The Men's Gallery Australia Pty Ltd v Platinum 253 Pty Ltd

[2008] ATMO 32

TRADE MARKS ACT 1995

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

Re:Opposition by The Men’s Gallery Australia Pty Ltd to registration of trade mark application 1026410(41)(43) MG Men’s Gallery Logo in the name of Platinum 253 Pty Ltd.

Delegate:

Iain Thompson

Representation:

2008 ATMO 32

Opponent: Graeme Clarke, Senior Counsel instructed by Gary Prince of Gary Prince, Solicitor.

Applicant: Written submissions by Hodgkinson McInnes Patents

Decision:

Section 52 opposition – Section 60 – trade marks deceptively similar – evidence of actual confusion – use of opposed trade mark likely to deceive or confuse – section 60 established.

Costs

Awarded against applicant

Background

1. Trade mark application 1026410 MG Men’s Gallery Logo was filed on 22 October 2004 (‘the relevant date’) by Platinum 253 Pty Ltd of Level 1, 285 George Street, Sydney, (‘the applicant’) in respect of the services “Entertainment services” (Class 41) and “Restaurant services” (Class 43) and, after examination and amendment, its acceptance for possible registration was advertised on 21 September 2006.  Current details of the application are set out below:

   Application Number:  1026410

   Priority Date:  22 October 2004

   Goods & Services:  Class: 41 Theatre restaurants (entertainment services)

   Class: 43 Theatre restaurants (provision of food and drink)

   (‘the opposed trade mark’)

   Trade Mark:  

   Endorsement:  Provisions of paragraph 44(3)(a) applied.

2. Subsection 44(3), below, allows acceptance for registration under certain established circumstances in respect of applications which prima facie conflict with prior applications or registrations under subsections 44(1) or 44(2):

   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.

3. The Men's Gallery Australia Pty Ltd, of 241 King Street, Melbourne, Victoria, (‘the opponent’), lodged Notice of Opposition (‘the Notice’) to registration on 18 December 2006.

4. The evidence of the parties consists of the following declarations:

No.	Declarant	Position	Date Made	Exhibits
Evidence in Support
#1	Peter Iwaniuk	Sole Director and shareholder of opponent	15 December 2006	PI-1 to PI-9
Evidence in Answer
#2	Clair Fitzpatrick	Trade Mark Attorney	10 May 2006	A to B
#3	Christian Paris Hardin	General Manager of opponent	10 May 2006	(Exhibit A of #2 with exhibits A to C)
#4	Christian Paris Hardin	General Manager of opponent	24 August 2006	(Exhibit B of #2)
Evidence in Reply
#4	Peter Iwaniuk	Sole Director and shareholder of opponent	21 November 2006	PI-1

#5	Selwyn Greenberg		Chartered Accountant – Principal of Greenberg & Co – Chartered Accountants & Business Consultants	18 September 2007		SG
#6	Dave Goddard		Employee of IBSA Pty Ltd (software and web page designers)	20 November 2007		DG
#7	John Mihicinac		Crowd controller	20 September 2007
#8	John Agostinello		Liquor Nominee (licensee) of the opponent	21 November 2007		JA-1 to JA-2
#9	Michelle Godber	Market/Communications officer of an opponent controlled company			14 November 2007		MG
#10	Paul Grey	Financial Controller of the opponent			21 November 2007		PG-1 to PG-9

1. The matter was heard before me in Melbourne as a delegate of the Registrar of Trade Marks on 7 March 2008.  The applicant made written submissions by its attorneys, Hodgkinson McInnes.  Graeme Clarke, Senior Counsel, instructed by Gary Prince of Gary Prince, Solicitor, appeared for the opponent.

   Grounds of Opposition

2. The Notice lists one ground of opposition – that being under section 60 of the Act.

3. The opposed application was filed before significant amendment to section 60, which came into force on 23 October 2007, and thus the pre-amendment version of the section applies.[1]

   [1] Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)

   Evidence

4. The evidence shows that the opponent has run a ‘gentleman’s club’ in Melbourne’s central business district known as The Men’s Gallery since 1993.  This club runs various entertainments under its trade mark, pitched at a predominantly male market, which include table and other exotic dancing, five liquor bars, restaurant services and three function rooms.  Mr Iwaniuk who is the director and sole shareholder of the opponent says (in his declaration #1) that he travelled extensively in the USA in order to garner ideas for his club that was to cater to the business end of the market.  The opponent employed thirty staff and approximately two hundred showgirls each week and the declarant states that similar staffing levels have continued.

5. Mr Iwaniuk says the opponent markets services under the trade mark towards business men and professionals and in particular those from interstate.  Some evidence of this marketing is a flier directed to taxi drivers that offers all taxi drivers complimentary [sic] entry and free coffee, tea or soft drinks.  Other promotional material in evidence was apparently designed for placement in hotels, such as pamphlets and ‘Concierge Passes’ to be given by hotel concierges or reception staff to guests to enable free entry to the opponent’s club.

6. The opponent established a website in 1994 ( advertised in a free magazine called Destination Melbourne, distributed at Tullamarine airport; and placed advertisements in publications such as Truth, The Herald Sun and the Sunday Age as well as magazines such as Penthouse, Eros and Picture.  Examples of these advertisements are in evidence.  It has also advertised on billboards in or around Tullamarine airport.

7. The opponent has also registered its trade mark, details of which appear below:

   Registration Number:                  678935

   Priority Date:  23 November 1995

   Goods & Services:  Class: 41 Entertainment services including table dancing

   Trade Mark:  

8. The declarant attests that up to 5,000 clients attend the club each week, many of who are from interstate or from country Victoria.

9. The applicant’s evidence in answer comprises two declarations by Mr Christian Hardin who has been General Manager of the applicant since 2004.  These are photocopied declarations and not originals with no explanation in the attorney’s covering declaration of why this is so and are weighted accordingly.  The declarations both erroneously start by making reference to the opposed trade mark as being the words MEN’S GALLERY SYDNEY but both declarations make intermittent and general allusion to the logo form of the trade mark which is here opposed. 

10. As evidence of the start date for the use of the trade mark the first declaration in answer looks to a Business Names Extract at Exhibit A.  A simple entry on a business names register is not evidence per se of the public use of a trade mark although it might add some degree of corroboration to other materials.  However, a fortiori, it cannot have any possible bearing on whether a logo form trade mark such as that which is here opposed has been used.  Clarity is not added within the second declaration in answer where the declarant states:

    A graphic designer was employed to design several logo versions of the trade mark.  These were completed done [sic] and presented to responsible officers of the applicant company who chose the MG MEN’S GALLERY Sydney version as the most appealing and it has been used continuous [sic] in Australia since that time without complaint.

11. No dates for these events are given.  This makes any estimation of when the applicant might have started use of the opposed trade mark impossible.

12. The applicant provides exhibit examples of the advertising and promotion of its services under the trade mark.  The declarant does not provide dates for this material – nor are any explicit on the material itself.

13. While the applicant provides turnover and advertising figures, it is on letterhead which bears a different rendition of the opposed trade mark and two other unrelated trade marks.  It is accompanied by another exhibit that provides a detailed breakdown of the figures for the years 2004 and 2005 that do not show the same advertising totals as those which appear on the general summary on the ‘letterhead’ exhibit.   There is no explanation for the discrepancies but I suspect that the figures on the ‘letterhead’ exhibit are for the combined value of all figures under each of the trade marks which appear at the head of the page.  If this is true of the advertising figures, one could reasonably suspect that it is also true of the turnover figures for which raw figures and no breakdown are provided.

14. Neither do the exhibit sheets, which provide sales and advertising figures, explicitly claim that it is under the opposed trade mark.  Rather these perpetuate the uncertainty generated within the declarations by referring to “Mens [sic] Gallery Trade Mark Application Details” and “Mens [sic] Gallery Advertising.”  When it is recalled that the trade marks are referred to in the statutory declarations as being words rather than the logo form of the trade mark, the sales and advertising figures supplied would be, even if they added up correctly, meaningless.

15. It is my understanding that this declaratory material is virtually identical to the material that was filed in support of the application prior to acceptance.  The above-discussed factors bring the observation that, had the opposition have been run in terms of section 44 of the Act, it should have succeeded as the application of subparagraph 44(3) to this material is quite clearly inappropriate.

16. Much of the opponent’s evidence is reply is a detailed rebuttal of various assertions in the applicant’s evidence in answer.  For instance, the applicant’s declarant asserts that the expression “Men’s Gallery” is a well-known one within the name of a similar and famous club in the United States – however, there is no objective evidence that supports this claim and the opponent refutes it.  There is also in the evidence in reply detailed evidence by way of email printouts of confusion between the trade marks of the parties by way of mistaken enquiries and bookings and anecdotal evidence from a manager and doorman of frequent occurrences and the effects of the confusion between the trade marks.  There is also a declaration from an accountant who makes similar observations about the figures supplied by the applicant to those I have made, above.

    •Discussion

    Section 60 of the Act

17. At the relevant time section 60 read:

    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.

18. The opponent, in order to establish this ground, must show that it had:

    ·     A trade mark or trade marks (whether registered or not)

    ·     Which are substantially identical or deceptively similar to the opposed trade mark

    ·     And had a reputation before the relevant date

    ·     And because of that reputation the use of the opposed trade mark would deceive or confuse.

19. At the outset I will observe that the applicant’s attorney makes a number of submissions couched in terms of section 44(3) of the Act.  For example:

    “… [In] K Mart Corp v Artline Furnishers Supermarkets Pty Ltd (1991) 23 IPR 149 it is stated that the honesty established in a case of honest concurrent use is "commercial honesty, which differs not from common honesty". While the circumstances of that case suggested some attempt by the applicant to adopt a similar type of trade mark to that of the opponent, the Examiner [sic] was not convinced that they established dishonest conduct in the necessary sense.”

20. However, section 44 and questions about honest concurrent user are not grounds of opposition here – there is one ground under section 60.  Moreover, in McCormick & Company Inc v McCormick at paragraph 93, Kenny J observed:

    As counsel for McCormick & Co observes, the structure of the Act and the provisions with which this appeal is concerned differ markedly from the 1955 Act. Parts 4 and 5 of the Act relate to separate stages in the registration process. The reasoning that led Mason CJ, Dawson, Toohey and Gaudron JJ to hold that s 28 was subject to s 34 of the 1955 Act does not apply under the new Act. Within Division 2 of Part 4, s 44(1) provides for a ground for rejecting an application before acceptance by the Registrar. Subsection 44(1) expressly states that it is subject to s 44(3), the honest concurrent user provision. The whole of s 44 is expressed as an interlocking series of subsections. Section 60, which is part of a Division specifically setting out the grounds for opposing registration, is directed to the position after acceptance. Section 60 is not expressed to be subject to s 44(3), any analogous limitation, or even the Act generally: contrast s 89(1). On its face, it is a stand-alone provision. Furthermore, s 60 is apparently intended to afford a ground of opposition that is additional to the grounds set out in Part 4. Section 57 expressly states that the grounds of opposition may be "any of the grounds on which an application for the registration of a trade mark may be rejected under Division 2 of Part 4" (which includes s 44). Sections 58 to 62 add further grounds for opposition. On its face, there is no honest concurrent user exception to s 60.

    [….]

    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.

21. In other words, if the opponent establishes its opposition under section 60, considerations of whether the opposed trade mark has been honestly and concurrently used are not open to me.

22. It is apparent from the material filed by the opponent that it uses a number of trade marks which incorporate or consist of the words THE MEN’S GALLERY.  For example, the opponent sells its patrons ‘one dollar notes,’ on which the words THE MEN’S GALLERY appear prominently, for them to tip showgirls with; the words also appear on their own in promotional material at exhibits PI-4 and PI-5 to Iwaniuk #1.  The opponent’s trade mark which appears in the opponent’s evidence most frequently is substantially the same trade mark which is registered and is duplicated at paragraph 10, above.

23. It was not argued by the opponent that the trade marks of the parties are substantially identical.  It remains for me to decide whether the trade marks are deceptively similar.  The expression ‘deceptively similar’ is defined within section 10 of the Act:

    Definition of deceptively similar

    10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

24. In Registrar Of Trade Marks v Woolworths [1999] FCA 1020, at paragraph 50, French J discussed the issue of deceptive similarity in the following way:

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

25. The comparison of the trade marks is to occur according to the usual tests in, for example, Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641, where Dixon and McTeirnan, JJ said, concerning the comparison of trade marks:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, then similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

1. Subsequently, in the same case, the Court said:

   It depends on a combination of visual impression and judicial estimation of the effect likely to be produced in the course of the ordinary conduct of affairs.

2. The applicant suggests both in its evidence and in its submissions that the expression THE MEN’S GALLERY somehow lacks inherent distinctiveness, or is well known as the name of a similar club in the USA, and in its written submissions suggests that the principals of the parties both independently toured the USA in the early 1990s and both saw a gentleman’s club in the USA and adopted the trade mark.  There is no evidence before me that a principal of the applicant toured the USA or of the existence of the alleged overseas trade mark and while Mr Iwaniuk states that he did tour the USA in the early 1990s, he strongly resiles in his evidence in reply from the suggestion that he adopted an overseas trade mark.  Of course, absent evidence of any use or reputation[2] of the purported overseas trade mark in Australia, there is no law preventing foreign borrowings – in Malibu West, Inc v Catanese [2000] FCA 1141 (18 August 2000), Finkelstein J said at paragraph 28:

   While a local trader can deliberately adopt a foreign trade mark not previously used in this country, such action described by Williams J in Re Registered Trade Mark "Yanx" (at 202) as "sharp business practice", the court is inclined to regard this practice with suspicion and to "frown on these borrowings from abroad" (Aston v Harlee Manufacturing Co at 400 per Fullagar J). This is especially so where one of the local trader's motives in adopting the foreign mark is to prevent the foreign owner's use in this country. The corollary is that courts will regard a small amount of use, or slight use, of a mark in Australia by an overseas proprietor as sufficient to establish proprietorship of the trade mark in Australia: Aston v Harlee Manufacturing Co at 400; Moorgate Tobacco at 432; Riv-Oland Marble Co v Settef SpA at 353-354. As Williams J said in Seven-Up Co at 211:

   "The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country. It therefore seizes upon a very small amount of use of the foreign mark in Australia to hold that it has become identified with and distinctive of the goods of the foreign trader in Australia."

   [2] Re Conagra Inc v Mccain Foods (Aust) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193, (1992) AIPC 90-892 (Extract); (1992) 106 ALR 465 (1992) 33 FCR 302.

3. Neither is there any evidence before me that the words in any way lack inherent distinctiveness.  To use the word ‘gallery’ in respect of the services of the opponent might be suggestive of viewing showgirls as works of art, but it seems to me to be, prima facie, very far removed from the class of words that traders honestly need to use in the ordinary course of trade in respect of their similar services at ‘gentlemen’s clubs.’  See for example, Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511 where Kitto J said at paragraph 5:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: “The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use.”

4. While the applicant submits the lack of inherent distinctiveness is illustrated by an advertisement in the opponent’s evidence which invites people to attend the club and view “Nature’s Finest Works of Art,” I consider this to be a tongue in cheek play on words which in fact stresses the inherent capacity of the words MEN’S GALLERY to distinguish.  If, for example, a trader was to put a range of frozen vegetables onto the market under the trade mark BUMPER, would that trade mark be any less inherently adapted to distinguish because of that trader’s use of the slogan, “Enjoy a Bumper Crop”?

5. I consider that the trade marks of the parties are deceptively similar.  The words THE MEN’S GALLERY are a prominent and distinctive part of the logo form of the opponent’s trade mark and the letters MG within that logo form also occur in the opposed trade mark.  The arrangement of the words, letters and figurative elements in the trade marks is the same.  I consider that it is likely that customers will see the trade marks as being, at heart, Sydney and Melbourne versions of essentially the same trade mark, which are used in respect of services which are also the same, and thus denoting a common source of the services or at least a link such as licensing between them.  This view is strengthened by both the actual evidence of confusion in the way of emails which quite clearly show confusion and the largely anecdotal but sworn reports by the staff of the Melbourne establishment of confusion on a frequent and on-going basis.

6. Reputation is to be assessed according to the tests in McCormick & Company Inc v McCormick [2000] FCA 1335 stated by Kenny J at paragraph 81:

   What is intended by the word "reputation" in s 60? The word is defined in The Macquarie Dictionary as follows:

   reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

   Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to "the recognition of the  McCormick  & Co marks by the public generally".

   Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public's mistakenly attributing a business connection between the two or attributing her product to the company?

7. The annual turnover of the opponent is (and was at the relevant date) in the order of several millions of dollars annually and it spends a commensurate amount on advertising and promoting its services.  The opponent advertises in several national publications and prominently at, and close to, Tullamarine airport to tout the services offered under the trade mark to interstate visitors.  The opponent has also been very active in promoting services under the trade mark through hotels in and around Melbourne.  On balance, I am satisfied that the opponent’s trade mark had a reputation amongst Australians who might constitute its market at the filing date of the opposed application.

8. The applicant has argued in submissions that the registration of the opposed trade mark will change nothing and that the trade marks currently co-exist in the marketplace.  However, while this may be the case now, the applicant has not shown in its evidence that this was the case on the relevant date – 22 October 2004 – when the application was filed.  I am, anyway, to consider the issue not by reference to the manner in which the applicant has used its trade mark in the past, but by reference to the use to which it can properly put the trade mark.  – as per Bali, above.  If the applicant obtains registration, it could use that as a basis for the licensing of the use of the opposed trade mark throughout Australia including Melbourne, or it could even effect the sale of the registration of the trade mark to a third party in Melbourne.

9. I am satisfied that, because of the reputation of the opponent’s trade mark, the applicant’s use of its trade mark would likely to confuse and, in fact, does so.

10. The applicant also argues acquiescence, stating that the opponent has known of the applicant’s activities for ten years without complaint and has by implication foregone its rights to legal recourse and draws my attention to Permanent Trustee Co Ltd v Bermera Holding Pty Ltd (2004) NSWSC 56 and Cashman v North Golden Gate Mining Company (1897) 7 QL3 152 at 153 as per Griffith CJ:

    "The term acquiescence is not a term of art. It was used in Courts of Equity as a term to characterise a defence which may be set up by a person against whom another makes a claim for equitable relief. It is a well-known doctrine of equity that when a person claiming equitable relief has lain by for a long time, and so conducted himself that it would be inequitable to permit him to complain of the defendant's actions, the court will refuse to grant relief."

11. The attorney also refers to Glasson v Fuller (1922) SASR 148 and continues, “Clearly, the opponent has acquiesced since, by its own admission, it has been aware of the applicant's activities for over 10 years.”

12. There are at least two barriers to the path that the applicant’s attorney wishes me to tread:

    ·     The opponent is not here seeking equitable relief, nor is any available in this forum – the opponent is opposing registration of a trade mark;

    ·     The applicant has never before applied to register the opposed trade mark – this particular ‘activity’ (that of applying to register the trade mark) has not previously occurred over the last ten years.  It has occurred once and the opponent has promptly responded to the activity by opposing registration of the trade mark.

13. I would add, from my view of the evidence in answer, that it is not at all apparent that the applicant used its trade mark before it applied to register it and (were it open to me to make a finding of acquiescence) such a finding would quite clearly not be supported by the evidence in answer.

14. The opponent has established its section 60 ground.

    Decision

15. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

    (a) to refuse to register the trade mark; or

    (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application; having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note: For limitations see section 6.

16. I have found the opposition has been established on the ground under section 60 of the Act argued at the hearing.  I refuse to register application 1026410.

    Costs

17. Both parties made a claim for costs.  As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the applicant in accord with Schedule 8 of the Trade Mark Regulations 1995.

    Iain Thompson

    Hearing Officer

    Trade Marks Hearings

    13 May 2008