The Economist Newspaper Limited v Brendan Fernandez

[2022] ATMO 180

TRADE MARKS ACT 1995

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

Re:Opposition by The Economist Newspaper Limited to registration of trade mark application number 2041047 (class 35) – The Beer Economist – in the name of Brendan Fernandez

Delegate:

Katrina Brown

Representation:

Opponent: Spruson & Ferguson

Applicant: Self-represented

Decision:

2022 ATMO 180

Trade Marks Act 1995 (Cth) – opposition under s 52 – ss 42(b), 44, 60 and 62A – no ground established – trade mark to proceed to registration

Background

1. This decision is in respect of an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by The Economist Newspaper Limited (‘Opponent’) to registration of the following trade mark.

Trade mark no: 2041047

Trade mark:  The Beer Economist (‘Trade Mark’)

Applicant:  Brendan Fernandez (‘Applicant’)

Filing date:  1 October 2019

Specification:  Class 35 – Consumer market information services; information services relating to advertising; economic information services for business purposes; research of business information (‘Applicant’s Services’)

1. The trade mark application was examined as required by s 31 of the Act. Acceptance of the Trade Mark was advertised in the Australian Official Journal of Trade Marks on 12 March 2020.

2. The Opponent filed a Notice of Intention to Oppose on 11 May 2020, followed by a Statement of Grounds and Particulars (‘SGP’) on 10 June 2020.

3. The Applicant filed a Notice of Intention to Defend on 16 July 2020.

4. The Opponent filed the following declarations as evidence in this matter:

• Declaration of Oscar Grut (Corporate General Counsel, Company Secretary, Chief Legal and Corporate Development Officer of the Opponent) made on 19 October 2020 with Annexures OG-1 to OG-13; and

• Declaration of Oscar Grut made on 18 June 2021 with Annexures OG-14 to OG-17.

1. The Applicant filed the following declaration as evidence in this matter:

• Declaration of Brendan Fernandez made on 21 January 2021 with Annexures BF-1 to BF-10.

1. Once the time allowed for filing evidence ended, the parties requested a hearing by written submissions. Both parties filed written submissions.

2. The matter has been allocated to me, a delegate of the Registrar of Trade Marks, to decide based on the material described in [3] to [7] of this decision.

Grounds of opposition, onus, and relevant date

1. In the SGP, the Opponent nominated grounds under ss 41, 42(b), 43, 44, 59, 60 and 62A of the Act. In the submissions, the Opponent only pursued grounds under ss 42(b), 44, 60 and 62A. For clarity, I consider the remainder of the grounds abandoned.

2. The Opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 1 October 2019 (‘Relevant Date’) being both the filing and priority date of the Trade Mark.

Section 44

1. Section 44 of the Act relevantly provides:

   (2)  Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)  it is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of   similar services or closely related goods; or

   (ii) a trade mark whose registration in respect of similar services   or closely related goods 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 services is not earlier than the priority   date for the registration of the other trade mark in respect of the   similar services or closely related goods.

2. To succeed under this ground of opposition the Opponent must establish that the Trade Mark is substantially identical with, or deceptively similar to, another trade mark/s with an earlier priority date, in the name of a person other than the Applicant, in respect of similar services or closely related goods.

3. In the SGP, the Opponent identifies the following trade marks as the basis for this ground of opposition (‘Opponent’s Trade Marks’):

Trade mark no.	Trade mark	Priority date	Specification
473632	30 Sep 1987	Class 16: Newspapers and diaries
473634	THE ECONOMIST INTELLIGENCE UNIT	30 Sep 1987	Class 16: Publications relating to business, economics, marketing and industry
677555	THE ECONOMIST	8 Nov 1995	Class 9: CD-ROMS containing publications relating to business, economics, marketing and industry Class 41: Publishing services relating to business, economics, marketing and industry
677556	THE ECONOMIST	8 Nov 1995	Class 16: Books, magazines, printed publications, newspapers, printed matter, diaries, writing implements; printers’ type
833476	(‘Registration 476’)	1 May 2000	Class 9: Downloadable electronic publications; computer software; CD-ROMs; floppy disks; audio and video recordings Class 35: Business information services, including those provided on-line from a computer database or the Internet Class 41: On-line information services for entertainment and education; electronic publishing services; publication of electronic publications online; production and presentation of television programmes; arranging and conducting of business conferences and seminars; publishing
872435	17 Oct 2000	Class 9: Downloadable electronic publications; computer software; CD-ROMS; floppy disks; audio and video recordings Class 16: Books, magazines, printed publications, newspapers, printed matter, diaries, writing implements; printers' type Class 35: Business information services, including those provided on-line from a computer database or the Internet Class 41: On-line information services for entertainment and education; electronic publishing services; on-line publishing services; production and presentation of television programmes; arranging and conducting of business conferences and seminars; publishing
1725206	THE ECONOMIST ESPRESSO	4 Sep 2014	Class 9: Electronic publications (downloadable); downloadable computer software applications; all the foregoing being in relation to international news, current affairs, politics, business, economics, finance, science, technology and connections between them; none of the foregoing being for education or training purposes Class 41: Publishing by electronic means; provision of non-downloadable electronic publications; all the foregoing being in relation to international news, current affairs, politics, business, economics, finance, science, technology and connections between them; none of the foregoing being for education or training purposes
1776645	14 Jun 2016	Class 9: Downloadable electronic publications; audio and video recordings; computer software Class 16: Books, magazines, printed publications, newspapers, printed matter, diaries, notepads and notebooks; writing implements Class 35: Business information and research services; compilation, provision and analysis of statistics for business or commercial purposes; provision of advertising space Class 41: Arranging and conducting conferences and seminars; publishing services; providing non-downloadable electronic publications; providing information relating to education and entertainment; educational services provided on-line; production of video and audio recordings; news reporting services

1. From the information set out above, it is evident that each of the Opponent’s Trade Marks has a priority date which is earlier than the Relevant Date. I also confirm that each of the Opponent’s Trade Marks is held in a name other than that of the Applicant. In determining the remaining issues under this ground of opposition, I note that they are matters that should not necessarily be considered in isolation. As articulated by French J in Registrar of Trade Marks v Woolworths, the correct approach is to make one practical judgment.[3]

   [3] [1999] FCA 1020, [40].

2. The Opponent submits that the Trade Mark is substantially identical with trade mark numbers 473632, 677555 and 677556 (‘Opponent’s Economist Registrations’).

3. The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):

   they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[4]

   [4] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).

4. The Opponent’s Economist Registrations each consist of the phrase ‘The Economist’. Notably, whilst the Trade Mark contains the words ‘The’ and ‘Economist’, it does not contain the composite phrase ‘The Economist’. The positioning of the word ‘Beer’ in the Trade Mark is significant as it is between ‘The’ and ‘Economist’; the effect being that the composite phrase ‘The Economist’ is never formed. This is unlikely to go unnoticed on a side by side comparison of the trade marks.

5. In my opinion, a total impression of resemblance does not emerge from the required comparison. As such, I do not consider the Trade Mark to be substantially identical with any of the Opponent’s Economist Registrations.

6. Additionally, the Opponent submits that the Trade Mark is deceptively similar to each of the Opponent’s Trade Marks. I will focus my discussion on the Opponent’s Economist Registrations and Registration 476. If I am not satisfied that the Trade Mark is deceptively similar to these trade marks it is unlikely that I will reach a different conclusion in respect of the remainder of the Opponent’s Trade Marks.

7. Section 10 of the Act defines a ‘deceptively similar’ trade mark as:

   a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

8. In Shell, Windeyer J provided the following insights on deceptive similarity:

   The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It 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 defendant’s [trade mark].[5]

   [5] Ibid [13].

9. As such I must estimate the impression that a person of ordinary intelligence and memory would have of the Trade Mark and of the Opponent’s Economist Registrations and Registration 476. I must consider the look, sound and idea conveyed, allowing for imperfect recollection.

10. There are obvious similarities between the Trade Mark and the Opponent’s Economist Registrations and Registration 476. Each contains the word ‘Economist’. The Trade Mark and the Opponent’s Economist Registrations also have the word ‘The’ in common. Nevertheless, the presence of shared elements does not necessarily amount to deceptive similarity. The question to be considered is whether the similarity gives rise to a real and tangible danger of deception or confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2) O’Bryan J stated:

    That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the  marks, recognising that one word or feature of a mark can be more striking and memorable than another.[6]

    [6] [2021] FCA 328, [245].

11. When the trade marks are considered as wholes, the common presence of the words ‘The’ and ‘Economist’ are not, in this instance, sufficient to give rise to a real and tangible danger of confusion. Firstly, I note that the shared words are ordinary English words and ‘Economist’ has descriptive significance in respect of goods and services relating to, or having as their subject matter, economics or the economy including publications and business information services.

12. The emphasis, both visually and aurally, in the Opponent’s Economist Registrations and Registration 476 is on the word ‘Economist’. The idea conveyed by the Opponent’s Economist Registrations is that of the expert in economics. This is the impression based on recollection that a person of ordinary intelligence and memory would have of the Opponent’s Economist Registrations. Registration 476 consists of the domain ‘Economist.com’. Whilst ‘.com’ can be discounted to some extent, it cannot be discounted entirely when conducting the required comparison. Registration 476 conveys the idea of an expert in economics, or perhaps more specifically a website that provides expertise in respect of economics.

13. In respect of the Trade Mark the emphasis is not on the phrase ‘The Economist’, nor is it solely on the word ‘Economist’. Arguably, naturally the emphasis is placed on the word that immediately follows the definite article, in this instance that is the word ‘Beer’. Nevertheless, the words ‘Beer’ and ‘Economist’ are at least equally emphasised. The placement of the additional word ‘Beer’ is toward the start of the Trade Mark and effectively bifurcates the phrase ‘The Economist’. In my opinion, the addition of the word ‘Beer’ creates a composite phrase with a distinct sound and meaning. It is the composite phrase ‘Beer Economist’ that would form the basis of the ordinary consumer’s general recollection and as such, the idea conveyed by the Trade Mark is that of an expert in the economics of beer.

14. In my opinion, the trade marks are visually and aurally distinct and convey different ideas to the consumer. Furthermore, I do not think the Trade Mark is likely to be perceived as a sub-brand, variant or extension of the Opponent’s Trade Marks. To the extent that the Opponent has a family of trade marks, it is formed around the composite phrase ‘The Economist’ followed by additional material, if any. Bearing in mind that ‘The’ and ‘Economist’ are ordinary English words (they are not invented or uncommon words), I do not think it is likely that an ordinary consumer would assume a connection when the composite phrase ‘The Economist’ is bifurcated by another word.

15. When the trade marks are considered as wholes, I am not satisfied that there is a real and tangible danger of deception or confusion. The ground of opposition under s 44 of the Act has not been established.

Section 60

1. Section 60 of the Act provides:

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

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

2. To establish this ground of opposition, the Opponent must demonstrate the existence of a reputation in another trade mark in Australia at the Relevant Date. The Opponent must then establish that because of the aforesaid reputation use of the Trade Mark would be likely to deceive or cause confusion.

3. For the purposes of s 60 ‘reputation’ is ‘the recognition of the [trade mark] by the public generally’.[7] It has also been expressed as recognition of the other trade mark by a ‘significant’ or ‘substantial’[8] number of people or potential consumers.

   [7] McCormick & Company Inc v McCormick [2000] FCA 1335, [81] (Kenny J).

   [8] Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).

4. In its submissions, the Opponent asserts that for the purposes of s 60 it has the requisite reputation in its ‘THE ECONOMIST’ mark. The Applicant does not dispute this. I confirm that the evidence before me establishes that at the Relevant Date, the Opponent had the requisite reputation in the trade mark ‘The Economist’ (‘Opponent’s Economist Mark’) in respect of a print and online publication that include articles on subject matter such as current affairs, politics, business, and technology.

5. My next consideration is, whether in light of that reputation, use of the Trade Mark for the Applicant’s Services would be likely to deceive or cause confusion. The concepts of ‘deceived’ and ‘confusion’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd, where Richardson J 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.[9]

   [9] [1979] RPC 410, 423.

6. Importantly, there must be a real and tangible danger of deception or confusion occurring.[10] Numerous factors are relevant to this determination, including the strength of the reputation in the other trade mark, the similarity between the relevant goods or services and the degree of similarity between the trade marks.[11]

   [10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529, 594 (Kitto J).

   [11] Qantas Airways Limited v Edwards [2016] FCA 729, [142] (Yates J).

7. The Opponent’s Economist Mark is identical and/or substantially identical to the Opponent’s Economist Registrations. I have already found under s 44 that the Trade Mark and the Opponent’s Economist Registrations are not deceptively similar. I acknowledge that deceptive similarity is not a requirement of s 60. However, I am not satisfied, in this case, that the reputation in the Opponent’s Economist Mark increases the likelihood of deception or confusion to something that is real and tangible.

8. The Opponent’s reputation is in the composite phrase ‘The Economist’. I consider it unlikely that a notional consumer, aware of the Opponent’s reputation, would assume a connection when the composite phrase is bifurcated by another word. This is particularly so given the Opponent’s pattern of brand variation demonstrated in the evidence, which is centered around ‘The Economist’ as the leading element, such as ‘The Economist Technology Quarterly’, ‘The Economist Events’ and ‘The Economist Intelligence Unit’.

9. In its submissions in respect of s 60, the Opponent places particular reliance on the similarities between the Trade Mark and the following trade mark registered to the Opponent, The Economist Espresso (‘Opponent’s Espresso Mark’). The Opponent asserts that they are both ‘The Economist’ combined with a common beverage. I do not find this approach persuasive. Firstly, I note that the evidence before me does not establish that the Opponent has a reputation in the Opponent’s Espresso Mark. Secondly, the Opponent’s Espresso Mark follows the format of the Opponent’s branding strategy, namely ‘The Economist’ followed by additional word element/s. The Trade Mark does not follow this format. Furthermore, the characterisation of both the Trade Mark and the Opponent’s Espresso Mark as ‘The Economist’ combined with a common beverage is oversimplified. The Trade Mark does not contain the composite phrase ‘The Economist’, rather it contains the words ‘The’ and ‘Economist’ separated by the word ‘Beer’. Additionally, whilst beer and espresso are both beverages, I do not find this to be a sufficient nexus given that the trade marks do not have the same format (for example the trade marks are not ‘The Economist Espresso’ vs ‘The Economist Beer’).

1. The Opponent also submits that there is a real and tangible danger of deception or confusion because the Applicant adopted the Trade Mark with the intention of taking advantage of the Opponent’s reputation. In Australian Woollen Mills Ltd v FS Walton & Co Ltd, Dixon and McTiernan JJ stated:

   The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.[12]

   [12] (1937) 58 CLR 641, 657.

2. The Opponent has not established that the Applicant adopted the Trade Mark with the intention of appropriating the reputation of the Opponent. Furthermore, I am not willing to make that inference. The circumstances before me are not akin to those in Tivo Inc v Vivo International Corporation Pty Ltd[13] or Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3)[14] where the respective trade marks were all invented words, and you could reasonably assume the similarities were not coincidental. In the current matter, the shared elements are ordinary words which form part of the common stock of the English language.

   [13] [2012] FCA 252.

   [14] [2017] FCA 60.

3. Considering all the above, I am not satisfied that use of the Trade Mark in relation to the Applicant’s Services is likely to deceive or cause confusion because of the reputation of the Opponent’s Economist Mark.

4. The ground of opposition under s 60 of the Act has not been established.

Section 42(b)

1. Section 42(b) of the Act provides that a trade mark must be rejected if its use would be contrary to law. The Opponent must satisfy the Registrar that use of the Trade Mark would rather than could be contrary to law.[15]

   [15] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

2. The Opponent submits that use of the Trade Mark would be contrary to ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth). The Opponent also asserts that use of the Trade Mark would amount to the common law tort of passing off and trade mark infringement under s 120 of the Act.

Australian Consumer Law

1. The requirements for ss 18 and 29 of the ACL are more stringent than that of s 60 of the Act.[16] Section 18 of the ACL concerns conduct or representations that have, or are likely to, mislead or deceive. Section 29 of the ACL concerns representations that are false or misleading. Whereas section 60 of the Act can be established if the use is likely to cause confusion or wonderment.

   [16] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).

2. As already established in respect of s 60, I am not satisfied that use of the Trade Mark in respect of the Applicant’s Services is likely to deceive or cause confusion. It follows that, on the stricter test posited by the ACL, I am not satisfied that use of the Trade Mark is likely to mislead or deceive or amount to a false or misleading representation.

Passing Off

1. Where use of a trade mark does not contravene s 18 of the ACL neither will it amount to the tort of passing off.

2. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:

   The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail.[17]

   [17] [1989] FCA 506, [40] (Hill J).

3. Section 18 of the ACL is the equivalent of s 52 of the TPA.[18] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off.

   [18] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [410] (Rangiah J).

4. As I have found that s 18 of the ACL has not been contravened, it follows that use of the Trade Mark does not amount to passing off.

Infringement

1. The Opponent has asserted that use of the Trade Mark will amount to infringement of the Opponent’s Trade Marks under s 120 of the Act. Section 120 of the Act requires the relevant trade marks to be substantially identical or deceptively similar and to be in respect of goods or services of the same description, or closely related goods and services.

2. I have already found in respect of s 44 of the Act that the Trade Mark is not substantially identical with, or deceptively similar to, any of the Opponent’s Trade Marks. It follows that the claim for trade mark infringement under s 120 of the Act has not been made out.

3. The Opponent has not established that use of the Trade Mark would be contrary to law. Consequently, the ground of opposition under s 42(b) of the Act has not been established.

Section 62A

1. Section 62A of the Act provides:

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

2. The phrase ‘bad faith’ is not defined in the Act. In DC Comics v Cheqout Pty Ltd, Bennett J explained:

   Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.

   The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[19]

   [19] [2013] FCA 478, [62].

3. The Opponent submits that at the time of filing the application for the Trade Mark the Applicant was aware of the Opponent and the Opponent’s Trade Marks. Mere awareness of the Opponent and the Opponent’s Trade Marks is not, of itself, sufficient to constitute bad faith.

4. The Opponent draws my attention to the following comments cited by Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

   It is difficult to see how a person who applies to register a mark in his own name which he has previously recognised as the property of a potential overseas principal can be said to be acting in accordance with acceptable standards of commercial behaviour. I do not believe that combining the mark with the applicant’s own name is any answer to that criticism.[20]

I do not find this quotation to be apposite to the circumstances before me. The Opponent has not established that the Applicant was aware of the Opponent or the Opponent’s Trade Marks, let alone demonstrated that the Applicant had previously recognised the Opponent’s Trade Marks as being the property of the Opponent.

[20] [2012] FCA 81, [151] (emphasis added).

1. The Opponent has not provided cogent evidence to support the assertions under s 62A of the Act. In the absence of such evidence, I cannot be satisfied that the application for the Trade Mark was made in bad faith. In this respect, I note the following observations of the delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:

   The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly. [21]

   [21] [2009] ATMO 26, [12] (emphasis added).

2. The ground of opposition under s 62A of the Act has not been established.

Decision

1. Section 55 of the Act relevantly provides:

   (1) Unless subsection (3) applies to the proceedings, 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.

2. The Opponent has not established a ground of opposition. Accordingly, trade mark number 2041047 may proceed to registration.

3. If the Registrar is served with a notice of appeal. I direct that registration shall not occur until the appeal has been decided or discontinued and the disposition of the application should otherwise be in accordance with the Court’s order or direction.

Costs

1. Both parties have sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle.

2. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Katrina Brown

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

12 October 2022