Sleepcraft Distributors Pty Ltd v Fisi Fibre Sintetiche
[2014] ATMO 71
•18 August 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Sleepcraft Distributors Pty Ltd to extension of protection to Australia of International Registration Designating Australia 1484370 (20, 22, 25) - THERMOSOFT - in the name of Fisi Fibre Sintetiche S.p.A.
| Delegate: | Nicole Worth |
| Representation: | Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys Holder: Written submission prepared by A.P.T. Patent and Trade Mark Attorneys |
| Decision: | 2014 ATMO 71 Opposition under Regulation 17A.29 – grounds of opposition under sections 44, 60, 42(b) and 59 of the Act – no grounds established – protection to be extended to Australia. |
Background
Fisi Fibre Sintetiche S.p.A. (‘the Holder’) has applied for extension to Australia of protection of its International Registration Designating Australia (‘IRDA’), detailed below:
Trade Mark: THERMOSOFT (‘the Trade Mark’)
Application No.: 1484370
International Registration: 546096
Priority date: 2 February 2012
Goods: Class 20: Mattresses; pillows; cushions.Class 22: Raw textile fibers; padding materials, animal hair, kapok, feathers, seaweed.
Class 25: Dresses made from skins; sports dresses; men's, ladies' and children's clothing; shirts; blouses; skirts; jackets; pants; shorts; undershirts; knitwear; pajamas; socks; jerseys; bodices; garter belts; bodysuits; slippers; shoes; hats; collar protectors; scarves; neckties; raincoats; overcoats; coats; bathing suits; sports suits; anoraks; ski pants; belts; padded clothing for cold climatesThe application was examined per regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’)[1] and accepted for possible extension of protection to Australia. The acceptance was advertised in the Australian Official Journal of Trade Marks on 21 June 2012.
[1] That is, the Regulations as they stood prior to amendments which came into force on 15 April 2013.
As it stood prior to the priority date Regulation 17A.29 made provisions for opposing an IRDA, and regulation 17A.31 provided that an IRDA may be opposed on any of the grounds set out in Subdivision 2 (being those under sections 39 to 44 of the Trade Marks Act 1995 (‘the Act’)) or any of the grounds under sections 58 to 61, 62A, or provisions the equivalent of 62(a) and (b) of the Act. To that end on 21 September 2012 Sleepcraft Distributors Pty Ltd (‘the Opponent’) filed a notice of opposition to the extension of protection of the IRDA, nominating most of the grounds available under the Act.
The Opponent filed partial evidence in support of its opposition on 21 June 2013 and the balance of the evidence on 21 August 2013 (described in more detail below). The Holder did not file evidence in answer, and has not filed any evidence in these proceedings.
In due course the Opponent requested that the matter be heard. As a delegate of the Registrar of Trade Marks, I heard the matter in Melbourne on 16 July 2014. The Opponent was represented at the hearing by Siobhan Ryan of counsel instructed by Elizabeth Godfrey of Davies Collison Cave, who also prepared written submissions on the Opponent’s behalf. The Holder did not attend the hearing but relied upon written submissions which were prepared on its behalf by Paul Wyk of A.P.T. Patent and Trade Mark Attorneys.
Evidence
The evidence submitted in this matter comprises two declarations on behalf of the Opponent. The first is a statutory declaration of 21 June 2013 by Elizabeth Kate Godfrey, attorney with Davies Collison Cave, to which is attached exhibits EKG-1 to EKG-14. In brief Ms Godfrey’s declaration sets out that she was unable to find any evidence of use of the Trade Mark by the Holder in Australia, based on:
·ASIC (Australian Securities and Investment Commission) and Australian Business Numbers “Look Up” searches for the term THERMOSOFT;
·Unrestricted Google® searches for the terms “Thermosoft Pty Ltd”, LVI Thermosoft Heating Products[2], “thermosoft”, “thermosoft” in combination with “fisi”, and “Fisi Fibre”;
·Google® searches restricted to Australia for the terms “thermosoft”, “thermosoft” in combination with “fisi”, and “Fisi Fibre”; and
·A search of the website sensis.com.au for the term THERMOSOFT. That website appears to be an advertising network for businesses in Australia.
[2] Both “Thermosoft Pty Ltd” and “LVI-Thermosoft” appeared in the ASIC search results, hence their being searched in Google®.
Ms Godfrey also conducted a number of trade mark searches for THERMOSOFT which revealed an International Registration (being that upon which this IRDA is based), a Community Trade Mark registration, a United States of America registration, and a European Union registration, all of which are in the name of the Holder.
The second declaration is by Ibrahim Sahin, managing director of the Opponent, with exhibits IS-1 to IS-8 and dated 21 August 2013. He declares that the Opponent is the owner of two registered trade marks, THERMALOFT and THERMAX, as detailed below:
| THERMALOFT | THERMAX |
| Priority date: 8 January 1998 | Priority date: 17 August 2000 |
| Registration No: 752344 | Registration No: 846809 |
| Class 20: Pillows. | Class 20: Pillows; beds; mattresses; bedding products in this class. Class 24: Quilts; bed spreads; bed covers; bed linen; mattress covers; bedding products in this class. |
The Opponent has used the trade mark THERMALOFT in respect of pillows, quilts and mattress protectors since approximately 1997. THERMALOFT branded goods are sold in approximately 400 Target stores across Australia, and have been sold in Target stores since 1997. Between 1999 to 2000-2001 THERMALOFT branded goods were also sold in Myer stores. Sales of THERMALOFT branded goods are not insignificant, and the Opponent estimates it holds a 6% market share in Australia for quilts, pillows and mattress protectors. Promotion of the goods has occurred in Target catalogues, email alerts to Target subscribers and a Myer catalogue. Significant financial amounts have been expended in promoting them.
The Opponent has used the trade mark THERMAX since approximately 1999 and declares that use to be in relation to pillows, bedspreads, bed covers, bed linen, mattress covers and related bedding products, although on the evidence it appears that the trade mark THERMAX is used in relation to filling for pillow protectors, quilts and the like. Sales and promotional figures are not available for the THERMAX branded goods, but they are declared to be currently sold in Capt’n Snooze stores across Australia (except Tasmania) and the Opponent has an arrangement with Capt’n Snooze whereby it incurs all the adverting and marketing expenditure[3]. A Capt’n Snooze brochure describes the filling of various bedding products to be “100% Thermax polyester” and examples of packaging identify “100% Thermax Polyester Filling” on their fronts.
[3] From the way the statement is written it is not entirely clear whether it is the Opponent or Capt’n Snooze that incurs the advertising and marketing expenditure, however this is not material to the opposition.
Mr Sahin attests to his concern that consumers, seeing the Trade Mark in relation to mattresses, pillows and/or cushions, will be confused or deceived into believing they are of those of the Opponent’s or somehow associated with the Opponent.
Grounds and onus
In its submissions the Opponent notified that it pressed grounds of opposition under sections 44, 42(b), 59 and 60 of the Act. It bears the onus of establishing at least one these grounds. For completeness I find that none of the other grounds listed in the notice of opposition have been established.
I confirm that the relevant standard of proof in these proceedings is the ordinary civil standard of the balance of probabilities[4], and that the relevant date at which the rights of the parties are to be determined is 2 February 2012 (being the filing date of the application for extension of protection)[5].
[4] See for example Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 at [6] to [26]; Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 82 IPR 13 at [22] to [27]; or Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited [2014] FCA 373 at [30] to [37].
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82; (1954) 91 CLR 592.
Section 44
Section 44 relevantly provides:
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.
In order to establish the ground of opposition under section 44 the Opponent must point to a registered or pending trade mark owned by a person other than the Holder, which has a priority date earlier than the Trade Mark, which is in respect of goods or services that are similar or closely related to those goods specified in the subject IRDA, and which is substantially identical or deceptively similar to the Trade Mark. For this purpose the Opponent identifies its registered trade mark THERMALOFT, which I have detailed below along with the Trade Mark for ease of reference.
| THERMALOFT | THERMOSOFT |
| Priority date: 8 January 1998 | Priority date: 2 February 2012 |
| Registration No: 752344 | Application No: 1484370 |
| Class 20: Pillows. | Class 20: Mattresses; pillows; cushions. Class 22: Raw textile fibres; padding materials, animal hair, kapok, feathers, seaweed. Class 25: [a range of clothing and accessories] |
In respect of the similarity between goods I note that the Opponent’s submissions address only those goods in class 20 and “padding materials” in class 22 of the IRDA. I too consider this to be where a nexus between the goods of the parties most likely exists, and although I consider some discussion could be had in respect of the similarity between “padding materials” and the various finished goods of the Opponent’s registration, I will accept for the time being that they are similar goods and only revisit the issue should it become necessary. I confirm that I do not consider any of the remaining goods of the IRDA to be similar to those of the Opponent, nor was this contested.
In respect of the similarity between trade marks, the Opponent did not contend that the Trade Mark was substantially identical to its registration, but rather that it was deceptively similar to it. The expression “deceptively similar” is defined in section 10 of the Act as “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”. The test for determining whether this is the case was described by Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F.S. Walton and Company Ltd[6]:
The marks ought not…to be compared side by side. 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 impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same…The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
[6] [1937] HCA 51; (1937) 58 CLR 641.
I note further that in determining whether deception or confusion is likely, all of the surrounding circumstances must be taken into account including the nature of the market for the specified goods and the degree of similarity between the respective goods and the trade marks[7].
[7] See for example Re Application by Pianotist Co Ltd 23 RPC 774 at 777; Southern Cross Refrigerating Co. v Toowoomba Foundry (1954) 91 CLR 592 at 608; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at [40].
The Opponent submits that based on the following factors, the marks of the parties are deceptively similar:
(a)Both share the common prefix “THERM…”;
(b)Both have 10 letters;
(c)Both have 3 syllables;
(d)Both end in “…OFT”;
(e)Both are used and (sought to be) registered in relation to pillows;
(f)In fact, the only difference between these marks is buried in the middle, where the natural tendency is to slip over the vowel sound: “…OS…” and “…AL…”;
(g)The evidence of the “surrounding circumstances” shows pillows and cushions being sold in department stores such as Myer and Target, where goods are self-selected…;
(h)The evidence also shows that pillow and quilt manufacturers identify and promote components, such as padding materials, by reference to trade marks…
Some of the above quoted factors are more appropriate to a side-by-side comparison than an estimation of impression. Nevertheless, in determining the impressions of the marks, their aural similarity is a relevant factor (see for example SOLAHART and SOLARHUT[8], TIVO and VIVO[9], CRAZY RON’S and CRAZY JOHN’S[10], BERLEI and BALI BRA[11], or DIGITEK and DGTEC[12], wherein deceptive similarity or infringement have been established on factors including aural similarity). Here both words begin and end similarly, incorporating the component sounds “therm” and “oft”. They are also joined by a sound which could be identical in both marks, “uh” (although it should be acknowledged that the “O” in THERMOSOFT could also be pronounced “oh”).
[8] Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165.
[9] Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.
[10] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212.
[11] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353.
[12] Hills Industries Ltd v Bitek Pty Ltd (2011) 90 IPR 337.
At the same time, the meaning conveyed or alluded to by the words is also a relevant factor in estimating the impression left by the trade marks. THERM relates to heat and prefixes such as THERMA and THERMO are commonly used in trade marks in respect of the goods in question here (there are more than 200 entries in the relevant classes of the trade mark database “ATMOSS” which incorporate one or other of these prefixes). Accordingly, for the purposes of comparison less attention is likely to be paid to prefixes that are common to the trade.
Additionally, LOFT and SOFT are both known English words with different meanings. In the context of pillows, quilts, filling and padding, LOFT refers to the height or thickness of such goods when laying flat – they may be “high loft” or “low loft” or, as a further example, some packaging of the Opponent’s goods displays the words “superior loft – high resilience”. SOFT relates to the quality of being yielding and pliable, and in the context of these goods is generally an agreeable quality which many traders wish to extol.
Therefore, on the one hand significant aural similarity exists between the trade marks (and to a lesser degree visual similarity). On the other hand the trade marks convey or allude to somewhat different things, albeit they are both comprised of elements which have some level of descriptive meaning. In my estimation it is a finely balanced comparison that is before me, with factors that both support and weigh against a finding of deceptive similarity. In this case I consider that the impression left by the difference in meaning outweighs the aural similarity of the trade marks. I bear in mind that words may sound the same or similar, yet in the context of the goods or services to which they are applied leave separate and distinct impressions. Additionally, variations which might not sufficiently differentiate invented words with no comprehensible meaning are likely to have greater impact in differentiating words with familiar elements that do convey meaning.
Accordingly, I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s trade mark, and the ground under section 44 fails.
Section 60
Section 60 of the Act provides:
60. 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.
Accordingly, section 60 contemplates confusion or deception between trade marks that are not necessarily deceptively similar and which are in respect of goods or services that need not be similar or closely related. It is primarily concerned with the use of the Trade Mark in the face of the demonstrated reputation in Australia of another trade mark, and the likelihood of deception or confusion arising from that use. The Registrar’s delegate in Rogers Seller & Myhill v Reece Pty Ltd[13] qualified that general proposition, stating:
Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.
[13] [2010] ATMO 5; (2010) 85 IPR 647.
To establish the ground the Opponent relies upon the reputation, acquired before the priority date of 2 February 2012, of its THERMALOFT and THERMAX trade marks.
I will deal with the THERMAX trade mark first. The evidence includes only few instances of it in use: upon the packaging of Capt’n Snooze branded goods and in a brochure for the Capt’n Snooze Essentials Collection of quilts, pillows and their respective protectors. Figures relating to sales and promotion, from which reputation might be inferred[14], are not available for the THERMAX brand. Reputation must be established, it cannot be assumed[15]. I am not prepared to infer reputation on the basis of the few examples of THERMAX in use, albeit that they are in use upon the goods sold through a major retailer. Additionally, given that THERM is a common prefix for trade marks there is little basis to infer that THERM[_____] marks per se, even in respect of the more specialised goods “padding materials”, are likely to be significantly associated with the Opponent.
[14] Per McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335; (2000) IPR 102.
[15] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193.
In respect of the THERMALOFT trade mark, the Opponent points to its estimated 6% market share and pre-priority date sales and advertising figures. I note also that THERMALOFT branded goods are sold in Target stores and were for a time sold in Myer stores.
Here I consider the factor that most supports the potential existence of a reputation is the trade channels through which THERMALOFT branded goods are supplied, being through Target stores. Target is a major retailer in Australia, usually selling own-branded goods but also those of other traders. At the same time, Target stores appear to be the only channel though which the THERMALOFT branded goods is sold and in at least one example the packaging of the goods prominently displays the TARGET brand, such that the effect of the Opponent’s trade mark is diminished by the presence of the prominent TARGET trade mark.
Additionally, there are only two years of pre-priority date sales figures and whilst they are not insignificant they are not particularly high. It is not clear to me how the 6% market share figure was arrived at or whether it includes all domestic and commercial sectors of the market - if the 2010 or 2011 sales represented 6% of the total market for pillows, quilts and mattress protectors then the market would be quite small. The advertising expenditure is significant, although as with the trade channels, it appears that THERMALOFT goods are advertised only in TARGET catalogues.
Kenny J, in McCormick[16], referred to reputation as “the recognition of the [trade mark] by the public generally” (although where appropriate this proposition may be modified to account for specialised or narrow markets, which is not the case here). I am not satisfied that the THERMALOFT trade mark is recognised by the public generally nor that it has the requisite reputation. Accordingly I am not satisfied that the use of THERMOSOFT will cause confusion or deception and the ground under section 60 is not established. I note further that in the event I had been satisfied the requisite reputation existed, I would not be satisfied that it would be the cause of confusion or deception because of the dissimilarity described in relation to the section 44 ground.
[16] Supra
Section 42
Section 42 of the Act relevantly provides:
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The Opponent must satisfy the Registrar that use of the opposed trade marks “would”, not “could”, be contrary to law[17]. It is not sufficient for the conduct complained of to cause mere wonderment or uncertainty[18]. In this regard the Opponent submits:
The use of the Trade Mark by [the Holder] would be contrary to law by ss 18 and 29 of the Australian Consumer Law (ACL). Specifically, the use of the Opposed Mark in relation to pillows, cushions and padding materials for bedding products would be misleading or deceptive, or likely to mislead or deceive, and would suggest a sponsorship, approval or affiliation with [the Opponent] and its similar goods under the THERMALOFT and THERMAX marks, which [the Holder] does not have.
[17] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 at [28]
[18] See for example Registrar of Trade Marks v Woolworths [1999] FCA 1020; Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191.
The relevant sections of the Australian Consumer Law are below[19]:
[19] Being sections 18 and 29 of Schedule 2 of the Competition and Consumer Act 2010.
18. Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive.
…
29. False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
…
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make false or misleading representations that the person making the representation has sponsorship, approval or affiliation.There is no evidence of actual deception before me (although such evidence is not required to establish the ground). The allegation under 42(b) has been made upon the basis of the same evidence as that in respect of the grounds under sections 44 and 60. However the Opponent has been unable to establish either of its grounds of opposition under those sections. The tests for deceptive similarity under those provisions involve a considerably lower threshold than those involved in deceptive or misleading conduct or misleading representations under Australian Consumer Law. Given that the evidence does not establish the grounds under sections 44 and 60 of the Act, the ground under section 42(b) cannot be made out either.
Section 59
Section 59 provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.
The act of filing an application to register a trade mark is prima facie evidence of an applicant’s intention to use that trade mark in respect of the goods or services specified in the application.[20] A mere allegation of non use by an opponent is not enough by itself to shift the onus of proof to an applicant, however where a prima facie case against it has been made then it is for the applicant to rebut the allegation[21]. A lack of use is not itself determinative.[22]
[20] Aston v Harlee Manufacturing Co [1960] HCA 47; (1960) 103 CLR 391.
[21] Estex Clothing Manufacturers Pty Limited v Ellis and Goldstein Limited (1966) 116 CLR 254.
[22] Suyen Corporation v Americana International Limited (‘Suyen’) [2010] FCA 638; (2010) 87 IPR 262.
The relevant date at which section 59 is to be assessed has been the subject of attention by the Registrar and the courts.[23] The Full Court in Food Channel Network Pty Ltd v Television Food Network GP (‘Food Channel’)[24] confirmed that the relevant date under section 59 was the date the application was filed. Dodds-Streeton J in Suyen followed this, although noted that “While the Full Court has now confirmed that the intention under s 59 must exist at the date of the application, the arguments in support of the contrary view were not addressed and a number of potential inconsistencies and uncertainties remain”[25]. Therefore, although I bear in mind that later events may cast light on the true position as at the relevant date[26], I proceed on the basis that the relevant date for assessing the Holder’s intention is the date it filed its application to extend protection to Australia, being 2 February 2012.
[23] See for example the discussion in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29.
[24] [2010] FCAFC 58; (2010) 86 IPR 437.
[25] Suyen, supra, at [177].
[26] Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505, 509; Suyen, supra.
The Opponent submits that the Godfrey declaration makes a prima facie case of lack of intention to use the Trade Mark and thus the onus has shifted to the Holder. It further submits that the Holder has not participated in proceedings except to appoint a local address for service, and that the Holder has been served with the Godfrey declaration because the local address for service accepted access to the electronic system used by the Trade Marks Office for the filing and service of documents in an opposition. It asserts that the Holder’s failure to respond to the allegation can be taken to confirm its lack of intention to use the Trade Mark.
I am not persuaded that the Godfrey declaration shows anything more than non use, per se. The declaration exhibits a number of searches made upon the Google search engine, ASIC, and the ‘Sensis’ business directory, none of which revealed use of the Trade Mark by the Holder. Other than there being no evidence of use of the Trade Mark in Australia, there are no other circumstances which point to a lack of intention to use as at February 2012, such as a legal impediment to trade or the application being made for purely tactical or defensive reasons. As pointed out in Suyen:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.[27]
[27] Suyen, supra, at [207].
Given that the evidence amounts only to non-use, I am not satisfied that the onus has shifted to the Holder. The inference of a lack of intention based on the Holder’s failure to respond has no bearing if the onus has not shifted to it.
I note also that Cadbury Ltd v Cream and Dream s.r.o.[28] and Next Retail Limited v Elecktroteknik Sanayi ve Ticaret Limited Sirketi[29], adduced to support inferring a lack of intention based on lack of participation in opposition proceedings, made findings based on the premise that the intention had to be “continuing or current”. Suyen and Food Channel have since clarified that the assessment is to be made in respect of the position at the date of filing.
[28] [2008] ATMO 60.
[29] [2010] ATMO 16.
I am not satisfied that at the date of filing the application for extension of protection the Holder did not intend to use the Trade Mark in respect of the goods listed in the application. As such, the ground of opposition under section 59 fails.
Decision and costs
Regulation 17A.34 provided, at the date the application was filed:
(1) Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.
(2) The Registrar must tell the International Bureau of his or her decision.
The Opponent has not established any of the grounds of opposition and the opposition fails. Accordingly, I direct that protection of IRDA no. 1484370 may be extended to Australia after one month from the date of this decision.
If the Registrar is served with a notice of appeal on or before that time, I direct that extension of protection shall not occur until the appeal has been discontinued, or in the event of a decision from the Court, that the application be subject to the Court’s orders.
The parties sought costs. Costs generally follow the event, and I see no reason to depart from the general principle here. Accordingly, I award costs against the Opponent as per Schedule 8 of the Regulations.
Nicole Worth
Hearing Officer
Trade Marks Hearings
18 August 2014
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