Soap & Glory Limited v Boi Trading Company Limited

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Soap & Glory Limited to registration of trade mark application 1457589 (3, 18, 25) - PRIDE & GLORY - in the name of Boi Trading Company Limited

Delegate:

Michael Kirov

Representation:

Opponent: Lena Balakrishnan, with Marion Heathcote, both of Davies Collison Cave, Patent and Trade Mark Attorneys.

Applicant: No appearance and no written submissions.

Decision:

2014 ATMO 47

s 52 opposition: s 44 considered – trade mark deceptively similar to the trade mark Soap & Glory registered for similar goods. Costs awarded against the Applicant.

Background

This is an opposition brought by Soap & Glory Limited (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below filed by Boi Trading Company Limited (“the Applicant”) in respect of the goods it covers in Class 3:
Application Number:  1457589
Trade Mark:  PRIDE & GLORY        (“the Opposed Mark”)
Priority Date:       26 August 2011                 (“the Priority Date”)
Goods:Class 3: Toiletries; aftershave; perfume; cosmetics; essential oils; soaps; shampoos; dentifrices; hair lotions
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; bags; trunks and travelling bags; wallets; purses; handbags; umbrellas, parasols and walking sticks
Class 25: Clothing, footwear, headgear
I heard the matter as a delegate of the Registrar of Trade Marks on 9 April 2014 in Sydney. Through its attorneys the Applicant confirmed that it would not be appearing, or be represented at, the hearing; nor would it be lodging any written submissions. Lena Balakrishnan of Davies Collison Cave, Patent and Trade Mark Attorneys, assisted by Marion Heathcote of the same firm, appeared for the Opponent. The Opponent’s oral submissions were supplemented by written submissions emailed to me (and copied to the Applicant’s representatives) on 27 March 2014.
As evidence, the parties rely on the following Statutory Declarations or Declarations:[1]
Evidence in Support
▪ Jos de Raaij made 16 May 2013, with Exhibits JR-1 to JR-16 (“Raaij 1”)
Evidence in Answer
▪ Diane Bellamy made 20 September 2013, with Exhibits DB-1 to DB-5
[1] Some of the Declarations in evidence were made pursuant to the Act and some were made pursuant to the Statutory Declarations Act 1959 (Cth).
Evidence in Reply
▪ Jos de Raaij made 17 December 2013, with Exhibit JR-1 (“Raaij 2”)
▪ Lena Janaki Balakrishnan made 9 December 2013, with Exhibits LJB-1 and LJB-2
I will refer further as necessary to the parties’ evidence in the discussion that follows, but at this stage note the matters set out below forming the background to the present opposition.
Diane Bellamy is the Applicant’s General Manager and describes the Applicant, which is based in the United Kingdom, as “a global business with its goods being sold in Europe, the Middle East, Southeast Asia, Asia-Pacific and the Americas”. She says that the Opposed Mark “is one of several key brands developed and registered as trade marks and used by my company for its international fashion business” and that the mark “was chosen to evoke a sense of heroism and patriotism, and the brand name has a certain masculine quality to it”. The Applicant first used the Opposed Mark (in the U.K.) “in at least 2005” and in Australia “in 2009”. As at 20 September 2013[2] the Applicant had not used the mark anywhere in the world for Class 3 goods, with use up to then having been in relation to “a youthful fashion range” (of clothing), further described as far as Australia is concerned as “t-shirts, sweatshirts, pants, jeans, hooded tops, shirts, caps and hats”. In addition to the currently opposed Australian application, the Applicant was at the Priority Date also the owner of a (European) Community Trade Mark registration in Classes 3, 18 and 25 for the identical mark (based upon which the Australian application in fact claims its priority date) and a U.K. registration in Class 25 dating from 2005 for the essentially identical mark PRIDE AND GLORY.
[2] Being the date the Bellamy declaration was made.
For its part, the Opponent, which is also based in the U.K., commenced use of the trade mark SOAP & GLORY in that country in 2006 for various Class 3 goods including lip gloss, “body butter” and shampoos, the mark presumably being a parody of the title of the English patriotic song “Land of Hope and Glory”. The Opponent’s Director, Jos de Raaij, says that since then its “range of cosmetic, beauty and cleansing products for both men and women” has also been sold under the mark “in Germany. Austria, Norway, throughout Asia, the Middle East and the United States” and that in 2010 the Opponent “further expanded its business and commenced selling its SOAP & GLORY branded products in Australia”. As well as the two Australian registrations discussed below in connection with its s 44 ground of opposition, as at the Priority Date the Opponent was also the owner of registrations for the SOAP & GLORY trade mark (or a mark essentially consisting of this collocation) covering goods in Class 3 in some 20 other jurisdictions.
At the heart of the present opposition is the claimed similarity of the Opposed Mark to the Opponent’s SOAP & GLORY trade mark and the deception or confusion the Opponent says is likely to ensue amongst Australian consumers if the Opposed Mark were used for any of the goods in Class 3 covered by the opposed application.
Grounds of Opposition
The Notice of Opposition (“the Notice”) itself was filed on 15 March 2012 and lists some 13 grounds corresponding to various provisions of the Act. Ms Balakrishnan nevertheless confirmed the Opponent would only be pressing those grounds based on sections 42(b), 44, and 60. I treat the remaining grounds listed in the Notice as abandoned. As will become apparent, I have only found it necessary to address the Opponent’s s 44 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
Onus and Standard of Proof
To succeed in its opposition the Opponent bears the onus of establishing at least one of the three grounds pressed at the hearing. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[3]
[3] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
The Relevant Date
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[4] (“Southern Cross”) the relevant date at which the rights of the parties are to be determined is the 26 August 2011 priority date of the opposed application.
Discussion
[4] (1954) 91 CLR 592 at 595.
Section 44
The ground based on s 44 of the Act is indicated in the Notice as follows:
The [Opposed Mark] is substantially identical with or deceptively similar to one or more trade marks used and/or registered in Australia by the opponent and/or other parties, including the trade mark the subject of Australian registration 1176314 in respect of similar goods and/or services or closely related goods and/or services and for which the priority date is earlier than that of the trade mark the subject of the application and therefore the registration would be contrary to Section 44 of the Act. The trade mark has not been used by the applicant to satisfy the requirements of Section 44(3) and/or 44(4) and there are no other circumstances which make it proper for the Registrar to accept the application.
As mentioned, the opposition is limited to the goods in Class 3 covered by the opposed application.
Only s 44(1) of the Act is relevant in this case and this is set out below:
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.
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.
In addition to its registration 1176314 Soap & Glory in Class 3 mentioned in the Notice itself, Raaij 1 details a second registration owned by the Opponent, 1421324 Soap & Glory 2-minute rinse in Classes 3, 35 and 41, said to underpin the s 44 ground.[5] Relevant particulars of both registrations are set out below:
[5] I note that registration 1421324 is a “protected international trade mark” and thus technically reg. 4.15A(1) of the Trade Marks Regulations 1995, the analogue of s 44(1), is applicable in this case.
Registration Number:                   1176314
Trade Mark:  Soap & Glory
Priority Date:       16 May 2007
Goods:Class 3: Cosmetics; moisturizers; toners; serums; masks; cleansers; toiletries, soaps, perfumery; fragrances; shampoos; conditioners; lotions; creams; anti-perspirants and deodorants for personal use; preparations for the care and treatment of the body, face, skin or hair; shower gels; moisture lotions; moisture creams; body scrubs; bath gels; bath creams; facial moisturising lotions; face masks, eau de toilette; parfums; scented body sprays; body gels; body lotions; body creams; body masks; body contouring patches; facial creams, lotions and toners; hand care creams, face scrubs; skin moisturisers; eau de cologne; preparations for cleansing, moisturizing and/or care of the skin or hair; depilatory preparations; shaving creams
Registration Number:                   1421324
Trade Mark:  Soap & Glory 2-minute rinse
Priority Date:       12 August 2010
Goods and Services:  Class 3: Cosmetics and toiletries
Class 35: Retail services connected with cosmetics and toiletries
Class 41: Education services relating to water
The two registrations relied on both have priority dates earlier than that of the Opposed Mark. Accordingly for the Opponent’s s 44 (or reg. 4.15A) ground to be established, I would need to be satisfied on the balance of probabilities that:
·the goods in Class 3 covered by the opposed application are “similar”[6] to the goods covered by one or both of the Opponent’s registrations and/or are “closely related” to the services covered by registration 1421324; and
·the Opposed Mark is “substantially identical” with, or “deceptively similar” to, one or both of the Opponent’s registered marks.
[6] As defined in s 14(1) of the Act, namely the same goods or goods “of the same description”.
I am satisfied that, on the face of it, the goods in Class 3 covered by the opposed application are the same as, or of the same description as, the goods in Class 3 covered by each of the Opponent’s registrations. The essential issue for determination is accordingly whether the Opposed Mark is substantially identical with, or deceptively similar to, one or both of the Opponent’s registered marks. In fact Ms Balakrishnan did not press the issue of substantial identity and it is sufficient to limit the enquiry to the question of deceptive similarity.
In this case it is expedient to focus on the Opponent’s Soap & Glory mark rather than the Soap & Glory 2-minute rinse mark, since this mark is obviously the more similar of the two to the Opposed Mark.
As regards the issue of deceptive similarity generally, it is relevant here to note that French J (as he then was) expressed the view in Registrar of Trade Marks v Woolworths Ltd[7] (“Woolworths”) that the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the similarity of the parties’ trade marks. In particular French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter[8] that, “The closer the relationship between the services and particular goods, [9] the more likely any similarity in marks will prove deceptive”.
[7] (1999) 45 IPR 411. His Honour’s comments were made in the context of closely related goods and services, but are relevant also in the context of “similar goods” as defined in s 14(1) of the Act.
[8] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624).
[9] See footnote 6.
In the present matter, accordingly, I will consider the issue of whether the Opposed Mark is deceptively similar to the Opponent’s Soap & Glory mark bearing in mind this observation from Woolworths and on the basis that both trade marks might in principle be used for the identical goods in Class 3.
As Ms Balakrishnan noted in her submissions, s 10 of the Act defines the term “deceptively similar” as follows:
For the purposes of this Act, 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 distinction between the terms “to deceive” and “to cause confusion” was addressed by the Full Federal Court in The Coca-Cola Company v All-Fect Distributors Ltd,[10] where in a joint judgment Black CJ, Sundberg and Finkelstein JJ said the following:
Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brassiere Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
[10] (1999) 96 FCR 107; 47 IPR 481 at [39].
Moreover, as far as “confusion” in particular is concerned, Dodds-Streeton J highlighted in Tivo Inc v Vivo International Corporation Pty Ltd[11] that:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
[11] [2012] FCA 252 (19 March 2012) at [105]. Dodds-Streeton J’s ultimate finding in that case was upheld unanimously on appeal to the Full Federal Court (Keane CJ (as he then was), Nicholas and Dowsett JJ) in Vivo International Corporation Pty Ltd v Tivo Inc (2012) 99 IPR 1.
As Ms Balakrishnan pointed out, guidance in assessing deceptive similarity is also generally found in Australian Woollen Mills Ltd v FS Walton & Co Ltd where, as Dixon and McTiernan JJ put it in their joint judgment in a familiar passage: [12]
In deciding this question, the marks ought not, of course, 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 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 verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.
[12] (1937) 58 CLR 641 at 658.
In similar vein Windeyer J, in his first instance judgment[13] in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd, put it this way:[14]
[The comparison] is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [impugned mark]. To quote Lord Radcliffe again [de Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499]:
The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him … It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.
[13] Windeyer J’s judgment was overturned on appeal to the full High Court but not on this point.
[14] (1961-1963) 109 CLR 407 at 415; (1961) 1B IPR 523 at 529.
Ms Balakrishnan also noted that the issue was not necessarily whether consumers of relevant Class 3 goods were likely to be deceived or confused in the sense of believing the parties’ marks were the same. Rather, as French J said in Woolworths:[15]
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 … 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 … in question come from the same source.
[15] Op. cit. at [50], his Honour’s observation being a restatement of Kitto J’s words in Southern Cross at 594-5.
Ms Balakrishnan went on to distil several further propositions from various leading cases relevant to assessing deceptive similarity. The most significant of these for present purposes were restated recently by the Full Federal Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP,[16] endorsing the approach of an earlier Full Federal Court (Moore, Sackville and Emmett JJ) in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd[17] (“Crazy Ron’s”). As the Court put it at [91]:
The approach to the comparison to be made between marks that are said to be deceptively similar was summarised by this court in Crazy Ron’sat [73]–[79]:
[73] First, as the primary judge pointed out, the question of deceptive similarity of marks, unlike substantial identity, is not to be judged by a side-by-side comparison …
[75] Second, the question of deceptive similarity involves factual issues in respect of which similarities of sound may be important …
[76] Third, it is necessary to show a tangible danger of deception or confusion, although it is enough if an ordinary person entertains a reasonable doubt …
[77] Fourth … the court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion …
[79] Fifth, the authorities also recognise that the concept of imperfect recollection may be applied to trade marks other than those consisting simply of an invented word (as in Aristoc v Rysta[18] and Berlei v Bali[19]). If a registered trade mark includes words which can be regarded as an essential feature of the mark, another mark that incorporates those words may well infringe the registered trade mark. The other mark may also infringe if there is a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of the words constituting an essential feature of the registered mark.
[16] (2010) 86 IPR 437.
[17] (2004) 209 ALR 1; 61 IPR 212.
[18] Re Rysta Ltd’s Application[1943] 1 All ER 400; (1943) 60 RPC 87 (CA) and Aristoc Ltd v Rysta Ltd [1945] AC 68; [1945] 1 All ER 34; (1944) 1B IPR 467 (HL).
[19] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353; 1 ALR 443.

With these general principles in mind, Ms Balakrishnan made specific observations in relation to the Opposed Mark and the Opponent’s Soap & Glory mark. These included the fact that the word “soap” in the Opponent’s mark “is descriptive of soap and cleansing products, and therefore the distinctive character in the [Soap & Glory mark] as a whole is attributed through the element[s] ‘& GLORY’.” Similarly, she submitted, the word “pride” in the Opposed Mark was, as Mr de Raaij puts it in Raaij 1:
…when used in respect of cosmetics…evocative, calling to mind emotions associated with “taking pride in one’s appearance” and being confident. The word PRIDE is therefore descriptive of a characteristic often associated with cosmetic goods and a word often used by other producers of cosmetic products wishing to attract consumers with positive connotations and praise.
Referring to the results of searches of the U.K. and Australian Trade Marks Registers and of a Google® search limited to Australia on the combined elements “& GLORY”, Ms Balakrishnan submitted:
The Opponent’s evidence demonstrates that, with the exception of the Opponent, no other trader uses or [other than the Applicant] has sought registration for a trade mark that contains the element[s] “& GLORY” in respect of Class 3 goods. The Applicant’s evidence also fails to demonstrate any instances where another party uses [these elements] in respect of such goods in Class 3.
Given that the element[s] “& GLORY” [are] … a unique and uncommon word or element [combination] in respect of Class 3 goods, and when considering that the element ‘PRIDE’ is a common word used in general parlance for describing one’s appearance, and when considering the identical rhythmic pattern and cadence of PRIDE & GLORY and SOAP & GLORY, by use of the word PRIDE, consumers would consider the Opposed Mark to be of the same family as the Opponent’s [Soap & Glory mark], which also bear[s] the unique “& GLORY” element[s]. Therefore consumers would have cause to wonder whether there is a relationship between the Opponent’s goods and the Applicant’s goods.
In this context she referred to the joint judgment of the Full Federal Court (Lindgren, Emmett and Finkelstein JJ) in Starr Partners Pty Ltd v Dev Prem Pty Ltd, where the Court said in relation to the comparison of marks:[20]
[22] The first step in the analysis is to identify the impression produced by the registered mark considered in its entirety. Similarity is not based on only part of the registered mark. On the other hand, when one decides upon the impression produced by that mark it is not improper to give more or less weight to particular features of it, provided the ultimate conclusion is based on a consideration of the mark in its entirety. This approach does no more than recognise that one word or feature of a mark can be more striking and memorable than another.
...
[26] Because the likelihood of deception or confusion must be assessed in the light of the imperfection of human recollection, where a trade mark includes both common and uncommon words, the uncommon words … will be the more memorable, and therefore significant for infringement purposes, than the common words...
[20] (2007) 71 IPR 459 at [22] and [26].
I am essentially in agreement with Ms Balakrishnan’s above submissions and have concluded, on balance, that the Opposed Mark is indeed deceptively similar to the Opponent’s Soap & Glory mark. It is true, as Ms Balakrishnan acknowledged, that marks must be compared as wholes. Given in this case that the marks’ initial words “pride” and “soap” are obviously different in terms of their look and sound and meaning, I would agree the marks as wholes might reasonably be considered readily distinguishable on a side by side comparison or where both marks were well known to relevant consumers. I must however consider the issue from the point of view of potential purchasers of the relevant Class 3 goods who only know of the Opponent’s Soap & Glory mark (and perhaps have an imperfect recollection of it) and I should attempt to assess the effect or impression produced on the minds of such purchasers when they encounter similar goods being offered under the Opposed Mark. As indicated in the quote from Woolworths in paragraph 25 above, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.
Moreover, as Perram J put it in Solahart Industries Pty Ltd v Solar Shop Pty Ltd, (following the Full Federal Court’s decision in Crazy Ron’s and in particular noting the Court’s words at [79] quoted in paragraph 26 above):[21]
The risk of deception must be tangible but it is enough if an ordinary person entertains a reasonable doubt. So, too, in assessing the recollection of a mark allowance must be made for the frailty of human memory and this means that, when it comes to considering whether one mark so nearly resembles another that it is likely to cause confusion or deception, account must be taken of the imperfect nature of recollections. That principle extends even to marks which are not just invented words. Thus if a mark includes words which can be regarded as an essential feature another mark incorporating those same words may infringe the registered mark.
[21] (2011) 92 IPR 165 at [38].
The last point made by Perram J has a long pedigree and can be traced back at least as far as Saville Perfumery Ltd v June Perfect Ltd, where Sir Wilfred Greene MR of the English Court of Appeal said:[22]
Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any.
[22] (1939) 1B IPR 440; (1941) 58 RPC 147 at IPR 453; RPC 162.
In this case I agree with Ms Balakrishnan that the elements “& GLORY” constitute an essential or distinguishing feature of the Opponent’s Soap & Glory mark. The identical elements are of course a significant feature of the Opposed Mark. I accordingly consider there is a real likelihood that a significant number of ordinary consumers will wonder, or be left in doubt about, whether the parties’ similar Class 3 goods come from the same source. In summary, then, my finding is that the Opposed Mark is deceptively similar to the Opponent’s Soap & Glory mark. As already indicated the opposed application covers similar goods to those covered by the Opponent’s registration 1176314. The Opponent has accordingly established its s 44 ground of opposition.
Decision
Section 55(1) of the Act relevantly provides that, unless the proceedings are discontinued or dismissed:
…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.
Note: For limitations see section 6.
I have found the opposition succeeds on the ground raised pursuant to s 44 of the Act as far as the Class 3 specification of the application is concerned. I accordingly refuse to register trade mark application number 1457589 unless, within fourteen days from the date of this decision, the Applicant formally requests amendment to the application by deletion of its current Class 3 specification and sends a copy of the request to the Opponent’s representatives.
If the application is so amended, it may proceed to registration for the remaining goods it covers in Classes 18 and 25. If it is not so amended, then registration is refused for all goods.
Either party may of course appeal this decision, provided the Registrar has been served with a notice of such appeal within one month from the date hereof. For this reason I direct that amendment to the application to remove its Class 3 specification, if requested, not be made until the period for filing an appeal at the relevant court (being 21 days) and notifying the Registrar of such has expired. If an appeal is filed and prosecuted, I direct that the disposition of the application then be in accordance with the Court’s direction or order.
Costs
Both parties requested an award of costs in their favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
3 June 2014

[2014] ATMO 47

3 June 2014

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