Sou & Ho Trading Investments Pty Ltd v Daybest Pty Ltd

[2001] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by SOU & HO TRADING INVESTMENTS PTY LTD to registration of trade mark application 712014 & 712015 (CLASS 42) - 33 RESTAURANT, RESTAURANT 33- filed in the name of DAYBEST PTY LTD.

Background

Daybest Pty Ltd ("Daybest") is the applicant for registration of trade marks 712014 and 712015.  The applications are in relation to "Restaurant, cafe, cafeteria and lounge and bar services being services included in class 42" (of the International Classification of Goods and Services).  Application 712014 is for the following two trade marks:

These are sought to be registered under the provisions of s 51 of the Trade Marks Act 1995 ("the act") as a series of trade marks.  The first of these is sought to be registered without any restrictions as to colour.  The second mark in the series is restricted to the colours of black, white and the particular shade of green shown on the application form.

Application 712015 is for the words and numerals RESTAURANT 33 rendered in plain script.

Both applications were duly examined.  They were subsequently advertised by the Trade Marks Office as having been accepted for registration.  By that stage, application 712015 had, for reasons which do not concern the present matter, been restricted so as to seek registration in the State of New South Wales only.

Both applications were accepted under the provisions of s 44(4). This is a provision that, in brief, allows acceptance of a later and otherwise blocked application, based on prior and continuous use by the applicant in the face of a conflicting application or registration.

Sou and Ho Trading Investments Pty Ltd ("Sou") now opposes the registration of Daybest's applications. Sou and Daybest have met before in a similar conflict, at which time Daybest was the opponent to registration of Sou's application, 680957. It was Sou's application that gave rise to the application of the provisions of s 44(4) in the present matter. I have already refused to register Sou's application. See my decision of 31 May 1999, Daybest Pty Ltd v Sou and Ho Trading Investments Pty Ltd, 45 IPR 665, [1999] ATMO 55.

Much of the evidence now relied on by the parties has already been considered in that earlier opposition, though there are some significant differences to which I will come, below. 

Sou relied on the declaration of Allan Sou to support its opposition.  That declaration incorporates and updates one used in the earlier opposition matter.

In answer to the present opposition, Daybest relied on the declaration of Henry Ip.  That declaration is in identical terms to the one Daybest has relied on in the earlier opposition, and incorporates the same exhibits, EHI 1 -8.

In reply, Sou relied on two new declarations.  These are:

• A second declaration by Alan Sou ("Sou 2") made in August 2000, and

• another made at about the same time by Deborah Einfeld, annexing a commercial investigator's report into the current nature of a restaurant run by Daybest.

Some of the material in Sou 2 is speculative and is, moreover, new material to which Daybest had no earlier chance to respond.  With this in mind, Daybest sought, and I granted, permission to rely on a further declaration by Henry Ip (Ip 2), made in October 2000.

The matter came on for hearing and I conducted this under delegation from the Registrar of Trade Marks.  Daybest relied on written submissions prepared by Ms Gail Hill, legal practitioner, of the patent attorney firm of F.B. Rice.  Sou appeared, represented by Gerard Skelly, legal practitioner, of the attorney firm of Spruson and Ferguson.

History of the dispute

I will set this out in so far as it relates to the present matter.

Daybest is the owner of an Asian restaurant called Restaurant 33.  This restaurant is located at Wicks Road in North Ryde, Sydney.  Daybest bought that restaurant as a going concern in September 1995, from the former owners, Andrew and Betty Kong.  However, the Wicks Rd restaurant was not the first or only one operated by Mr Kong under the name in question.  The diverging ownership of Mr Kong's two restaurants provided the genesis of this opposition, and of the one I have already decided.

For convenience, I will refer to the trade marks used at both restaurants as "Restaurant 33".  Neither party has at any stage argued that anything turns on the minor variations between signage and menus at the rival locations, or between these and the two forms now sought to be registered.  Given the history of the matter this is not surprising. 

I draw no distinction, similarly, between 33 ASIAN RESTAURANT (in the form rendered, for example, on Sou's external signage) and the RESTAURANT 33 signage of Daybest.  The minor differences, in descriptive matter and presentation, are insignificant for the purposes of this decision.  In terms of the relevant case law and of the circumstances in which the marks will be used, which can include aural use, they are all, if not substantially identical, still sufficiently close to count for practical purposes of ownership as being the same mark.  This is a practical matter.  It should not be seen as an indication of changed practice at the Trade Marks Office in relation to the series provisions of s 51, which governs application 712014.

The first restaurant that Mr Kong operated under the name in question was in Corunna Rd, Eastwood, some 3 kilometres from where Daybest has its restaurant.  Mr Kong has described the location as Marsfield but technically it is not, Eastwood being the adjacent suburb.  That restaurant ("Corunna Rd") is now owned and run by Sou.  There is some minor discrepancy in the evidence but it appears that Corunna Rd commenced some time in 1989.  Mr Kong sold Corunna Rd to two companies as joint purchasers: Sou and Liu Trading Investments Pty Ltd and Sou and Ho Trading Investments Pty Ltd.  The latter of these is the company I have referred to previously as Sou.  It now has full ownership of that restaurant.

The general facts are set out in summary form below.  In some instances the dates are approximate, but not so as to affect the outcome.  The relevance of one thing asserted in Sou 2 is strongly questioned by Daybest, and I will refer to this as "[Disputed]"

September 1989:   Mr Kong commences Corunna Rd restaurant:  a la carte, take-away and home delivered meals.

November 1990:   Wicks Rd restaurant commences: a la carte, take-away and home delivered meals.

Mid 1994:             The Kongs change nature of Wicks Rd restaurant, which was closed for several months for conversion to a buffet restaurant. When it reopened in approximately July 1994, all home delivery and take-away orders were catered by Corunna Rd.

November 1994:    Sou buys Corunna Rd.  Sou [Disputed] says that, at this time, there was a verbal agreement between Sou and Andrew Kong that home delivery and take away orders placed with Wicks Rd would be referred to Corunna Rd.

September 1995:   Daybest acquires Wicks Rd.  At that time, Wicks Rd was trading in buffet and buffet take-away meals.  Sou 2 asserts that Wicks Rd did not at that date trade in made-to-order take-away meals.  Corunna Rd continues to trade in a la carte, take-away and home delivered meals.

December 1995:    Sou files application 680957.  My decision dated 31 May 1999 refused to register that application.

July 1996:             Daybest files the present applications, 712014 and 712015.

Issues and Arguments

Availability of s 44(3) or (4).

I have noted that both Daybest's applications have been able to proceed to acceptance, in the face of Sou's application 680957, under the terms of s 44(4).

There is no dispute that the terms of s 44(2) establish that Sou's now-refused application gave rise to an objection to acceptance.  Subsections 44(1) and (2) exist only to allow the identification of such a conflicting application or registration.  I set out the remedies provided in the following subsections, (3) and (4), with emphasis added.

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

In refusing Sou's application, I noted that s 44(3) did not appear to be available in the event that there was no such prior application. In the present matter, I have not had full submissions from the parties about the effect, now, on Daybest, of my previous refusal to register Sou's application. In view of what follows, it is not necessary for me to deal with that issue.

Ownership - s58.

One of the two grounds relied on by Sou is s 58.  This reads:

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

Mr Skelly commenced his arguments for Sou, the opponent, by saying that the chain of title held by Sou at Corunna Rd is clearly in order.  He argued, in brief, that the property right in the trade mark could not be divided and that after the sale to Sou there was no valid further right that could be sold to Daybest.  In default, he argued that any rights not acquired by Sou were limited personal rights, for the benefit of Mr Kong only. 

Either way, he argued, Daybest could be registered as an owner only if it was the exclusive owner.  What are at issue here are questions of first use.  Mr Skelly noted the somewhat tangential comment of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602: "The scheme of the Act is not proprietorship by registration but rather registration of proprietorship". By this, Mr Skelly was reminding me that I cannot make Daybest an exclusive owner by registering its application, though, somewhat paradoxically, I can make it a "registered owner". The issues are real-world issues of user, as distinct from notional comparisons under s 44. The question is, has Sou established that Daybest is not the exclusive owner of the trade mark?

It is clear that Sou bought the Corunna Rd restaurant as a going concern, with the trade mark , the business name and the goodwill in the business.  However, that appears to be all that it bought.  Ms Hill's written submissions point to one significant thing.  The contract for the sale shows that at the time of the sale Sou was aware that Wicks Rd would continue to operate, and to operate as "Restaurant 33". 

Mr Sou has declared that this was agreed on condition that Wicks Rd operate as a buffet-only business, referring any requests for a la carte or take-away to Sou at Corunna Rd.  I note that Mr Sou goes on to declare that he was assured by Mr Kong that a restriction on the mode in which Wicks road could operate was part of the deal sold to Daybest when Daybest bought Wicks Rd.  However, even if Mr Kong gave such an assurance, it cannot affect the terms of the earlier contract between Mr Kong and Sou.

As Ms Hill points out, the contract for the sale of Corunna Rd makes no mention of any limits on the activities at Wicks Rd.  Mr Ip, for his part, has denied that any such limit was put in place and Mr Kong, whose written statement is in evidence, is silent on that question.

Clearly there are differences between Mr Sou's version of the sale and Mr Kong's.  Mr Kong has said, at paragraph four of his statement:

When I sold the Marsfield business [in Eastwood - see above] to the new proprietors, I transferred the registered business name "33 Asian Food Restaurant, Marsfield" to the new proprietors and the sale was intended to transfer all rights in respect of the 33 Logo, subject to my continued use of that Logo in relation to a business at 124 Wicks Road, North Ryde which I started after the Marsfield business.

This is generally consistent with the contract for the sale of Corunna Rd, though I think the contract actually goes further than Mr Kong now suggests.  The contract is apparently a fairly standard Law Society one.  In it, by clause 14, Mr Kong was not, within the next two years, to operate a similar form of business within 7 kilometres of the one to which the contract related.  The non-competition clause, clause 14, is intended to ensure that:

Except to the extent otherwise agreed the Vendors shall not after completion of this agreement during the period referred to in sub-clause (a)(ii) engage in conduct derogating from the Purchasers' right to obtain the full benefit of the goodwill of the business.

Moreover, clause 20 says, quite explicitly:

The Purchasers acknowledge that, in entering into this agreement, they have not relied upon any statement, representation, warranty or condition made or given by the Vendors or any one on their behalf is respect of the subject matter of this agreement, other than those that are expressly herein contained

As Ms Hill pointed out, this makes the endorsement of the contract for Corunna Rd, as follows, most significant:

Clause 14 shall not apply to Restaurant 33 at 124 Wicks Road North Ryde, which has been in existence for some four years.

Mr Skelly sought to characterise this as a personal right, existing for the benefit of Mr Kong (and perhaps his wife) only, and distinct from the property right that transferred to Sou.  However, on the arguments and facts before me, that puts the matter on the wrong footing.  There is no convincing evidence that Mr Kong and Sou ever had any arrangement about what Mr Kong was precluded from doing at Wicks Rd. 

Vague understandings there may, at the most, have been.  Perhaps the evidence does not prevent me from finding that Mr Kong was prepared, for whatever reason, to pass those orders that Wicks Rd could not fill, or divert those customers that it could not satisfy, to Sou at Corunna Rd.  Such preparedness, if and when it existed, cannot affect the initial bargain between Mr Kong and Sou.  Put simply, Sou bought whatever it bought, and if it did not buy the entire right then it cannot complain about the terms of any subsequent contract between Mr Kong and Daybest, to which Sou was simply not a party.

The exclusion did more than just preserve a business opportunity for the vendors.  It is also the best available evidence about what the parties intended to be able to be done at the Wicks Rd restaurant.  There is no limit set on the activities of the restaurant at Wicks Rd.  Indeed, the annotation to the contract refers specifically to the past four years of operations.  This, by Mr Sou's own testimony, goes back to a time when the Wicks Rd restaurant was not just a buffet restaurant.  As I have previously said, if the parties wanted to incorporate stipulations about the ongoing nature of "Restaurant 33" business at Wicks Rd, that was the time to do it.  It simply was not done.

Mr Skelly argued that there was no way that Mr and Mrs Kong could lawfully separate the two businesses as they purported to do.  He argued that the two restaurants operated in tandem.  That is consistent with part of the evidence suggesting that, for instance, both addresses were shown on early versions of the menu, or with the apparent preparedness of Mr Kong to divert some business from Wicks Road to Sou.

Mr Skelly noted the changed nature of the Wicks Rd restaurant after approximately July 1994.  He argued that, if there was a valid split of goodwill, then the only goodwill that passed to Daybest was for what the signage discloses to have been a "buffet - all you can eat" restaurant at a particular locale.  It could not, he argued, extinguish rights already owned by Sou.

However, neither of these versions is sufficiently consistent with the actions and intentions of Sou and Mr Kong at the time of the sale of Corunna Rd restaurant.  Sou was on notice of the need to define the nature of the business that the contract was specifically permitting to be conducted at Wicks Rd.  It was on notice that it could not rely on representations not put into the contract.  It is not sufficient to rely on what Mr Sou was told by Mr Kong.  The assertion is, as Mr Skelly argued, uncontested.  However, the truth of the assertion is not at issue.  The assertion goes only to the preparedness of Mr Kong to direct some business towards the Corunna Rd restaurant.  It is in itself outside the issue of what scope was open to the Wicks Rd business.  That assurance could be said to be a limiting part of the ongoing nature of the Wicks Rd restaurant only if it was made a term of the contract at the time the two businesses were separated.

What then was the situation when Daybest filed its applications for registration?  The right to claim proprietorship, when making an application, depends on an absence of conflicting entitlements.  See Aston v Harlee Manufacturing Co (1960) 103 CLR at 398 or, more generally, Shanahan, Australian Law of Trade Marks and Passing Off, page 154 and following. To paraphrase McGarvie J in Settef SpA v Riv-Oland Marble Company (Vic) Pty Ltd: 10 IPR 402 at 420:

For Sou to show that it had superior title to property in this trade mark at the date Daybest filed its application, it would have to show that by the application of principles of law or equity the superior title to the trade mark had passed from its original proprietor, Mr Kong, to Sou.

The first user, on the present evidence, was Mr Kong.  He then divided his ownership right.  He has sold, separately, his two restaurants, each with its own goodwill and with the trade mark.  Each was sold as a going concern.

Mr Skelly argued that, as per Shanahan at p 297, the general law is that a purported assignment can be invalid if the assignee's use would be deceptive and confusing.  However, this is a somewhat obscure issue, a legacy from the days when assignments in general were regarded as somewhat suspect.  I think it will be sufficient to rely, in regard to the state of the general law, on the words of Lord Diplock in the GE case, [1973] RPC 297 at 326:

... as an adjunct to the goodwill of the business, the right to use a trade mark may be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop.

That being so, on the evidence before me, neither Daybest nor Sou is entitled to claim to be the exclusive owner.  However, as I have already concluded in relation to the earlier opposition by Daybest to the registration of the application made by Sou, the issue of possible recordal of such split ownership on the Register of Trade Marks is difficult to separate from questions of deception or confusion.  Put as briefly as possible, the policy of the act seems to weigh against recording such "semi-owners" where their use will lead to deception or confusion.  I turn to consider that issue:

Deception and Confusion - s 60

These applications were originally accepted after the provisions of subsection 44(4) were applied.  That provision is part of Part 4 of the act, which deals with the making and acceptance of applications.  The present issues arise, however, under Part 5 of the act.

As Branson J has pointed out, in Registrar of Trade Marks v Woolworths, [1999] FCA 1020 at paras 80-81, with bracketed notes added:

The fact that s 43 is found in Pt 4, Div 2 of the Act [as is s 44], whilst s 60 is found in Pt 5, Div 2 [as are sections 58 and 60], reflects, in my view, an appreciation of the practical reality that before the acceptance for registration and advertising of an application for registration of a trade mark, the information available to the Registrar touching on issues of likely deception and confusion will be limited. The Registrar will be in a position to assess the extent to which the trade mark for which registration is sought resembles a registered trade mark.  He or she will also be in a position to appreciate the proper uses which may be made of the registered trade mark on the one hand, and of the trade mark for which registration is sought, should it be registered, on the other.  However, the Registrar cannot reasonably be expected to be cognisant of the reputation of registered and unregistered trade marks generally or, indeed, of the extent, for example, to which all Australians, whose circumstances and geographic locations are diverse, may be assumed to be familiar with particular words.  As French J has pointed out, the acceptance stage is not the time for detailed adversarial examination of an application.

The position will change following the filing of a notice of opposition to registration.  An opponent is entitled to rely on evidence in support of the opposition and the applicant for registration may rely on evidence in answer to the opposition.  By this means, material which could not ordinarily be expected to be available to the Registrar for the purpose of determining whether an application for registration of a trade mark should be accepted, may become available to him or her for the purpose of determining whether the trade mark should be registered.

Section 60 of the act reads:

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

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

I held, in the earlier opposition, that there was a considerable risk of deception or confusion in the circumstances to which s 60 was directed.  The same conclusion applies here with respect to Daybest's trade marks.  The priority date of Daybest's applications is 3 July 1996, at which time the mark used by Sou had been in commerce for about 7 years.  While the reputation of Sou's trade mark is somewhat hard to quantify, it can be broadly assessed from sales, advertising and the extent of use.  Such a broad measure is consistent with the comments of Kenny J in McCormick & Co v McCormick:  2000 FCA 1335:

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. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 ("Gymboree"), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark.

The turnover figures for Sou's restaurant are respectable without being mammoth - a small number of thousand dollars per week in the period July 1995 to June 1996, with a similar amount per year being spent on advertising.

There is, in the evidence, a statement that Telstra (Telecom, as it was then called) Directories Information has given prospective callers the phone number for the "wrong" restaurant.  Similarly, Mr Sou refers to having been informed, by his staff, of bookings made at Corunna Rd and then cancelled when the potential diners find out that Sou's restaurant is not a buffet.  While I do not believe that by any means all of these cancellations can be attributed to confusion with the buffet-style restaurant run by Daybest, the fact should still be given some weight.

Mr Sou goes on to state his belief that it is because of confusion with the similarly-named restaurant at Wicks Rd that two or three takeaway orders are left uncollected at Corunna Rd each week.  That last, however, is apparently pure speculation.  Mr Sou has not, understandably, been able to find out why customers fail, on a weekly basis, to collect meals ordered by telephone.  It goes too far, as Mr Ip points out in his own evidence (Ip 2), to necessarily lay the fault of this at confusion between restaurants.  Only one such instance has been disclosed as being directly attributable to this confusion, although that one instance suggests that I should not entirely disregard Mr Sou's comments on the issue.

Mr Ip is sensitive to the question of confusion between the two businesses.  He has attributed much of this to "the former owners (of both restaurants)" having used a menu that listed the address of both restaurants.  I take this to be a reference to Mr and Mrs Kong, though there is no evidence that Mrs Kong ever owned Sou's restaurant.  Mr Ip declares that this confusion "effectively stopped" once Daybest took over the operation of Wicks Rd and commenced to use its own menus.  He does concede, however, that in the twelve months ending October 2000 there may have been "one or two calls regarding the Eastwood/Marsfield business".

I think it is a matter of general knowledge that Australians in general eat out regularly.  Such occasions are not necessarily researched with meticulous detail and it is tempting to paraphrase Montgomery v Thompson (1891) 8 RPC 361: "hungry folk want food, not explanations". It stretches credence to assume that two Asian restaurants, about 3 kilometres apart, can use the same name without such confusion. Assuming that customer service at both venues is satisfactory, the slight difference between the restaurant services provided at the one place and the other would tend to disguise actual instances of confusion. Satisfied customers, at either venue, would simply have no need to ask about a possible connection with a nearby and "obviously related" restaurant of which they were aware.

Therefore, I regret that my own conclusion differs from that of Mr Ip.  I accept that Mr Ip has honestly stated his opinion on the topic, but he has not disclosed what steps he has taken to assess the situation.  It may well be that many of his customers, even now, dine a la carte at Sou's restaurant and vary this with visits to the buffet restaurant run by Daybest, entirely unaware that there is no connection between the two operators.

I find, in short, that the opponent has established a ground of opposition in terms of s 60.

Conclusion

Under the heading of ownership, I have concluded that mere part ownership was not enough in a situation where the ongoing actions of the parties were likely to give rise to deception or confusion.  I have already commented, in refusing to register Sou's application 680957, that the policy of the Trade Marks Act 1995 appears to weigh against the recordal of split assignments where there is evidence that these will cause deception or confusion.  Kenny J, in McCormick & Co v McCormick:  2000 FCA 1335, has gone further and found that there is no discretion at all to do so.  There, at para 96, Kenny J held:

Whilst I accept, as counsel for Mary McCormick contends, that the doctrine of honest concurrent user is derived from the common law and pre-dates trade mark legislation, I am of the view that s 44(3) of the Act does not provide an exception to s 60.

I should observe that Kenny J does not appear to have had the benefit of full argument on one aspect of this matter.  Section 55 leaves the registrar - and, on appeal, the Court - with a discretion, and an obligation, to decide on a proper course of action.  That discretion is to be applied "having regard to the extent (if any) to which any ground on which the application was opposed has been established".  I respectfully note that this is to be done in the light of the intentions of the legislation and of the established facts - the "extent" to which a ground such as s 60 has been established.  None the less, even if I had a discretion in the present matter, I would not be inclined to exercise it to allow registration.

I am unable to find any reason why the action of s 44(4), on which the acceptance of these applications is predicated, is not equally subject to the constraint of s 60. Perhaps it is even more so. I have previously set out the comments made by Branson J in Registrar of Trade Marks v Woolworths.  These suggest that mere use of a trade mark before the priority date of another person's trade mark registration should not go very far in the face of a ground of opposition established under s 60.

Finally, I note that s 44(3) and 44(4) are both keyed to the existence of an earlier and blocking registration or application. In my earlier decision refusing Sou's application, I found that s 44(3) and (4) are not available in the absence of such a blocking application. This, given the comments in McCormick, is perhaps a matter of policy, rather than a drafting difficulty as I had earlier thought it to be.  Given this, and my general view that Daybest's applications should not in any case be registered, I do not need to consider the effect on Daybest's applications of my refusal to register Sou's application.

General comment

Arguably, all that the parties have achieved in this opposition, and the one before it, is to obstruct each other in gaining registration.  I think I can properly say that this impasse can perhaps continue indefinitely unless the parties reconcile themselves to the effects of the arrangements they entered into with Mr Kong.  I believe that only if the parties are able to come to an agreement about coexistence, which would presumably include terms to actively minimise future deception and confusion, can the uncertainties of further oppositions be avoided.

Costs

In refusing to register the applications, I direct that Daybest pay the costs of Sou in accord with the official scale.  If necessary, those costs will be taxed on payment of the fee for doing so.  I direct that the taxation be on the basis of costs at the scale amount for application 712014, and at zero for 712015 with the exception of fees, which are to be taxed at the full amount.  I do this as a variation, appropriate to the present case, of the principle in Latrobe v Simmons 34 IPR 346.

I note that, on the subject of fees, Sou paid a hearing fee in respect of each application.  At the time, Mr Skelly argued that this was not necessary because the two matters would be able to be conveniently dealt with as one.  That, however, obviously depended on the arguments to be put by Daybest.  It is now clear that the matters have been dealt with as a single opposition and I believe that the Trade Marks Office should refund the second hearing fee to Sou. 

Terry Williams
Hearing Officer

23 February 2001