 7(3) itself states:

    (3) An authorised use of a trade mark by a person (see section 8) is taken, for the purposes of this Act, to be a use of the trade mark by the owner of the trade mark.

15. Section 8 of the Act states:

    Definitions of authorised user and authorised use

    8.(1) A person is an authorised user of a trade mark if the person uses the trade mark in relation to goods or services under the control of the owner of the trade mark.

    (2) The use of a trade mark by an authorised user of the trade mark is an authorised use of the trade mark to the extent only that the user uses the trade mark under the control of the owner of the trade mark.

    (3) If the owner of a trade mark exercises quality control over goods or services:

    (a) dealt with or provided in the course of trade by another person; and
    (b) in relation to which the trade mark is used;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.

    (4) If:

    (a) a person deals with or provides, in the course of trade, goods or services in relation to which a trade mark is used; and
    (b) the owner of the trade mark exercises financial control over the other person's relevant trading activities;

    the other person is taken, for the purposes of subsection (1), to use the trade mark in relation to the goods or services under the control of the owner.
    (5) Subsections (3) and (4) do not limit the meaning of the expression under the control of in subsections (1) and (2).

    The Evidence

16. As mentioned, the Opponent’s evidence consists of a Statutory Declaration by Annie Margossian-Kenny, a General Manager since February 2007 with the company I have referred to as Fleet Australia and which company, she says, wholly owns the Opponent.  Ms Margossian-Kenny says that the Opponent “has been a member of the SG Fleet corporate group since 2005”, that she has “free access to the records of [Fleet Australia] and [the Opponent] relating to its trademarks” and that the facts contained in her declaration “come from those records or from my own personal knowledge”.  I note Ms Margossian-Kenny does not explain what the words “the SG Fleet corporate group” refer to, nor why membership of this group may be significant to the opposition.

17. As highlighted by Mr Dimitriadis in his submissions, Ms Margossian-Kenny does not claim that the Opponent has ever used the Trade Mark itself.  Rather, she says that:

    [The Opponent] was acquired by [Fleet Australia] in May 2008, enclosed as Exhibit 1 are extracts from the Asset Sale Agreement.  [Fleet Australia] is authorised to use the [Trade Mark] (and all other Intellectual Property of [the Opponent]) in accordance with the Asset Sale Agreement.

    …

    This declaration is being made for the purpose of showing the [Trade Mark] has been used in relation to products and services provided by [Fleet Australia].

    [Fleet Australia] is involved in providing fleet leasing, fleet management and salary packaging services.  Included in their product suite are leasing products to which the [Trade Mark] applies.  Enclosed as Exhibit 2 are printouts from the website outlining the finance options that we provide to clients including Finlease – being a finance lease product.

18. Exhibit 1 to the Margossian-Kenny declaration consists of copies of the cover page, the execution page and two of the substantive pages of what appears to have originally been a 13 page document.  The cover page, dated 9 May 2008, bears the title “Agreement for Sale of Business” and indicates the parties concerned to be the Opponent as “Vendor” and SG Fleet (with ACN 003 429 356) as “Purchaser”.  The execution page indicates the same two people signed the document in their capacity as directors of both companies.  Most of the wording on the two substantive pages is blacked out and I agree with Mr Dimitriadis’ submission that what remains does not on the face of it support Ms Margossian-Kenny’s above-quoted statement that “[Fleet Australia] is authorised to use the [Trade Mark]”.  Rather, the “Vendor” agrees:

    to transfer the Business and the Business Assets to the Purchaser on the Completion Date, on the terms and conditions contained in this Agreement, in order to merge the respective business and assets of the Vendor and the Purchaser and to achieve commercial synergies and cost savings.

19. The only other substantive information contained in the document before me is a definition of “Business Assets”, which includes, inter alia, “the Goodwill and the Intellectual Property…but excluding the Excluded Assets”.  As Mr Dimitriadis pointed out, however, there is no definition of “the Intellectual Property” or of “the Excluded Assets” before me.

20. Exhibit 2 to Ms Margossian-Kenny’s declaration consists of printouts of three pages from the website < apparently downloaded on 17 September 2009, that is two days after the Non-use Period ended.  All of these bear the copyright notice “© SGFLEET AUSTRALIA 2008” but none specifically refers to either (the company) Fleet Australia or to the Opponent.  On one of these pages under the headings “PRODUCTS/SERVICES” and “Finance Options” appears the following:

    Finlease™

    Finance Leasing provides 100% financing (no deposit necessary) and can include full maintenance and management services.  The lease payments are tax deductible.  At the end of the lease term you are liable to pay the residual value which is determined based on ATO guidelines.

    Under a finance lease the lessee guarantees that the lessor will recover an amount at least sufficient to cover the residual value that was set at the time the lease was written.  The lessor will consider offers from lessees to purchase the equipment at the end of the lease, generally for an amount not less than the residual value.

    Call us for more details on 1300 138 235.

21. The second and third webpages in evidence contain a “Glossary” of terms, including a definition of “Finance Lease –also referred to as Finlease™…”.

22. As Mr Dimitriadis highlighted in his submissions, Exhibit 2 is the sole (albeit arguable) evidence of actual use of the Trade Mark before me and is, strictly speaking, irrelevant given it does not show use during the Non-use Period.

23. The Removal Applicant’s evidence, as mentioned, is contained in the declaration of its sole director Mark O’Donaghue.  Relevantly to the discussion which follows, it establishes to my satisfaction that:

    ·    The Removal Applicant was incorporated in 1989 and has continuously traded under the name “Finlease” and/or used the trade mark FINLEASE in Australia since then in relation to the provision of finance and lease brokerage services;

    ·    Such use has been substantial and significant sums (several million dollars) have been invested over the years in promoting the relevant services via “trade shows, internet advertising, trade publications, print media advertising and tele marketing, magazine editorial and general marketing and advertising”;

    ·    the Removal Applicant first became aware of trade mark registration 736646 in August 2009 following a pre-filing search of the Trade Marks Register conducted by its attorneys;

    ·    Notwithstanding Mr O’Donoghue has been “involved in the finance industry for many years” (at least since 1989) he had never encountered any use (or claimed use) of the Trade Mark prior to January 2010 when the Removal Applicant was served with a copy of the Margossian-Kenny declaration, other than use by the Removal Applicant;

    ·    Market place enquiries made by Mr O’Donaghue and by his staff since September 2009 “have not revealed anyone being aware of any person or company using the name Finlease other than [the Removal Applicant]”;

    ·    As evidenced by an historical extract from the Australian Securities and Investments Commission’s database exhibited with his declaration, the Opponent is not in fact “wholly owned by SG Fleet Australia Pty Ltd” (ACN 003 429 356) as claimed in the Margossian-Kenny declaration, but has been wholly owned since 1 April 2005 by a third company not mentioned in the Opponent’s evidence, namely SG Fleet Services Pty Ltd (ACN 108 174 296).

24. Given the Opponent’s entire defense of the Trade Mark appears to turn on the mark’s “authorised use”, it is worth noting in relation to this last issue that the Opponent opted not to serve or file any evidence in reply addressing this significant anomaly regarding ownership, despite having been put on notice of it by the Removal Applicant’s evidence.  Indeed, also exhibited with Mr O’Donaghue’s declaration is a copy of a letter dated 14 September 2009 sent to the Opponent by the Removal Applicant’s attorney John Macnamara in which the 100% ownership of the Opponent by SG Fleet Services Pty Ltd (ACN 108 174 296) revealed by the ASIC search is specifically mentioned.  Ms Margossian-Kenny’s letter dated 21 September 2009 to Mr Macnamara in response, (which is also exhibited with the O’Donaghue declaration), nevertheless erroneously asserts:

    The Finlease Trademark was properly registered by [the Opponent] (formerly SMB Fleet Management Pty Limited) a wholly owned subsidiary of SG Fleet Australia Pty Ltd on 12 June 1997.

    The business of [the Opponent] and SG Fleet Australia Pty Ltd includes the selling and arranging finance lease products and this trademark is used in connection with that business.

    Discussion

    Actual use

25. As indicated, at no point in either the Notice itself or in the Opponent’s evidence does the Opponent specifically say that the Trade Mark was used during the Non-use Period.  Nor is there any information before me as to when the Opponent claims to have first used the Trade Mark or to have authorised its use.  Instead, only vague claims such as Ms Margossian-Kenny’s statement that “the Finlease Trade Mark has been used in relation to products and services provided by [SG Fleet]” are in evidence.

26. As mentioned above, the sole evidence of what might be considered actual use of the Trade Mark before me is contained in Exhibit 2 and this does not show use during the Non-use Period.

27. Further, even assuming there were evidence (or even claims) of use during the Non-use Period before me, the Opponent asserts any use was not by it directly, but rather was “authorised use” by a company of which it (erroneously) says it is “a wholly owned subsidiary”. As Mr Dimitriadis pointed out, however, s 8 of the Act in any event says that use by another party would only amount to authorised use “to the extent that the user uses the trade mark under the control of the owner of the trade mark” and there is no evidence before me of any “control” by the Opponent. As he put it in his written submissions (referring to the Margossian-Kenny declaration):

    [SG Fleet] is said to be the parent company of the [O]pponent and to have acquired the [O]pponent pursuant to an Asset Sale Agreement in May 2008 (paras 2-3).  It is asserted that the alleged parent “is authorised to use [the mark] in accordance with the Asset Sale Agreement” (para 3), but the brief extracts from the agreement contained in Exhibit 1 do not bear this out.  All that is revealed is that the [O]pponent agreed to transfer some assets, including “the Intellectual Property” (not defined; and excluding the “Excluded Assets”, also not defined) to the alleged parent (recital C and definition of “Business Assets” in Exhibit 1);

    More particularly, there is no evidence (in Exhibit 1, or for that matter in the declaration itself) that any use of the mark was, first, the subject of a licence from the [O]pponent as registered owner, and, secondly, the subject of any exercise of any control by the [O]pponent as would be required to render it “authorised use” for the purposes of s 8 of the Act. Moreover, there is nothing in terms of corporate structure to suggest that the [O]pponent was in a position to control the activities of its (alleged) parent.

28. Mr Dimitriadis’ above submission had in mind ss 8(3) and (4), which say that use will be taken to be “under the control of the owner” if “the owner exercises quality control over [the Services]” or if “the owner exercises financial control over the [user’s] relevant trading activities. Recognising, nevertheless, that s 8(5) indicates ss 8(3) and (4) “do not limit the meaning of the expression under the control of” (as used in s 8 generally), he also referred me to several decisions which have contemplated other circumstances which might amount to “control” in the relevant sense.

29. Mr Dimitriadis firstly referred to the seminal judgment of Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670; 1A IPR 520, a case concerning registered users under the now repealed Trade Marks Act 1955 but which is regularly referred to in subsequent decisions dealing with s 8 of the current legislation. He highlighted in particular the following remarks by Aickin J (at CLR 683; IPR 531) after his Honour had discussed earlier cases which had considered the issue:

    These cases demonstrate that the essential requirement for the maintenance of the validity of a trade mark is that it must indicate a connexion in the course of trade with the registered proprietor, even though the connexion may be slight, such as selection or quality control of the user in the sense in which a parent controls a subsidiary.

1. In Yau’s Entertainment Pty Ltd v Asia Television Ltd (2002) 54 IPR 1, the Full Federal Court adopted Aickin J’s above formulation and confirmed (at [80]) that in the case before them licensing arrangements between the parties whereby the trade mark owner retained the right to approve title selections of videos it made available to the user provided “sufficient connection” for the purposes of s 8. Lahore in Patents, Trade Marks & Related Rights has characterised the Court’s decision in this regard as “a very liberal interpretation of s 8” but, in any event submitted Mr Dimitriadis, there is in the present matter no evidence before me of any involvement whatsoever by the Opponent in how the Trade Mark may be used by its claimed “authorised user”. Indeed, as discussed above, the Opponent appears to be confused as to the very identity of the claimed user and, in these circumstances, it is difficult to see how the required “connection in the course of trade with the registered proprietor” referred to by Aickin J is indicated.

2. Mr Dimitriadis also referred to the first instance judgment of Jacobson J in Health World Ltd v Shin-Sun Australia Pty Ltd (2008) 75 IPR 478[4], particularly at [189] to [202]. I do not however believe it is necessary to canvass in detail here his Honour’s discussion on the issue of authorised use under s 8 and I simply confirm that Jacobson J’s expressed views were on all fours with those of Aickin J in the Pioneer case and the Full Federal Court in the Yau’s case.  I note in passing that other judges of the Federal Court have also indicated their approval of Aickin J’s analysis, including Burchett J in Polo Textile Industries Pty Ltd v Domestic Textile Corporation Pty Ltd (1993) 26 IPR 246 (at 256-258)[5] and Moore J in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd (2000) 51 IPR 1 at [102]-[115], where his Honour observed at [111] that the definition of “authorised use” in s 8:

   does not attempt to travel, for present purposes, beyond the bounds of what emerged from English and Australian authorities concerning the effect of licensing surveyed by Aickin J in Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 at 683 ; 17 ALR 43 at 54 ; 1A IPR 520 at 531

   [4] This matter was appealed to the Full Federal Court and subsequently to the High Court but neither appellate court took issue with Jacobson J’s findings with respect to the issue of “authorised use”.

   [5] In relation to use by unregistered licensees for the purposes of s 23 of the Trade Marks Act 1955.

3. I note, too, that more recently Greenwood J said in Food Channel Network Pty Ltd v Television Food Network GP (2010) 87 IPR 620 of the words “use in relation to goods” and “use in relation to services” contained in ss 7(4) and(5) and s 92(4)(b) of the Act (at [133]-[134]):

   The phrase “in relation to” can mean almost anything in the abstract but must necessarily be given a meaning in context. The relevant context is the structure and purpose of the Act which dictates the orthodoxy of the phrase and which requires a relationship between the owner of the trade mark, use (or at the application date, intended use) and goods or services in respect of which use, in trade, is to occur and for which the mark is registered, as specified, according to the ordinary and natural meaning of the language used.

   [134] Use of the mark in relation to goods and services is not established by showing use of the mark in relation to services provided by someone else. Section 7 of the Act which provides that use of a trade mark in relation to services means “use of the trade mark in physical or other relation to the services” does not have the effect of providing, for the purposes of the Act, that the meaning of the phrase “in relation to services” means use by the trade mark owner in relation to services provided by someone else.

4. As mentioned in paragraph 12 above ss 100(1)(c) and 100(3) of the Act provide that the party opposing removal bears the onus of rebutting an allegation made against it under s 92(4)(b). In my view the Opponent has not on the evidence before me shown use of the mark during the Non-use Period and, further, has not shown that any use that may have been made of the Trade Mark via the internet qualifies as “authorised use” as contemplated by ss 7(3) and 8. The Opponent has accordingly not discharged the onus upon it.

   Obstacles to Use

5. For the sake of completeness I note the Opponent has not provided evidence of any relevant circumstances prevailing during the Non-use Period which might have been an obstacle to use of the Trade Mark for any of the Services. I accordingly find no case under s 100(3)(c) of the Act has been established.

   The Registrar’s Discretion

6. I have found that there was no relevant use of the Trade Mark during the Non-use Period.  In such circumstances s 101(1) gives the Registrar the discretion to remove the Trade Mark “in respect of any or all of the [Services]”, whilst s 101(3) explicitly provides that discretion may be exercised in the Opponent’s favour if the Registrar is satisfied it is reasonable to do so.

7. In this regard early decisions considering exercise of the discretion under s 101(3) suggested an opponent would need to show special facts or circumstances, or an overriding question of public interest, to warrant leaving a mark on the Register in the absence of relevant use[6].  In Pioneer Computers Australia Pty Ltd v Pioneer KK (2009) 80 IPR 38, however, Bennett J said:

   [6] See for example Figgins Holdings Pty Ltd v Beltrami SpA (1998) 46 IPR 411 (at 418-9).

   [167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.

   [168] In Kowa Co Ltd at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).

   [169] In E & J Gallo at [202]–[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion:

   •  there had been no abandonment of the trade mark;
   •  the registered proprietors of the mark still had a residual reputation in the mark;
   •  there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended;
   •  the applicants for removal had entered the market without having taken steps to ascertain from the register whether anyone had a right to exclude their use of the mark;
   •  the registered proprietors were not aware of the applicant’s sales under the mark.

8. While I accept that an opponent is not required to point to “exceptional circumstances”, in the present matter the Opponent has not satisfied me that any facts or circumstances exist, or that there is any relevant public interest, which would make it reasonable to exercise the Registrar’s discretion in its favour.  There is no evidence before me that the Opponent has used the Trade Mark to any significant extent even after expiry of the Non-use Period (if at all) and the Opponent accordingly does not appear to be in a position to claim the mark has garnered any significant reputation in Australia.  Conversely, the Removal Applicant has on the evidence before me continuously used the Trade Mark in relation to the Services from around 1989, that is from several years prior to the Opponent’s applying to register it.  Moreover, not only was the Removal Applicant unaware of any use of the Trade Mark until immediately prior to filing its removal application, its enquiries since then have located no knowledge of the mark in the market place.

9. In summary, this is thus not a case, on the face of it, which warrants exercise of the Registrar’s discretion in the Opponent’s favour pursuant to s 101(3) and I decline to do so.

   Decision

10. I find that there was neither use of the Trade Mark by the Opponent or by an “authorised user” in the course of trade in Australia for any of the Services during the Non-Use Period, nor were there any relevant circumstances which were an obstacle to use.  Further, no circumstances have been shown which in my view warrant exercise of the Registrar’s discretion not to remove the Trade Mark in respect of all the Services.  I accordingly direct that registration 736646 be removed from the Register one month from the date of this decision.  If the Registrar has been served with a notice of appeal before then I direct that removal shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the registration be dealt with as the Court sees fit.

    Costs

11. As the successful party, the Removal Applicant is entitled to its costs and I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

    Michael Kirov
    Hearing Officer
    Trade Marks Hearings
    28 July 2011