Teton Gravity Research LLC v Tiger Woods Enterprises SA

[2020] ATMO 43

TRADE MARKS ACT 1995

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

ReOpposition by Teton Gravity Research LLC to extension of protection of International Registration 1357379 (37, 41, 42, 44)) (Australian trade mark application 1861681) – TGR DESIGN – held by Tiger Woods Enterprises SA

Delegate:                 Robert Wilson

Representation:       Opponent: Joel Masterson of By George Legal

Holder: Kimberley Evans of Allens Patent & Trade Mark Attorneys

Decision:                   2020 ATMO 43

Trade Marks Act 1995 (Cth): Regulation 17A.33 opposition: ss 42(b), 58, 60 and 62A – no grounds established – protection may be extended to Australia

Background

1. Trade mark number 1861681 is the Australian designation of a request made under the Madrid Protocol by Tiger Woods Enterprises SA (‘the Holder’) to extend protection of the trade mark subject of International Registration 1357379 to Australia. The request is known as an International Registration Designating Australia (‘IRDA’). This decision relates to an opposition to the extension of protection brought by Teton Gravity Research LLC (‘the Opponent’) pursuant to reg 17A.33 of the Trade Marks Regulations 1995 (Cth). Details of the IRDA are as follows:

IRDA:	1861681
International Registration:	1357379
Filing Date:	20 March 2017
Convention Priority Date:[1]	27 September 2016
Services:	Class 37: Construction; repair, installation services; maintenance of golf courses and golf exercise courses; repair, installation services; construction of installations for building and maintaining golf courses and golf exercise courses; advice relating to the construction of golf courses and golf exercise courses Class 41: Education, training; organization of golf tournaments; provision of golf facilities; sports education, education in the field of golf; entertainment, leisure services, organization and conducting of sports events as well as golf tournaments, sports teaching and organization of sports training and golf lessons; sporting and cultural activities; organization of congresses; organization of sports competitions, entertainment in the field of sports competitions Class 42: Planning of construction of shopping centers, sports centers, residential properties, hotels and golf courses; engineering and architectural services for shopping centers, sports centers, residential properties, hotels and golf courses; planning for the construction of golf courses and golf exercise courses; design of golf courses; architectural services Class 44: Health and beauty care for human beings; agriculture, horticulture and forestry services (‘the Holder’s Services’)
Trade Mark:	TGR DESIGN	(‘the Holder’s Trade Mark’)

[1] Trade Marks Regulations 1995 (Cth) regs 17A.2 to 17A.4.

1. Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.

2. Following the advertisement  in the Australian Official Journal of Trade Marks of the IRDA’s acceptance on 14 September 2017 the Opponent filed a Notice of Opposition (‘the Notice’) consisting of a Notice of Intention to Oppose on 14 November 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 14 December 2017. The Holder filed a Notice of Intention to Defend on 17 January 2018. The SGP raised grounds of opposition pursuant to ss 42(b), 58, 60 and 62A.

3. On 21 December 2017 this office sent a Notification Of Provisional Refusal Of Protection Based On An Opposition to the World Intellectual Property Organisation which advised of the receipt of the Notice.

4. The Opponent filed Evidence in Support (‘EIS’) of its opposition which consisted of:

   ·Declaration made on 10 January 2019 by Brett Hills, the Chief Financial Officer of the Opponent, with Annexures BH-1 to BH-11 (‘Hills 1’).

5. The Holder filed Evidence in Answer (‘EIA’) which consisted of:

   ·Declaration made on 18 April 2019 by Johannes David Meisser of Meisser & Partners AG, an ‘authorised legal representative’ of the of the Holder, with Exhibit JDM-1. (‘the Meisser declaration’). Exhibit JDM-1 is a tabulated folder containing a number of documents labelled Tab 1 to Tab 15.

6. The Opponent filed Evidence in Reply (‘EIR’) which consisted of:

   ·Declaration made on 21 June 2019 by Brett Hills, with Annexures BH-12 to BH‑17 (‘Hills 2’).

7. Once the time allowed for filing evidence had ended the parties requested to be heard. The matter was listed for hearing on 12 February 2020. I was delegated to hear the matter on behalf of the Registrar of Trade Marks. Prior to the hearing the parties filed summaries of submissions to be relied on at the hearing. The Opponent’s submissions were prepared by By George Legal. The Holder’s submissions were prepared by Allens Patent & Trade Mark Attorneys.

8. I am to decide the opposition as required by reg 17A.34N which relevantly provides that, unless the proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all 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 the grounds on which the IRDA was opposed have been established.

   The Opponent

9. The Opponent is the owner of the registered trade marks detailed below (‘the Opponent’s Trade Marks’):

Trade Mark Number	Trade Mark	Priority Date	Classes
1846309	TGR	22 May 2017	9, 25, 35, 43
1846310	TETON GRAVITY RESEARCH	22 May 2017	9, 25, 35, 41
1964949 (Divisional. Parent is 1846309)	TGR	22 May 2017	41

1. The Opponent’s Trade Marks cover a variety of goods and services which Hills 1 states, ‘pertain to the sports media, film, promotional, entertainment, educational, hospitality, merchandise, and retail industries’—that is a fair assessment of the scope of the registrations. I note that the priority dates of the Opponent’s Trade Marks are later than both the filing date and the priority date of the IRDA.

2. Hills 1 shows that the Opponent also has a number of applications for, and registrations of, TGR and TETON GRAVITY RESEARCH in foreign jurisdictions. Only two of these appear to have priority dates which are earlier than that of the IRDA. They are USA registrations dating from 2011. The registrations cover similar goods and services to those covered by the Opponent’s Trade Marks.

3. According to Hills 1:

   [The Opponent] operates a media company and lifestyle brand based in Jackson Hole, Wyoming, USA, offering (in part) film and television content, live events, film tours, promotional and entertainment services and merchandise, including, for example, apparel. …

   A product under [the Opponent’s Trade Marks] was first launched in the United States in 1998.

   For more than two decades, my Company has used the marks TGR and TETON GRAVITY RESEARCH in connection with various products and services …

   [The Opponent] has produced more than 40 films, many of which have received various awards. …

   [The Opponent’s] films, television shows and series, commercials and other media content have been featured on major media networks that broadcast in Australia, including, for example, iTunes, NetFlix, NBC, ESPN, OutsideTV, Showtime, HBO, Fox Sports and Red Bull Media, to name a few. …

   [The Opponent] first launched its goods and services in Australia in approximately 1998.

   The Holder

4. According to the Meisser declaration:

   [The Holder] is a company registered in Switzerland. It is wholly owned by ETW Corp, which is a company incorporated in Florida, USA, and is the company through which professional golfer and businessman, Eldrick Tont Woods, better known as Tiger Woods, conducts his business as a golfer. Through ETW Corp, Mr Woods controls [the Holder and its related bodies corporate]. …

   Tiger Woods is an American professional golfer, one of the most highly paid athletes in the world and also considered to be one of the best golfers of all time.

   Grounds of Opposition, Onus and Standard of Proof

5. The Opponent pressed all grounds of opposition which were nominated in the SGP. It is necessary that the Opponent establish only one ground of opposition to successfully oppose the IRDA. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is the filing date of the application. The filing date here being 20 March 2017.[4] The Holder has also claimed a Convention Priority Date pursuant to the Madrid Protocol being 27 September 2016; this is the priority date for the ground of opposition pursuant to s 60.

   Discussion

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

   [3] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26].

   [4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].

   Grounds for rejecting and opposing IRDA

6. Regulation 17A.28 relevantly states:

   (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

   (2)Sections 39 to 44 apply in relation to an IRDA as if: 

   (a)a reference in those sections: 

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (b)…

   (c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

   (d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

   (3)…

7. Regulation 17A.34 relevantly states:

   (1)The extension of protection may be opposed on any of the grounds on which an IRDA may be rejected under Subdivision 2, except the ground that the trade mark cannot be represented graphically.

   (2)The extension of protection may also be opposed on any of the grounds set out in sections 58 to 61 and 62A of the Act, as affected by subregulation (3).

   (3)sections 58 to 61 and 62A of the Act apply in relation to an IRDA as if: 

   (a)a reference in those sections: 

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (iii)to the registration of a trade mark were a reference to the extension of protection in Australia to the trade mark that is the subject of the IRDA; and

   (b)the reference in paragraph 60(a) of the Act to the priority date for the registration of the trade mark were a reference to the priority date for the trade mark that is the subject of the IRDA.

   (4)…

   Use of a trade mark

8. Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish the goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by another person’. Section 7 states that ‘use of a trade mark in relation to goods means use of the trade mark upon, or in physical relation to, the goods …’ and ‘use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services’.

   The Opponent’s Evidence

9. In both Hills 1 and Hills 2 the declarant refers to the Opponent as ‘my Company’. For the sake of simplicity, I have not altered those references in the quotes below.

10. A background of the Opponent was provided earlier in this decision. I will avoid, as much as possible, repeating that information. However, an assessment of the veracity of many of the claims made in Hills 1 is necessary.

11. It is asserted in Hills 1 that the Opponent ‘first launched its goods and services in Australia in approximately 1998’ and that the Opponent’s website ‘was first available in Australia at least as early as 1998’. Annexure BH-3 to Hills 1 is declared to be ‘a copy of a Wayback Archive webpage, which shows use of my Company’s website since 1998’. Annexure BH-3 consists of three pages which are as described. The document does not include any examples of what the website looked like. The element of principal relevance in the document is a bar graph which does no more than indicate how many times and approximately when the Wayback Machine saved pages from the website between 27 June 1998 and 7 January 2019. This document does not assist the Opponent in establishing the date it launched its goods and services in Australia. At best, it goes some way to supporting a finding that a website at the aforementioned domain name was available on the internet, and that the website had the potential to have been viewed by persons in Australia.

12. Further claims made in Hills 1 include:

    ·‘My Company offers the goods and services of the TGR mark in the whole of Australia.’

    ·‘From as early as 1998, Australian’s began purchasing VHS tapes and merchandise from my Company.’

    ·‘Over the past two decades, my Company has conducted individual film shows and film tours. In addition my Company has filmed in numerous locations in Australia, including the Southern Coast of Australia, being Melbourne to Perth and all along the coastline.’

    ·‘My Company has screened films in numerous locations in Australia. Examples of three films and screening locations are included below.’

    No annexures to the declaration are referred to in support of those statements. Without supporting documentation such statements can be afforded only very little, or no, weight. There are other similarly unsupported statements in Hills 1.

13. Annexed to Hills 1 are confidential ‘annual revenue figures of my Company internationally, and … digital revenue figures of my Company in Australia.’. It is also stated in Hills 1:

    I have ascertained from my Company’s records that it has advertised its goods and services extensively internationally for many years. [The Opponent’s Trade Marks] have been advertised extensively in Australia and worldwide through catalogues, brochures, point of sale materials, media releases and by means of advertisements in magazines and newspapers.

    Confidential Annexure BH-7 is declared to be ‘a table showing advertising figures of my Company internationally’. No examples of the catalogues etc are provided.

14. Annexure BH-8 is declared to be ‘a sample of invoices showing products sold by my Company to Australian distributors which bear the TGR Trade Marks, in the years 2012, 2013, 2014, and 2017.’ The annexure consists of four invoices. Three of the invoices are dated prior to the filing and priority dates of the IRDA, the remaining one is post-dated. The prior invoices prominently bear ‘Teton Gravity Research LLC’ at the top of the invoices. TGR does not appear anywhere on the prior-dated invoices. The post‑dated invoice bears the same prominent heading, but in this case a number of the item descriptions include TGR, for example, ‘TGR Leather Patch Pom Beanie’, and ‘TGR Backcountry Tee’. As this invoice post-dates both the filing and priority dates of the IRDA it does not support a view that the Opponent used TGR as a trade mark prior to those dates.

15. The following statement appears in Hills 1:

    The name of my Company is ‘Teton Gravity Research’, but my Company refers to itself as ‘TGR’ and is known colloquially in the sports, media and entertainment community as ‘TGR’. Attached hereto and marked Annexure BH-9 is a copy of an article which appeared in the Australian News Daily Bulletin on 5 November 2015 showing use of the ‘Teton Gravity Research’ and ‘TGR’ to refer to my Company.

    A reference to a company in a news article does not constitute use of that reference as a trade mark. This is not use in the course of trade by the owner of those signs, it is merely a reference to a company by the writer of the article. At best, this evidence supports a view that the Opponent is at times referred to as ‘TGR’.

16. In Hills 1 it is declared:

    My Company advertises its products and services under the name TGR, including TGR Studios. Attached hereto and marked Annexure BH-10 are representative printouts from the following web pages showing use of the [Opponent’s Trade Marks].

    
    

    
    

    annexure consists of some 44 pages all which bear a 1/9/2019 date stamp. This annexure does not assist the Opponent.

17. It is declared in Hills 2 that:

    My Company has used the TGR trade mark in relation to a wide range of goods and services, including the organisation of golf events, prior to the date of [the Holder’s] first use of [the Holder’s Trade Mark]. Attached hereto and marked Annexure BH-13 are copies of articles showing examples of use of the TGR trade mark from as early as October 2007.

    The articles in BH-13 suffer from the same problem as the BH-9 articles discussed above. There is also no indication that any of the articles was published or read in Australia. Indeed, the focus of the articles appears to be events held in the USA. To the extent that images in the articles might show trade mark use there is no reason to think that this would be other than use in the USA, rather than Australia.

18. Hills 2 refers to a charity golf event called the ‘TGR Tee-Off’. According to the declaration the event was held each year from 1998 to 2018 at either Teton Pines Resort and Country Club or Jackson Hole Golf and Tennis Club. Both of those venues are in the USA. The declaration also states that the Opponent ‘has spent a considerable amount of money on advertising and promotional expenses’ for the TGR Tee-Off. There is nothing in the evidence to suggest that any of the advertising or promotion was directed at, or took place in, Australia. Hills 2 refers to two other events, the first being a golf tournament presented by the Rocky Mountain Section of the PGA and the second another golf tournament in Wyoming. There are no annexures associated with the latter events.

19. Annexure BH-17 to Hills 2 is declared to be ‘documents relating to business trips my Company has made to Australia, including email exchanges with Australian companies, as well as photos of premier events showing use of the TGR trade mark in Australia’. Only one of the documents in the annexure pre-dates the priority and filing dates of the IRDA. That document is an email chain from 2015. The trade mark shown below appears prominently at the top of the email.

The subject line of the email reads, ‘RE: TGR introduction’. The email chain concerns what appears to be discussion of the arrangements for meetings, including matters such as itineraries and flight arrival times. There appears to be nothing else discussed in the email. For example, there is no mention of the provision of any goods or services. I am not satisfied that this email constitutes use of either the sign shown above or TGR as a trade mark in Australia in the manner described by s 7.

1. It is asserted in the Opponent’s evidence that the first use of the Opponent’s Trade Marks was before the filing date of the IRDA and that the Opponent’s Trade Marks acquired a reputation in Australia prior to the priority date of the IRDA. The Opponent’s evidence falls short of satisfying me that either is so.

   Disposition of ss 42(b), 58 and 60.

2. The grounds of opposition under ss 42(b) and 60 were particularised in the SGP, in part, as follows:

   Section 42(b)

   [U]se of [the Holder’s Trade Mark] in relation to [the Holder’s Goods and Services] would contravene, and would therefore be contrary to, section 18 and 19 of the Australian Consumer Law, being Schedule 2 of the Competition and Consumer Act 2010.

   Further, use of [the Holder’s Trade Mark] by [the Holder] would also amount at common law to passing off and threatening to pass off …

   Section 60

   By virtue of the aforesaid use of the TGR Marks in Australia and internationally, and at all material times (including at the priority date), the Opponent has acquired a reputation and goodwill in the TGR Marks among a significant section of the Australian public.

   Therefore … any use of [the Holder’s Trade Mark] would be likely to deceive or cause confusion in a real and tangible way.

1. For either the ground of opposition under s 42(b) or that under s 60 to be established I must, as a starting point, be satisfied that a trade mark upon which the Opponent relies has acquired a reputation in Australia.[5] As stated above, I am not satisfied that this is so. The Opponent has, therefore, failed to establish either of those grounds of opposition.

   [5] See ss 42(b), s 60 and, for example: McCormick & Co Inc v McCormick [2000] FCA 1335; Hugo Boss AG Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KGv (1999) 47 IPR 423, 426; Australian Woollen Mills Limited v F S Walton and Company Limited (1937) 58 CLR 641; Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Pacific Publications Pty Ltd v IPC Media Pty Ltd [2003] FCA 104, [107].

2. To successfully establish the ground of opposition under s 58 the Opponent must establish a number of criteria, one of which is that a person other than the Holder has the earlier claim to ownership of the Holder’s Trade Mark based on use prior to whichever is the earlier of: (a) the filing date of the IRDA; or (b) any actual use of the Holder’s Trade Mark by the Holder.[6] In the SGP the Opponent indicated its reliance on the Opponent’s Trade Marks to support this ground. As stated above, I am not satisfied that the Opponent used either of its trade marks prior to the filing date of the IRDA. Consequently, the Opponent has failed to establish this ground of opposition.

   [6] See s 58 and Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402, 413.

   Section 62A

3. In the SGP the ground under s 62A was particularised, in part, as follows:

   [The Holder] ought to have been aware of the Opponent and the Opponent’s use of [the Opponent’s Trade Marks] in relation to the TGR Goods and Services.

   [The Holder] is or should be aware that the owner of [the Opponent’s Trade Marks] in Australia is the Opponent.

   [The Holder] is using or is intending to use [the Holder’s Trade Mark] in relation to the goods and services that are the same as or similar to the TGR Goods and Services.

   [The Holder] appears to be trying to gain an unfair commercial advantage in relation to the sale of [the Holder’s Services] in order to trade off the commercial success of the Opponent.

   Therefore, a reasonable person standing in the shoes of [the Holder] would have been aware that they ought not to apply for registration of [the Holder’s Trade Mark] on the basis that by obtaining registration of [the Holder’s Trade Mark] and using it, [the Holder] would be taking advantage of the goodwill, reputation and success of [the Opponent’s Trade Marks].

4. Section 62A of the Act is reproduced below:

   62A Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

5. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:

   • persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
   • persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
   • persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.

6. The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on this section of the Act. In that case, Dodds-Streeton J made the following comments:

   Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards. …

   The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[7]

   [7] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [24]-[26].

7. Her Honour continued later in the same decision:

   The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

   Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[8]

   [8] Ibid [165]-[166].

8. From the particulars in the SGP it is apparent that the Opponent is relying on the Holder’s knowledge of the ownership of the Opponent’s Trade Marks and/or the reputation that those trade marks have acquired. As discussed above, I am not satisfied by the evidence before me that the Opponent used its trade marks in Australia prior to the filing date of the IRDA. It follows that I am also not satisfied that trade marks had acquired a reputation in Australia before that date.

9. The following is asserted in Hills 1:

   I have ascertained from my Company’s records that [the Holder] was aware or should have been aware of the existence of my Company and the [Opponent’s Trade Marks]. Attached hereto and marked Annexure BH-11 is email correspondence with [the Holder’s] US representatives dating back to 2016. This email correspondence … shows that [the Holder] was aware of the existence of my Company’s marks in the United States of America.

10. It may be the case that the Opponent has better title to the Holder’s Trade Mark in a jurisdiction outside of Australia. It may also be that the Opponent’s Trade Marks acquired a significant reputation in a jurisdiction outside of Australia prior to the filing date. It may also be the case that the Holder was aware of the existence of the Opponent’s Trade Marks in the USA. None of those circumstances (alone or together), without more, mean that the IRDA was filed in bad faith.

11. The explanatory memorandum, referred to above, specifically refers to the case where persons who identify trade marks used overseas and apply for them for the express purpose of selling them to overseas owners. There is no evidence that this is the case here.

12. It is stated in the Meisser declaration:

    In 2006, Mr Woods first announced the formation of ‘Tiger Woods Design’, a golf course design and construction business. …

    Tiger Woods Design is one of a number of businesses and charitable ventures operated by [the Holder and related entities]. In October 2016, the Group rebranded these businesses and charitable ventures under the trade mark ‘TGR’, as an abbreviation for Mr Wood’s nickname, Tiger … In the process, Tiger Woods Design was rebranded as ‘TGR Design’.

    The adoption by the Holder of TGR as an abbreviation of Tiger seems to be entirely natural and there is nothing in the evidence that persuades me that the adoption of TGR might be considered unscrupulous, underhand or unconscientious.

13. The decision by the Holder to file the IRDA in Australia at a time where the Opponent’s Trade Marks have not acquired a reputation and the Opponent does not have better title to the trade mark does not constitute behaviour which might be considered unscrupulous, underhand or unconscientious.

14. For the reasons discussed above, the Opponent has failed to satisfy me that the IRDA was filed in bad faith.

    Decision

15. The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, protection of the Holder’s Trade Mark may be extended to Australia one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.

16. In accordance with reg 17A.34N(2) the International Bureau will be notified of the Registrar’s decision.

    Costs

17. The Holder has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

    Robert Wilson
    Hearing Officer
    Trade Mark and Designs Hearings
    23 March 2020